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Harmony Gold's Macross, Mospeada, Southern Cross Licenses Still Expire in 2021

posted on 2017-09-14 18:20 EDT
California court upholds 2002 agreement with Tatsunoko

A California court in June upheld a license agreement between Harmony Gold U.S.A. Inc. and Tatsunoko Production, affirming that Harmony Gold's license to The Super Dimension Fortress Macross, The Super Dimension Cavalry Southern Cross, and Genesis Climber Mospeada will expire on March 14, 2021.

Harmony Gold can continue to make derivative works, including live-action adaptations, of all three titles until the license expires. All licenses and sublicenses will revert back to Tatsunoko at that time unless both parties extend the agreement. Harmony Gold owns the title Robotech in perpetuity, but when its license expires it will no longer be able to use or exploit works that are derivative of the three anime titles.

Arbitrition Case

Harmony Gold initiated arbitration against Tatsunoko in November 2016. Tatsunoko responded with counterclaims seeking US$15 million in damages, claiming Harmony Gold had breached contract by, among other things, sublicensing the shows and not paying home video royalties. The court ruled in favor of Harmony Gold, saying it had not breached any agreements.

Harmony Gold claimed that a provision in its 1998 agreement with Tatsunoko meant that the company could continue to exploit derivative works of all three shows in perpetuity, but on this point the court ruled in favor of Tatsunoko and upheld the 2021 expiration date.

As Harmony Gold had not breached contract, the court ordered Tatsunoko to pay Harmony Gold for legal fees and other costs of the case.

Background

Tatsunoko granted various rights to Macross, Mospeada, and Southern Cross to Harmony Gold in 1984. Harmony Gold edited and rewrote the three shows into its 85-episode Robotech series in 1985. Harmony Gold went on to produce sequels, including 1986's Robotech II: The Sentinels and 2006's Robotech: The Shadow Chronicles.

Harmony Gold also signed two live-action motion picture deals: in 2007 with Warner Bros. and in 2016 with Columbia Pictures. No live-action films have yet been released, but Deadline reported earlier this week that Jason Fuchs (Wonder Woman) is writing a script for a Robotech film.

In a 1991 agreement, Tatsunoko granted Harmony Gold the exclusive right to exploit 36 episodes of Macross, 25 episodes of Mospeada, and 23 episodes of Southern Cross for ten years. The two companies extended the term in 1998 and 2002, so license was ultimately extended to March 14, 2021.

Big West

Around 1998, advertising agency and Macross co-producer Big West filed against Tatsunoko, claiming it, not Tatsunoko, had the rights to make sequels to Macross. A 2003 court decision ruled in favor of Tatsunoko — notably saying that Tatsunoko had the right to license Macross to Harmony Gold — but Big West retains the rights to 41 of the original designs used in the series.

As a result of these proceedings, Tatsunoko and Harmony Gold's agreement in 1998 revoked Harmony Gold's right to make sequels to the three shows in question, but the 2002 agreement restored them for Mospeada and Southern Cross only. A 2003 agreement restored Harmony Gold's right to make derivative works of Macross, except with the designs owned by Big West. Tatsunoko disputed this 2003 agreement in its counterclaims, but the court upheld the agreement as valid.

Also as a result of the Big West litigation, Tatsunoko asked Harmony Gold to protect Macross trademarks outside of Japan, and agreed that Harmony Gold could deduct legal fees from royalties paid to Tatsunoko. Tatsunoko also disputed this agreement in its counterclaims, but again the court ruled in favor of Harmony Gold.

Source: Law 360 (Kelly Knaub) via Reddit

Update: Harmony Gold also holds several trademarks related to Macross. Its trademark for the Macross series was renewed on December 26, 2012, so it should expire on ten years from that date, on December 26, 2022. However, the pending expiration of the licensing agreement could affect the trademark ownership before 2022.


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