Case 4:17-cv-07025-SBA Document 1 Filed 12/08/17 Page 1 of 22

1 Robert A. Weikert (Bar No. 121146)

rweikert@nixonpeabody.com
2 Dawn N. Valentine (Bar No. 206486)
dvalentine@nixonpeabody.com
3 NIXON PEABODY LLP
One Embarcadero Center
4 San Francisco, California 94111-3600
Tel: (415) 984-8385
5 Fax: (866) 294-8842

6
David L. May (Pro Hac Vice Pending)
7 dmay@nixonpeabody.com
Jennette E. Wiser (Pro Hac Vice Pending)
8 jwiser@nixonpeabody.com
NIXON PEABODY LLP
9 799 9th Street NW
Washington, DC 20001-4501
10 Tel: (202) 585-8220
Fax: (202) 585-8080
11
Attorneys for Stardock Systems, Inc.
12
UNITED STATES DISTRICT COURT
13
NORTHERN DISTRICT OF CALIFORNIA
14

15
STARDOCK SYSTEMS, INC., Case No.:
16
Plaintiff, COMPLAINT FOR TRADEMARK
17 INFRINGEMENT, UNFAIR
vs. COMPETITION AND FALSE
18 DESIGNATION OF ORIGIN AND
TRADEMARK DILUTION UNDER THE
19 LANHAM ACT; COPYRIGHT
PAUL REICHE III and ROBERT INFRINGEMENT UNDER THE
20 FREDERICK FORD, COPYRIGHT ACT; STATUTORY
TRADEMARK INFRINGEMENT AND
21 Defendants. DILUTION AND UNFAIR
COMPETITION UNDER CALIFORNIA
22 LAW; AND TRADEMARK
INFRINGEMENT AND UNFAIR
23 COMPETITION UNDER CALIFORNIA
COMMON LAW
24
DEMAND FOR JURY TRIAL
25

26

27

28
COMPLAINT

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1 1. Plaintiff Stardock Systems, Inc. (“Plaintiff” or “Stardock”), by its undersigned

2 attorneys, brings this Complaint against Defendant Paul Reiche III (“Reiche”) and Defendant
3
Robert Frederick Ford (“Ford”) (collectively, “Defendants” or “Reiche and Ford”), for
4
trademark infringement, unfair competition and false designation of origin and trademark dilution
5
under the Lanham Act, 15 U.S.C. §§ 1051 et seq.; copyright infringement under the Copyright Act
6

7 of 1976, 17 U.S.C. §§ 101 et seq.; and trademark infringement and unfair competition under

8 California common law.

9
JURISDICTION AND VENUE
10

11 2. This Court has subject matter jurisdiction over Stardock’s claims pursuant to 15

12 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338(a) because these claims arise under the Lanham

13 Act, 15 U.S.C. §§ 1114, 1116, 1125(a) and 1125(c) and the Copyright Act, 17 U.S.C. § 501(a). In
14 addition, supplemental jurisdiction over the related state law claims is conferred upon this Court
15
by 28 U.S.C. § 1367(a).
16
3. This Court has personal jurisdiction over Defendants because, upon information and
17
belief, Defendants have regularly transacted, and continue to transact, business in this State;
18

19 contract to supply goods and/or services in this State; are causing tortious injury by an act in this

20 State; and are causing tortious injury in this State by an act outside this State where they regularly

21 do or solicit business, engage in other persistent courses of conduct and/or derive substantial
22
revenue from goods used or consumed, or services rendered, in this State.
23
4. Defendants, upon information and belief, are residents of this State and otherwise,
24
have sufficient minimum contacts with this State, through at least the promotion, advertising,
25
marketing, offering for sale and/or sale of the Ghosts of Precursors Game (as defined infra) and/or
26

27

28
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COMPLAINT

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1 the Classic Star Control Games (as defined infra) within this State, such that this Court has personal
2 jurisdiction over Defendants.
3
5. Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391 because a
4
substantial part of the acts complained of herein occurred in this judicial district and Defendants
5
are subject to personal jurisdiction in this judicial district.
6

7 INTRADISTRICT ASSIGNMENT

8 6. A substantial part of the events and omissions giving rise to the claims in this case

9 occurred at least in the County of Marin, including but not limited to the marketing and promotion
10
of Defendants’ Ghosts of the Precursors Game, the offering for sale and/or sale of the Classic Star
11
Control Games and the use of Stardock’s STAR CONTROL Mark (as defined infra). Accordingly,
12
assignment to the San Francisco Division is proper pursuant to Civil L.R. 3-2(e).
13
THE PARTIES
14

15 7. Plaintiff Stardock Systems Inc. is a Michigan corporation with a principal place of

16 business at 15090 Beck Road Plymouth, Michigan 48170.

17 8. Defendant Paul Reiche III is an individual with, upon information and belief, a last
18
known place of residence at 2533 Laguna Vista Drive, Novato, California 94945-1562.
19
9. Defendant Robert Frederick Ford is an individual with, upon information and belief,
20
a last known place of residence at 730 Eucalyptus Avenue, Novato, California 94947-2835.
21

22 FACTUAL BACKGROUND

23 The Development and Ownership of the Classic Star Control Games

24 10. On October 7, 1988, Accolade, Inc. (“Accolade”) and Reiche entered into a
25 license agreement pertaining to the development and publishing of computer software programs
26
(the “1988 Agreement”).
27

28
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COMPLAINT

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1 11. In 1990, under the terms of the 1988 Agreement, Accolade developed and
2 published Star Control, a science fiction video game focused on space combat and featuring
3
space ship characters (hereinafter “Star Control I”). Reiche and/or Ford contend that he/they
4
contributed certain undefined material and/or programming to Star Control I, in collaboration
5
with numerous other authors and contributors, to assist Accolade in the development of the game.
6

7 12. Later, in 1992, Accolade developed and published Star Control II: The Ur-Quan

8 Masters, a sequel to Star Control I under the 1988 Agreement, and incorporating new characters

9 of space ships and alien races (hereinafter “Star Control II”). Similarly, Reiche and Ford
10
contend that he/they contributed certain undefined material and/or programming to Star Control
11
II, in collaboration with numerous other authors and contributors, to assist Accolade in the
12
development of the game.
13
13. Subsequently, in 1996, Accolade published Star Control III, as a sequel to Star
14

15 Control II under the 1988 Agreement (hereinafter “Star Control III”). Reiche and Ford were

16 offered the right of first refusal to help develop Star Control III but declined to participate and
17 were not otherwise involved in the creation of the game.
18
14. Star Control I, Star Control II, and Star Control III are collectively hereinafter
19
referred to as the “Classic Star Control Games.”
20
15. Pursuant to the 1988 Agreement, Accolade held the exclusive license to, inter alia,
21

22 market, distribute and sell the Classic Star Control Games in exchange for the payment of certain

23 royalties to Reiche.

24 16. Separate from the license grant as defined in the 1988 Agreement, the 1988
25 Agreement also provided to Accolade the sole and exclusive right to create computer software
26
programs based on or derived from any characters, themes, settings or plot lines from the Classic
27

28
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COMPLAINT

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1 Star Control Games and any translation, port or adaptation of the Classic Star Control Games in
2 exchange for the payment of certain royalties to Reiche.
3
17. Also, pursuant to the 1988 Agreement, Accolade was the owner of the title,
4
packaging concept, and packaging design in and to the Classic Star Control Games and any
5
trademarks and other intellectual property rights adopted and used by Accolade in the marketing
6

7 thereof, including but not limited to the STAR CONTROL Mark (collectively the “Accolade

8 Star Control IP”).

9 18. In addition, pursuant to the 1988 Agreement, Accolade was the owner of any and
10
all rights in and to the Star Control Copyrights (as defined infra), as Accolade developed the
11
game without the assistance of Reiche and Ford.
12
19. In or around 1999, Atari, Inc. (“Atari”) acquired Accolade, thereby assuming all
13
rights and obligations under the 1988 Agreement, including all rights to the Accolade Star
14

15 Control IP, including but not limited to the STAR CONTROL Mark and the Star Control

16 Copyrights, and publishing rights to the Classic Star Control Games.

17 20. In 2013, the 1988 Agreement, along with certain other assets, including the STAR
18
CONTROL Mark, certain copyrights in and to the Classic Star Control Games, including but not
19
limited to the Star Control Copyrights, as well as publishing rights to the Classic Star Control
20
Games (collectively, the “Atari Star Control Assets”) were assigned to Stardock via an asset
21

22 purchase agreement and associated intellectual property assignment between Stardock and Atari

23 dated July 18, 2013 (hereinafter “Asset Purchase Agreement”). A copy of the intellectual

24 property assignment is attached hereto as Exhibit A and is incorporated herein by reference.

25 21. The Classic Star Control Games have become widely popular over the last couple
26
of decades in the video game community and the Star Control brand has acquired a valuable
27
fame, reputation and goodwill among the purchasing public as result
28
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COMPLAINT

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1 Stardock, the STAR CONTROL Mark and the Star Control Copyrights
2 22. Stardock is a preeminent software and video game development, distribution and
3
publishing company founded in 1991 by Bradley Wardell and recognized for its successful
4
computer games, including Galactic Civilizations, Sins of a Solar Empire, and Ashes of the
5
Singularity, to name a few.
6

7 23. Pursuant to the Asset Purchase Agreement, Stardock owns all rights in and to

8 the Atari Star Control Assets, which include but are not limited to the STAR CONTROL Mark

9 and any other trademarks originally adopted and used by Accolade in the marketing of the Classic
10
Star Control Games, as well as the Star Control Copyrights.
11
24. In particular, Stardock is the owner of U.S. Trademark Registration No. 2,046,036
12
for the mark STAR CONTROL in connection with computer game software, and manuals
13
supplied as a unit therewith in Class 28 (“Star Control Trademark Registration”). Copies of
14

15 the United States Patent and Trademark Office (“USPTO”) status report and registration

16 certificate for the Star Control Trademark Registration are attached hereto and incorporated
17 herein by reference as Exhibit B.
18
25. The Star Control Trademark Registration is valid, subsisting, in full force and
19
effect; and, incontestable under U.S. Trademark Act Section 15 (37 USC Sec 1058(a)(1)) as
20
evidenced by the Notice of Acceptance and Acknowledgment attached hereto and incorporated
21

22 herein by reference as Exhibit C.

23 26. Stardock’s Star Control Trademark Registration, Star Control Application and

24 common law rights in and to the mark STAR CONTROL are collectively hereinafter referred to as
25 the “STAR CONTROL Mark.” The trademark registration for the STAR CONTROL Mark is in
26
full force and effect. Stardock has continuously used the STAR CONTROL Mark in commerce in
27
the United States since its acquisition of the Atari Star Control Assets by offering for sale and
28
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COMPLAINT

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1 selling the Classic Star Control Games and marketing and promoting Stardock’s New Star Control
2 Game (as defined infra) under the STAR CONTROL Mark.
3
27. The STAR CONTROL Mark has obtained valuable fame, reputation and goodwill
4
as a result of the success of the Classic Star Control Games. As the owner of the STAR CONTROL
5
Mark, the rights inuring from such reputation and goodwill are owned by Stardock.
6

7 28. Stardock is also the owner of U.S. Copyright Registration No. PA 799-000 for the

8 work titled “Star Control 3,” which covers the artwork embodied in Star Control III, namely, any

9 and all audiovisual materials, computer programming, text, graphics in the game and accompanying
10
materials and musical score (the “Star Control Copyrights”). Copies of the registration certificate
11
for the Star Control Copyrights and the recordation of the assignment with the Copyright Office is
12
attached hereto and incorporated herein by reference as Exhibit D.
13
The Development of Stardock’s New Star Control Game
14

15 29. In or about 2013, shortly after its acquisition of the Atari Star Control Assets,

16 Stardock decided to create a new game under the STAR CONTROL Mark titled Star Control:
17 Origins (“Stardock’s New Star Control Game”), as a successor to the Classic Star Control
18
Games, and in or about July 2013, Stardock offered Reiche and Ford the right of first refusal to
19
collaborate in the development of Stardock’s New Star Control Game.
20
30. On July 23, 2013, in an email to Stardock, Reiche and Ford acknowledged
21

22 Stardock owns the STAR CONTROL Mark.

23 31. On or about September 16, 2013, Reiche and Ford refused Stardock’s offer to

24 collaborate in the development of its new game.

25 32. In response, on or about October 15, 2013, Stardock offered to transfer to Reiche
26
and Ford Stardock’s newly acquired rights to the Atari Star Control Assets and Classic Star
27
Control Games from Atari including, among other rights, all publishing rights for the Class Star
28
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COMPLAINT

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1 Control Games, all code and assets for Star Control III, and the rights to the STAR CONTROL
2 Mark, for the price Stardock paid to acquire the rights, to which Reiche and Ford declined.
3
33. On or about October 25, 2013, Stardock further advised Reiche and Ford that it
4
was preparing to substantially invest in the development of Stardock’s New Star Control Game,
5
and offered Reiche and Ford another opportunity to purchase the Atari Star Control Assets. See
6

7 communications between the Parties attached hereto and incorporated herein by reference as

8 Exhibit E

9 34. On or about October 29, 2013, Reiche and Ford, again, refused Stardock’s offer to
10
purchase the Atari Star Control Assets at the same cost Stardock paid to acquire the rights from
11
Atari and to otherwise be involved in the development of Stardock’s New Star Control Game.
12
See Exhibit E.
13
35. Throughout 2014 and the beginning of 2015, Stardock wrote to Reiche and Ford
14

15 with updates on the creation of Stardock’s New Star Control Game and then on or about

16 September 24, 2015, Stardock reached back out to Reiche and Ford to provide further updates on
17 the progress of Stardock’s New Star Control Game, advising that the game was in full production.
18
36. On or about October 18, 2016, Stardock publicly announced its expected release of
19
Stardock’s New Star Control Game on its website. See a copy of Stardock’s press release
20
attached hereto and incorporated herein by reference as Exhibit F.
21

22 37. On or about July 28, 2017, Stardock, again, contacted Reiche and Ford providing a

23 status report on the release of Stardock’s New Star Control Game, updates with respect to certain

24 features of the game and in light of the 25th anniversary of Star Control II, requested to interview
25 Reiche and Ford about their involvement with Star Control II.
26
38. On or about August 1, 2017, Reiche and Ford replied to Stardock’s request for an
27
interview by declining the opportunity.
28
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COMPLAINT

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1 39. Throughout its communications with Reiche and Ford regarding the release of
2 Stardock’s New Star Control Game beginning in 2013, Stardock continuously made its intentions
3
clear that it preferred to collaborate with Reiche and Ford on the project and that Stardock’s New
4
Star Control Game would be a successor to the Classic Star Control Games under the STAR
5
CONTROL Mark.
6

7 40. On or about November 16, 2017, Stardock released the Beta 1 of Stardock’s New

8 Star Control Game on its website. See a copy of Stardock’s press release of the Beta 1 attached

9 hereto and incorporated herein by reference as Exhibit G.

10
Reiche and Ford and their Infringing Actions
11
41. Reiche and Ford are American game designers and developers who often work
12
together to create computer programs and games.
13
42. On or about October 9, 2017, and before the launch of Stardock’s New Star
14

15 Control Game, Reiche and Ford publicly announced its expected release of a new game titled

16 Ghosts of the Precursors (hereinafter the “Ghosts of Precursors Game”).

17 43. Reiche and Ford, without the authorization of Stardock, used the STAR
18
CONTROL Mark in the advertising and promotion of the Ghosts of Precursors Game. See a copy
19
of Reiche and Ford’s press release for the Ghosts of Precursors Game attached hereto and
20
incorporated herein by reference as Exhibit H.
21

22 44. This announcement was made despite Reiche and Ford knowing of Stardock’s

23 ownership rights to the STAR CONTROL MARK and valuable fame, goodwill and reputation

24 associated with the STAR CONTROL Mark, and in despite of Stardock’s imminent plans to release
25 Stardock’s New Star Control Game.
26
45. Reiche and Ford, recognizing the valuable fame, reputation and goodwill associated
27
with the STAR CONTROL Mark, desired to associate their new Ghosts of Precursors Game with
28
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COMPLAINT

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1 such valuable fame, reputation and goodwill associated with the STAR CONTROL Mark. since
2 their announcement, Reiche and Ford have, without the authorization of Stardock, used the STAR
3
CONTROL Mark to market, advertise and promote the Ghosts of Precursors Game as a “direct
4
sequel” to Star Control II, thereby using Stardock’s STAR CONTROL Mark in the advertising and
5
promotion of the Ghosts of Precursors Game. A small sample of such false marketing claims by
6

7 Reiche and Ford are attached hereto and incorporated herein by reference as Exhibit I. See also

8 Exhibit H.

9 46. Reiche and Ford have, without the authorization of Stardock, also used the STAR
10
CONTROL Mark within the hashtag “#starcontrol” in connection with its marketing, advertising
11
and promotion of the Ghosts of Precursors Game. An example of Reiche and Ford using the
12
#starcontrol hashtag is attached hereto and incorporated by reference as Exhibit J and depicted
13
below.
14

15

16

17

18

19
20

21

22
47. Reiche and Ford have, without the authorization of Stardock, also used cover art
23
from the Classic Star Control Games, which is owned by Stardock pursuant to the Asset Purchase
24
Agreement, that prominently displays the STAR CONTROL Mark, in the advertising and
25

26 promotion of the Ghosts of Precursors Game. An example of Reiche and Ford using the cover art

27 is attached hereto and incorporated by reference as Exhibit K and depicted in Exhibit H and below.
28
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COMPLAINT

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9 48. Reiche and Ford have over the course of time and up to now have repeatedly held

10 themselves out as the “creators” of Star Control I and Star Control II, especially in their marketing,

11 advertising and promotion of the Ghosts of Precursors Game. Examples of Reiche and Ford
12 referring to themselves as the “creators of Star Control” are attached hereto and incorporated herein
13
by reference as Exhibit L and depicted below.
14

15

16

17

18

19
20

21 49. However, Reiche or Ford’s advertising that they are the “Creators of Star Control”
22
is false. As Reiche and Ford know, it was Accolade, not them that created Star Control I and Star
23
Control II. Upon information and belief, any authorship that Reiche and Ford may have contributed
24
to the Classic Star Control Games was limited, and it was instead a team of many other authors,
25
including numerous artists, animators, musicians, designers and writers, among others, that
26

27 collaborated together to develop creatives used in Star Control I and II.

28
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COMPLAINT

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1 50. Upon information and belief, and contrary to the common public understanding and
2 what they have portrayed to the public, Reiche and Ford may not have created any of the artwork,
3
animation or characters incorporated in the games, or otherwise substantially contributed to the
4
authorship of Star Control I and Star Control II.
5
51. Reiche and Ford’s advertising themselves as being the “creators” of the Classic Star
6

7 Control Games is false and misleading, and has been made in an attempt to dishonestly benefit

8 from the goodwill and reputation associated with the STAR CONTROL Mark to which they have

9 never had rights.

10
52. Additionally, on or about October 22, 2017, Stardock became aware that Reiche and
11
Ford were, without Stardock’s permission, marketing, advertising, promoting, selling, offering for
12
sale, distributing, supplying and/or causing or contributing to the sale and/or distribution of the
13
Classic Star Control Games on GOG, pursuant to an agreement with GOG, in connection with the
14

15 STAR CONTROL Mark and in violation of the Star Control Copyrights. See a recent posting on

16 Reiche and Ford’s website attached hereto and incorporated herein by reference as Exhibit M.
17 53. Accordingly, on or about November 9, 2017, Stardock requested that Reiche and
18
Ford immediately cease all sales of the Classic Star Control Games on GOG, thereby, putting
19
Reiche and Ford on notice of their infringement of the STAR CONTROL Mark and the Star Control
20
Copyrights.
21

22 54. Even as recent as December 4, 2017, after being put on notice of their

23 infringement of the Star Control Mark through the unauthorized sale of the Classic Star Control

24 Games on GOG, and in further blatant disregard of Stardock’s registered rights in the STAR
25 CONTROL Mark, Reiche and Ford indicated to the public that they intend to continue to violate
26
Stardock’s rights in and to the STAR CONTROL Mark by offering one or more of the Classic
27
Star Control Games for free in the near future. See Exhibit M.
28
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COMPLAINT

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1 55. Reiche and Ford’s actions in these and other respects have created actual and
2 substantial confusion, mistake and/or deception among consumers in the marketplace with respect
3
to the source or origin of the Ghosts of Precursors Game and Stardock’s New Star Control Game
4
and have caused consumers and will continue to cause consumers to erroneously believe that the
5
Ghosts of Precursors Game is associated with the goodwill and reputation of the Classic Star
6

7 Control Games and the STAR CONTROL Mark and brand, as exemplified from the consumer post

8 within Exhibit N hereto and incorporated herein by reference.

9 56. Reiche and Ford have intentionally and deliberately tried to delegitimize Stardock’s
10
New Star Control Game using, at the very least, Stardock’s STAR CONTROL Mark without
11
Stardock’s permission, and have jeopardized the success of Stardock’s New Star Control Game,
12
thereby creating substantial and irreparable harm to Stardock given the significant financial
13
resources that Stardock has invested in Stardock’s New Star Control Game.
14

15 57. Reiche and Ford’s actions as well as their false and misleading misrepresentations

16 to consumers and the media have generated negative press and negative consumer reaction that has
17 created substantial and irreparable harm to Stardock, its reputation, and the financial success of its
18
Stardock’s New Star Control Game.
19
58. By the same means, Reiche and Ford have also created conditions in the marketplace
20
by which Reiche and Ford stand to profit from having passed off on the goodwill and reputation
21

22 associated with the STAR CONTROL Mark and the Classic Star Control Games, and from having

23 publicly made such false and misleading statements.

24 59. Reiche and Ford have long been aware of Stardock and its ownership in and to the
25 STAR CONTROL Mark as evidenced by the years of communications between the Parties leading
26
up to the release of both games.
27

28
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COMPLAINT

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1 60. Other than perhaps via the 1988 Agreement (which Reiche and Ford contend has
2 been terminated); Reiche and Ford do not have any relationship, affiliation and/or connection with
3
Stardock, nor have they received Stardock’s permission to use the STAR CONTROL Mark, or any
4
other marks or source identifying indicia relating to the Classic Star Control Games owned by
5
Stardock, in connection with any game or program whatsoever.
6

7 61. Upon information and belief, Reiche and Ford have taken the aforesaid actions with

8 the intent to pass off on, and associate themselves with, the goodwill and reputation that is

9 associated with Stardock’s STAR CONTROL Mark and to confuse actual and potential customers
10
into believing that Reiche and Ford and the Ghosts of Precursors Game is affiliated with, endorsed
11
by, or is otherwise associated with Stardock, the Classic Star Control Games and/or the STAR
12
CONTROL Mark. See examples of consumer confusion attached hereto and incorporated by
13
reference as Exhibit O.
14

15 62. Upon information and belief, Reiche and Ford are knowingly, intentionally, and

16 willfully infringing upon the STAR CONTROL Mark.

17 63. Upon information and belief, Reiche and Ford have acted and continue to act with
18
full knowledge of Stardock’s prior rights in and to the STAR CONTROL Mark.
19
64. Stardock has made numerous attempts to work with Reiche and Ford to resolve the
20
issues discussed herein and come to a mutually beneficial agreement, yet Reiche and Ford have
21

22 shown little willingness to cooperate with Stardock, which is exemplified by the fact that Reiche

23 and Ford have made it clear that they intend to move forward with the production and release of a

24 “direct sequel” to the Classic Star Control Games, namely, Star Control II, without the permission
25 of Stardock.
26
COUNT I
27 Trademark Infringement
(15 U.S.C. § 1114(1))
28
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COMPLAINT

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1 65. Stardock specifically incorporates and references the allegations asserted in each of
2 the preceding paragraphs, as if fully set forth herein.
3
66. Stardock is the owner of the STAR CONTROL Mark and the Star Control
4
Trademark Registration pursuant to the Asset Purchase Agreement and has continuously used the
5
STAR CONTROL Mark as a source identifier in connection with its products and services,
6

7 particularly in connection with the Classic Star Control Games and Stardock’s New Star Control

8 Game, in interstate commerce within the United States and around the world.

9 67. Without authorization or consent of Stardock, Reiche and Ford were, or are still
10
currently, marketing, advertising, promoting, selling, offering for sale, distributing and/or
11
supplying goods and/or services, such as, the Ghosts of Precursors Game and/or the Classic Star
12
Control Games, to the general public and/or to retailers or resellers in the United States using the
13
STAR CONTROL Mark and/or trademarks and designations that are confusingly similar to the
14

15 STAR CONTROL Mark.

16 68. Reiche and Ford’s use of the STAR CONTROL Mark and/or similar designations
17 thereto in connection with the marketing, advertising, promoting, selling, offering for sale,
18
distributing and/or supplying goods and/or services, such as, the Ghosts of Precursors Game and/or
19
the Classic Star Control Games, is likely to cause and has actually caused confusion, mistake, and
20
deception among the general public as to the origin of such goods and/or services, or as to whether
21

22 Reiche and Ford is sponsored by/affiliated with, or otherwise connected to Stardock in violation of

23 15 U.S.C. § 1114(1).

24 69. By using the STAR CONTROL Mark and/or confusingly similar marks or
25 designations to the STAR CONTROL Mark and by marketing, advertising, promoting, selling,
26
offering for sale, distributing and/or supplying goods and/or services, such as, the Ghosts of
27
Precursors Game and/or the Classic Star Control Games, in connection with such marks, for profit
28
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COMPLAINT

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1 and without Stardock’s authorization, Reiche and Ford are depriving Stardock of its exclusive right
2 to control, and benefit from, the STAR CONTROL Mark. If permitted to continue, Reiche and
3
Ford’s actions will nullify Stardock’s right to exclusive use of its the STAR CONTROL Mark, free
4
from infringement, and will have a substantial and adverse effect on Stardock’s existing and
5
projected future interstate business of marketing products and services identified by the STAR
6

7 CONTROL Mark.

8 70. Stardock has been damaged by Reiche and Ford’s activities and conduct and, unless

9 their conduct is enjoined, Stardock’s goodwill and reputation will continue to suffer irreparable
10
injury that cannot adequately be calculated or compensated by money damages.
11
71. By using the STAR CONTROL Mark and/or confusingly similar designations, and
12
marketing, advertising, promoting, selling, offering for sale, distributing and/or supplying goods
13
and/or services, such as, the Ghosts of Precursors Game and/or the Classic Star Control Games, in
14

15 connection with such marks, Reiche and Ford have intentionally and knowingly infringed

16 Stardock’s rights.
17 72. Reiche and Ford’s trademark infringement actions entitle Stardock to damages in an
18
amount to be determined at trial, as well as exemplary damages and attorneys’ fees and costs.
19
COUNT II
20 Counterfeiting
(15 U.S.C. § 1116(d))
21
73. Stardock specifically incorporates and references the allegations asserted in each of
22
the preceding paragraphs, as if fully set forth herein.
23

24 74. As set forth herein, Reiche and Ford were, or are still currently, using marks that are

25 substantially indistinguishable from the STAR CONTROL Mark, which is set forth in the Star

26 Control Trademark Registration, in connection with the marketing, advertising, promoting, selling,
27

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COMPLAINT

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 Case 4:17-cv-07025-SBA Document 1 Filed 12/08/17 Page 17 of 22

1 offering for sale, distributing and/or supplying goods and/or services, such as, the Ghosts of
2 Precursors Game and/or the Classic Star Control Games.
3
75. Specifically, Reiche and Ford were, or are still currently, using counterfeit
4
reproductions of the Star Control Trademark Registration directly on or in connection with the
5
Ghosts of Precursors Game and/or the Classic Star Control Games, including but without limitation,
6

7 in connection with the sale of the Classic Star Control Games by Reiche and Ford on GOG.

8 76. Reiche and Ford were, or are still currently, using the Star Control Trademark

9 Registration, without authorization, in connection with the Ghosts of Precursors Game and/or the
10
Classic Star Control Games, which are the same or substantially the same goods and/or services to
11
which the Star Control Trademark Registration are directed, in order to cause the ordinary
12
consumer to be unable to distinguish between Star Control Trademark Registration and Reiche and
13
Ford’s counterfeit reproductions of the same.
14

15 77. Reiche and Ford’s use of the Star Control Trademark Registration without

16 authorization and in connection with the advertising, offering for sale and/or sale of the Ghosts of
17 Precursors Game and/or the Classic Star Control Games is damaging the reputation and good will
18
associated with Stardock and Star Control Trademark Registration.
19
78. Unless Reiche and Ford’s conduct is enjoined from its use of the Star Control
20
Trademark Registration, Stardock will continue to suffer irreparable injury that cannot be
21

22 adequately calculated or compensated by money damages.

23 79. Reiche and Ford’s counterfeiting actions entitle Stardock to statutory damages

24 pursuant to 15 U.S.C. § 1117(c) and its reasonable attorneys’ fees pursuant to 15 U.S.C. § 1117(a).
25
COUNT III
26 Unfair Competition and False Designation of Origin
(15 U.S.C. § 1125(a))
27

28
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COMPLAINT

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 Case 4:17-cv-07025-SBA Document 1 Filed 12/08/17 Page 18 of 22

1 80. Stardock specifically incorporates and references the allegations asserted in each of
2 the preceding paragraphs, as if fully set forth herein.
3
81. Reiche and Ford have used and/or continue to use marks, designations and images
4
that are likely to cause confusion, mistake, and deception among the general public as to the origin
5
of the goods and services, or as to whether Reiche and Ford are sponsored by, affiliated with, or
6

7 otherwise connected with Stardock in violation of 15 U.S.C. § 1125(a).

8 82. Stardock has been damaged by Reiche and Ford’s activities and conduct and, unless

9 its conduct is enjoined, Stardock’s reputation and goodwill will continue to suffer irreparable injury
10
that cannot be adequately calculated or compensated by money damages.
11
83. By using the STAR CONTROL Mark and/or confusingly similar marks or
12
designations to the STAR CONTROL Mark, and by marketing, advertising, promoting, selling,
13
offering for sale, distributing and/or supplying goods and/or services, such as, the Ghosts of
14

15 Precursors Game and/or the Classic Star Control Games in connection with such marks, Reiche

16 and Ford have intentionally and knowingly infringed Stardock’s rights.

17 84. Reiche and Ford’s unlawful actions entitle Stardock to damages in an amount to be
18
determined at trial, as well as exemplary damages and attorneys’ fees and costs.
19
COUNT IV
20 Trademark Dilution
(15 U.S.C. § 1125(c))
21
85. Stardock specifically incorporates and references the allegations asserted in each of
22
the preceding paragraphs, as if fully set forth herein.
23

24 86. As stated herein, the STAR CONTROL Mark is distinctive, within the meaning of

25 15 U.S.C. § 1125(c)(1).

26 87. Through extensive use, sales, advertising, promotion, and continuity, the STAR
27 CONTROL Mark has become famous within the meaning of 15 U.S.C. § 1125(c)(1).
28
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COMPLAINT

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 Case 4:17-cv-07025-SBA Document 1 Filed 12/08/17 Page 19 of 22

1 88. Reiche and Ford’s use of the STAR CONTROL Mark and/or confusingly similar
2 marks or designations to the STAR CONTROL Mark is impairing the distinctive nature of the
3
STAR CONTROL Mark and is thereby causing dilution by blurring within the meaning of 15
4
U.S.C. § 1125(c)(1).
5
89. Reiche and Ford’s willful and intentional actions entitle Stardock to an injunction
6

7 pursuant to 15 U.S.C. § 1125(c)(1) and damages in an amount to be determined at trial, as well as

8 exemplary damages and attorneys’ fees and costs.

9 COUNT V
Copyright Infringement
10 (17 U.S.C. § 501(a))
11 90. Stardock specifically incorporates and references the allegations asserted in each of
12
the preceding paragraphs, as if fully set forth herein.
13
91. Stardock is the owner of the Star Control Copyrights, which is protected under
14
U.S. Copyright Registration No. PA 799-000.
15
92. Reiche and Ford have actual notice of Stardock’s rights in and to the Star Control
16

17 Copyrights.

18 93. Reiche and Ford did not attempt and failed to obtain Stardock’s consent or
19 authorization to use, reproduce, copy, display, distribute, sell, perform and/or market Stardock’s
20
Star Control Copyrights embodied in the Star Control III game.
21
94. Reiche and Ford, without permission, knowingly and intentionally reproduced,
22
copied, displayed, distributed, sold, performed and/or marketed Stardock’s Star Control
23

24 Copyrights, and/or at a minimum, substantially similar works to the Star Control Copyrights, by

25 marketing, advertising, promoting, selling, offering for sale, distributing and/or supplying the Star

26 Control III game on GOG.

27

28
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COMPLAINT

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1 95. Reiche and Ford’s unlawful and willful actions constitute infringement of
2 Stardock’s Star Control Copyrights, including Stardock’s rights, at the very least, to reproduce,
3
distribute and sell the Star Control Copyrights in violation of 17 U.S.C. § 501(a).
4
96. Reiche and Ford’s knowing and intentional copyright infringement of the Star
5
Control Copyrights has caused substantial and irreparable harm to Stardock and unless enjoined,
6

7 Reiche and Ford will continue to cause, substantial and irreparable harm to Stardock for which

8 they have no adequate remedy at law.

9 97. Stardock is therefore entitled to injunctive relief, Stardock’s actual damages and
10
Reiche and Ford’s profits in an amount to be proven at trial and enhanced discretionary damages
11
or, in the alternative, statutory damages for willful copyright infringement of up to $150,000 per
12
infringement, and reasonable attorney’s fees and costs.
13
COUNT VI
14
California Common Law Trademark Infringement and Unfair Competition
15
98. Stardock specifically hereby incorporates by reference the allegations asserted in the
16
preceding paragraphs as if fully set forth herein.
17
99. Reiche and Ford’s use of the STAR CONTROL Mark and/or other similar
18

19 designations in connection with their goods and services, including but not limited to in connection

20 with the Ghosts of Precursors Game and/or the Classis Star Control Games, without Stardock’s
21 permission constitutes common law trademark infringement and unfair competition.
22
100. Reiche and Ford have infringed the STAR CONTROL Mark, as alleged herein, with
23
the intent to deceive the public into believing that the services they offer are approved of, sponsored
24
by, or affiliated with Stardock. Reiche and Ford’s acts, as alleged herein, were committed with an
25

26 intent to deceive and defraud the public.

27

28
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COMPLAINT

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 Case 4:17-cv-07025-SBA Document 1 Filed 12/08/17 Page 21 of 22

1 101. Stardock has been seriously and irreparably damaged by Reiche and Ford’s
2 continued use of the STAR CONTROL Mark and/or other similar designations.
3
102. Stardock possesses no adequate remedy at law to address the damage caused by
4
Reiche and Ford’s continued use of one or more of the STAR CONTROL Mark or other similar
5
designations.
6

7 103. Reiche and Ford’s unlawful actions entitle Stardock to compensatory and other

8 applicable damages in an amount to be proven at trial.

9 PRAYER FOR RELIEF

10
WHEREFORE, Stardock respectfully requests that this Court:
11
i. Preliminarily and permanently enjoin Reiche and Ford, and all persons acting in
12
concert with them, or purporting to act on their behalf or in active concert or in
13
participation with them, from using Stardock’s trademarks and any confusingly
14

15 similar designations and require Reiche and Ford and the participating persons to

16 discontinue their current infringing practices.

17 ii. Enter judgment in favor of Stardock on the counts asserted herein and award
18
Stardock all monetary damages caused by the acts forming the basis of this
19
Complaint, including, without limitation, Reiche and Fords’ profits and Stardock’s
20
actual and other damages as alleged above.
21

22 iii. Award of treble damages to Stardock pursuant to 15 U.S.C. § 1117(b) due to Reiche

23 and Fords’ willful, knowing, and intentional infringement of Stardock’s trademarks.

24 iv. Award of statutory damages to Stardock pursuant to 15 U.S.C. § 1117(c) due to

25 Reiche and Fords’ counterfeiting of Stardock trademarks.
26

27

28
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COMPLAINT

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 Case 4:17-cv-07025-SBA Document 1 Filed 12/08/17 Page 22 of 22

1 v. Award of statutory damages to Stardock pursuant to 17 U.S.C. § 504(c) due to

2 Reiche and Ford’s willful, knowing, and intentional infringement of Stardock’s
3
registered copyright.
4
vi. Award all damages suffered by Stardock pursuant to California common law.
5
vii. Order Reiche and Ford to pay Stardock the cost of this action and Stardock’s
6

7 reasonable attorneys’ fees pursuant to 15 U.S.C. § 1117(a) and any other applicable

8 statutes.

9 viii. Award Stardock such further relief as it deems just, proper and equitable.
10
JURY DEMAND
11
Stardock hereby demands a trial by jury on all issues so triable, pursuant to Federal Rules
12
of Civil Procedure 38.
13
Dated: December 8, 2017 Respectfully submitted,
14

15 NIXON PEABODY LLP

16
By: /s/ Robert A. Weikert
17
Robert A. Weikert (Bar No. 121146)
18 rweikert@nixonpeabody.com
Dawn N. Valentine (Bar No. 206486)
19 dvalentine@nixonpeabody.com
NIXON PEABODY LLP
20 One Embarcadero Center
San Francisco, California 94111-3600
21 Tel: (415) 984-8385
Fax: (866) 294-8842
22
David L. May (Pro Hac Vice Pending)
23 dmay@nixonpeabody.com
Jennette E. Wiser (Pro Hac Vice Pending)
24 jwiser@nixonpeabody.com
NIXON PEABODY LLP
25 799 9th Street NW
Washington, DC 20001-4501
26 Tel: (202) 585-8220
Fax: (202) 585-8080
27
Attorneys for Stardock Systems, Inc.
28
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COMPLAINT

4819-2929-5192.2