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News: Paul & Fred have reached a settlement with Stardock!

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Author Topic: My take on Stardock  (Read 71898 times)
Frogboy
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Re: My take on Stardock
« Reply #585 on: April 19, 2018, 06:37:29 pm »

I agree it's pretty clear.  I'm not sure why you are struggling to understand it.

Which part of any trademarks adopted used by the publisher are sole property of the publisher are you having trouble understanding?

Which part of "Developers understands that it may not use the trademarks of publisher in any way without permission of the publisher" wasn't clear to you?

Which part of  "Publisher is free to use any such trademarks in connection with another work or product at any time before or AFTER the term of this agreement"  are you not understanding?

Also, please point me to where Riku or the other creators assigned their copyrights to Paul Reiche III? All my non-lawyer reading of this shows is that Paul represented he had rights.  Are you claiming that Paul owns Riku's music (as one example?)  I don't think Riku would agree and in fact, Paul has previously stated that the music is owned by others in various IRC chats.  What about the writing he didn't do.  What about the art?  I would imagine that Paul and Fred could, post-facto, get assignments to those particular creative expressions.  But we're not using any of them anyway so it doesn't matter.

In fact, which part of your link do you think isn't damaging to Paul and Fred's position?

Was it your intent to torpedo any argument that Paul and Fred had some possible justification to use the Star Control trademarks?  Is there some other reading of "developer understands and agrees that it may not use the trademarks of the publisher in any way without permission of the publisher?  And that the same paragraph explicitly makes it clear that this applies even after the term of the agreement?  And you do understand that this agreement was transferred to Stardock, correct?

So even if the term of the agreement has expired, the best possible reading of it is that Paul and Fred would have full rights to the works (copyrights) they created.  So what, specifically, did they create?  But they have no trademark rights whatsoever and pretty flagrantly violated the "may not use the trademarks of the publisher in any way" part.



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Re: My take on Stardock
« Reply #586 on: April 19, 2018, 08:08:03 pm »

I agree it's pretty clear.  I'm not sure why you are struggling to understand it.
Cool. Lets break it down point by point then.

Which part of any trademarks adopted used by the publisher are sole property of the publisher are you having trouble understanding?

Accolade (the publisher) adopted one trademark 'Star Control' and registered it March 18, 1997 (filed April 29, 1996) as [sn:75095591, rn:2046036]. This is the only registered mark I can find (excluding the registrations made by Stardock and P&F within the last year). Thus your control would be limited to the word "Star Control".

Which part of "Developers understands that it may not use the trademarks of publisher in any way without permission of the publisher" wasn't clear to you?

This would not exclude nominative fair use as historical fact. They were the developers of Star Control. You yourself have admitted this fact in the past.

Which part of  "Publisher is free to use any such trademarks in connection with another work or product at any time before or AFTER the term of this agreement"  are you not understanding?

The contract specifically states "the publisher". You may have purchased the trademark but that does not mean this agreement in full would have transferred to you, especially given the state of it's expiration prior to your involvement. The trademark does not inherently have this right, the publisher and signatory of the contract did.

Also, please point me to where Riku or the other creators assigned their copyrights to Paul Reiche III? All my non-lawyer reading of this shows is that Paul represented he had rights.  Are you claiming that Paul owns Riku's music (as one example?)  I don't think Riku would agree and in fact, Paul has previously stated that the music is owned by others in various IRC chats.  What about the writing he didn't do.  What about the art?  I would imagine that Paul and Fred could, post-facto, get assignments to those particular creative expressions.  But we're not using any of them anyway so it doesn't matter.

P&F by virtue of contracting and paying for the work completed by Riku and other contractors without a specific assignment contract would have a non exclusive implied license to use the work in perpetuity to distribute, perform, or derive new work from the original work created. This wouldn't stop Riku from licensing it to you via a separate agreement however it does give P&F a fully valid license for Star Control's lifetime.

In fact, which part of your link do you think isn't damaging to Paul and Fred's position?

I think most of it supports their position pretty well. That agreement has expired, the rights to their work and all derivative work based on their work would revert to them. Given both the expiration of this contract reverting all work consisting of the 3 games to them, the lack of use of Star Control in commerce for 10 years, the fact that P&F have plenty of priority of use both through their own sales and UQM for trademarks on all the names NOT originally trademarked by accolade, your hold on the trademark is pretty tenuous at best. The fact you seem to think you own all of the IP as well is pretty laughable.

Was it your intent to torpedo any argument that Paul and Fred had some possible justification to use the Star Control trademarks?  Is there some other reading of "developer understands and agrees that it may not use the trademarks of the publisher in any way without permission of the publisher?  And that the same paragraph explicitly makes it clear that this applies even after the term of the agreement?  And you do understand that this agreement was transferred to Stardock, correct?

Given the fact that everything I took is IN the legal documents submitted as a counter claim; No I haven't torpedoed anything. Also remember, you bought a Trademark and Copyright to non derivative contents of Star Control 3. You did not buy this agreement and you did not buy Accolade. The terms in this agreement would not magically transfer to you. This document isn't even relevant to you directly other than it provides background to P&F's claim of ownership and rights.

So even if the term of the agreement has expired, the best possible reading of it is that Paul and Fred would have full rights to the works (copyrights) they created.  So what, specifically, did they create?  But they have no trademark rights whatsoever and pretty flagrantly violated the "may not use the trademarks of the publisher in any way" part.

As per the document they own the work known as Star Control 1 and Star Control 2 and it's derivatives which would include the implied licenses granted per contracting out the work.
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Frogboy
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Re: My take on Stardock
« Reply #587 on: April 19, 2018, 09:17:54 pm »

Let's recap:

1. Agreeing not to use the trademark "in any way at all" is pretty clear.  If you put up the name Star Control(R) you are, by definition, using it in its trademark form.  That's not even fair use. But even if it was, they were still barred from using the trademark "in any way at all".  I've written enough licensing agreements over the years to know why that language was put in.  *I* personally wouldn't do that sort of thing but I am familiar with it.  But they signed it.

2. The 1988 agreement was explicitly transferred to us.  Again, very basic contract law.  Agreements have terms.  Some things survive, some things don't.  We've done a lot of licensing agreements over the years.  This is really basic stuff.  The 1988 agreement was one of the items transferred as part of the acquisition.   This isn't being disputed.  What is being disputed is whether the sales and licensing terms have expired or not. 

3. As I've said for awhile, if I were Paul and Fred, I would contact everyone I can and get them to sign a paper transferring any copyrights to them.  Without that,  a third-party cannot safely use any of that IP even if Paul and Fred gave their blessing.

Even before things came to a head, this was an issue Stardock wanted cleaned up.  Either they needed to indemnify us before doing Ghosts or clean up the IP rights of the old games so that some artist or writer didn't come after us because they did Ghosts OR they needed to get Erol and co to sign papers transferring any rights to Paul and Fred. 

4. Your whole argument seems to be a strawman.  After all these pages, where on earth did you get the idea that Stardock thinks it owns all the art, lore or setting?   If we thought that, why go through the trouble of creating a whole new universe?

5. For the sake of argument, let's presume Paul and Fred own all the copyrightable material in SC 1/2 plus derivatives of it in SC3.  How does this help them?  We aren't using any of it.  We have no plans to use any of it.  However, they most definitely did use our trademarks and created both potential and actual confusion in the marketplace. 

6. Star Control has been being used in commerce for many years.  The Star Control franchise was being sold on GOG even before we acquired the rights and as Paul and Fred have claimed, the trademark rights were between GOG and Atari and the copyrights between Paul and Fred.  The trademark has been in use, continuously, in commerce, for over 28 years.

It amazes me how non-parties to a legal dispute think they know what the parties have in their possession.  Stardock assumed several agreements as part of the acquisition. One of which was the Paul and Fred agreement.



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Re: My take on Stardock
« Reply #588 on: April 19, 2018, 09:38:46 pm »


5. For the sake of argument, let's presume Paul and Fred own all the copyrightable material in SC 1/2 plus derivatives of it in SC3.  How does this help them?  We aren't using any of it.  We have no plans to use any of it.  However, they most definitely did use our trademarks and created both potential and actual confusion in the marketplace.  

6. Star Control has been being used in commerce for many years.  The Star Control franchise was being sold on GOG even before we acquired the rights and as Paul and Fred have claimed, the trademark rights were between GOG and Atari and the copyrights between Paul and Fred.  The trademark has been in use, continuously, in commerce, for over 28 years.


5. We return to the assignment in gross doctrine. No rights to Star Control IP of any kind besides the bare mark --> Star Control trademark severed from goodwill --> purported assignment of the Star Control trademark was a nullity. Though many times since the start of the most recent dispute you and your staff have reversed the analysis: "we have the trademark, therefore we have the goodwill, therefore we can bootstrap our way into something very much resembling copyright over the franchise, such as by enjoining other rights holder to prevent confusion in the marketplace." Really it is your attempt to bootstrap that the law abhors.


6. Continuous? There was a period of many years where no product bearing a Star Control mark could be bought except on the secondary market.
« Last Edit: April 19, 2018, 09:46:05 pm by Denning » Logged
Elestan
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Re: My take on Stardock
« Reply #589 on: April 19, 2018, 09:51:59 pm »

5. We return to the assignment in gross doctrine. No rights to Star Control IP of any kind besides the bare mark --> Star Control trademark severed from goodwill --> purported assignment of the Star Control trademark was a nullity.

Careful; you're losing the caveats I had attached when I brought that rule up.  We do not know how much weight that precedent has in this case; that's where a real lawyer who knows the case law in detail is needed.
« Last Edit: April 20, 2018, 05:35:17 am by Elestan » Logged
Frogboy
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Re: My take on Stardock
« Reply #590 on: April 19, 2018, 09:54:06 pm »

The Internet lawyering here has reached fantasy levels.

You guys are free to imagine whatever you'd like.  

I'll check back in after the dispute has resolved.  

In the meantime, since you apparently won't take my word for it, here is Paul's position on the trademarks:



Hence, the sales on GOG would be Atari's use of the trademark in commerce, not Paul and Fred's.  Which were legally transferred to Stardock. 
« Last Edit: April 19, 2018, 10:07:48 pm by Frogboy » Logged
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Re: My take on Stardock
« Reply #591 on: April 20, 2018, 03:56:38 am »

There's a lot of silly arguments here about who's allowed to have an opinion (everyone) and which opinions matter more (logical ones backed by evidence). It all amounts to ad hominem attacks and an effort to control or shut down the discussion.

At the end of the day, we're all people who like an old game, and that includes the folks at Stardock who purportedly bought the Trademark to that game. Everyone is speculating, but some speculation matters less, and not because of who anyone is, but because they aren't really grounded in evidence or law, let alone basic reality.

Some evidence is public, some isn't, and there's legal issues that even judges are ambiguous on.

Like anyone else, I have an opinion. But I can start with some pretty obvious stuff:

  • A Trademark in a game, with no game, is just a name.
  • A Copyright in a game, with no Trademark, is still a game. (no poetry intended)
  • A Trademark holder can stop someone from selling a product with a similar mark.
  • A Trademark holder can't stop a game. UQM and SC2 are the same game. Same copyright, different Trademark.
  • A Copyright holder can stop a game. They can even stop a derivative game that only uses elements of the original Copyright.
  • How many elements does it take to infringe copyright? It need not be identical, but it needs to be more than de minimis.
  • In the possibility the SC Trademark is cancelled, the name "Star Control" is only less restricted. It means more Star Control games, not less.
  • In the near impossible scenario that "Ghosts of the Precursors" or "Star Control: Origins" cannot be used, each game could still come out with a new name.
  • If the much more likely scenario that one game copies elements of another, it's by definition a Copyright issue. And yes, a game could be halted.
After that, we're getting into speculation. The most important thing to keep in mind here -- there's enough legal ambiguity here that many things are uncertain, and quite a few are near toss-ups.

Even if someone registers the Trademarks to "Spathi" or "Orz", they're going to have to navigate some thorny Copyright issues if they copy more than just a name. While it's technically true that a name can't be protected by Copyright, there are tons of characters that have enjoyed Copyright protection, and every character usually has a name. The amount you'd need to copy to be infringing is where the courts would have to get involved, and either way, having "Orz" or "Spathi" in Stardock's game is far from smooth sailing.

One of the first things that a court looks for in copyright infringement is actual evidence of copying. That's normally hard, because how do you really know that one artist was trying to copy another artist? Usually you have to allege that the copier was a fan or plagiarist, which is usually followed by a denial in your typical case. This is not a typical case. You have actual definitive evidence of copying, including the CEO of a company saying over and over that he's actively copying someone else's copyright, with plans to change just enough to avoid infringing. That's going to raise the judge's eyebrow right away. At a minimum, the judge has evidence that one guy is copying another, if only partially.

It only leaves the question if there's enough copying to infringe copyright. And the legal test is substantial similarity.

https://en.wikipedia.org/wiki/Substantial_similarity

Just my opinion, at this point. You might get away with copying big-eyed aliens in saucers. Or blue spacewomen. Or even both. But once you start copying multiple aliens, their ships, their weapons, and major pieces of their backstory, you're probably going to be infringing copyright. It only marginally helps if you change their uniform from blue to grey. And even though you can't copyright a name by itself, the court will for sure pay attention if the name is one of several character elements that you decided to copy, even if you decided to leave out other elements to avoid infringing.
« Last Edit: April 20, 2018, 05:19:48 am by rosepatel » Logged
Elestan
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Re: My take on Stardock
« Reply #592 on: April 20, 2018, 05:33:35 am »

Okay, I've read through Stardock's counterclaim response.  A lot of it is pro-forma denials without explanation, but there are a few informative bits.  Again, the usual caveats apply; I'm not a lawyer, etc.

First, I think the biggest thing that stands out is that Stardock is taking full advantage of the fact that P&F did not register their copyright in a timely fashion.  Because they waited more than five years, they've lost the automatic presumption that their copyright covers what they say it covers.  So Stardock is refusing to concede that P&F have the copyright to anything, in order to force them to prove their authorship of every creative element that they want to claim the copyright on.  These denials are all over their filing.

On that topic, it's also worth looking at Stardock's 13th defense, which notes that you can't (counter)sue on a copyright until you have the copyright registered, so P&F need to register their copyrights before suing.  Paul and Fred filed their registration on Dec 12, 2017, and filed their suit on Feb 22, 2018.  For any work done by others, they can get (and presumably have gotten, in many cases) copyright assignments, but there may be an ordering issue here; ideally, they would have gotten all of the copyright assignments before Dec 12, so that they had the undisputed right to everything (except perhaps the music) before they registered, and before they sued.  If the assignments came in after either of those dates, I would guess that it could create at least technical difficulties for them, but I don't know whether those would be minor, curable ones, or major ones.

The main effect of this, it seems to me, is that it allows Stardock to tie up the copyright claims in a very expensive tangle of process.  I suspect that in the end, most or all of the copyrights (save for the music) will be established as belonging to P&F, but it's probably not going to be quick or cheap for them to do so, and it's going to rely on them producing their notebooks, sketches, etc., and getting all of the assignments from other contributors in order.

As an aside, I'd be curious to know why courts tolerate litigants filing such terse documents.  It seems like the normal strategy is to reveal as little of your legal argument as possible, for as long as possible...which makes sense if you can do it, but if I were mediating a dispute, I would try to force both sides to be as forthcoming as possible at all stages, rather than hiding their cards.

As for other tidbits of note:

In #26, Stardock is making an issue of the fact that P&F's copy of Amendment 1 to the 1988 agreement is not signed.  I presume that Stardock should have gotten a copy of the signed document from Atari's auction, which P&F could demand in discovery.  If not, I'm not sure what the next option would be.  Maybe a deposition from some ex-Accolade exec as to the intent of the agreement?

In #43, they make a particularly broad denial of P&F's IP ownership:
Quote from: #43
Stardock [...] denies any suggestion or assertion that Reiche and Ford own any intellectual property in the foresaid defined Reiche and Ford’s Star Control Games

This seems like an unexpectedly broad claim to me, even in the midst of all the rest, because sounds like they're positively asserting that P&F don't have any IP in the games, which goes beyond saying that P&F haven't proven that they have any such IP.  I'm not sure if I'm just misreading it, or if they've got some other basis for this.

I also notice an interesting statement and a turn of phrase in #44 (emphasis added):
Quote from: #44
Stardock denies Reiche’s and Ford’s suggested possession and ownership of Star Control, Star Control II, including The Ur-Quan Masters, and Reiche’s Preexisting Characters used in Star Control 3. Stardock admits that the Classic Star Control Games have become popular over the last couple of decades in the video game community and have acquired a reputation and goodwill among the purchasing public.

So they first deny that P&F own "The Ur-Quan Masters" (presumably referring to the open source project).  There's certainly some complexity here; the copyright on an open-source project is owned by the contributors, but nobody really "owns" the project as a whole.  The relevant question here is if there are common-law trademarks in a open-source project, who owns them?  Coupled with their attempt here to tie goodwill to purchasing...it makes me wonder if part of their strategy for dealing with UQM is to say that since it's not purchased, and has no clear owner, it doesn't count as use in commerce, and therefore cannot affect their common-law trademark claims on the alien races.

In #53, #56, and #57, Stardock insists that that the Atari sale sold more than just SC3.  #57, in particular, seems to be implying that Atari passed on some kind of rights to the earlier games.  They might just be talking about the trademark here, but I don't know:
Quote from: #57
Stardock denies the allegation that Atari did not purport to sell, nor did it even own or have the right to sell, any rights to the alleged Reiche and Ford’s Star Control Games to Stardock, including Reiche’s Preexisting Characters used in Star Control 3. Stardock lacks knowledge or information sufficient to form a belief about the truth of any and all other allegations asserted in Paragraph 57 of the Counterclaim, and on that basis denies such allegations.

In #58 (and others), Stardock's narrative regarding Brad's statements about P&F's copyrights/ownership is that he thought that P&F owned the copyright, but that they have since changed their mind (presumably because of the burden of proof due to the delayed registration).

In #68, they deny that Brad was misleading in his ArsTechnica interview.  As noted earlier in this thread, I think he was (though P&F's #68 is a bit misleading as well), but I guess we'll see what the court says about it.

Finally, they make one other defense that's worth noting:
Quote from: Affirmative Defense #11
Defendants’ claims are barred, in whole or in part, because Stardock had a license to use the claimed copyrights and/or trademark rights.

Aside from the fact the they're denying the validity of P&F's copyright, here they're further claiming that they had a license, but I'm not sure what their basis for that is.  Are they still claiming the 1988 license is live, or are they relying on the GoG agreement, or is there something else?

As for what to look forward to next, I would imagine that P&F's lawyers are preparing an amended countercomplaint, to take into account Stardock's responses.
« Last Edit: April 20, 2018, 05:13:10 pm by Elestan » Logged
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Re: My take on Stardock
« Reply #593 on: April 20, 2018, 05:33:55 am »

Okay, now for the follow-up conversations:

Stardock acquired both the trademark and the copyright to Star Control 3 in which Accolade is listed as the sole author.  That is all of the IP that existed as far as the federal court is concerned.

It seems like the analysis on the assignment-in-gross test is post-facto, though.  So it doesn't matter what was registered or not at the time of the sale, what matters is whether the sale ended up including enough IP to continue the product line.  I would agree that if you had clear title to all the Star Control 3 copyright, that would allow you to continue the product line, but P&F do have IP claims on the Star Control 3 elements derived from SC2 that will need to be litigated.  I would also just observe that it would be a sad irony if Stardock's claims ended up resting on a flop of a game whose continuity you (and Paul and Fred) have disavowed.

Quote
The examples you provided above are not applicable here anyway as the rationale is to prevent someone from acquiring a trademark to use for something unrelated.   But consider the implications of your argument, it would make the case that Stardock absolutely must include all the aliens. You said earlier you didn’t want this but now argue, in effect, not having them would weaken our claim.

The thing about trying to argue honestly is that the arguments don't always lead where you want.  If it turns out that Stardock both can use the aliens without infringing Paul's copyright, and must use the aliens to avoid losing its trademark, then I won't hold its use of the aliens against it.  But I suspect that one of those two things will turn out to be false.

Quote
The new Star Control game certainly fits into the various uses that the Star Control games of the past. A ScI Fi video game developed by the people who own both the trademark and copyright.

To my mind, the question is to what extent the RPG aspects - the setting and story - are essential to "Star Control".  I am assuming that Paul will be able to prove that he owns the copyright on the setting and story.  If those elements are essential to "Star Control", that would make it more likely that a trademark assignment could be invalidated.  If not, then the trademark is probably safe from this line of attack.

I really wish Elestan would just hire an actual IP attorney to walk him through this...
I'd love to, but most of us aren't wealthy enough to casually hire attorneys for the legal questions we take an interest in.
« Last Edit: April 20, 2018, 03:28:52 pm by Elestan » Logged
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Re: My take on Stardock
« Reply #594 on: April 20, 2018, 05:34:20 am »

1. Agreeing not to use the trademark "in any way at all" is pretty clear.  If you put up the name Star Control(R) you are, by definition, using it in its trademark form.  That's not even fair use.

Google fails me on this point; can you provide a citation?  I would have thought that the (R) just means that you're recognizing that the term has a trademark on it, which would be orthogonal to whether your use of the trademark was fair or not.

Quote
But even if it was, they were still barred from using the trademark "in any way at all".  I've written enough licensing agreements over the years to know why that language was put in.  *I* personally wouldn't do that sort of thing but I am familiar with it.  But they signed it.

Here, I agree with you; if the language in that section was still binding on them, they should not have used the words "Star Control" in any way.  However, if the 1988 agreement was not transferred, then even the clauses that survive the end of the term would be void (see below).

Quote
2. The 1988 agreement was explicitly transferred to us.  Again, very basic contract law.  Agreements have terms.  Some things survive, some things don't.  We've done a lot of licensing agreements over the years.  This is really basic stuff.  The 1988 agreement was one of the items transferred as part of the acquisition.   This isn't being disputed.  What is being disputed is whether the sales and licensing terms have expired or not.

Actually, the transfer is being disputed.  See P&F countercomplaint #18, referencing the 1988 agreement, paragraph 12.1, which (to my reading) requires Paul's written permission before assigning the agreement.  So far, I haven't seen seen a document granting such permission in the exhibits.

Quote
6. The trademark has been in use, continuously, in commerce, for over 28 years.

There appears to have been a gap of about 10 years, from 2001 - 2011, where only the UQM project was using them.  Or are you counting the UQM project's use?

Paul's position on the trademarks.  Hence, the sales on GOG would be Atari's use of the trademark in commerce, not Paul and Fred's.  Which were legally transferred to Stardock.

I'll note that your counterclaim response says you changed your mind about Paul's copyright rights.  The same could certainly happen regarding his opinion of your trademark.  With that said, I don't know enough trademark law to be sure of what happens if you stop using a trademark for a long time, and then start up again.  From a bit of research, I suspect that the "Star Control" mark would probably revive, because it was registered and nobody else had started using it.  But any other marks, for "The Ur-Quan Masters" and the race names were not registered, were not denoted with (TM), and were in uncontested use by the UQM project during that gap.  I think (again, not a lawyer) that this poses a problem to Stardock trying to come back and say that it still controls those marks.
« Last Edit: April 20, 2018, 03:32:02 pm by Elestan » Logged
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Re: My take on Stardock
« Reply #595 on: April 20, 2018, 06:44:34 am »

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6. The trademark has been in use, continuously, in commerce, for over 28 years.

There appears to have been a gap of about 10 years, from 2001 - 2011, where only the UQM project was using them.  Or are you counting the UQM project's use?
Pretty sure he was talking specifically about the "Star Control" trademark there, which the UQM project wasn't using.
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Re: My take on Stardock
« Reply #596 on: April 20, 2018, 09:16:26 am »

Paul's position on the trademarks.  Hence, the sales on GOG would be Atari's use of the trademark in commerce, not Paul and Fred's.  Which were legally transferred to Stardock.

I'll note that your counterclaim response says you changed your mind about Paul's copyright rights.  The same could certainly happen regarding his opinion of your trademark.  With that said, I don't know enough trademark law to be sure of what happens if you stop using a trademark for a long time, and then start up again.  From a bit of research, I suspect that the "Star Control" mark would probably revive, because it was registered and nobody else had started using it.  But any other marks, for "The Ur-Quan Masters" and the race names, were not registered, were not denoted with (TM), and were in uncontested use by the UQM project during that gap.  I think (again, not a lawyer) that this poses a problem to Stardock trying to come back and say that it still controls those marks.
The GOG contract is a different contract from the 1988 agreement, and does not revive the clauses of the 1988 agreement that have expired.
(IMHO, as a non-lawyer, and I saw nothing in the GOG agreements and the 1988 agreement and its addendums that hint at reviving the ended clauses of the 1988 agreement.)

I personally am of the opinion, that the trademark "Star Control" is a derivative IP of the the game, but then the 1988 agreement specifically mentions that Accolade can use the trademark for other uses once the agreement has lapsed.  (As mentioned before by other posters, haven't checked it myself by reading.)


But the cited passage of "Developer understands and agrees that it may not use the trademarks of Publisher in any way without permission of Publisher." (point 11.5, 3rd sentence) is extremely clear, and as contract law can even limit the "fair use" usage. Again up to a judge if "fair use" stands above the contract, or whether this clause does limit "fair use" availability to Developer, but this requirement has definitely not been met when GotP was announced.


Is a timetable known, or is the court waiting for the back and forth of letters to end?
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Re: My take on Stardock
« Reply #597 on: April 20, 2018, 09:47:41 am »

Is a timetable known, or is the court waiting for the back and forth of letters to end?

The settlement conference is on May 14, 2018. Odds aren't high, but things could end right there. The actual court case is set to take place during June 2019. So this unpleasant dispute is probably going to be up in the air for a while.
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Denning
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Re: My take on Stardock
« Reply #598 on: April 20, 2018, 10:15:19 am »

5. We return to the assignment in gross doctrine. No rights to Star Control IP of any kind besides the bare mark --> Star Control trademark severed from goodwill --> purported assignment of the Star Control trademark was a nullity.

Careful; you're losing the caveats I had attached when I brought that rule up.  We do not know how much weight that precedent has in this case; that's where a real lawyer who knows the case law in detail is needed.

Well, assignment in gross is not a precedent, it is a doctrine that is codified in statute. It flows from the fact that trademark doesn't exist independently from the associated line of business it represents. The leading Ninth Circuit case:
 “[T]he law is well settled that there are no rights in a trademark alone and that no rights can be transferred apart from the business with which the mark has been associated.” Mister Donut of America, Inc. v. Mr. Donut, Inc., 418 F.2d 838, 842 (9th Cir.1969). An exhaustive and authoritative treatment of assignment in gross can be found at § 34 of the Third Restatement of Unfair Competition. The purpose of derogating from trademark rights in this way is consumer protection: it's a fraud on the market for an assignee to do a bait and switch with a bare mark. As you assert, the rule of thumb is that if the assignee's business/products are not substantially similar to the assignor's, then the trademark assignment is void.

McCarthy's opinion is that you can't get goodwill/substantial similarity in a literary work without the associated copyright. When you phrase it this way, it's trivial: how does it lie in Stardock's mouth to say that it is not engaging in "substantially similar" reproduction of the copyrights held by PRFF (or the inchoate individual creators per Stardock's latest reply) while still arguing that it can create a "substantially similar" product to the one last marketed under the Star Control mark?

Nintendo and Universal Studios fought about this in the 80s -  Universal City Studios, Inc. v. Nintendo Co., Ltd., 797 F.2d 70. Universal said that Donkey Kong sounded too much like their King Kong trademark and was confusing people. Nintendo clapped back that Universal been assigned the King Kong trademark in gross (and thus never had it) because various third parties kept the copyrights to the only other extant visual images of King Kong (RKO Radio Pictures held copyrights to the 1933 film, Dino De Laurentis Productions had copyrights to the 1975 remake). Quoting from the appeal:

"The existence of the legally protected RKO and DDL King Kong images meant that the public could not possibly associate some undefined third King Kong image and distinguish it from these other sources. In this regard it is noteworthy that Universal never created another image of King Kong."

Now Stardock could argue that Universal is distinguishable insofar as Stardock does have copyright to an ersatz Frankenstein version of Star Control 3, though who knows what is left after you strip out everything licensed from PRFF (or as Stardock now claims, the inchoate individual creators.) Given how parasitic 3 is on 2's IP, that seems like more bad bootstrapping to me.

One might also argue that substantial similarity in a game is really just about a kind of mechanical/thematic congruence, or that the consumer protection policy of the assignment in gross doctrine is not engaged by computer games given how mutable and iterative they are. In my opinion those are just-so arguments that treat the normative connection to the underlying goodwill too frivolously.
« Last Edit: April 20, 2018, 10:42:33 am by Denning » Logged
Ariloulawleelay
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Re: My take on Stardock
« Reply #599 on: April 20, 2018, 02:29:41 pm »

It was not my intention to return to this place. I had said my piece, and I am not subject to any compulsion which would require me to correct every incorrect statement I read on the Internet.

Yet twice I have been drawn back, both times to prepare rejoinders to a fake lawyer1 who promoted untenable theories about civics and who should be permitted to say what in this forum. Twice I gave myself a cooling-off period before posting, only to find that a moderator had *jumped in front*. Nnnnggaaahhhhh indeed!

Instead, I offer the following mental exercise, especially for those who have come to "hand their support" to one side or the other:

  • Close your eyes.
  • Imagine that you have been transported to a different reality, one where each of your hated Other's most twisted arguments has been eminently reasonable all along, his actions in this matter always rational.
  • Smile, it is healthy for you.
  • Consider: what event strands must have unfolded differently here, in this alternative reality?
  • Open your eyes. Do you have the evidence to prove which reality you are in?

I imagine that for most of us, our answers will be very few and no. There are many close issues here, legal points which I could see going either way. (That is part of what makes this case so interesting to me.) And there is little I can say that I know for certain about the facts.

I am not alone in this inability to see the future. Remember that all parties to Stardock v. Reiche have had the counsel of experienced IP attorneys since before the lawsuit was filed. The parties have long been aware of the potential legal issues here.2 And yet, the parties' lawyers have advised their clients to take conflicting courses of action and continue to disagree about both the law and the eventual outcome of this case.

Should the parties fail to settle, both sides will be able to approach the Court with sensible, well-grounded motions for summary judgment.

*  *  *

I write all this as the preface to a request. If you have come here to prove to us with certainty as to how the Court will rule on any particular issue; if you have come here in an attempt to persuade anyone (let alone a represented party) that his position is wrong because you have this all figured out: please, rethink your posture. You are doing the lawyers' job. Do not presume that you can decide what is what for anyone but yourself or you will be ... disappointed.

Even worse, in this case, the parties have requested that any lingering dispute about the facts be resolved by a jury. So, even if one had direct mental access to four Supreme Court justices and an omniscient understanding of what actually happened, one would still be unequipped to confidently predict the outcome of this litigation.

*  *  *

That said, I do not consider this thread to be entirely futile. We are not trying to predetermine (or change) the outcome of the case.

Maybe this only goes to my own incompetence, but I often find myself coming up with bulletproof legal arguments in my head ... and then I try writing them down. Holes everywhere. Nothing helps me truly understand an argument like putting pen to paper (or the more modern equivalent). Perhaps some of those posting here are similarly afflicted.

And given that the arguments in this case may affect the future of the franchise and could threaten UQM's very existence, it is certainly appropriate that we have a venue here where those of us who care have a chance to flesh out our understanding of what is happening behind closed doors.

Of course, to have any meaningful discussion of this case, we need to take certain legal conclusions for granted. Will IP law even apply? Maybe the whole matter is better resolved by contract law alone? But if we find IP law interesting, and that's what we want to discuss, inconvenient questions like those can be safely ignored for the time being. I think that there is a big difference between being wrong on some issues and not being right just yet.

However, final legal conclusions are like *Nnngn* - without the benefit of knowing the material facts, humans are not quite solid enough to touch them. Let alone capture and understand them. We must be careful to remember that when we make assumptions about hypothetical facts and laws in order to better understand the case, we will have to wait to see if the real facts and real laws actually exist before trying to apply anything to the case at hand.

Well, assignment in gross is not a precedent, it is a doctrine that is codified in statute. It flows from the fact that trademark doesn't exist independently from the associated line of business it represents.

For example, consider the recent discussion of assignments in gross. I was initially quite skeptical of the relevance of the whole idea. Financial condition aside, Stardock was in as good a position to create a new "Star Control" game the day after the assignment as Atari was the day before the assignment. But the more I let this bounce around in my head, the more I wonder: maybe if P&F's conversion claim gains traction, and maybe if there is some sort of lingering § 365(c) issue in Atari's bankruptcy, could there be something there? It's all so speculative, though. But I'll bite: could you point me to the relevant statute? (Keeping in mind, of course, Frogboy's earlier point that in the American common law system, statutes are analogous to pseudo-code, whereas case law and precedent is what actually complies in the courtroom.) (Also, a minor point really directed at everyone: the operation of trademarks is not a matter of fact, it is a matter of law.)

In the meantime, I do not know that it accomplishes anything to try to ambush Frogboy with allegations about this, unless the goal is to drive off a member of our community who has been very generous with his time and attention in what some would deem a hostile environment. You flail at the wind - his position will not change. He has been invaluable in developing our understanding of the contours of Stardock's legal position, and he has chosen to give us a much broader view of the underlying facts. And he is already spending enough time in my colleagues' special chair without being challenged to defend every sentence of every comment he makes here.

---

Footnotes!

[1] A conclusion I reached exclusively based upon my reading of posts made in this topic. Nothing here should be read to impugn Frogboy's longtime correspondent, who goes by the handle "eride" in Stardock's forums and may well be a U.S.-trained attorney.

[2] See generally Stardock Highest Bidder on Star Control Trademark (a July 2013 thread featuring: (i) speculation that Stardock did not understand how limited "Accolade's publishing rights" were; (ii) Frogboy's debut in the UQM forums; and (iii) Elestan asking for an IP lawyer to explain the trademark abandonment issue).
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