The New York Southern District Court ruled in favor of Activision Blizzard in a trademark suit brought against it by AM General. The case originated from the depiction of the Humvee military vehicle in the “Call of Duty” video game franchise. The court granted Activision’s motion for summary judgment and denied AM’s motion for partial summary judgment.
Plaintiff AM General accused Activision of “trademark infringement, trade dress infringement, unfair competition, false designation of origin, false advertising, and dilution under the Lanham Act” and New York state laws. AM General was contracted by the United States Defense Department to build the High Mobility Multipurpose Wheeled Vehicle, best known as the “Humvee.” The vehicle now often used in U.S. military operations and the operations of other countries.
AM General has licensed other companies to use the Humvee trademark “‘on or in connection with a wide variety of products,’ including toys and at least four video games…Humvees have also appeared in a wide variety of other media, including Hollywood blockbusters,…[and] television series.”
“Call of Duty” is a popular video game franchise, a “first-person shooter series developed, produced, and distributed by Activision…characterized by its realism, cinematic set-pieces, and fast-paced multiplayer mode.” “Humvees are depicted in nine Call of Duty games for varying durations.” For example, “sometimes they appear briefly in the background or are mentioned in passing through dialogue, at other times, players ride in a Humvee for several minutes during a scene or level.” Additionally, “at times, the player can even ‘assum[e] control of the [Humvee],’ including by firing a turret-mounted machine gun.” Humvees are also featured in several of the game trailers and in-game guides; sometimes players cannot advance to the next level without interacting with the Humvee. AM General owns the trademark and trade dress for Humvee, which Activision did not license nor obtain permission to use. AM General sent a cease and desist letter to defendants, after which the defendants released another game that featured Humvees, so AM General sued for patent infringement.
In dismissing the case, the court noted that courts interpret the Lanham Act narrowly for “artistic or expressive” works, to protect First Amendment free speech rights. Using the Rogers test, the court had to determine first, if the trademark use had any “artistic relevance to the underlying work whatsoever”; if so, they must determine if the use “explicitly misleads as to the source or the content of the work.” The court added that it “was metaphysically possible for Defendants to have produced video games without the presence of Humvees,” however, the court believed that the inclusion of Humvees has artistic relevance. “Featuring actual vehicles used by military operations around the world in video games about simulated modern warfare surely evokes a sense of realism and lifelikeness to the player who ‘assumes control of a military soldier and fights against computer-controlled or human-controlled opponent across a variety of computer generated battlefields.’” Further, “the uses of the plaintiff’s name and logo ‘easily met the artistic relevance requirement under Rogers because they gave players ‘a sense of a particularized reality of being part of an actual elite special forces operation and serve[d] as a means to increase specific realism of the game.’”
The court also found the use of the defendant’s marks was not explicitly misleading. The parties use Humvees “for different purposes.” …[w]hile both parties have the general ‘purpose’ of selling products for profit, Plaintiff’s purported concept of shared purpose is far too abstract to argue reasonable confusion. Put simply, Plaintiff’s purpose in using its mark is to sell vehicles to militaries, while Defendants’ purpose is to create realistically simulating modern warfare video games for purchase by consumers.” Additionally, AM General “has presented no evidence that it is likely to enter the video game industry let alone evidence that consumers would expect it to do so.” The Court determined that there was no evidence of actual confusion or bad faith attempts, no evidence presented to suggest one product was superior to the other, and no likelihood of product confusion because “some 50 militaries from around the world, including the U.S. Armed Forces – are not buying Call of Duty games, and vice versa…there is no risk whatsoever that someone will buy the wrong product by accident out of sheer confusion about who built or distributed the product.”
AM General is represented by Quinn Emanuel Urquhart & Sullivan, as well as McDermott Will & Emery. Activision Blizzard is represented by Mitchell Silberberg & Knupp.