Stardock Systems Inc. v. Paul Reiche III and Robert Frederick Ford
- who, what, why...
Who owns the copyrights in Star Control 1, 2, and 3?
Star Control 1
Copyrighted: 1989-90 - Reiche and Ford
Star Control 2
Copyrighted: Paul Reiche III and Fred Ford
Copyright Registration: PA0002071496
Disputed Elements: Artistic content not created by Reiche and Ford could belong to the original artists.
When P&F made SC2, they held a contest to make the theme songs. Riku Nuottajärvi won the contest, and supplied much of the music. We do not currently know the terms of the license P&F used Riku's music under. We can presume that it was not exclusive, because Riku has since released new remixes of that music. However, we do not know if the license permitted additional derivative works - something that would be necessary if GotP is to use new versions of the SC2 music.
Stardock hired Riku as the music lead for SC:O. It is also not known what license terms he's developing the SC:O music under; if he is a regular employee, Stardock will probably own the copyright to any music he creates. Moreover, he will probably be under a non-compete agreement that would prohibit him working on GotP for some time, even if he were to leave Stardock. If he is an independent contractor, then he could be under different terms.
The bottom line is that the music situation is shaping up to be one of the many thorny issues in this suit. Stardock reacted very negatively to the terms in P&F's proposed settlement that would have precluded their use of its music, and Paul and Fred are known to be reviewing their records for the ownership and licensing of the music in SC2. We will have a better sense for the situation when/if the license terms for the music are revealed through the court discovery process.
On the other hand, though, section 1.5 of Addendum 3 to the 1988 contract includes music under the the intellectual property "owned by Reiche." How these things fit together remains to be seen.
Star Control 3
Copyrighted: 1996 Accolade, Inc
Copyright Registration: PA0000799000
Disputed Elements: Elements in Star Control 3 that derived from Star Control 2 could belong to Reiche and Ford.
What rights are protected under copyright?
Copyright is secured automatically whenever a work (such as computer software, literary work, or other authorship) is created, and does not need to be registered. This gives the copyright holder exclusive rights to the authored work, including the right to reproduce, distribute, or sell that work.
The copyright holder also controls the right to create derivative works based on the original work. For example, a sequel to a game or a movie using characters and other elements from the original would be a derivative work, and needs the permission of the original copyright holder. The creator of the derivative work would be limited to copyrights in the new elements only, and their rights would exclude anything copied from the pre-exising work.
So what caused the copyright dispute?
On October 19 2017, Stardock began selling the original copyrighted games through Steam. Reiche and Ford said they did not authorize this and requested a takedown, and Stardock responded that Reiche and Ford's request includes "Star Control 3 which they admit they had no involvement". In fact, Star Control 3 does use copyrighted characters and content from the first two games. Star Control 3 is a derivative work based on Star Control 1&2, which Accolade could only create with permission from Reiche and Ford, as seen in the 1995 addendum to their original agreement.
How can Stardock legally sell games copyrighted by someone else?
Stardock claims they purchased a license to sell and distribute the three games (among other legal rights), "that was explicitly transferred to us by Atari who in turn acquired it from Accolade". Recall that in 1988, Reiche/Ford had granted Accolade the right to sell their Star Control games.(pgph 2.2-3.1) Stardock has claimed that they purchased this agreement from Atari at bankruptcy in 2013,(pgph 20) whereas Reiche and Ford claim that this agreement had expired.(pgph 33, 57)
How does a store like Steam handle a Copyright dispute?
The Digital Millennium Copyright Act (DMCA) holds online service providers liable whenever their users violate copyright law. As required by the DMCA, services such as Steam and GOG provide a tool to copyright holders to report any infringing content. The DMCA requires service providers to takedown infringing material once they are notified, but also includes safeguards to protect legitimate content from erroneous or fraudulent takedowns.
The DMCA creates a framework for how a service provider mediates a copyright dispute::
- A copyright owner submits a notification under penalty of perjury, including a list of specified elements, to the service provider’s designated agent. (page 12)
- The service provider promptly removes or blocks access to the material identified in the notification. (page 12)
- The service provider must promptly notify the subscriber that it has removed or disabled access to the material. (page 12)
- The subscriber serves a counter notification ... including a statement under penalty of perjury that the material was removed or disabled through mistake or misidentification. (page 12)
- Unless the copyright owner files an action seeking a court order against the subscriber, the service provider must put the material back up. (page 12)
This process only affects the liability of a service provider like Steam. These services are often uncertain about what is or is not infringing, due to information that is only known by the parties, and it is neither practical nor necessary for them to judge the validity of every notice or counter-notice.
How does a licensing agreement work?
An intellectual property holder can legally transfer any of their rights to a third party. This can be any or all of the copyright holder's rights, including the right to sell and distribute copies of their work, or the right to adapt their work into a new derivative work. A licensing agreement is a contract, and the terms of such a contract can be whatever the parties agree is fair.
What is in the 1988 Licensing Agreement?
Reiche and Ford gave Accolade the exclusive right to sell copies of Star Control. It also made sure that any sequel (derivative work) made by Reiche & Ford would have copyright owned by them, while a sequel made without Reiche & Ford would have copyright owned by accolade, subject to the original copyright held by Reiche/Ford.(pgph 3.1) It also granted Accolade the Star Control Trademarks, while ensuring that Reiche & Ford would own any copyright in any games they develop.(pgph 11.3-11.5)
An addendum to the agreement agreed that Accolade would develop Star Control 3. (Another addendum for an unfinished Star Control 4 game expired after no game was produced.) Accolade effectively purchased from Reiche/Ford the rights to use pieces of the original games in the new sequels, but those parts would still belong to Reiche/Ford, with only the truly new parts of the sequels belonging to Accolade.
Acquisition of licensing agreement
Accolade was eventually bought out by Atari (formerly Infogrames), who then took the place of Accolade as the legal license-holder to Reiche/Ford's copyrights.
Atari declared bankruptcy in 2013 and sold its assets to various parties. Stardock purchased all Star Control assets from Atari at bankruptcy,(page 14) who claims that this includes the 1988 Licensing Agreement.
But is the agreement still valid?
The 1988 Agreement included several clauses about when it would expire.
Paragraph 2.1 about Term states that the agreement shall continue "for as long as such Work, Derivative Work, and Derivative Product are generating royalties to the Developer at least of $1000 per annum".(pgph 2.1) By the 2000s, the games were widely considered Abandonware, including SC1,, SC2,, and SC3. Reiche and Ford claim that the games stopped being sold in 2000, and they stopped receiving royalties, and thus the license expired at that time.(pgph 37) Also, the 1998 addendum to the agreement included a three year term, which would have granted Accolade rights to any game they made during this term, but ultimately reverts all intellectual property rights to Reiche and Ford upon expiry.(pgph 4.1) This would have expired on April 1, 2001.
In a 2011 email thread between Reiche and Atari, both parties agreed that the 1988 License had expired years prior.(apr 25) Years later, conversations between Stardock and Reiche eventually led them to discuss the License Agreement. In October 2017, Stardock asserted to Reiche that the games were on sale at that time, and thus generating royalties at the minimum required by the original license. Reiche responded that Atari had agreed that the license expired during the 2001-2011 period of non-sale, and that it would be impossible for Stardock to regain those rights.
The 1988 agreement also included a non-assignment clause, with paragraph 12.1 stating that the License cannot be assigned without Reiche's permission.(pgph 12.1) Reiche claims he did not give permission for Atari to assign the agreement to Stardock.(pgph 57) In addition, Paragraph 7.1 states that the Agreement expires upon bankruptcy of the publisher,(pgph 7.1) which Atari filed for in 2013.
Who owns the Trademark in "Star Control"?
Stardock purchased the Trademark to Star Control from Atari in their bankruptcy asset sale.(exbt A, sch 1) Reiche/Ford have offered that Stardock is indeed the legal Trademark holder to "Star Control".(sect IVb)( However, the Reiche/Ford lawsuit alleges that the Trademark may have expired due to years of non-use, during the period where none of the games were for sale in the early 2000s.(pgph 41)
What rights are protected under Trademark?
According to the United States Patent and Trademark Office, "A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services."
What is the dispute?
In October 2017, Reiche and Ford announced they would be creating a sequel to Star Control 2 called "Ghosts of the Precursors". Initially, Stardock echoed this language with support for their sequel, saying "Paul told me the good news: Activision was going to let him do a true sequel to Star Control II: The Ur-Quan Masters." Stardock later filed a lawsuit against Reiche/Ford for Trademark infringement, and has since edited their post to remove the language referring to Ghosts of the Precursors as a "true sequel". Stardock alleges in their lawsuit that Reiche/Ford are infringing the "Star Control" Trademark and misleading consumers by calling Ghosts of the Precursors a sequel to Star Control 2.(pgph 41)
What about the recent Trademark applications?
Since the beginning of the lawsuit, Stardock has filed applications for several words and phrases from the original games, including "Ur Quan Masters", "Pkunk", "Mycon", and so on.(below) This would give Stardock exclusive right to use these words and phrases in commerce. It is unclear whether these applications will succeed, because the United States Patent and Trademark Office (USPTO) has asked for Stardock to amend their application to include evidence that they have been exclusively using them. As well, it is unclear if Reiche/Ford have opposed these applications, which is an ordinary part of the application process.
What are the allegations of unfair competition in each lawsuit?
Both sides have alleged Trademark infringement, which falls under the definition of "unfair competition". More than this, each side has accused the other of "unfair competition" by making statements that might confuse or deceive people that Stardock and Paul and Fred are somehow affiliated.
Why does it matter if P&F call themselves the "creators of Star Control"?
Stardock alleges that Paul and Fred "advertising themselves as being the creators of the Classic Star Control Games is false and misleading, and has been made in an attempt to dishonestly benefit from the goodwill and reputation associated with the STAR CONTROL Mark". If Paul and Fred are not truly the creators of Star Control, then their GOTP announcement would be misleading or false, with legal consequences to follow.
The old publisher and Trademark holder of Star Control have called Paul and Fred the "creators of Star Control" in 1998. Fans have colloquially called Paul and Fred the creators in the 90s, as well as the 2000s. Journalists have followed suit,, and continued to call them the creators in recent years.
Stardock's lawsuit states that "Reiche and Ford may not have created any of the artwork, animation or characters incorporated in the games, or otherwise substantially contributed to the authorship of Star Control I and Star Control II". Stardock has made different statements about Paul and Fred's actual contributions. Prior to the lawsuit, Stardock's CEO referred to them as the creators in 2015, as well as 2017. Stardock now publicly describes Paul and Fred as the designers.
Why does it matter how Stardock described their relationship with P&F leading up to SC:O?
Paul and Fred have alleged that Stardock has made "false or misleading statements concerning Reiche and Ford’s involvement with and connection to Stardock’s goods and services, including, but not limited to, Star Control: Origins, is likely to cause confusion or mistake or deception as to the affiliation, connection, or association of Stardock". There could be legal consequences if Stardock has overstated Paul and Fred's involvement in ways that have confused fans. Without exact details of their conversations, it is not clear what kind of relationship existed between Stardock and Paul and Fred, prior to the lawsuit.
Based on public statements as early as 2013, Stardock's CEO stated that Paul and Fred were "getting permission to work with us". In a 2014 interview, he further stated that "we'll be talking to Paul and Fred as we go forward", and that he "talked to them quite a bit about what level of involvement they would like to have in the new game", but that they needed Accolade's permission to work together. Paul and Fred have categorized this as false or misleading in their counter-claim, stating that they had "declined any involvement because they did not want Stardock or anyone else to further develop their world, and they had always planned to work on it themselves in the future." In 2016, Stardock's CEO stated that Paul and Fred had been supportive of Star Control: Origins. After the GOTP announcement, the Stardock CEO initially stated that GOTP "was the result of some years of effort on our part to talk them into doing that".
Timeline of Star Control history
Creation and release of Star Control 1-3: 1988-2000
- 1988 agreement
- 1990, July: Star Control is released, created by Paul Reiche and Fred Ford.90
- 1992, October: Star Control 2 is released, and is acclaimed as one of the best games that year.92
- 1996, September: Star Control 3 is released, based upon characters created and used under license from Paul Reiche III and Fred Ford.96
- 1997: Compared to the first two games created by Toys for Bob, the third game from Legend Entertainment is not well-received by fans and receives weaker sales.97
- 1998, September: Toys for Bob develop new games and franchises, and press and advertisements continue to describe them as "the creators of Star Control". 98-9
- 1998, October - IRC Chat: Fans frequently push for a sequel made by Toys for Bob. Paul and Fred tell fans that their campaigns will help make that possible, and that they personally own all rights in Star Control, other than the name and material in SC3.98-10
- 2000: A fourth game is attempted as a 3D combat game, and is ultimately scrapped after a few iterations.00
- 90 "Star Control". Interned Movie Database.
- 92 Trevena, Stanley (March 1993). "Accolade's Star Control II". Computer Gaming World. p. 34.
- 96 (September 1996). "Star Control 3: Manual". Accolade.
- "(c) 1996 Accolade, Inc. All rights reserved. Star Control 3 is based upon characters created and used under license from Paul Reiche III and Fred Ford."
- 97 "Legend Entertainment Company". Giant Bomb;
"Star Control 3". The Pages of Now And Forever: All About Star Control.
- "During this period, the company also developed Star Control 3, sequel to the much loved Star Control 2 created by Toys for Bob. The game was not well-received by fans and suffered from poor sales."
- 98-9 (September 1998) "Unholy War - Press Release". Eidos Interactive & Crystal Dynamics.
- "From the creators of "Star Control" I & II and the co-designer of Archon..."
- 98-10 "IRC chat Oct 1998". Transcript from IRC.
- 00 "Star Control 4." The Pages of Now And Forever: All About Star Control;
(April, 2000). Dunkin, Alan. "Star Control 4 Renamed". GameSpot.
Disappearance, legacy, and re-emergence: 1999-2013
- Best of
During the 2000s (if not later), Toys for Bob's website would periodically mention their desire for a new Star Control. Unfortunately archive.org has not preserved its Flash format well. However, some of the updates can be found on the Star Controller blog. Employee Alex Ness (who did not work on the original games) seems to have written most of the updates, but since it was on their official site we can assume it represented the Toys for Bob management too.
- In April 2001, Addendum 3 to the original contract expired. According to Reiche and Ford, by this date all rights to SC1/2 reverted back to them except the trademark.
- 2002, November: The Ur-Quan Masters open source project is released on Source Forge, with Star Control 2 code donated by Toys for Bob. The game earns 100,000 downloads within its first month, and nearly 2 million downloads over the lifetime of the project. 02
- 2003, August - IRC Chat: Paul and Fred discuss the Ur-Quan Masters project, and voice their support for the fan community who worked on it.03
- 2005, May: Journalists report that Toys for Bob, "the brains behind Star Control", have been fully acquired by Activision.05
- 2005, December: Star Control 2 is ranked #17 on IGN's top 100 games of all time.05-b
- 2006, March: Pelit reports that that around the year 2000, Toys for Bob turned down an offer to purchase the Star Control Trademark from Accolade for $50,000, prompting them to consider a Star Control sequel under a different name.06-3
- 2006, April: Journalists and fans report that Toys for Bob, the creators of Star Control, are organizing an official petition to create a new Star Control, and implies that they have the rights to the franchise.06-4
- In June 2006, TFB's website updated with "We (I) [written by TFB employee Alex Ness] want us to do a Star Control sequel."
- 2006, August: Star Control 2 is noted as a breakthrough game on the Sega Genesis, as "Paul Reiche III and Fred Ford’s masterpiece". 06-8
- In June 2007, TFB's website updated with "Well, we have talked to our parent company Activision about doing a Star Control sequel, quite seriously, and there did honestly seem to be some real live interest on their part."
- 2007, June - IRC Chat: Paul and Fred discuss the petition and their efforts to make another Star Control. "You will see an SC3 someday. Paul and I have every intention of continuing our almost 19 year collaboration and we're still excited about SC”07-6
- In September 2007, Atari renewed the Star Control trademark, which Reiche and Ford's counterclaim argues was invalid.
- 2007, December: In IGN's top 100 games list honoring Archon, they note Paul Reiche was half of the partnership that made Star Control.07-12
- 2008, December: IGN includes Star Control in a list of 10 games they would most like to see another sequel.08-12
- In August 2010, in a topic about an SC sequel, Fred Ford wrote on the Star Control discussion board "On a side note, I want to mention that I've started doing some unspecified work away from the office after some early and continuing conversations with Paul. Just saying...and it's way early yet...and it's just me...so, yeah." He followed up by saying "It will definitely be in our spare time for a while...this is not a TFB venture. It is a Paul and Fred venture."
- 2010, August: An unofficial fan interview quotes Fred Ford as planning a 2D Star Control sequel as personal side-project.10-8
- 2011, January: IDDQD reports that Toys for Bob would like to make a true sequel to Star Control.11-1
- 2011, April: Star Control 1 and 2 are announced for sale on GOG.11-4
- 2011, June: An Engadget profile on Toys for Bob notes Paul Reiche as the co-creator of Star Control.11-6
- 2011, October: In an interview with CVG, Paul Reiche announces: "we promise someday, we will make the real sequel" to Star Control.11-10
- 2011, November: A Kotaku profile on Paul Reiche notes him as co-creator of Star Control.11-11
- 2012, October: In the leadup to another Toys for Bob game, Kotaku, Wired, and Destructoid all describe Toys for Bob as creators of Star Control.12-10
- In 2013, Atari filed for bankruptcy.
- In July 2013, Stardock bought Atari's "Star Control" assets.
- 02 "The Ur Quan Masters - Download Statistics". SourceForce. Retrieved April 2018.
- 03 (August 2003) [http://uqm.stack.nl/files/chat/tfbchat-20030822-formatted "Toys for Bob IRC Chat".) Transcript.
- 05 (May 2005) Surette, Tim. "Activision Bobs for Toys" GameSpot.
- 05-b (2005) IGN's Top 100 Games of All Time - 2005. IGN.
- 06-3 (March 2006) Nirvi, Niko. "Star ControlKontrollin aikakirjat". Pelit (Finland).
- 06-4 (April 2006) "Hope for Another Star Control Sequel?". SlashDot.
- 06-8 (August 2006) Galway, Benjamin. "Star Control 2 - Genesis Reviews". Sega-16.
- 07-6 (June 2007) [http://uqm.stack.nl/files/chat/tfbchat-20070613-clean "Toys for bob IRC Chat.) Transcript.
- 07-12 (2007) "IGN's Top 100 Games of All Time - 2007". IGN.
- 08-12 (December 2008) "The Wednesday 10: Franchises We Want Resurrected". IGN.
- 10-8 (August, 2010) "Interview with Fred Ford". Star-Control.com.
- 11-1 (January, 2011) Heti retro: Star Control II. IDDQD.
- 11-4 (April, 2011) New release: Star Control 1+2. GOG.
- 11-6 (June, 2011) Schramm, Mike. What's In a Name: Toys for Bob. Engadget.
- 11-10 (October, 2011) Paul Reiche Interview on CVG. Star Controller.
- "22 years ago, we founded Toys for Bob, Fred ford and myself; making Star Control 1 and 2, science fiction games, which to this day, have a bizarrely-dedicated fan following and we promise someday, we will make the real sequel."
- 11-11 (November, 2011) Totilo, Stephen. "The Man Who Wants to Re Invent Toys Before Video Games Destroy Them". Kotaku.
- 12-10 (October, 2012) Fahey, Mike. Skylanders Giants - The Kotaku Review. Kotaku.
(October, 2012) Aziz, Hamza. Merging toys and videogames with Skylanders. Destructoid.
(October, 2012) Olsen, Anton. Toys for Bob: From Star Control to Skylanders Giant. Wired.
Timeline of legal dispute
Stardock's new game: 2013-2017
- bankruptcy and sale
Private and public dispute: 2017-present
- public statements
- settlement offers
List of References
- (1) - December 8, 2017 - COMPLAINT against Paul Reiche III, Robert Frederick Ford
- (16) - February 22, 2018 - ANSWER to Complaint with JURY DEMAND byRobert Frederick Ford, Paul Reiche III.
- (17) - February 22, 2018 - COUNTERCLAIM against Stardock Systems, Inc.. Filed byPaul Reiche III, Robert Frederick Ford.
- (27) - March 15, 2018 - AMENDED COMPLAINT
- (34) - March 28, 2018 - Minute Entry for proceedings held before Chief Magistrate Judge Joseph C. Spero
- (35) - March 28, 2018 - Notice of Settlement Conference and Ordering Setting Settlement Conference before Chief Magistrate Judge Joseph C Spero
- (36) - March 28, 2018 - ORDER REGARDING SETTLEMENT DISCUSSIONS
- (37) - March 29, 2018 - Answer to Amended Complaint 27 by Robert Frederick Ford and Paul Reiche III
- (38) - April 16, 2018 - ANSWER TO COUNTERCLAIM 17 Counterclaim, by Stardock Systems, Inc.
- Stardock Legal Complaint
- Fred and Paul Counter-Complaint
- Stardock Amended Legal Complaint
Fred and Paul Provided
- Dogar and Kazon - “THERE WERE MANY GREAT BATTLES... AND SOME OF THEM INVOLVED LAWYERS.”
- Dogar and Kazon - Star Control® I, II and III aren't for sale on GOG.com anymore -- How come?
- Dogar and Kazon - Stardock Claims We Are Not the Creators of Star Control. Sues Us. WTF?!
- Dogar and Kazon - .... Report From Surface ....
- Dogar and Kazon - Strange Settlement on an Alien Planet
- Dogar and Kazon - Nope and Nope
Federal Trademark and Copyright Registrations
- Trademarks - United States Patent and Trademark Office
- Trademark (Granted): "Star Control" - Originally by Accolade, Inc. Last Owner: Stardock Systems, Inc
- Trademark (Filed): "Star Control" - Stardock Systems, Inc
- Service Mark (Filed): "Star Control" - Stardock Systems, Inc
- Trademark (Filed): "The Ur-Quan Masters" - Stardock Systems, Inc
- Trademark (Filed): "The Ur-Quan Masters" - Paul Reiche III
- Trademark (Filed): "Melnorme" - Stardock Systems Inc
- Trademark (Filed): "Arilou" - Stardock Systems Inc
- Trademark (Filed): "VUX" - Stardock Systems Inc
- Trademark (Filed): "Pkunk" - Stardock Systems Inc
- Trademark (Filed): "Ilwrath" - Stardock Systems Inc
- Trademark (Filed): "Chenjesu" - Stardock Systems Inc
- Trademark (Filed): "Androsynth" - Stardock Systems Inc
- Trademark (Filed): "Spathi" - Stardock Systems Inc
- Trademark (Filed): "SUPER-MELEE" - Stardock Systems Inc
- Trademark (Filed): "Syreen" - Stardock Systems Inc
- Trademark (Filed): "Ur-Quan" - Stardock Systems Inc
- Trademark (Filed): "Orz" - Stardock Systems Inc
- Trademark (Filed): "Yehat" - Stardock Systems Inc
- Trademark (Filed): "Taalo" - Stardock Systems Inc
- Trademark (Filed): "Dnyarri" - Stardock Systems Inc
- Copyrights - United States Copyright Office - United States Copyright Public Catalog
- Star Control II - PA0002071496 - Fred Ford and Paul Reiche III
- Star Control III - PA0000799000 - Accolade, Inc