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Q+A regarding Star Control and Paul and Fred

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Q+A regarding Star Control and Paul and Fred

from StarControl Forums

Given the ongoing discussion of the legal dispute between Stardock and Paul Reiche and Fred Ford, designers of Star Control I and II, I wanted to take time to make Stardock's position clear and address inaccuracies that have been promoted.

As the need arises, I’ll continue to update this post with additional questions and answers.

Q: What are the issues in dispute?

A: On the eve of launch of the beta of Star Control: Origins in October 2017, a game Stardock has spent the past four years working on, Paul Reiche III and Fred Ford, the designers of Star Control II for Accolade 25 years ago announced a new game, Ghosts of the Precursors as a “direct” sequel to Star Control even going so far as to promote it as Star Control: Ghosts of the Precursors.

They did this despite knowing Stardock had acquired the Star Control IP in 2013 and knowing before hand our announcement schedule. Their actions created confusion in the market as to the origin of Star Control games which is why we have trademark laws. 

When Stardock asked that they cease and desist marketing their game as a sequel to Star Control they refused and began demanding that the sale of the DOS games, which had been on sale continuously since before Stardock acquired the IP and for which they had been receiving royalties for during the entire time cease and began to disparage Stardock publicly in the press. 

Despite Stardock's best efforts to reach a private, mutually beneficial co-existence agreement, Paul and Fred responded with increasingly hostile, misleading public attacks and served Steam and GOG with DMCA take-down notices on all of the classic DOS games, including Star Control 3 which they had no involvement with all while continuing to promote their new game as the "true" sequel to Star Control.

In addition, Paul Reiche and Fred Ford also began to claim that various features of Star Control: Origins violated their copyrights such as the ship designer, user interface similarities and other elements that are not subject to copyright protection (you can’t copyright an idea and Star Control itself was inspired by many other games). They also began to demand special access to Star Control: Origins to inspect it and demanded the removal of the ship designer,

As a result of their broad interpretation of what they believe they have rights to combined with their willingness to instruct their lawyers to issue a DMCA take down notices, even on titles in which they had no involvement in, combined with their refusal to cease promoting their game as the sequel to Star Control, Stardock was forced to file a complaint over their continuing trademark infringement.

In retaliation, Reiche and Ford filed a countersuit seeking to cancel the Star Control trademark and for copyright infringement due to the sale of the classic Star Control games on GOG and Steam and are even suing GOG despite the fact that Reiche and Ford were the ones who claim to have helped get the classic Star Control games onto GOG.

Q: Why did Stardock file the initial lawsuit against Paul and Fred?

A: We had no choice after Paul and Fred filed DMCA claims against the distribution not only of Star Control 1 and 2 but also Star Control 3 which they admit they had no involvement.  The DMCA claims were reversed, but it was clear that our ability to create more experiences in the Star Control multiverse for fans would be at risk if they are allowed to continue to misrepresent their new game as being associated with Star Control without a license while simultaneously making broad, unsupportable claims of ownership on ideas and concepts that are present not just in Star Control games but games in general.  

Q: How did these unfortunate events come to pass?

A: Here is a timeline of the order of events:

  1. Stardock acquires the Star Control brand, copyright to Star Control 3, the license to use the Star Control classic characters, lore and the right to distribute the classic DOS games.  The DOS games are already available on GOG  with Atari listed as the publisher. (2013)
  2. Stardock discuss plans for the new Star Control.  They state that their employment by Activision prevents them from working on a new Star Coxntrol game and request that we not use the aliens from Star Control 2 but do not contest Stardock's right to do so.  (2013)
  4. Upon learning that Activision has blocked their ability to be involved and that Paul and Fred hope to one day to continue their stories, Stardock offers to transfer its rights to Star Control to them, thus uniting the Star Control brand with Paul and Fred's licensed IP.  (2013)
  6. Paul and Fred ask what Stardock acquired from Atari to which Stardock responds: The trademark, assets to Star Control 3 and the right to sell distribute, market and promote the original trilogy.
  8. Paul acknowledges Stardock's position and asks how much it cost.
  10. Paul and Fred politely decline the offer to acquire the Star Control IP. (2013)
  11. Stardock announces a reboot of Star Control and explicitly states that it will not include the characters from the classic series out of respect for Paul and Fred. (2013)
  12. Stardock spends the next 4 years and millions of dollars developing Star Control: Origins. (2013-2017)
  13. Stardock provides Paul and Fred regular updates on progress including video of pre-alpha footage, design notes, screenshots.  Relations are amicable and supportive. (2013-2017)
  15. Stardock updates Paul and Fred on Star Control: Origins release schedule and begins planning its 25th anniversary which will include releasing the classic games onto more channels.  Stardock asks if there would be any interest in having SC2 ships appear in Super-Melee. The games are submitted and approved by Steam in preparation (Summer 2017).
  17. Paul and Fred contact Stardock to inform them that they will be announcing a new game that will utilize the characters from their universe.  (Fall 2017)
  19. Stardock is both pleased and concerned about the timing of their plan, points out the licensing agreement would allow Stardock to use their IP (albeit at a higher royalty than Stardock was hoping for). Stardock asks that they coordinate these announcements together ensure there is no confusion and about the games appearing competitive. (Fall 2017)   
  21. Paul and Fred state they plan to make a sequel to Star Control II which would violate Stardock's trademark rights (you can't claim your product is a sequel to another company's product).  Paul and Fred also assert that Stardock does not have a license to their IP.
  22. In the email below Paul and Fred state that each party should work within its respective rights: Stardock having the Star Control trademarks and Paul and Fred owning all the IP rights to the works they created. Note that at this point, Paul and Fred recognized that owning the registration to the Star Control trademark also includes many common law trademarks. Hence "trademarks" plural.
  24. Stardock responds stating that as far as Stardock is aware, while Paul and Fred own the IP they created, Stardock does have an active licensing agreement that controls how that IP can and can't be used.  Stardock also reiterates that it has not used this license out of respect for Paul and Fred. (October 2017)
  26. Stardock states its concern at the idea of Paul and Fred representing their game as a "direct sequel", asks to schedule a call to discuss.  Note that at this point, Brad, like many, is under the impression that Paul and Fred essentially created Star Control on their own, a two-man team with licensed music was not uncommon thing back in 1992 (Stardock later re-evaluates that position after learning that the project had a large budget for 1990 and immense talent on it). (October 2017)
  27. Paul and Fred respond that they simply don't agree but provide no evidence as to why the licensing agreement would have expired. (October 2017)
  29. Stardock provides its reviewed legal position.  Stardock isn't using any IP from the classic games other than the right to market and sell them as they have been for several years.  (October 2017)
  30. Stardock points out that it has a license to the IP to use provided it pays a royalty of 10% (which is why Stardock has asked in the past for a new licensing agreement as 10% is too much for a cameo of a classic character). Stardock CEO, Brad Wardell suggests talking on the phone to iron things out. (October 2017).
  31. Email includes proposal:
  33. Paul and Fred refuse Stardock's proposal and begin to demand changes to Star Control: Origins.
  35. Paul and Fred, knowing the date Stardock was planning to announce the Fleet Battles beta, preemptively announce Ghosts of the Precursors as a direct sequel to Star Control II; use the Star Control II box (which is owned by Stardock) as the only art on the page for it; promote it to the media and to social media as the "true" sequel to Star Control.  (October)
  36. Despite having just stated that their efforts should be "separated" by each parties rights (Stardock with the trademarks) Paul and Fred almost immediately violate that understanding by using the Star Control trademarks throughout their announcement.
  38. The Star Control trademark is mentioned 4 times in the announcement, each with an (R) without mentioning Stardock leading a reasonable consumer to believe it is their mark (Ghosts of the Precursors is listed once). 
  39. Paul and Fred claim they "released" Star Control II on the same page that shows Star Control II with the Accolade mark misleading the relationship between Accolade and Paul and Fred (who, regardless of their tremendous work, were contracted by Accolade to create content that was then licensed into Accolade's product).
  40. The media follow-up by referring to it as "Star Control: Ghosts of the Precursors". (October)
  41. Paul and Fred promote the idea that it's Star Control: Ghosts of the Precursors and not its own game:
  43. The above is one example among dozens.
  44. Paul and Fred publicize coverage of their new game with each post using the Star Control mark but not a single one using the term "Ghosts of the Precursors".  Looking below, what's the name of their new game?
  46. Many posts and articles appear, endorsed by Paul and Fred that state that their new game is a "direct sequel" to Star Control.  Some refer to it as Star Control: Ghosts of the Precursors.
  47. Stardock moves forward on its 25th anniversary plans, release the beta of Star Control: Origins - Fleet Battles beta and relaunches the classic DOS games for the 25th anniversary on Steam. (October)
  48. Paul and Fred's attorney contacts Stardock's CEO.  This is the first time lawyers have been involved.  Lawyers take over. (October)
  49. Paul and Fred begin to demand that Stardock begin policing the Star Control community for fan art that they believe violates their rights (including members of this forum and on Steam). (October)
  50. Paul and Fred begin demanding the removal of features from Star Control: Origins including the ship designer (a feature that has been part of Stardock's games for over a decade). (October)
  51. Paul and Fred begin demanding insider builds of Star Control: Origins for inspection and begin insisting various broad features are their property despite having no right to do so. (October)
  52. Paul and Fred reject numerous attempts to create a co-existence agreement that would permit Ghosts of the Precursors to go forward independently.   (November)
  53. Paul and Fred insist they have the right to associate their game with Stardock's trademarks including referring to their game as the "true" sequel to Star Control. (November)
  54. Paul and Fred demand that the DOS games be removed from distribution while still providing no evidence to support their claim that the agreement had expired. (November)
  55. Paul and Fred begin to make public defamatory blog posts and tweets about Stardock. (December)
  56. Paul and Fred file DMCA notices against Steam and GOG not just for Star Control 1 and 2 but also Star Control 3 which Stardock holds the federally registered copyright for and that Paul and Fred had no involvement in. (December)
  57. Stardock's attorneys file a suit against Paul and Fred for trademark infringement and other causes of action. (December)
  58. Paul and Fred's attorney files a lawsuit against Stardock alleging copyright infringement and other causes of action. (February).
  59. Paul and Fred's PR firm releases a press release to the wire services accusing Stardock of "copyright theft" do press interviews attacking Stardock. (February)
  60. This post is initially made. (February)
  61. Paul and Fred post an email exchange they claim is between themselves and Atari, something they had not shown to Stardock and still have not provided to Stardock to evaluate. 
  62. Paul and Fred post what they claim is a Stardock settlement proposal in violation of federal rule 408. Stardock denies the accuracy. (March)
  63. Paul and Fred's PR firm targets Stardock CEO, Brad Wardell personally on Twitter for abuse with an inflammatory and completely inaccurate social media post. (March)
  65. Paul and Fred like a tweet that purports that these activities have cost Stardock up to 50% of potential sales and may lead to review bombing of the final game:  (March)
  67. To make clear that Stardock's concern is regarding the protection of its Star Control IP and not the sales of Star Control: Ur-Quan Masters, it decides that it will be suspend sales of the classic games until the dispute is resolved starting April 4. (March 2018).

Q: Don't Paul and Fred contend that the 1988 licensing agreement with Accolade has expired?

A: That is their position.  However, since the dispute began, Stardock has chosen to err on the side of caution and operate as if that is the case.   Stardock requested that GOG and Steam remove the games for sale pending a resolution.  The 1988 agreement, however, does not have anything to do with the Star Control trademarks were were always owned by Accolade and were assigned to Stardock.   

Stardock's ownership of the Star Control trademark is incontestable.  You can review the federal registration that dates back to the 1990s here.

Q: But isn't it true that Star Control: Origins has very similar gameplay to Star Control II? That you explore planets, travel through hyperspace to different star systems, meet with aliens? Couldn't their copyright of Star Control II mean that Star Control: Origins is too similar?

A: You cannot copyright an idea.  Putting aside that Star Control itself borrowed many ideas from many other games, copyright protects creative expression. Not game play.  

There are articles you can read that discuss this:

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

https://venturebeat.com/2013/03/16/defeating-mobile-game-clones-why-copyright-protection-is-not-enough/ 

https://gamedev.stackexchange.com/questions/11752/is-it-legally-possible-to-make-a-clone-of-the-game 

Obviously, anyone who has ever played Angry Birds or Candy Crunch already knows this.

That said, Star Control: Origins is not a clone of Star Control II.  The 25-year gap in game technology allows Star Control: Origins to deliver a much richer experience.  So while the core concepts remain true: You are the captain of a starship traveling through this part of the galaxy, meeting aliens, engaging in battles, exploring planets, the implementation is very different.

In short: Gameplay clones aren't illegal and even if it were illegal, Star Control: Origins is not a clone. 

 

Q: Why does Stardock claim that Paul and Fred were not the creators of Star Control?

A: Paul and Fred were the designers of Star Control I and II.  In the credits, on the box and elsewhere they had previously officially listed themselves as either developers or designers.  

While Stardock has no objection to “creators” in the casual sense, legally, and when trying to promote a product in commerce, they are not. Most of the Copyrighted material people think of as being important to Star Control was created and owned by others. 

For 25 years, Designer was their official designation.   

It is Stardock's opinion that they have begun to focus on referring to themselves as "creators" in their marketing in order to give the impression that Ghosts of the Precursors would have the the same creative core as Star Control II.   This is not the case.

What most people do not realize is Star Control II had, in essence, the dream Sci-Fi team as mentioned in this 25th anniversary tribute. The lead animator went on to lead the animation at Pixar and is the director of the Minions movies.  Many of the alien designs were created by the artist who went on to design Darth Maul and other Star Wars and Marvel movie characters.  Many of the most quoted lines came from seasoned Sci-Fi writers.  The engaging music was created by others.

We respect Paul and Fred’s crucial contributions as well as the rest of the talented team who worked on Star Control.  

Q: Who owns the Star Control trademark?

A: Stardock is the legal owner of the federally registered trademark for Star Control.  You can view it here. https://www.trademarkia.com/star-control-75095591.html 

Q: What does Stardock want out of this lawsuit?  

A:  Our ONLY goal is to protect our ability to tell more stories in the Star Control multiverse.  We remain fans of Paul and Fred and their contributions to Star Control.  However, given the confusion they’ve created in the market by promoting their new game as a “true sequel” to Star Control II combined with their abuse of the DMCA system to take down even Star Control games they had no involvement with, we are forced to act to prevent them from continuing to create confusion.   

Consider some of your favorite games or movies. Now imagine if someone instrumental to the development of that game or movie went on to claim to be making a sequel to that game or movie without the consent of the owners of that trademark? What would be the result?

Q: But doesn't Paul and Fred own all the in-game IP?

A: Paul and Fred own whatever IP they created.  What that is remains to be seen. Stardock does not claim to own any copyrighted material within Star Control II which is why the new Star Control: Origins is set in its own universe with its own characters and story.

However, as of April 2018, neither Paul or Fred had any rights to any of the art and much of the writing in Star Control II. However, even if they did, it would be irrelevant as Stardock isn't using any copyrighted material from Star Control 1, 2, or 3 in the new Star Control games.

On the trademark side, simply because you were contracted to work on a game does not grant you the right to make a new game and claim it is related regardless of what copyrights you think you may own (otherwise, you could argue that Unity and Epic could start to make sequels to other people's games).

For example, Paul Reiche is the President of an Activision studio.  Blizzard is another Activision studio.  Stardock was once contracted to develop a StarCraft expansion (StarCraft: Retribution). One can imagine the response Stardock would receive it it were to announce a new game as a "direct sequel" to StarCraft: Retribution.

By contrast, not only did Paul and Fred announce their new game as a "direct" and later "true" sequel to Star Control, they even used the Star Control II box, that was acquired by Stardock, to promote it.

As much as we respect Paul and Fred, the fact is, Paul Reiche was contracted as an independent contractor (not as a company) by Accolade to develop Star Control for Accolade.  This is a fairly routine method that developers get products made (Stardock's own Fences, WindowBlinds, Groupy, IconPackager, etc. were developed using the same method).

Q: Do these legal issues have any impact on Star Control: Origins?

A: UPDATE:

Apparently yes.  Despite Star Control: Origins having nothing to do with Reiche and Ford's games, they have filed DMCA take down notices to Steam and GOG to take down Star Control: Origins.  They claim (with not specificity) that they own copyrights in Star Control: Origins

Game sites don't make legal judgments on the merits.  They simply remove the content.  No one, to our knowledge, has ever tried to do this on a shipping game before.  

You can read our response here.

 

Q: Why did Stardock trademark Ur-Quan Masters, Super Melee, and other names from the original games? 

A: Once Paul and Fred began to challenge the validity of our intellectual property we were forced to take steps to solidify our common law rights. Specifically, Paul and Fred have worked to try to separate Stardock's Star Control mark from its association with the classic games.  

The reason companies were bidding to acquire the Star Control trademarks and willing to pay $300,000 for it was for the association with the classic series.  The trademarks, being in active use in connection with the beloved classic series, made it valuable.  

When Paul and Fred began to seek to cancel the Star Control mark and make public statements that Star Control: Origins isn't related to the classic series Stardock felt obligated to respond by reinforcing its intellectual property rights to the classic series.  

As background: Stardock always had the common law trademark to Ur-Quan Masters. It's the sub-title to Star Control II after all and was, by Paul and Fred's admission, available in commerce on GOG even before Stardock was involved. Super-Melee is literally a promoted feature from Star Control. The alien names are so strongly associated with Star Control that if you Google Star Control aliens they come up as the first entry.  

They have made it very clear that they believe that they have the right to associate their new game with Star Control on the basis that they have previously licensed content to Star Control games. They have no such right.

Q: Why did Stardock really need to trademark the Star Control 2 alien names?

A: Star Control fans expect new Star Control games to have the Spathi, Ur-Quan, Orz, etc.   We originally chose not to include them in Star Control: Origins in deference to Paul and Fred who asked us not to.  

However, in December 2017, Paul and Fred posted:

This creates confusion because Stardock alone owns the Star Control universe. That doesn’t mean it owns any lore or stories created by others. It just means that Stardock has the right to determine what is canon in the Star Control universe.  

The Star Control aliens are associated with Star Control. That doesn’t mean Stardock can use expressions and stories of those aliens without permission. But it does mean Stardock has the right to create its own stories and expressions for the Ur-Quan, Spathi, etc.

When Paul and Fred were contracted to develop Star Control I and Star Control II for Accolade, they were allowed to keep certain copyrights to the works they created. But all trademarks were explicitly defined as being owned by Accolade. 

Incidentally, their name was put into a diagram because they literally announced their game as a sequel to Star Control II.  They associated their new game with Star Control, not the other way around.

Q: Is Stardock trying to prevent Paul and Fred from making new games in their universe?

A: No.  Stardock wants them to create new games in the universe they created.  However, this needs to be handled in such a way that there is no confusion as to the relationship between Star Control and the works they licensed for Star Control II.

Q: If Stardock wants a new game from Paul and Fred, why did the settlement offer that Paul and Fred publicly posted that they claim came from Stardock demand that they "surrender" their IP?

A: It is regrettable that Paul and Fred chose to violate confidentiality and post, without context, a settlement offer.  Paul and Fred have been offered many settlement proposals with many different terms and are intended for negotiation by both parties to try to reach an amicable settlement.

Stardock paid over $300,000 for the Star acontrol IP which included the trademark and copyright to Star a Control 3. The Star Control brand is, in our view, far more valuable than any copyrighted material within a 25 year old DOS game. Source code and alien art. Nothing else, as far as we can discern, falls under copyright protection. You can’t copyright “lore” or timelines, or alien names, or game designs or UI.  

Thus, all we would gain would be the ability to have Ur-Quan that look just like the old Ur-Quan and space ships that look like the classic space ships. The greater value would be to make sure this kind of dispute didn’t happen again. But that value would still not overcome the damage they’ve caused in the market place due to the confusion on who owns Star Control and the ill will due to their PR company issuing false and misleading press releases and publicizing the dispute in a way to maximize ill will. Not to mention the considerable and rising legal costs.

None of this would prevent Paul and Fred from making a new game if that really is their desire. Stardock, in turn, would have been happy to license, free of charge, any IP they needed to make their new game.

Our respect for the work Paul and Fred did 25 years ago remains undiminished.  However, that respect does not give them the right to disrupt our product development at the 11th hour or misrepresent their new endeavors as the "true" sequel to our products.

Our dedication to bringing you a new Star Control game remains unchanged.  BETA 2 of Star Control: Origins is due in a few weeks.

For those interested in reading the details, our complete initial filing available online:

https://www.documentcloud.org/documents/4385277-Stardock-Legal-Complaint-2635-000-P-2017-12-08-1.html

Stardock 25th anniversary post documenting the creation of Star Control:

https://www.stardock.com/games/article/485810/star-control-ii-25th-anniversary---on-the-shoulders-of-giants  

 


Thank you for being fans of Star Control, and supporting our effort to make a great new game in the Star Control franchise.

And if you have questions that you’d like to see added to this post, feel free to reach out to me directly via Twitter at @kevinunangst

Kevin Unangst

Vice President, Marketing and Strategic Partnerships

Stardock Entertainment

1,790,254 views 728 replies
Reply #276 from StarControl Forums Top

Here's my position.  Stardock's stance upon how to interpret Trademark law is confusing on a few different levels.  Taking a look at the Lanham act that presently rules over trademark law, under the Recovery section  ( https://www.bitlaw.com/source/15usc/1117.html ), everything seems to be solely orientated over the misused of the mark itself and it's use to misrepresent the origin of goods and services.  Even the basic literature from the USPTO has examples of what it considers conflicting marks and it solely is about the mark itself:  https://www.uspto.gov/sites/default/files/documents/BasicFacts.pdf

The only place I see where Stardock can derive its interpretation of trademark is here: https://www.bitlaw.com/source/15usc/1125.html  But, given the context of the rest of the act, this is a restating of components that can compromise of a trademark by the USPTO definition of what a trademark can be.  So, most interpret this as to using these components of the marks upon a product.  This is reinforced by 1117, above, the only way to recover damages is by showing an counterfeit or illegitimate mark itself was used to misrepresent the origin of a good or service.

Because if Stardock's interpretation of Trademark law is valid and has been...  Then Atari could have NUKED The Ur-Quan Masters project by using the same logic and interpretations.  Because by Stardock's logic, The Ur-Quan Masters infringed and presently infringes upon the "Star Control" trademark.

This is why I question Stardock's demonstrated understanding of trademark, because if this interpretation of the trademark law was and is valid...  It would have been used a few times over to annihilate a number of projects and definitely quash parodies normally protected under copyright exceptions.  (Because Trademark Parody defense never succeeds from current precedence, so such logic would allow that to be used shut down parodies.)  This is why people are trying to find what drives this interpretation of the trademark law, because it is strange and quite dangerous for many industries.  For example, PlayerUnknown's Battle Grounds developers are trying to use every component of IP law to shutdown down its competitors, such an interpretation could be useful to them at the frustration of bigger companies like Epic.

And given the number of trademark filings for the race names, I question their validity due lacking the requirements to be trademarks because of not ever being used as trademarks and a particular article of the Lanham Act (1052(e)):  https://www.bitlaw.com/source/15usc/1052.html  Race names could be just merely descriptive.  Overall, I can't help shaking this feeling this use of trademark law is an extreme extension and warping that aims to supersede and bypass Copyright Law.  Hence, if Stardock's legal team has court case examples of this type of interpretation being used...  We'd all love to see them.  Of course, nothing to be used directly for official defense.  But, Stardock already has IP lawyers, hence they should have run into a few not-as-relevant examples during their case search that roughly demonstrate the possible concept and can be shown.

Reply #277 from StarControl Forums Top

UQM isn't engaging in commerce, therefore the confusion issue doesn't come into play. There are two components to trademark law, confusion and engaging in commerce. Both need to be fulfilled for trademark infringement to kick in. If Stardock ever did find UQM to be engaged in commerce, then UQM is SOL and would be dead.

Parody explicitly does not cause confusion. That's why it gets away with it. If something is not sufficiently parodic to avoid confusion, trademark law can still be used to squash it.

Fences - Organize your desktop icons today!
Reply #278 from Stardock.net Forums Top

Quoting zwabbit, reply 277

UQM isn't engaging in commerce, therefore the confusion issue doesn't come into play. There are two components to trademark law, confusion and engaging in commerce. Both need to be fulfilled for trademark infringement to kick in. If Stardock ever did find UQM to be engaged in commerce, then UQM is SOL and would be dead.

Parody explicitly does not cause confusion. That's why it gets away with it. If something is not sufficiently parodic to avoid confusion, trademark law can still be used to squash it.

 

Fan projects get C&D letters all the time, on what grounds are they being sent if said fan project never engages in commerce? 

Reply #279 from StarControl Forums Top

Depends on the C&D. And being a fan project does not automatically mean it's not engaging in commerce, and also doesn't mean they can't have done something else that trips some other IP claim of the IP owner. It could be copyright, it could be trademark, the situation varies. In trademark situations, some IP owners are more forgiving in what they define as "engaging in commerce" than others. Some IP owners actually also respect the concept of fair use more than others. But in most situations fan projects exist at the sufferance of the original IP owners, because they don't have the resources to defend themselves in court. UQM has ultimately been very lucky that Star Control's IP owners have been friendly to their cause and elected to treat their current and past behavior as not engaging in commerce so the confusion issue doesn't force them to take legal action. If in the future that situation changes, UQM's screwed unless it can muster the financial resources to beat off a challenge in court.

Reply #280 from StarControl Forums Top

Quoting zwabbit, reply 277

UQM isn't engaging in commerce, therefore the confusion issue doesn't come into play. There are two components to trademark law, confusion and engaging in commerce. Both need to be fulfilled for trademark infringement to kick in. If Stardock ever did find UQM to be engaged in commerce, then UQM is SOL and would be dead.

The Ur-Quan Masters is in the market and distributing a product.  It is engaging in commerce much the same way every other open source project does.

If trademarks can protect an open source projects, then open source projects can infringe upon trademarks.

http://fossmarks.org/

https://www.apache.org/foundation/marks/resources

https://opensource.google.com/docs/casebook/trademarks/

Commerce DOES NOT imply Commercial.  The Ur-Quan Masters is exchanging goods and services upon and international market by distributing the The Ur-Quan Masters product.  The exact definition is debated, but for the most part commerce is trade.  The Ur-Quan Masters trades freely a product to the masses that could be defined as a service, too.  They are engaged in commerce, the same way every other open source products do.

Reply #281 from StarControl Forums Top

Correct, open source projects can infringe upon trademarks. Correct, open source projects can engage in commerce. Correct, commerce does not automatically equate with commercial. Incorrect, UQM's activities does not necessarily constitute an exchange of services. By the way it is structured, it is designed to not receive anything in return for what it distributes, and its continued existence is contingent on this remaining true. If it could be demonstrated to the satisfaction of the courts that the flow was two way, that there was/is some sort of exchange going on that falls within the realm of commerce, then Stardock would have to either shut UQM down or force it to change so that it cannot be construed to be receiving anything in return for its "product" in order to defend the Star Control trademark.

UQM being open source is not the bit that matters in trademark law. Open source licenses cover copyright, not trademark. UQM's position as a fan project is what impacts its standing from a trademark perspective.

Reply #282 from StarControl Forums Top

Quoting zwabbit, reply 281
UQM's position as a fan project is what impacts its standing from a trademark perspective.

Incorrect.  Fan project means absolutely NOTHING in law.  Period.  The project offers a good or service for the price of free.  It still is an exchange of goods and services.  Much like when someone downloads Firefox, they are receiving a product for free from the Mozilla Foundation.  Many fan projects and other such activities have been shutdown via copyright AND trademark infringement claims.  What protects The Ur-Quan Masters, by typical trademark understanding, is that it doesn't advertise or brand itself with another trademark.  The copyrights of the content of the project are managed under the right granted by open source license released with the original code by Fred and Paul.  Hence, why the project was initially released and titled as "The Ur-Quan Masters" with all branding and product markings scrubbed of "Star Control".  This labeled it's origin as separate and distinct from the "Star Control" trademark that Atari owned at the time.  This is why it has been allowed to exist.

With Stardock's proposed interpretation of trademark law, the actual contents of the product constitutes some aspect of the trademark beyond the mark itself.  By this logic, Atari could have and probably would have killed the "The Ur-Quan Masters" project, because allowance of such a project would serve as some form dilution of the trademark, extrapolating Stardock's interpretation to the rest of the statues.  This is why people are REALLY confused about this interpretation of trademark law, because if it was possible to interpret and use it this way... It would have been done so a LONG time ago.  There wouldn't be anything to discuss since Atari would have annihilated the project and used similar tactics to what Stardock is proposing to seize the rest of the Star Control IP by force.  Atari went from high and mighty to desperate, but they never attempted such a tactic when by Stardock's interpretation, they had all the rights in the world to do.

Reply #283 from StarControl Forums Top

No, the Mozilla Foundation's situation is not analogous to UQM in the least. Mozilla provides Firefox for free, yes, but it engages in a whole host of activities alongside that that generates revenue. They have a revenue sharing agreement with Google over the use of Google search from Firefox's address/search bar, to name the big one. It is not the distribution of Firefox, but the other activities that Mozilla engages in that uses its distribution of Firefox as a base that constitutes engagement in commerce. What, then, is UQM doing beyond the distribution of the game? What is it receiving in exchange from end users that go download it?

No, UQM is not protected because it "doesn't advertise or brand itself with another trademark." It is protected because the past and current trademark holders have decided it either doesn't cause confusion or isn't engaged in commerce, therefore there aren't grounds to pursue infringement claims. Nor is UQM even under attack right now, considering Brad has repeatedly stated UQM is not engaged in commerce. For that matter, the only people actually threatening UQM's legal survival at this point are those of you that want to insist that it is engaged in commerce. Why you guys keep trying to score an own goal here is literally beyond me.

UQM uses things that are associated with Stardock's trademark. That is grounds to consider the confusion question. A literal interpretation of Stardock's position would argue that, yes, confusion is possible, insomuch as the contents of UQM is suggestive of a direct link to the Star Control trademark. But that raises the other issue. Is UQM engaged in commerce. Brad, CEO of the company that actually owns the trademark, has declared no. A lot of you, for whatever reason, seem to want to insist on yes. Note that if you actually succeed in making a convincing argument that it is engaged in commerce as a result of some legal oversight on the part of Atari and now Stardock, UQM is dead unless UQM wants to take the fight to court and actually by some miracle wins in a trademark dispute. I'm personally not holding my breath on that.

Incidentally, with respect to other "fan" projects getting shut down on trademark claims, note two things. 1) The majority of those claims were never actually tested in court, few of those projects actually had the warchest to fight the claims in court. 2) The trademark owners that filed the claims still need to have filed their claims on the basis that those projects crossed both lines, confusion and engagement in commerce. If they failed to do so, their claims aren't somehow valid just because the fan project couldn't afford to challenge them, they just weren't challenged.

Reply #284 from StarControl Forums Top

Quoting zwabbit, reply 283

No, the Mozilla Foundation's situation is not analogous to UQM in the least. Mozilla provides Firefox for free, yes, but it engages in a whole host of activities alongside that that generates revenue.

They put their trademarks upon the product to establish its origin.  Within the "About Mozilla Firefox" section of the browser:  "Firefox and the Firefox logo are trademarks of the Mozilla Foundation."  Despite it being free, it is a trademarkable product within commerce brought to the market by Mozilla.

What, then, is UQM doing beyond the distribution of the game? What is it receiving in exchange from end users that go download it?

That is all they have to do to engage in commerce, distribution.  The act of distribution establishes a presence in the general market.  And the UQM doesn't have to receive anything in return for the transaction.  Would you say that someone giving away free product to establish awareness of their organization is not engaging in commerce?

No, UQM is not protected because it "doesn't advertise or brand itself with another trademark."  It is protected because the past and current trademark holders have decided it either doesn't cause confusion or isn't engaged in commerce, therefore there aren't grounds to pursue infringement claims.

It is protected because it doesn't advertise or brand itself with another trademark, hence the "Star Control" trademark holders could not establish that there was any confusion in the origin of the product.  Despite the contents, it is the mark upon the product that establishes origin.  So, through relabeling and release the Star Control 2 source code via the title The Ur-Quan Masters, they effectively prevented any kind of confusion about the product's origin.  A "Star Control" product indicates an origin from Accolade/Atari/Stardock...  "The Ur-Quan Masters" product (presently) indicates an origin from The Ur-Quan Master's project.

Nor is UQM even under attack right now, considering Brad has repeatedly stated UQM is not engaged in commerce. For that matter, the only people actually threatening UQM's legal survival at this point are those of you that want to insist that it is engaged in commerce. Why you guys keep trying to score an own goal here is literally beyond me.

It IS under threat.  It DOES NOT matter what Brad says now.  It matters what holder of the trademarks decides later.  Decisions change along with those who make such decisions.  This isn't an own goal, it's establishment of how UQM had relative safety before and how Stardock is threatening that safety two fold by Stardock's interpretations of trademark law and trying to use that as defense of their claims, AND filing for "The Ur-Quan Masters" trademark.  Before all this under the common interpretations of trademark law, so long as UQM did NOT misrepresent the origin of its product in a manner that did not cross with the "Star Control" trademark, it was fine.  Accolade/Atari did not have the copyrights to Star Control 1 and 2, so they had no claims over the content, just the labeling/branding with the "Star Control" trademark.  Hence, why "The Ur-Quan Masters" became the title.  And that's the way it has operated since 2002.  Now, with Stardock's interpretation of trademark law extending past the mark itself, this puts UQM at high risk where none was before.  And Stardock's "The Ur-Quan Masters" trademark filing puts the project under DIRECT high risk.

Before there was no Sword of Damocles over the head of UQM.  Now, there's two that Stardock is trying to hang.  That's the crux of the problem quite a number of people have with Stardock.  If Stardock had stuck with defending strictly the confusion of the "Star Control" trademark and clearing that up... Not many people would be upset.  But, the odd trademark filing spree of names and terms that have never been used as trademarks by definition and strange extrapolations of trademark law that I have YET to see anywhere else in any other industry, THAT is what has put people on high alert and turned them away from Stardock.

Seriously, if Stardock's view of trademark law was applicable before their current argument...  Wizards of the Coast would have killed Paizo's Pathfinder product line by now with claims that components of Pathfinder are part of Dungeon and Dragon's trademarks.  And Daddy Wizards of the Coast WOULD do it if they could with the full help of Granddaddy Hasbro.  Also, Games Workshop legal team would have plenty more heads on pikes outside their offices.

UQM uses things that are associated with Stardock's trademark.

Not by anything I have found in my search through trademark law.  That's where Stardock's interpretation of the law begins and I have yet to find anything that set that particular precedence.

Incidentally, with respect to other "fan" projects getting shut down on trademark claims, note two things. 1) The majority of those claims were never actually tested in court, few of those projects actually had the warchest to fight the claims in court. 2) The trademark owners that filed the claims still need to have filed their claims on the basis that those projects crossed both lines, confusion and engagement in commerce. If they failed to do so, their claims aren't somehow valid just because the fan project couldn't afford to challenge them, they just weren't challenged.

And that ultimately is the threat to UQM.  It doesn't matter if UQM is in the right.. There just won't be any defense possible.  One single claim based upon a legal precedence by Stardock's interpretation of trademark law OR Stardock securing "The Ur-Quan Masters" trademark... will be all that's needed to end the project.

Reply #285 from JoeUser Forums Top

Quoting Lakstoties, reply 282

The project offers a good or service for the price of free.  It still is an exchange of goods and services.

No it isn't. Look up the meaning of 'exchange'.

Why are people so into determining what an outcome WILL be?

The outcome is coming, THEN YOU WILL KNOW.

This amateur hour of second-guessing is somewhat tedious...;)

Reply #286 from StarControl Forums Top

Indeed. What organization is even tied to UQM? I’m not sure why some UQM community members are so anxious to see it taken down. We don’t see it as engaging in commerce. For one thing, WHO would be the commerce engaging entity? What’s its tax ID number? Where is it incorporated? What is it’s mailing address?

If there is an actual UQM entity you would like to point us to we can ask them.  However, I don’t think there is. It’s just a source code repository that anyone can contribute to on sourceforge.  

If your threshold for engaging in commerce is simply having something available to be played, listen to, heard, read, etc. then we are all engaging in commerce many times per day. 

Like JAFO said, this is one of the more annoying things about Paul and Fred fans, they create elaborate fantasy legal theories.  Let’s not forget that according to them, there is no Star Control trademark (assignment in gross and what not) but a site that hosts a .zip file to download is engaging in commerce and could even have trademark rights. It’s not helpful to anyone and insofar they’ve been able to further split the community.

 

Reply #287 from JoeUser Forums Top

Quoting Lakstoties, reply 284

THAT is what has put people on high alert and turned them away from Stardock.

No, what is [possibly] turning people away is the wealth of uninformed FUD associated with a legal case that is totally unconnected to the people posting the FUD.

When 'FUD' is intentionally disseminated upon various forums you have to wonder the motive and perhaps even whether there could be a defamation case to answer.

I really do like the phrase "Stardock's interpretation of trademark law'.  It doesn't exist.  What DOES exist is an IP Attorney/Firm's understanding of Trademark Law.

Reply #288 from StarControl Forums Top

If the intent was to establish a presence in the market, that would be commerce. Are you saying that UQM's intent is to establish a presence in the market? Because if you are, then Stardock is obliged to move against it legally even without the current kerfuffle with P&F. Releasing a product for free does not constitute establishing a presence in the market, because if it did, literally everything with an open source release out on github, or sourceforge, or whatever would constitute engaging in commerce, of which I'm quite certain was not the intent for a good portion of the people using those sites to host their code. I have code up on github freely available, but I sure don't have any intention of establishing a "presence in the market" with that code.

Furthermore, are you suggesting that the UQM project has a federally registered trademark it owns to actually put on its release? Because if it doesn't, again, the Mozilla example fails.

Finally, UQM always existed at the sufferance of the trademark owners, be they Stardock, Atari, or Accolade, or some company in the future if Star Control somehow passes from Stardock's hands. Whatever protections that you thought the project possessed were never tested in court, and therefore were never any defense against legal action if the mark owners decided to move against UQM legally. There was no written agreement, no license so to speak, only the presumption upon the UQM community's part that its actions would spare it any legal entanglements. The presumptions of the UQM community however doesn't mean anything, since the power balance is asymmetrical. The rights holder is the one that gets to decide if or when to take legal action, and nothing UQM can do could stop them short of trying to launch a preemptive lawsuit of your own. The swords of Damocles that you seem to think are only appearing now? They were always there, as they have been for every fan project out there.

Reply #289 from StarControl Forums Top

Quoting Jafo, reply 287


Quoting Lakstoties,
reply 284

THAT is what has put people on high alert and turned them away from Stardock.



No, what is [possibly] turning people away is the wealth of uninformed FUD associated with a legal case that is totally unconnected to the people posting the FUD.

When 'FUD' is intentionally disseminated upon various forums you have to wonder the motive and perhaps even whether there could be a defamation case to answer.

I really do like the phrase "Stardock's interpretation of trademark law'.  It doesn't exist.  What DOES exist is an IP Attorney/Firm's understanding of Trademark Law.

Exactly, a subset of the UQM and Reddit communities are in a circle jerk with a healthy influx of brand new anonymous and remarkably interested posters who I’m sure have nothing to do with the Crisis PR firm Paul and Fred hired (and are now resisting having the names of its Internet user alias’s revealed - see the motion to quash) have spun some of the more emotionally invested members into paranoia.

The only ones trying to claim UQM is engaging in commerce are Paul and Fred who filed for a trademark of it and used the forum’s graphic as evidence. If the UQM should feel threatened, it should be by them. 

We were once sued by Rebellion Games for trademark infringement for Sins of a Solar Empire because the subtitle is Rebellion.  Make no mistake, subtitles of games fall under trademark.

We love Star Control. We want to build on the existing community and support it as much of as little as  given community wants.

We work with fan communities of our games both big and small.  The Sins community is enormous, for instance. I’d like to think our track record speaks for itself.

 

Reply #290 from StarControl Forums Top

Quoting zwabbit, reply 283

UQM uses things that are associated with Stardock's trademark. That is grounds to consider the confusion question. A literal interpretation of Stardock's position would argue that, yes, confusion is possible, insomuch as the contents of UQM is suggestive of a direct link to the Star Control trademark.

I have considered the confusion question (§ 43 (15 U.S.C. § 1125), and it refers to use in commerce only. Use in commerce is explicitly defined as use of a ) a mark and b ) on (not in) goods. Goods are defined, as per the trademark(s), as "Computer games; Computer game software; Video games".

https://www.uspto.gov/sites/default/files/trademarks/law/Trademark_Statutes.pdf, pages 34 and 42.

My conclusion: The alien race names are not marks on computer games, therefore are not in use in commerce in Star Control, would not be in use in commerce in UQM even if UQM itself is, and would not be in use in commerce in GotP; they cannot cause confusion under trademark laws. 

Trademark law does not care about contents that I can see, and opponents of that position have yet to provide any evidence to the contrary. 

 

Reply #291 from StarControl Forums Top

290 posts and people are still trying to convince Brad that they understand law better than his lawyers.  nice.

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Reply #292 from StarControl Forums Top

Quoting Alverez, reply 291

290 posts and people are still trying to convince Brad that they understand law better than his lawyers.  nice.

Right?  I was just thinking that.  They (think they) know more from their googling things than people who actually specialize in trademark and copyright laws.

Reply #293 from GalCiv3 Forums Top

When dungeon and dragons bought advanced dungeon and dragons. Maybe the company swords of the coast was still in effect back then, not sure made a deal, so vendors can legally sell dungeon and dragons stuff without paying royaltys put the dungeon masters guide, the monster manual, and players guide into gnu. 

Reply #294 from StarControl Forums Top

See, here's the thing about all these positions trying to be contrarian to Brad's position. It really doesn't matter if you disagree with him, or think you know better than him, or whatever. Your opinions don't factor into his or Stardock's legal strategy, and also don't factor into how the lawsuit will itself play out. You could be so utterly convinced of the rightness of your opinion, you can argue yourself blue in the face, and it won't matter. The courts are where this issue will ultimately be decided, and nothing that happens here will have any impact. Arguably the one thing that might play any role is Stardock could use some of these posts as evidence to demonstrate confusion and the loss of goodwill they've incurred if/when the case moves into damages calculation. But by that point, the actual question of infringement would already have been settled.

Reply #295 from StarControl Forums Top

Quoting zwabbit, reply 294

See, here's the thing about all these positions trying to be contrarian to Brad's position. It really doesn't matter if you disagree with him, or think you know better than him, or whatever. Your opinions don't factor into his or Stardock's legal strategy, and also don't factor into how the lawsuit will itself play out. You could be so utterly convinced of the rightness of your opinion, you can argue yourself blue in the face, and it won't matter. The courts are where this issue will ultimately be decided, and nothing that happens here will have any impact. Arguably the one thing that might play any role is Stardock could use some of these posts as evidence to demonstrate confusion and the loss of goodwill they've incurred if/when the case moves into damages calculation. But by that point, the actual question of infringement would already have been settled.

This thread would make a good study is cognitive dissonance. 

It's quite simple:

1. Did Paul and Fred represent their game as being related to Star Control? 

2. What copyrights do Paul and Fred own? Be specific.

People keep trying to hand wave item 2 into pretending that copyrights are magic, vague things.  They aren't.  They protect specific expressions of creative work.  

So, what, specifically, do PF fans think they have a copyright on - common law or otherwise? What, *specifically* did they create that you can prove they created and doesn't rely on them simply having told you they did? Point it out.  It can't be ideas, concepts, plots, recipes, lists.  And don't forget, you have to prove they did it and not simply that they claimed it in an IRC chat because I've seen them claim Riku's music.

Reply #296 from Stardock Forums Top

I have a question.

After reading through this thread, I've learned Stardock won't (or can't?) take down UQM since it is not engaged in commerce. Does the same also apply if the UQM project was actually named "Starcontrol 2: The Ur-Quan Masters"? I am curious because it seems scrapping the SC mark from its title seems to have done NOTHING per Stardock's perspective.

Reply #297 from StarControl Forums Top

Quoting tingkagol, reply 296

After reading through this thread, I've learned Stardock won't (or can't?) take down UQM since it is not engaged in commerce. Does the same also apply if the UQM project was actually named "Starcontrol 2: The Ur-Quan Masters"? I am curious because it seems scrapping the SC mark from its title seems to have done NOTHING per Stardock's perspective.

From my understanding and what I remember, Star Control 2: The Ur-Quan Masters is the official full name of the game that you would have found on Steam/GoG, however both of them had it listed slightly different with GoG having it as Star Control I/II/III and Steam having it as Star Control: The Ur-Quan Masters & Star Control: Kesari Quadrant.  As for the open source portion as far as I can see every spec of branding on the site is sans Star Control and only shows as "The Ur-Quan Masters" with the only reference to Star Control 2 being the url itself as sc2.sourceforge.net.

So at this point, barring global thermonuclear war I don't see The Ur-Quan Masters fan project ever coming down by the hands of Stardock, now having to change hands for maintainers due to the project being essentially abandoned I could see happening at some point or another.

 

With all that said, if a separate fan project came up named "Star Control 2: The Ur-Quan Masters" or any variant of it like Happy Campers edition or whatever would most definitely have to be issued a C&D to protect the rights to the Star Control property.

Reply #298 from StarControl Forums Top

Quoting Pyro411, reply 297

With all that said, if a separate fan project came up named "Star Control 2: The Ur-Quan Masters" or any variant of it like Happy Campers edition or whatever would most definitely have to be issued a C&D to protect the rights to the Star Control property.

... which is precisely why it's called the UQM and doesn't have Star Control in it's name. When Paul released the source code, he *knew* he had no legal grounds to use the Star Control name, because it was owned by Accolade (now Stardock) so he called it The Ur-Quan Masters.

It's just a shame he "forgot" that he had no legal rights to the name Star Control 25 years later which (in large part) has led to all of the current crap.

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Reply #299 from JoeUser Forums Top

Quoting bleybourne, reply 298

It's just a shame he "forgot" that he had no legal rights to the name Star Control 25 years later which (in large part) has led to all of the current crap.

One line.....all squillion pages of angst ....in a nutshell...;)

Reply #300 from StarControl Forums Top

Soooo...  when will any of the news from today's meeting be public?