As I said, it’s not that simple to claim abandonment. In fact, above I said “Claims of copyright or trademark abandonment are very - very - difficult to prove and win.”
Also see:
"Abandonment of copyright or dedication to the public domain occurs when a copyright owner intentionally gives up copyright protection for a work. When the copyright in a work is abandoned by the owner it enters the public domain. Thus, s/he no longer owns any exclusive rights in the work and cannot bring a claim of copyright infringement against anyone who makes use of the work.
The courts are of the view that rights gained under the Copyright Law may be abandoned. Abandonment of such rights, however, must be manifested by some overt act indicative of a purpose to surrender the rights and allow the public to copy." - Hampton v. Paramount Pictures Corp., 279 F.2d 100
Isn’t that why I said this (which you quoted)?
“So this entire case hinges on what P&F can prove, and I still assert that it’s going to be very tough for them to win this without being able to show clear evidence of that ownership, and that it never passed along to a third-party, let alone expired after a term.”
Even though you are of the opinion that it’s as cut and dry as you think - again - I have to say that not only is IP law a finicky beast, but it’s going to take a lot more than decades old notes to assert pre-existing ownership. Especially when abandonment comes into play. Not to mention the fact that if it were that straightforward, the Stardock case wouldn’t have survived a motion to dismiss, and we wouldn’t be having this discussion.
Mark my words, I think a lot of people are going to be very surprised at the outcome of this case. Taking sides is a non-starter.
The difference is that trademark abandonment could happen due to lack of use (if proven in court, etc…), while copyright abandonment doesn’t. The owner has to give up their right explicitly.
Thus, P&F’s copyright can’t be claimed as abandoned unless they argue the Ur-Quan Masters project means they relinquished copyright, but if I understand correctly, the copyrighted work it’s actually licensed through a CC-A-SA-NC license (so the rights are licensed, not given into the public domain).
But Stardock’s trademark could be argued to have been abandoned. Now, I agree with you this is extremely hard to prove, and probably extremely unlikely, but the two parts of the IP do stand on very different legal ground regarding abandonment.
I agree. This murkiness of IP law, and how it tends to go South even when appearing to be blatantly obvious to the common man, is why I have always asserted that the outcome of this case isn’t going to be what most people expect.
Just to be clear, I was talking about trademark abandonment here, by Atari, because all of the games sold by Atari used Paul’s copyright, so after that copyright license from Paul ran out, Atari could not legally sell them. That establishes a decade long period of non-use of the trademark, three years of which is sufficient to make a prima facie showing of abandonment under trademark law. This places the burden of proof on Stardock to show that the trademark was not abandoned.
As Juan_Raigada noted, that’s a precedent about copyright abandonment, when the discussion is about trademark abandonment. The two bodies of law are entirely different.
I agree that P&F will have to prove their copyright ownership, but between the notes, the contracts, the fact that Atari acknowledged P&F’s copyright ownership when negotiating the GoG agreement, and the supporting testimony from basically everyone else who was there at the time, it seems to me like there’s more than enough evidence to establish their ownership of the copyrights, despite Stardock’s attempts to throw FUD all over it.
Just as an aside, the only reason Stardock can use this line of legal attack at all is because P&F didn’t bother to register their copyright in a timely manner. If they had submitted the exact same paperwork in 1997 instead of 2017, the law would presume the validity of their copyright without them having to prove it.
We’ve only just reached the stage of the case where motions to dismiss are being filed, and most of them probably won’t be heard until the dispositive motion hearing in May. And in any case, whether it’s “straightforward” doesn’t matter; it’s still a question of fact that has to go to the jury, unless the judge decides that it’s so conclusively proven that no reasonable jury could find otherwise. We’ll see if P&F try to make that argument or not, but even if they succeed in doing so, they’ll still have to prove that Stardock actually infringed those copyrights. That’s going to be the hard part for them.
Also when it comes to evidence of P&F’s copyrights there are the copyright notices on the products themselves. That’s pretty strong evidence right there.
There’s little chance this notion that they never had any copyrights will fly. This part of the case really isn’t a murky IP issue. It’s a huge stretch on Stardock’s part.
It won’t fly only if they can’t prove otherwise. The ambiguity is whether or not they owned the copyrights, and weren’t on a work-for-hire contract to create the works. If the latter is proven, then they won’t have any claim to owning the works.
Because I’ve said before that it’s not that simple or there would be no case, here, I will let the experts chime in.
To wit:
Trademark owners can often get back their rights even after a long period of without using them. However, it is up to the trademark owner to prove that they want to start using it again. Trademark owners may be able to make the following cases to enforce their rights:
Nonuse Rebuttal: To prove that they intend to continue to use the trademark, businesses must show evidence. This can include:
Advertising or internal presentations that feature the trademark
Proof of distribution of the trademarked goods
Excusable Nonuse: This happens when special situations prevent trademark owners from using the mark. They must show proof of situations out of their control. This could include seeking regulatory approval for production of the goods.
Trademark Assignment: Trademark owners can license or assign their rights to a third party. Doing this can keep trademark rights active. This is true even if the original owner doesn’t directly produce the goods or services.
If the trademark owner successfully defends nonuse, the trademark isn’t considered abandoned. If sufficient proof doesn’t exist, however, the trademark can be considered abandoned.
I have been speaking about both when referring to IP law. The case isn’t just about trademarks; it’s about an IP. And that encompasses both copyrights and trademark law.
Yep. Given the copyright assignments that have been filed by team members, and public statements like that of Greg Johnson, one has to wonder what Stardock could possibly do to try and prove P&F aren’t really the copyright holders. Their whole “they did nothing, the team did everything” line of attacks seemed to have been already completely cut off. What possible proof of their claims could Stardock even offer?
Back when I entered this thread because someone hailed me, I said the same thing, and that they had to settle it somehow. But then Stardock sent out what most of us found to be an atrocious and unconscionable offer.
I have known @Brad_Wardell for decades during which we’ve argued, fought, fussed etc, but I remain convinced that he wouldn’t have gone with this lawsuit if there was any other way. Whether he’s right or wrong is largely immaterial to the opinions we’re all expressing because when someone buys something they believe they own fair and square, then get challenged on it, there remains very little choice but to do everything possible to protect and clarify said ownership. I mean, this happens every - single - day; either behind the scenes or in court. But God forbid if someone tries to protect what they believe is theirs. That’s when people - usually those with an agenda borne of prior conflict and|or disagreement - get to pick sides; regardless of merit.
From where I’m sitting, and going by the filings, everything has been so aggressively contentious in the case that I really have no idea how any such settlement would even play out now. Especially since the product is now a commercial going concern which Stardock probably looks to further exploit in the coming years. And I can’t see any settlement where money will exchange hands between the parties. So when the dust settles, the only winners will be the attorneys.
I think what stirs people up after your replies is that you will often say “someone buys something they believe they own fair and square, then get challenged on it” which is the reverse of what happened here. Brad challenged them not the other way around. He’s the guy that went after Paul Reiche III and Fred Ford after years of badgering them to help him, then sell to him, etc.
That and the “threat” to what he purchased, as in the attempt to invalidate the trademark, was a result of the suit, not the impetus for it. It was also something that should have been easily predicted. It’s the very first thing any defendant in such a suit would seek to do. There has been an overall vibe of “how dare they defend themselves!” in Stardock’s positions.
Thinking they’d roll over and not want to go through with expensive litigation, which was quite obviously the strategy at the start, was a terrible miscalculation.
Sure, there are arguments that Stardock can attempt to make, but if we step back and look at the state of the world in 2010, it seems like the abandonment case was pretty clear. There had been no assignments of the “Star Control” trademark for someone else to use. Atari wasn’t waiting on regulatory approval for anything. And the last bona fide attempt to make a Star Control game was Accolade’s “StarCon”, over a decade prior. The 2007 flash game doesn’t count as bona fide use in commerce, because it was made over a weekend just before the trademark was renewed, and then thrown away.
So, unless Stardock digs up Atari’s secret plans for another “Star Control” game, I am convinced that as of 2010, the “Star Control” trademark qualified for abandonment, and could have been legally declared so if anyone had bothered to try at the time.
That is basically what happened here, and it’s where the legal murky zone is for me:
In 2002, all of the names in the game except for “Star Control” began to be used by the UQM project, infringing all of the unregistered secondary trademarks that Stardock claims that Atari had, without Atari trying to do anything about it. Then, in 2011, Atari began selling the old games through GoG, initially without Paul’s permission, and then later (after signing a new licensing contract) with his permission. Those sales continued until 2017. The two specific legal questions I still have about this are:
Is trademark abandonment a reversible state? That is, if the trademark qualified for abandonment in 2010, does a resumption of use fully reinvigorate the trademark, as though the abandonment had never occurred? Or is the trademark left partially or fully impaired, even after use resumes?
If trademarks can be reinvigorated this way, what happens if someone starts using the trademark while it was vulnerable (as UQM did with all the names)? Does this impair the trademark’s ability to be reinvigorated?
I’d love to hear from anyone with a citation that answers these questions.
All of that is largely irrelevant because any/all further action are a direct result of the initial engagement that prompted the lawsuit. See: cause and effect
You are aware that’s the nature of the majority of lawsuits, right? Maybe you’re not?
From the original post with the timeline in this thread:
July 18
Atari auctions its Star Control assets to Stardock for a reported $300-400k. (1)
Paul & Fred acknowledge in an email that Stardock owns the trademark for the Star Control name. (1)
July 21
On his online forum, as part of an early announcement to fans, Stardock CEO Brad Wardell states, “Atari doesn’t actually own the copyright on Star Control 1/2 so it’s not like one could make a Star Control 2 HD or what have you without a license from Paul Reiche. And even if we did have rights to SC 1/2 I wouldn’t touch them without his blessing.” (4)
July 22
-Stardock announces that it has acquired the rights to Star Control and intends to make a reboot inspired by Star Control II.
-Brad Wardell introduces himself to Paul in an email, announces his intent to make a new Star Control game, and asks to use Paul & Fred’s universe in exchange for royalties. He also asks if they would like to help make the new game. The next day, Paul & Fred respond saying they are willing to consider the possibility of a deal, and inform Brad of the status of their copyrights on the Star Control games as well as their distribution agreements with GOG. Brad responds “that is my reading of the agreement too.” (2)
That doesn’t seem to square with your statement
It sounded to me, even at the time back in 2013, that Brad knew what he was buying and what he still had to get from R&F.
That’s for a court to decide. That’s why there’s a lawsuit. Our opinions are 100% immaterial.
Whether or not it made money, was popular etc, is completely immaterial to the abandonment claim. In fact, they could argue that’s precisely why that Flash game was made.
I remain convinced that the abandonment claim is never going to fly.
Yes it is 100% reversible. That notion is rooted in IP law. And the answer is actually right there on the page that I quoted. In addition to the USPTO office guidelines, there are other online resources which deal specifically with that.
They will be invalidated if the legal owner is able to assert their rights. Again, this isn’t hard, it’s all in the legal guidelines. That’s why the abandonment guidelines are pretty clear. And there are literally THOUSANDS of case law precedent sitting up on PACER right now. One of the most famous (even though the context isn’t as clear) is the EA case over the “Edge” trademark.
