Stardock Systems Inc. v. Paul Reiche III and Robert Frederick Ford

Basic background

who, what, why...

Copyright

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.

Music

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?

Computer software, as well as literary works and other forms of authorship, can be protected by copyright. This gives the copyright holder exclusive rights to the authored work, including the right to reproduce, distribute, or sell that work. It also includes the exclusive right to create derivative works based on the original work. (Source: BitLaw Summary https://www.bitlaw.com/copyright/scope.html)

What is a derivative work?

A derivative work is a new work based on content from another copyrighted 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.(Source: Legal Zoom, https://www.legalzoom.com/articles/what-are-derivative-works-under-copyright-law)

So is there a dispute over the copyright?

Not exactly. Stardock has agreed with Paul Reiche and Fred Ford that they are the legal copyright holders in Star Control 1 and Star Control 2. However, this became an issue when Stardock began selling the original copyrighted games through Steam, which Reiche and Ford have said that they do not authorize. Stardock has pointed out that their issue with the sales of the original games also includes "Star Control 3 which they admit they had no involvement". (Source: Stardock Q&A, https://www.stardock.com/games/article/487690/qa-regarding-star-control-and-paul-and-fred) However, Paul and Fred would be partial owner of Star Control 3, as the very sequel itself uses copyrighted characters and content from the original games. Star Control 3 is a derivative work based on Star control that required an agreement between Accolade and Reiche/Ford.(Source: Accolade 1988 Licensing Agreement)

While Stardock has admitted that Reiche and Ford are the legal copyright holders in those games, Stardock believes they purchased a legal license to some of the content within those games, including the right to sell and distribute those games.(Source: Stardock Q&A, https://www.stardock.com/games/article/487690/qa-regarding-star-control-and-paul-and-fred) This would likely be the 1988 licensing agreement, where Reiche/Ford gave Accolade the right to sell their Star Control games,(Source: Accolade 1988 Licensing Agreement) and which Stardock purchased from Atari at bankruptcy.(Source: Stardock-Atari Asset Purchase agreement.)

How does the DMCA takedown process work?

https://www.law.cornell.edu/uscode/text/17/512

Licensing agreement

What is a licensing agreement?

A copyright holder can legally transfer 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.(Source: Bitlaw, https://www.bitlaw.com/copyright/license.html) It is a contract, and the terms of such a license can be whatever the parties decide is fair.

1988 Licensing Agreement

The 1988 licensing agreement between Accolade and Reiche/Ford gave Accolade the exclusive right to sell copies of Star Control. It also made sure that any sequel 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. (Source: 1988 Accolade Licensing Agreement)

Later addenda to the agreement agreed that Accolade would develop Star Control 3 (and an unfinished Star Control 4 game that never came to fruition). 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. (Source: Addenda to 1988 Accolade Licensing Agreement)

Acquisition of licensing agreement

Accolade was eventually bought out by Atari, who then took the place of Accolade as the legal license-holder to Reiche/Ford's copyrights.

Stardock purchased all Star Control assets from Atari at bankruptcy, which includes the 1988 Licensing Agreement.(Source: Stardock-Atari Asset Purchase agreement.) However, there are clauses in the 1988 agreement that suggest that the license to those rights were extinguished, including termination of the license upon bankruptcy.(Source: 1988 Accolade Licensing Agreement)

Trademarks

Who owns the Trademark in "Star Control"?

What rights are protected under Trademark?

From 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."

United States Patent and Trademark Office - Trademark Basics
Basic Facts: Trademarks, Patents, and Copyrights - USPTOVideo on YouTube
Basic Facts: Should I Register My Mark? - USPTOVideo on YouTube

... what's the dispute ...

What about the recent Trademark applications?

Unfair competition

What are the allegations of unfair competition in each lawsuit?

Why does it matter if P&F call themselves the "creators of Star Control"?

Why does it matter how Stardock described their relationship with P&F leading up to SC:O?

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.

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

Interviews
Best of
GOG

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
development

Private and public dispute: 2017-present

public statements
claims
settlement offers

List of References

Court Received

Fred and Paul Provided

Stardock Provided

Stardock Star Control Forums - Q+A regarding Star Control and Paul and Fred

Federal Trademark and Copyright Registrations

Game Related Materials

Screenshots

Star Control 1 Title Screen
Star Control 2 Title Screen
Star Control 3 Title Screen