AGREEMENT This Agreement (the “Agreement”) is by and between Stardock Systems, Inc. a Michigan corporation with its principal place of business at 5090 Beck Road, Plymouth, Michigan 48170, and Brad Wardell, an individual residing in Michigan, and their respective affiliates, successors, and assigns (collectively “Stardock”) and Paul Reiche III and Fred Ford, individuals residing in California, and their respective affiliates, successors, and assigns (collectively “Reiche”) (together, the “Parties” or separately, the “Party”), and is to become effective upon the complete execution of this Agreement by the Parties (the “Effective Date”). RECITALS WHEREAS, Accolade, Inc. (“Accolade”) and Reiche entered into a Publishing Agreement dated October 7, 1988, and three (3) Addenda thereto, pertaining to the development and publishing of computer software programs (collectively the “1988 License Agreement”). WHEREAS, on December 8, 2017, Stardock filed suit in the U.S. District Court for the North District of California (Civil Case No. 3:17-cv-07025) against Reiche for trademark and copyright infringement, in addition to other causes of action (the “Lawsuit”), and on February 22, 2018, Reiche filed its Answer, Affirmative Defenses and Counterclaim against Stardock for copyright and trademark infringement, in addition to other causes of action; WHEREAS, “Classic Star Control Games” shall hereinafter mean and collectively refer to “Star Control I”, “Star Control II” and any work used in, for, or in association with “Star Control 3” that was present in or that was referenced or derived from Star Control I and/or Star Control II; WHEREAS, “Reiche’s Work” shall hereinafter mean and collectively refer to all Work and all Derivative Works (as respectively defined in the 1988 License Agreement) developed by or otherwise licensed, assigned or transferred to Reiche (without copyrightable contributions of Accolade), with respect to the Classic Star Control Games, including, without limitation, the characters, names, ships, planets, races, events, locations, contest, likenesses, characteristics, plot lines, canon, lore, settings, sounds, music, source and object code, user interface / user experience (UI/UX) elements, and any other similar proprietary rights in and to such materials; WHEREAS, Accolade was the owner of: a) U.S. Trademark Registration No. 2,046,036 for the word mark STAR CONTROL (the “Mark”); and b) U.S. Copyright Registration No. PA0000799000 dated 1997-01-24 (the “Copyright Registration”) for the game titled Star Control 3, subject to Reiche’s retained rights to any work used in or for Star Control 3 that was present in or that was referenced or derived from Star Control I and/or Star Control II (collectively, the “Reiche Retained Rights”); WHEREAS, Stardock wishes to continue to develop and distribute a game titled “Star Control: Origins” (hereinafter “Stardock Origins”) and Reiche wishes to develop and distribute a new game titled “The Ghosts of the Precursors.”
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WHEREAS, to settle the Lawsuit and in lieu of further litigation, the Parties desire to amicably resolve their disputes and differences, and to memorialize the settlement of such disputes and differences, and the Parties have agreed to the matters in accordance with the terms of this Agreement. AGREEMENT NOW, THEREFORE, in consideration of the foregoing and the release of liability, covenants and agreements set forth herein, and for other good and valuable consideration, the receipt and sufficiency of which are hereby acknowledged, the Parties agree as follows: I.
NEW GAME DEVELOPMENT a. Reiche shall not object to, interfere with, and/or challenge in any way Stardock’s, development, publication, and/or distribution of Stardock Origins, provided that Reiche’s Work and Reiche’s Retained Rights are not used in any way, at any time or in any manner with respect to or in association with such development, publication or distribution, without prior notice to and the explicit written approval of Reiche. Provided further however, nothing herein shall be deemed to restrict or expand any otherwise legal use of Reiche’s Work or Reiche’s Retained Rights (e.g. fair use, individual and personal noncommercial use, etc.) by anyone. b. Stardock shall not object to, interfere with and/or challenge in any way Reiche’s development, publication, and/or distribution of The Ghosts of the Precursors as a continuation of its Classic Star Control Games or any other versions that Reiche may choose to develop, produce and/or distribute from time to time, provided that Reiche refrains from any and all use of the Mark as a trademark in connection with its distribution of The Ghosts of the Precursors or other versions. Provided further however, nothing herein shall be deemed to restrict or expand any otherwise legal use of the Mark or the term “Star Control” (e.g. fair use, nominative fair use, etc.) by anyone.
II.
DISTRIBUTING CLASSIC GAMES – OPEN SOURCE a. On or before the Effective Date, the Parties shall contribute to the Ur-Quan Masters Open Source Project started in 2002 and currently accessible from http://sc2.sourceforge.net/ all their respective rights, except with respect to use of the Mark, to distribute the “Star Control I”, “Star Control II”, and Star Control 3 games for non-commercial use, under a mutually agreeable noncommercial use license. b. The Parties shall cease and refrain from any and all commercial distribution of the “Star Control I”, “Star Control II”, and “Star Control 3” games through any commercial channel, unless otherwise mutually agreed in advance by all Parties.
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III.
GOODWILL a. Neither Party shall willfully and deliberately take any action to “pass off” or “free-ride” on the goodwill or reputation of the other Party or their respective games, works, or marks. For example: (i) Reiche shall not reference the term “Star Control” intending to pass off or free-ride on the goodwill of the Mark; and (ii) Stardock shall not reference the Classic Star Control Games or Reiche’s names or use Reiche’s Work or Reiche’s Retained Rights intending to pass off or free ride on the goodwill and reputation of the Classic Star Control Games or their original creators. b. All Parties may use the terms “Star Control”, "The Ur-Quan Masters" and "Ghosts of the Precursors" to, expressly or implicitly, describe, refer to, or distinguish between the Parties’ respective games, for attribution, and to avoid potential confusion with respect to the source or origins of their respective games, provided that such uses do not imply any sponsorship or endorsement by Stardock with respect to The Ghosts of the Precursors or the Classic Star Control Games, or by Reiche with respect to Star Control: Origins or any other Stardock related titles. c. All Parties shall refrain from statements or actions, expressly or implicitly, that suggest any past, present or future working, consulting or other similar collaborative relationship or association of any kind between Reiche, on the one hand, and Stardock and/or Brad Wardell, on the other hand, without all Parties’ prior written consent.
IV.
TRADEMARK USE a. Reiche shall immediately cease, desist and further refrain from using the Mark, or any confusingly similar variation thereof, as a trademark in connection with the distribution of The Ghosts of the Precursors or other versions, provided however nothing herein shall be deemed to restrict or expand any otherwise legal use of the Mark or the term “Star Control.” Even more specifically, Reiche may only use or continue to use the Mark as restricted or permitted under applicable law. b. Reiche shall refrain from objecting to and/or in any way challenging Stardock’s right, title and interest in the Mark, and any application and/or registration therefore; and shall not contest, oppose, cancel or challenge Stardock’s use or registration of the Mark. c. Stardock shall withdraw, cancel or otherwise terminate the following list of applications for trademark registrations and shall cease or refrain from any similar registration efforts with respect to any other mark derived from Reiche’s Work or Reiche’s Retained Rights.
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Application Number 87825741 87388625 87810499 87810495 87810492 87810486 87810484 87810480 87810528 87810526 87810518 87810516 87810502 87720654 87662697 V.
Mark YEHAT SOCIETY CHENJESU ANDROSYNTH SPATHI SYREEN UR-QUAN ORZ MELNORME VUX ARILOU PKUNK ILWRATH THE UR-QUAN MASTERS SUPER MELEE
COPYRIGHT USE a. Stardock shall immediately cease, desist and further refrain from using, copying, publishing, displaying, performing, distributing or otherwise rendering, whether in original format or as newly rendered art, any of Reiche’s Work or Reiche’s Retained Rights on www.starcontrol.com, or any similarly branded website or via any other channels controlled in any way by Stardock, or in or associated with Stardock: Origins. b. Stardock represents and warrants that it has not and will not use, rely upon, display, perform, render or derive any work from Reiche’s Work or Reiche’s Retained Rights in, to or for Stardock: Origins or any other games, versions, derivative works or derivative products at any time. Particularly, without limitation, Stardock will not use or allow, permit or promote, and will prevent or discontinue the use of, any characters, names, ships, planets, races, events, locations, contests, likenesses, characteristics, themes, plot lines, canon, lore, settings, sounds, music, source or object code, user interface / user experience (UI/UX) elements, and any other similar materials or other such work present in the Classic Star Control Games, whether in Stardock: Origins or any other Stardock related game title, without prior notice to and explicit written approval of Reiche. Provided further however, nothing herein shall be deemed to restrict or expand any otherwise legal use of Reiche’s Work or Reiche’s Retained Rights (e.g. fair use, individual and personal non-commercial use, etc.). c. Stardock shall cease, desist and refrain from using any of Reiche’s Work or Reiche’s Retained Rights, in any manner for packaging, marketing, sales of any game or products, including Stardock: Origins, for press or social media announcements or public relations, or in any other similar manner, without Reiche’s prior written consent. Page 4 of 7
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d. Reiche shall refrain from using any of Stardock’s copyrighted work in any manner for packaging, marketing, sales of any game or products, for press or social media announcements or public relations, or in any other similar manner, without Stardock’s prior consent. VI.
BEST EFFORTS AND GOOD FAITH a. The Parties will use their best efforts and will act fairly and in good faith to describe, reference, distinguish and differentiate their respective games and to reasonably avoid confusion as to their respective origins. b. The Parties shall each separately and respectively publish mutually agreeable statements on their websites, social media platforms, and other similar channels with respect to this Settlement Agreement on or about its Effective Date. c. Each Party hereto shall bear its own respective costs, expenses, and attorneys’ fees with respect to the Lawsuit and this Settlement Agreement.
VII.
ADDITIONAL TERMS a. Release. Subject to full and complete compliance with the terms and conditions of this Agreement, the Parties hereby release and discharge each other, each other’s current and former parents, affiliates, subsidiaries, divisions, owners, officers, directors, employees, agents, representatives, attorneys, successors, and assigns of and from any and all claims, actions, causes of action, suits, obligations, liabilities, and demands whatsoever, whether in law or equity, known or unknown, relative to the subject matter of this Agreement prior to the Effective Date of this Agreement. b. Waiver of Section 1542. The Parties intend and agree that this Agreement extends to all claims of every nature and kind, known or unknown, suspected or unsuspected, prior to the Effective Date, and that the waiver and release provided for in this Agreement shall be effective as a full and final release of and from all matters related thereto, and, in furtherance of this intention, the Parties acknowledge and agree that they are familiar with and have been advised by legal counsel concerning the legal effect of California Civil Code Section 1542, which provides as follows: “A general release does not extend to claims which the creditor does not know or suspect to exist in his or her favor at the time of executing this release, which if known by him or her, must have materially affected his or her settlement to debtor.” The Parties being aware of, and having been advised by legal counsel as to, the significance and legal effect of Section 1542 of the California Civil Code, hereby expressly waive and relinquish any and all rights and benefits any such Party may have thereunder or under any other statute or common law principle Page 5 of 7
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of similar effect with respect to the waivers and releases provided for in this Section. c. Representations and Warranties. Each Party represents and warrants that (a) it read this Agreement, has received the assistance of counsel with respect to this Agreement, and understands the contents hereof, and has executed this Agreement voluntarily and without duress or undue influence on the part of or on behalf of any other Party; and (b) the person signing this Agreement on such Party’s behalf has authority to do so, and that there is no need for court approval or for the countersignature of any other person, including without limitation, any officer, director, member, stockholder or other representative, to make the Agreement binding against that Party. d. No Admission of Liability. The Parties acknowledge that this Agreement represents a compromise of disputed claims and shall not be considered an admission of liability by any Party for any purpose. All of the Parties hereto acknowledge that no representation or promise not expressly set forth in this Agreement has been made by any other Party or by any of their agents, servants, employees, representatives, attorneys or accountants, and that there are no representations or promises which are not expressly set forth herein. e. Full Disclosure and Non-Disparagement. The terms of this Agreement may be fully disclosed by either Party at any time to any third party at either Party’s nonexclusive discretion. Each Party, including their directors, officers, executives, agents and employees, agrees not to disparage or demean in any manner the reputation of the other Party. f. Territorial Scope: The territorial scope of this Agreement shall be worldwide. g. Applicable Law. This Agreement shall be governed by, and construed in accordance with, the laws of the State of California and, as applicable, the laws of the United States of America, notwithstanding any conflicts of laws principles of any other jurisdiction. Further, to the maximum extent permitted under the law, the exclusive and sole jurisdiction and venue for any lawsuit, action, claim or counter-claim related to this Agreement shall be in the state or federal courts located in and for Marin County, California. h. Binding Agreement. This Agreement shall be binding upon the Parties and their respective parents, subsidiaries, affiliates, heirs, successors and assigns. i. Severability. If any provision of this Agreement shall, for any reason or to any extent, be invalid or unenforceable, the remainder of this Agreement shall be enforced to the fullest extent permitted by law. j. Construction. The terms, provisions and conditions of this Agreement represent the results of negotiations between Stardock and Reiche through counsel of their own choosing. Accordingly, the terms, provisions and conditions of this Agreement shall be interpreted and construed in accordance Page 6 of 7 SA GOTP_20180323_2793 2635.000/1265433.1
with their usual and customary meanings, and Stardock and Reiche, expressly, knowingly and voluntarily waive the application, in connection with the interpretation and construction of this Agreement, of any rule of law or procedure to the effect that ambiguous or conflicting terms, conditions or provisions shall be interpreted or construed against the Party whose legal counsel prepared the executed version or any prior drafts of this Agreement. k. Further Assurances. In addition to the documents, instruments and acts described in this Agreement and which are to be executed and/or delivered and/or taken pursuant to this Agreement, each Party agrees to promptly execute and deliver from time to time upon request by the other Party, such other documents, and instruments, and take such other action, as may reasonably be required to more fully completely evidence and carry out the transactions contemplated by this Agreement. l. Headings and Defined Terms. Descriptive headings are used in this Agreement for convenience only and shall not control, limit, amplify or otherwise modify or affect the terms and provisions of this Agreement or the meaning or construction of the terms and provisions of this Agreement. m. Counterparts. This Agreement may be executed in a number of identical counterparts, each of which for all purposes is deemed an original, and all of which constitute collectively one agreement. n. Entire Agreement. This Settlement Agreement constitutes the entire agreement of the Parties with respect to the matters set forth herein, and supersedes any and all prior agreements or understandings, written or oral, between them relating to the subject matter of this Settlement Agreement. No other promises or agreements shall be binding upon the Parties with respect to this subject matter unless contained in this Settlement Agreement or separately agreed to in writing and signed by an authorized representative of each Party. IN WITNESS WHEREOF, the following Parties have executed this Agreement on the dates set out below. STARDOCK SYSTEMS, INC.
PAUL REICHE III
By: Name: Title: Date:
By: Name: Date:
BRAD WARDELL
FRED FORD By: Name: Date:
By: Name: Date:
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