UPDATE: Make sure you read the official statement from Stardock regarding newer events.
Re: November's blog post by Paul and Fred claiming Stardock's objection to their new game being promoted as a "true sequel" constitutes Stardock preventing them from doing a new game.
We are disappointed that Paul and Fred, two people we have a great deal of respect and admiration for, have chosen to imply that we are somehow preventing them from working on their new game.
Stardock has been nothing but supportive of their new project and wish them the best. I personally made the post here on StarControl.com in support of it.
With regards to their contentions:
First, as many people know, the classic Star Control games have been available for sale long before Stardock acquired the rights from Atari four years ago. For the entirety of the time we have held the rights, they have been getting paid for those sales. If they had an objection to the games being sold this is something that could and should have been addressed before we were ever involved.
Second, we have stated, repeatedly and consistently for over four years that we are not using any of the aliens from the classic series. As we have stated, our position is that, to the best of our knowledge, the classic alien IP is owned by them.
We have also discussed, at length, why it wasn't commercially viable for us to attempt to continue or retell the Ur-Quan story. 25 years is just too long of a gap. This is one of the reasons why we have been so excited about Paul and Fred's project. Their game frees us to introduce new characters and a new story into the new Star Control while allowing fans of the classic series a way to continue the classic story. This strikes us as a win-win situation.
Lastly, when we acquired Star Control from Atari in 2013, many assets were transferred to us including the various publishing agreements to the Star Control franchise. The short version is that the classic IP is messy. We understand that this makes them "really really angry" but we weren't a party to that agreement. All we can do is try to put something together that releases them from the restrictions placed on their IP that they agreed to and transfer any and all rights and responsibilities to them. We want them to make Ghosts but we don't want any liability or association with it.
Given the disturbing and unanticipated post by Paul and Fred, we are persuaded more than ever that a clear and irrefutable document that makes it clear that we are not associated or involved with their new game is needed.
We have nothing but respect and admiration for Paul and Fred and wish them well in their new project.
Update 12/4/2017:
Paul and Fred continue to make unsubstantiated claims regarding the DOS-based Star Control games. If they have any documentation to provide evidence to their assertions, we have yet to see them.
Stardock, by contrast, possesses a perpetual, exclusive, worldwide licensing and sales agreement that was explicitly transferred to us by Atari who in turn acquired it from Accolade that has Paul Reiche's signature along with a signed distribution agreement between Atari and GOG for the DOS Accolade Star Control games.
The tone of their blog posts is similar to the kind of correspondence they had with us since the announcement of their Ur-Quan Masters successor, vague, full of demands and without any documentation.
With all due respect to Paul and Fred, they really should talk to competent legal counsel instead of making blog posts.
Update 12/5/2017:
Dealing with the sales and distribution of 20+ year old DOS games is an unusual way to spend a Tuesday afternoon. Nevertheless...
Atari had transferred to Stardock a signed agreement between Atari's President and GOG that we assumed was the agreement. Paul and Fred claimed they were the ones who had set up the agreement and upon verification with GOG, we instructed them to terminate this agreement which they have which we appreciate.
The games are now correctly transferred to Stardock and we will continue to ensue that Fred and Paul receive royalty payments for the games per the publishing agreement. We apologize if anyone was inconvenienced.
Old IP can be messy to deal with. The best way to deal with that is to have the parties talk to each other (as opposed to making public Internet posts) and work something out. We remain committed to dealing with this situation with as much restraint and gentleness as possible.
Update 2/27/2018
Added link to https://www.starcontrol.com/article/487690/qa-regarding-star-control-and-paul-and-fred to address Paul and Fred's latest complaints.
At this stage, the parties are seeking to resolve their disagreements in court. Stardock wishes this could have been resolved otherwise.
For the record, if Paul and Fred had simply announced their game as a sequel to Ur-Quan Masters and requested Stardock to remove the DOS games from distribution, Stardock would have complied out of respect, even if we would have been unhappy that they chose now, after 25 years, to jump back in the middle of Stardock's efforts to bring Star Control back.
However, by promoting their new game as a "direct-sequel" to Star Control (and in other places as the "true" sequel) while using the Star Control box art (which is owned by Stardock) a great deal of consumer confusion has been created requiring Stardock to protect its IP rights.
Other links:
Ya know...
This whole thing does remind me of the whole Activision/Microprose Civilization spat from the 1990s...Microprose bought the naming rights from Avalon Hill made Civ....Activision then bought the naming rights from Avalon Hill out from under Microprose (Avalon hill did this to a lot of companies... Battletech/RoboTech drawings come to mind)Microprose then bought the company that actually held the trademark for the civilization boardgame that had sold the North American Rights to Avalon hill which invalidated Avalon Hills sale to Activision..the legal fight was one of the reasons why Spectrum Holobyte closed down the Micropose studios and then sold itself to Hasbro... We got Firaxis and Sid Meyer's Alpha Centari out of it...Oh and Activision made two crappy call to power games.. >.> <.<I've never played any of the Star Control games... But I've been a very long time player of StarDock Games.In the end of the day I just hope that both games manage to be made. I have my suspicion that one of the two games will be supported long after it is released..... and the other if released will have nothing more than fan support.
**exit stage left**
I can't think of any basis that they could use to argue that the new "Star Control" trademark should be cancelled, and they weren't asking for it as of their last filing.
That's a disputed point. The "Star Control" trademark was the only registered trademark Stardock got from Atari. But it is possible to claim "common law" trademark rights in other identifying marks used in a game, and Stardock is claiming that it has such rights in all of the alien names, and in the "The Ur-Quan Masters" subtitle.
There are counterarguments to this, relating to whether such unregistered marks were really valid common-law trademarks, whether such trademarks would survive the sale from Atari, whether the UQM open-source project's use of these names during the years when "Star Control" wasn't being sold would co-opt them, and others.
As a non-lawyer, all I can say for certain is that the unregistered marks are weaker than the registered ones, and that there are arguments and counterarguments about their validity that judges and juries will have to work through if this question goes to trial.
Stardock's long-term support for their games has certainly been one of their selling points for me. On the other hand, don't knock fan support: One could argue that thanks to the UQM project, "Star Control 2" has effectively been supported for 25 years. Not many games can say that.
Also,
You really should try it. There's also a hi-res version with fan mods here, but it has some bugs.
No it's 10 years between renewals.
http://lmgtfy.com/?q=how+long+does+a+trademark+last
Oh, I know. the fan mods for some games are better than the original game. I'm just saying that from an outsider's perspective there is a lot of animosity going on against a developer that does not always get it right (Elemental: War of Magic) but has historically always done the right thing (Free version of Fallen Enchantress to those who bought Elemental)Even if everything the fan community over at your other forum board wants to think is true and Brad is just a money grubbing jerk being a jerk to the fans... I'd say that history supports the counter viewpoint. Stardock has a history of standing behind it's products... be they Window's Blinds, or Galactic Civ... I for one cannot think of another publisher that puts in so much effort to provide so much support to improve their games.Activision is no EA by any means, but If GotP gets made i'm betting 100% that it will be published by them. How much official support do you expect and for how long?
No it's 10 years between renewals.http://lmgtfy.com/?q=how+long+does+a+trademark+last
That link doesn't work for me, though it might be my ad-blocker.
Even though the renewal period is longer, you still have to keep using the mark:
You need to check your sources... not a single thing about 3 years
Direct from the USPTO - https://www.uspto.gov/about-trademarks
A trademark registration may remain in force for potentially unlimited consecutive ten-year periods as long as the owner meets the legal requirements for post-registration maintenance and renewal and timely files all necessary documents. The owner must file a "Declaration of Use" between the fifth and sixth year following registration, attesting to the continued use or excusable nonuse of the mark on or in connection with the goods and/or services in the registration. In addition, the owner must file a combined Declaration of Use (or Excusable Nonuse) and Application for Renewal between the ninth and tenth year after registration, and every 10 years thereafter, attesting to the continued use or excusable nonuse of the mark on or in connection with the goods and/or services in the registration and requesting to renew the registration. If these documents are not timely filed, the registration will expire or be cancelled and cannot be revived or reinstated. For more information, including the different renewal requirements for Madrid Protocol-based registrations, see Maintain/Renew a Registration.
How about 15 U.S. Code § 1127:
(1) When its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.
That's the actual U.S. legal code pertaining to trademark abandonment.
Elestan, again.. the issue you are running into is your superficial knowledge of trademark law. You posts appear to imply a significantly overstated importance of the fact that non-use for three consecutive years is "prima facie evidence of abandonment." You've taken one sentence out of a statute and not done any research on associated regulations and case law. There is actually some very on point case law related to this topic that I'd suggest you read. If you just google for case law related to trademark abandonment, you'll find it. I'll give you one to start with but please read more, Click Me.
The point being, it is actually quite common for marks to go unused in the way you describe over a three-year period. It is much easier to rebut this presumption than you are inferring. The simple fact the games weren't being sold for any length of time is almost meaningless to actually concluding the trademark was abandoned. Such a presumption is a great way to end up on the losing end of expensive litigation.
If the other trademarks are 'new' and the old is cancelled then it means the new shouldn't have been trademarked at all.
Why cancel the old one if they are going to let Stardock keep the new. It wouldn't make a difference.
But of course, this is just speculation in case P&F get to it and win the dispute.
Actually, I read the Crash Dummies case a month ago or more, when I initially researched this topic (though I do thank you for providing the reference). That's why my statement was:
I also deliberately avoided stating any conclusion that the trademark was abandoned, and said only that P&F were making an argument that it was. I generally do my best to choose my words carefully; while I may not always succeed, please do not assume that I am implying something unless I actually say it.
Also, I'd like to thank Pyro411 for a good back-and-forth up the ladder of rigor. This is precisely how I think such debates should play out - including your input as a lawyer citing and commenting on the applicable case law.
The consensus of an Internet forum has no legal meaning.
As someone who has spoken at length with counsel on this particular matter, that argument is beyond a stretch. Filing a false trademark renewal would amount to fraud. Unless you want to go on record accusing the individuals at Infogrames who signed the forms of having committed a felony, a pretty serious charge to make against someone (libelous I would imagine) you would be well served to quit with the legal analysis of things you have no idea of.
The Star Control mark has been in active use for many years. This is a fact.
It was in active use at the time of acquisition in commerce (Star Control 1,2,3 on GOG with the trademarks supplied by Atari as one example). This is a fact.
If you want to play fantasy lawyer, you can do that on the UQM forum. Here, we focus on facts.
Who said anything about games? I'm talking software.
WindowBlinds. Fences. ObjectDock. Start8. Multiiplicity. IconPackager, etc. All have contracts very similar to what Paul and Fred signed.
In commercial software, the trademark is all that matters.
What would the copyright to Galactic Civilizations for OS/2 do for us? I didn't even bother copyrighting it. The art, source code, etc. are worthless today.
What stops someone from making a new game with the Drengin Empire, Arceans? Not the copyright. The trademark. The trademark to Galactic Civilizations ensures that the Drengin Empire won't show up in another game.
People in this debate have demonstrated they have no idea what a trademark is. They think it's about a name. They're to protect consumers from confusion. If another game came out and claimed to have the Drengin Empire and we could show that gamers might be confused into believing that game was related to Galactic Civilizations that would be trademark infringement.
Letting a developer keep copyright is not really a concession. If your product is being sold, trademark is what matters. In software, copyright is nearly worthless. I care about two things: Trademarks and patents. I've spent a great deal on these two things.
Well, P&F are already claiming in court that the trademark renewal was fraudulent, so we may see that argument tested. But in my opinion, a game created over a weekend right before the trademark expires and then disappearing shortly thereafter sure fits the definitions of "token use" I've read. I'll be interested to read Stardock's argument to the contrary, if it makes one.
Out of curiosity, might you be willing to say what the sales figures for the flash game were?
Any decent lawyer will try to cancel an opponent's trademark.
As someone who has created a game over a weekend (Star Emperor) I can assure you that it is protectable by trademark.
Token use has nothing to do with effort. Again: If you want to post here, stick with facts, not your personal legal analysis. You continue to mix up layman terms and legal terms and try to form legal conclusions.
There is some legal protection for libel in a legal filing. But not so on a forum. The fact that both parties (Atari and Paul) performed as if the trademark was active and valid when they set up the GOG agreement is pretty much all you need to know. If they disagreed, that would have been the time to argue it. Now, that ship has sailed. The trademark has been in active use for years. This is a fact. I feel confident enough to state publicly that I suspect Steinberg, Paul and Fred's IP attorney, has explained this to them.
You are entitled to your own opinions but not your own facts. Quit trying to pretend to be a lawyer. (do you not understand how ridiculous it is that you actually posted a "consensus" from an internet fan forum as if this means something?)
As a reminder, we didn't start this. Even after they willfully infringed on our trademark, we tried to be publicly supportive. We only began to take a hard line once it became clear they had no intention to cease calling their game a direct sequel to our franchise while simultaneously smearing us in public.
We work with lots of contractors. Many of them are incredibly talented. But that doesn't given them any rights whatsoever to claim to be the creators of our products or claim to be creating a sequel/successor to our products.
If any future games come out that continue the UQM story, it will happen under Stardock's supervision or not at all.
On that note, it is important to point out that at the pleading stage a decent attorney (i.e. an attorney not committing malpractice) would include every possible affirmative defense. Fred and Paul's most recent pleading contained 21 affirmative defenses of which the claim of invalid trademark due to abandonment was just one. The fact it has been raised at the pleading stage in no way should be used to infer that Fred and Paul's counsel actually believes the trademark is invalid.
I don't believe that's what the people there think. I know it's not what I think. Most of the people there are mainly concerned because the name of the project for the last 15 years has been "The Ur-Quan Masters", and Stardock has just tried to trademark that phrase, as well as the alien names used in the games, which would be quite difficult to change. And while we know that Brad has said he means no ill toward the project...well, ten years ago, who would have guessed he'd be crossing swords with Paul and Fred?
I don't see any evidence for that. If Activision wanted to do the games (and Paul was willing to cede the necessary control to do so), that could have happened years ago; I doubt Activision would have blinked at paying 300k for the trademark. His stated reason for doing GotP now is that he finally got permission from Activision to take a leave of absence, so that he and Fred could work on the game independently. This suggests that Paul is just as committed to keeping Activision out of the UQM universe as he is to keeping Stardock out.
I'm still not a lawyer, but if the old trademark was invalidated, and the new one hadn't been filed yet when they made their original blog post, it seems like it would at least make it harder for Stardock to pursue them for that particular infringement.
Thanks; I believe this is the first time you've explained that counterargument. Estoppel, I believe it's called?
Also, I will take care in the future to note the flash game's "token use" status as not being settled, now that you've so indicated.
I've spent the past few days reading through the posts over there and a lot of people are of the mindset that the game without the original aliens just isn't even worth playing. A large number fear that with StarDock having the trademarks the UQM will eventually be shut down either when SD sells out, or when Brad retires and the next guy comes along etc etc etc etc... Part of me wants to point out that Atari technically could have shut down UQM at any time and really the fact that StarDock was the high bidder was a blessing to you guys... but I suspect it would fall on deaf ears.I think the people fear for something that is very very unlikely to happen and are basically out of spite removing themselves from the best chance to make a game that WILL be published an will come out better.... just because they have some reverence for two guys who don't seem all that interested in actually doing much more than playing the victim when they were given all the chances to be collaborators.Beyond that.... developing a game takes a lot of cash. If Paul had the backing and the funding he would have bought the Trademark in the auction. He would have also bought it when Stardock offered to sell it to him after they bought it. Even with kickstarter or other funding mechanisms Paul and Fred are going to need someone to fund their development/publishing of their game. This is why I have reason to believe Activision will be involved. 300k is petty cash for them, but even so think about it this way.... Galactic Civ 3 is a massively successful 4x game... with 500k or so games sold. Call of Duty has 15+ MILLION copies sold.300k may be chump change, but it is also not really a great investment for them in comparison to the IP they already own.... On the other hand Fred and Paul are developing GoTP by themselves funding it by themselves... who do you really think will fund them? how will they get published?At one time I thought it might be StarDock publishing it as a tie in... but that ship has LONG sailed..... and I think that is the saddest thing...Go look at what Brad wrote back in 2013 when they bought the IP... Paul and Fred were his freaking heroes. He freely and often admits that they are WHY he is a game developer at all rather than just doing stuff like windows blinds or object desktop (software that actually makes significantly more money btw) I have absolutely no reason to think that he was not being 100% genuine when he offered to sell the TM back to them. I have no reason to think that he was not being 100% genuine when he offered them a chance to consult on the new game.I honestly suspect he may have offered the two of them jobs at Stardock....So really... that's the thing that I see as being the saddest thing of all of this. The fans could have had a collaborative game that had Brad, Fred and Paul working as one team to make one freaking awesome game...But pride goes before the fall... and from what i've seen Fred and Paul are full of themselves.
On this issue, it occurs to me that there might be a way to resolve it. Brad, might you be willing to publicly commit that if your registrations of "The Ur-Quan Masters" and the alien name marks are approved, that you will irrevocably license them for unlimited non-commercial use? You've said that if you get those marks, you would never try to shut down the UQM project; this would prove it, and ensure the project's safety from any successor who might not be so inclined.
I don't know if this is legally possible for trademarks, but if it is, I think doing it would go a long way toward assuaging the worries of the open-source project community.
Prior to Stardock filing the trademarks on "The Ur-Quan Masters" and the alien names, the UQM community believed that "Star Control" was the only trademark in play, and the UQM project was renamed specifically to avoid using that trademark. We won't really know if Atari could have enforced the other marks unless we get court and/or USPTO rulings on Stardock's attempts to claim them.
I would say that we were cautiously optimistic about Stardock, until it filed to trademark our project name.
I'm sure that P&F are not poor; they've been the executives of an Activision subsidiary with at least one quite successful franchise (Skylanders). My personal expectations are that they probably intend GotP to be targeted at the people who loved SC2, rather than at a mass audience; that it will have fairly low production values relative to most modern games; but that it would have a lot of emphasis on great storytelling, uniquely interesting and eccentric characters, and very good design of the gameplay elements.
Remember, P&F made the original SC games on a shoestring budget; their main worry was finishing the game before they ran out of personal savings to keep the lights on. I'm sure they could multiply SC2's budget tenfold (after inflation), and it would still be considered small by today's standards.
I also believe that he was sincere in these things, and I'd be shocked if he hadn't explicitly offered them jobs if they wanted to jump ship from Activision. I personally think he was shocked that they didn't take him up on it.
But on the other hand, I can't fault them for wanting to keep full control of the game (meaning they'd self-publish, rather than working with an established company). This game was their baby, even if they had other contributors work on parts of it. I also don't feel I can second-guess them for saying that they didn't want to personally pay $300k for the IP in 2013; maybe their finances couldn't support that much at that time - that was still the early days of Skylanders for them.
Elestan ....I feel the issue some people have with [all] your input into this topic is that...
A... there is just so much of it.
and
B... it's all coming from a position of outsider's ignorance.
Even the people who actually KNOW substantially more are saying significantly less, and the reason is that it's all 'sub judice' and/or there is everything from NDAs to officially-imposed 'gag orders' in place.
Grabbing onto individual comments [from elsewhere/where-ever] and analysing them with presumption and supposition is good exercise for typing skills...and little else.
It can't even be [much of] a 'debate' as that would require two sides of equivalent ignorance - muddying the waters until all are drowned in the resulting swamp.
What I'd do [am doing] is quietly wait for the inevitable outcome [which will be totally unaffected by the tomes of debate/discussion here].
If it were a case of you doing a Thesis year in Public Oration then maybe there's a benefit, but otherwise it's really only sore finger tips ...
Welcome to the internet. Is this your first visit?
Who said anything about games? I'm talking software.WindowBlinds. Fences. ObjectDock. Start8. Multiiplicity. IconPackager, etc. All have contracts very similar to what Paul and Fred signed.In commercial software, the trademark is all that matters. What would the copyright to Galactic Civilizations for OS/2 do for us? I didn't even bother copyrighting it. The art, source code, etc. are worthless today. What stops someone from making a new game with the Drengin Empire, Arceans? Not the copyright. The trademark. The trademark to Galactic Civilizations ensures that the Drengin Empire won't show up in another game.People in this debate have demonstrated they have no idea what a trademark is. They think it's about a name. They're to protect consumers from confusion. If another game came out and claimed to have the Drengin Empire and we could show that gamers might be confused into believing that game was related to Galactic Civilizations that would be trademark infringement. Letting a developer keep copyright is not really a concession. If your product is being sold, trademark is what matters. In software, copyright is nearly worthless. I care about two things: Trademarks and patents. I've spent a great deal on these two things.
I am confused for sure now One cant use Drengin Empire in their game cause of the GalCiv trademark, or cause there is separate trademark specifically for Drengin Empire too?
If the former is true, does this mean that even if P&F did not call their game direct sequel to StarControl, which, if i understood that correctly, started all the issues, but called it sequel to UrQuan Masters (or simply did not call it anything), would they be free to use Ur-Quans and Spathi and other StarControl races in their game? Even without owning SC trademark? Now i suppose not, because it would be the same thing as using Drengin Empire without GalCiv TM - but as i said, now i am confused.
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