Stardock Systems, Inc. v. Reiche
Stardock Systems, Inc. v. Paul Reiche III and Robert Frederick Ford, 2018 WL 7348858 is a legal case that led to a settlement confirming an intellectual property split for the Star Control series of games. After a motion at the United States District Court, the parties agreed that series creators Paul Reiche III and Fred Ford owned the copyrights for the games Star Control and Star Control II, while Stardock owned the Star Control trademark, with neither side using each other's intellectual property in future releases.
The Star Control copyrights were separated from the trademark in the early 2000s. Accolade allowed their copyright license to expire and revert to Reiche and Ford, who re-released Star Control II as The Ur-Quan Masters. Meanwhile, Accolade's assets were acquired by Atari SA, who later declared bankruptcy in 2013. Stardock purchased Atari's Star Control assets in a bankruptcy auction, leading the parties to acknowledge that Reiche and Ford retained their copyrights, while Stardock owned the trademark. In 2017, each side accused the other of violating their rights: Stardock was selling the original games without Reiche and Ford's consent, whereas Reiche and Ford announced a sequel to Star Control II without Stardock's consent. Stardock filed a lawsuit, and Reiche and Ford counterclaimed that Stardock was unlawfully selling their games and misappropriating their work in the upcoming game Star Control: Origins. Stardock responded by filing trademarks in character names from the original Star Control games.
In late 2018, Stardock's request for an injunction against a copyright takedown was denied by Judge Saundra Brown Armstrong. Steam and GOG.com removed the games from their stores, but restored Origins after Stardock agreed to accept responsibility for any potential infringement. In 2019, both sides agreed to a settlement, with Reiche and Ford owning the copyright to Star Control I and II, and Stardock owning the Star Control trademark. Both series would remain separate, with Reiche and Ford avoiding use of the original name, and Stardock avoiding use of the original fictional universe.
Intellectual property history
Original ''Star Control'' series
Star Control and Star Control II were created by Paul Reiche III and Fred Ford and published by Accolade. Released in 1990 and 1992 respectively, both games received numerous awards. Journalists have listed Star Control among their best games of all time, with Star Control II earning even more "best game" rankings through the 1990s, 2000s, and 2010s. It is also ranked among the best games in several creative areas, including writing, world design, character design, and music.Star Control was Ford and Reiche's first collaboration. The sequel was more ambitious, forcing the duo to ask their creative friends for help, and forcing Ford to financially support the team when the production went over schedule. Accolade asked Ford and Reiche to make a third game at the same budget, which they turned down to pursue other projects. As Reiche and Ford held the copyrights over first two Star Control games, Accolade licensed Reiche and Ford's designs to make Star Control 3 with a different team. Released in 1996, Star Control 3 did not enjoy the acclaimed legacy of the first two games, with reviewers noting the change in authorship. Accolade's plans for a fourth Star Control game were ultimately cancelled during development, and fans continued to demand a new Star Control game well into the late 2000s.File:Star_Control_II_reverse_cover.png|alt=|thumb|256x256px|The 1992 Star Control II cover describes Paul Reiche III and Fred Ford as the Copyright holders, with Accolade holding the trademark.|left
Separation of rights
By the early 2000s, the Accolade's publishing agreement with Reiche and Ford expired. This was triggered by a contractual clause when the games were no longer generating royalties, allowing the copyrighted content to revert to Reiche and Ford. As the games were no longer available in stores, Reiche and Ford wanted to keep their work in the public eye, to maintain an audience for a potential sequel. Reiche and Ford still owned the copyrights in Star Control I and II, but they could not successfully purchase the Star Control trademark, leading them to consider a new title for a potential follow-up. This led them to remake Star Control II as The Ur-Quan Masters, which they released in 2002 as a free download under an open source copyright license. The official free release prevented the game from becoming abandonware.Meanwhile, the Star Control trademark was transferred to Infogrames Entertainment. This happened when Star Control publisher Accolade sold their company to Infogrames in 1999, who merged with Atari and re-branded under the Atari name in 2003. In 2011, GOG.com began selling a Star Control re-release on their digital store. Ford contacted the sales platform, saying they could not sell the games without permission, leading GOG.com to separately license the Star Control trademark from Atari, and the games themselves from Reiche and Ford.
Atari declared bankruptcy in 2013, and their assets were listed for auction. Stardock became the top bidder on Atari's Star Control intellectual property. Upon hearing the news, Paul Reiche indicated that he still owned the copyright in the original Star Control games, so Stardock must have purchased the Star Control trademark, and this was confirmed by Stardock. Indeed, the Atari asset purchase agreement listed two assets sold to Stardock: the Star Control trademark and the Star Control III copyright. As Stardock began developing their new Star Control game, they re-iterated that they did not acquire the copyright to the first two games, and that they would need a license from Reiche and Ford to use their content and lore. Reiche and Ford echoed this understanding in a 2015 Game Developer Conference interview, stating that Stardock's game would use the Star Control trademark only.
Legal dispute
Facts
In September 2015, Stardock announced that their new game Star Control: Origins would be a prequel to Star Control. Through email, Stardock asked Reiche and Ford for a license to use their character designs, but the duo repeatedly declined. By 2016, Stardock described Origins as an alternative timeline in the same Star Control multiverse, but with none of the older games' characters, to avoid infringing on Reiche and Ford's copyrighted lore. Despite Stardock's continued offers, Reiche and Ford declined to collaborate on Origins, citing a desire to create their own sequel once they finished their ongoing projects with Activision.In October 2017, Stardock began selling the older Star Control games via the Steam store, as a promotion for Origins. Through email, the parties began to dispute what legal rights Stardock had purchased from Atari, and whether that included distribution rights over the original series. Despite private negotiations, Stardock declined to stop selling the games, leading Reiche and Ford to formally request that Steam remove the original series from their store via a Digital Millennium Copyright Act takedown notice. Stardock formally contested the notice, and the sales continued. When Reiche and Ford publicly announced that they did not consent to Stardock's sale of the original series, Stardock announced that they had purchased the Star Control publishing rights from Atari, while Reiche and Ford responded that Atari's publishing rights had lapsed by Atari's own admission.
Also in October, Reiche and Ford announced Ghosts of the Precursors as a direct sequel to Star Control II. Initially, Stardock supported this announcement for Ghosts of the Precursors as a "true sequel to Star Control 2", and claimed their new Origins game would take place in an alternate universe that split off from the original series' universe. By December 1, Reiche and Ford announced that Stardock had not negotiated their legal permissions, and that "our games' universe has absolutely no connection, hyper-dimensional or otherwise". Responding to allegations that Stardock threatened to stop Reiche and Ford from releasing Ghosts of the Precursors, Stardock announced their lawyers would handle the dispute.
File:Star_Control_II_cover.jpg|alt=The Star Control II cover art.|left|thumb|214x214px|Stardock claimed that Reiche and Ford's blog post about Ghosts of the Precursors infringed the Star Control trademark by featuring the Star Control II cover art.