I’ll have to go back and look, but somebody said the trademark was at issue as well.
Gonna look.
That’s what I was thinking of.
No, they don’t claim that.
They claim that the trademark expired due to going dormant for too long (and that the commercial activity used to justify the trademark renewal being just a sham). This has nothing to do with the royalty payments.
The royalty payments are instead relevant to the contracts between R&F and Accolade. Failure to pay at least a certain amount of royalties was a termination condition there.
Because they would have needed to hire a lawyer to investigate the trademark status and the whether the grounds used for the renewal could be challenged. Not something you do just because. But if there’s already ongoing legal activity? Sure.
The only trademark issue is as part of the defense P&F’s attorneys will argue that due to non-use in commerce in preceding years the trademark may have expired and thus can’t be used to sue P&F. It’s a hail mary to try to get the suit tossed.
One can ask “well if they thought it had expired why didn’t they file to have it revoked and file a new one themselves?”. To get the mark cancelled in the first place would be a legal battle and thus self defeating if the goal is to avoid a legal battle. Even if it could have been cancelled, a mark has to be used in commerce and they were under contract and in no position at the time to quit their jobs to start on a new game under the Star Control name.
You and @jsnell use the word “expired” here. Does that mean “dead” per USPTO sense or something else? If so, then why would they need to have that one revoked? Seems like you mean something else, but not sure what.
Ah, I see the confusion. The lack of royalties has more specifically to do with one of the termination conditions of the licensing agreement. As for the defense argument that the trademark expired that has to do directly with the lack of sales, not lack of royalties to P&F specifically (though of course the one should mean the other), the lack of any and all commerce under the “Star Control” trademark for a period of years.
It’s like I wrote in my message. They claim that the grounds used for renewing the expiring trademark were invalid.
Ah, ok, so (correct me if I’m wrong)… the trademark was renewed but they(P&F) would argue that the (probably not the right word here) pretenses/justification for allowing the renewal were false, hence the renewal should have been disallowed because of lack of the mark used in commerce. Yes?
Correct. IIRC the proof of continued commercial usage was a basically a shoddy Flash game thrown together just before the renewal application was submitted.
Ouch. Got it. Thanks to you and @Thrag for being patient with me. Reminds me of my wife trying to get the rights back to some of her old books and the publisher declining because of the occasional book sold here and there.
A trademark is just a name. The name of a product you are selling. Perhaps the graphic representing it. Nothing more. It is the right to being able to call your Barbie space adventure “Star Control”. It is unclear to me why that was purchased in the first place. Stardock made statements acknowledging this early on.
The threat that Stardock is putting on P&F is the claim that the old Atari contract to use and distribute is still valid, along with the concept that P&F did not “create” the IP in Star Control, they did “work for hire” as contractors when this was developed, and do not have creative rights. This is also why Alien name trademarks don’t make sense, unless they are making action figures or selling posters.
No one really cares about the name, that is the crust. It is the IP, the pudding in the middle everyone wants.
I suspect if P&F believed the Atari contract was valid, they would have gone for it. They seem to have physical evidence showing it is not. That’s for the court to decide.
This is new to me. Any chance you could dig up documentation of that detail?
I don’t think there’s any implication of false pretenses or anything like that, just that due to non-use the trademark would have expired. Trademarks need to remain in active use in commerce to remain valid. The trademark invalidation argument probably isn’t a very strong one but since the trademark is the entire basis for the suit against them the defense will of course try to make the plaintiff prove the trademark is still valid and can be used against them.
So the 2006 renewal application by Infogrames used a photocopy of cover of the CD release of a SC1/2 compilation as the specimen (+ a post-it note explaining what it was…):
http://tsdr.uspto.gov/documentviewer?caseId=sn75095591&docId=SPE20061213103300#docIndex=11&page=1
http://tsdr.uspto.gov/documentviewer?caseId=sn75095591&docId=SPE20061213103300#docIndex=11&page=2
But obviously a game compilation released in the mid-'90s won’t get you very far. So the 2007 application by Atari uses this beauty instead (hmm… direct link might not work; if not, look for “original PDF file” and click through):
Which apparently was written in two days, while learning Flash:
(This post is so great on so many levels.)
http://wiki.uqm.stack.nl/Star_Control_derivatives#Star_Control_flash_game
Meta-data of images inside the Flash applet show a modification date of 2007-09-16 or 2007-09-17, suggesting that this was the weekend during which the game was created. One day later, images of this game were used in Atari’s Declaration of Use In Commerce submitted to the United States Patent and Trademark Office with Atari’s application for renewal of their trademark. The suspicious timing, together with the simple nature of the game and the fact that the game had to be delivered in just four days, has led some to believe that the game was created specifically for the purpose of retaining the Star Control Trademark [4].
There’s a short blog post from the “developer” about how they were actually asked to complete it in 4 days and did:
http://web.archive.org/web/20080423043502/http://blogs.iocainestudios.com/
I do my best to help Misguided individuals ;)
But seriously, what you describe with your wife’s publisher sounds not dissimilar to the arrangement P&F had with accolade. They had a contract that gave them the copyrights, and a publisher publishing rights. As long as they received a minimum number in royalties each year the publisher retained the exclusive rights to sell the Star Control games. Many years ago they stopped getting royalties, so those publishing rights ended and all rights reverted back to P&F (of course other than trademarked name “Star Control” as specified in the contract).
The situation with the selling of the original games would be like if some years from now your wife’s publisher stopped selling the books and thus paying royalties and the rights have reverted back to her per whatever contract terms she got the advance under. Then some years later the publisher goes bankrupt and sells its catalog to another company. That company then starts selling your wife’s books again without asking or making any royalty arrangements (and when she asks them to stop, they sue her over stating she wrote the original books).
Yeah, I get it (finally). It feels like all this should have been settled amicably. What a mess.
Woah, that’s amazing. I mean, I’ve heard of that kind of thing before (wasn’t there some Shannarra series that was shot to keep the licensing rights?), but didn’t know they did it with SC.
Trademark and patent law in the U.S. is stupid & broken beyond belief.
Indeed it is. Another example that caused quite a ruckus in romance writing circles lately:
That developer turned around an incredibly fast contract gig on a new platform to them just after having their own game flop. Thats not easy when you are on your ass financially as well as creatively. Fair play to them.
Thanks for the link by the way, fascinating stuff.