IP Law Daily Use of Humvee images in ‘Call of Duty’ videogames protected by First Amendment
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Thursday, April 2, 2020

Use of Humvee images in ‘Call of Duty’ videogames protected by First Amendment

By John W. Scanlan

Courts interpret the Lanham Act narrowly when a defendant’s product is artistic or expressive in order to avoid suppressing speech protected by the First Amendment.

Activision Blizzard—maker of war simulation videogames—was not liable for trademark infringement and other federal and state claims to the manufacturer of a military vehicle for the use of images of the vehicle in its games because the uses were protected by the First Amendment, the U.S. District Court for the Southern District of New York ruled in granting summary judgment to the videogame maker on all of the claims against it. There was little possibility of consumer confusion between a military vehicle and a videogame, the court also said (AM General LLC v. Activision Blizzard Inc., March 31, 2020, Daniels, G.).

AM General LLC (AMG) is the manufacturer of the High Mobility Multipurpose Wheeled Vehicle, which is commonly known as the Humvee. The Humvee is used by the United States military and military forces in more than 50 countries. Beginning in the 1990s, AMG has licensed the Humvee trademark for use in connection with toys, videogames, and other products, as well as movies and television shows. Activision Blizzard Inc. is a videogame maker and has authored, among other products, the Call of Duty series. Nine Call of Duty games have featured images of the Humvee used in game play, as well as in game trailers and strategy guides. According to AMG, these uses were not authorized. In June 2016, counsel for AMG’s outside licensing agency sent Activision a cease and desist letter objecting to the appearance of the Humvee in Activision’s games and authorized toys. After Activision released another Call of Duty title in November 2016 that contained images of the Humvee, AMG filed suit against it and affiliated entities. AMG alleged claims under the Lanham Act and New York law for trademark infringement, trade dress infringement, unfair competition, false designation of origin, false advertising, and dilution. Activision moved for summary judgment on all of AMG’s claims, and AMG moved for partial summary judgment on Activision’s laches claim.

Artistic/expressive products. Courts interpret the Lanham Act narrowly in cases involving a product that is artistic or expressive. The Second Circuit’s two-prong test from Rogers v. Grimaldi balances trademark interests against the First Amendment’s speech interests by providing that the Lanham Act does not apply unless the use of the mark has no "artistic relevance to the underlying work whatsoever" and "explicitly misleads as to the source of content of the work." The court noted that the threshold for "artistic relevance" is low and found that Activision’s uses of Humvees in the videogames met the threshold because any reasonable juror would find that the artistic value of using military vehicles in videogames about modern warfare added a sense of realism and possessed an artistic value that was "above zero." For the second prong, the court applied the eight factor Polaroid test for customer confusion, observing that likelihood of confusion must be particularly strong to outweigh the First Amendment interest involved.

Polaroid factors. The Polaroid factors weighed in favor of Activision because only the factors involving strength of the mark and consumer confusion favored AMG. Activision did not challenge the strength of AMG’s mark, but only its relevancy. As for degree of similarity, while AMG argued that Activision replicated the Humvee design so that consumers would recognize it, recognition is not confusion, and the marks were used for different purposes in that Activision was selling vehicles for militaries while Activision was creating video games for consumers. The products were not in proximity as they did not serve the same purpose, were not in the same general class, and were not used together. AMG argued that it also licenses the rights to use the Humvee image in toys and videogames, but this was not its "central purpose" but merely a "sporadic and marginal aspect" of its business. AMG presented no evidence that it was likely to enter the videogame industry or that consumers would expect it to enter this industry. An AMG survey showing that 16 percent of consumers shown actual game play were confused as to whether AMG was associated with the Call of Duty franchise, but this small amount of confusion was not enough to outweigh First Amendment considerations.

AMG was unable to make a showing by bad faith on the part of Activision; circumstantial evidence identified by AMG, including a "handful" of statements by Activision employees, the presence of Humvees with Call of Duty logos at promotional events, and statements in user guides included inside the games, did not show that Activision had a desire to "sow confusion" between the two companies’ products. Neither side presented evidence that one party’s products were superior in quality to the other’s products. Finally, there was no risk that consumers would purchase the wrong product unintentionally because there was little overlap between the militaries purchasing the Humvees and ordinary consumers purchasing the games. Videogame purchasers are likely sophisticated enough to realize that the presence of Humvees in a Call of Duty game does not mean that AMG endorses or sponsors the game.

Application of Rogers. The question under Rogers is whether Activision, the contested user, has offered a persuasive explanation regarding the use of the Humvee images as a "integral element" of the artistic expression. Their use in videogames that simulate modern warfare to enhance the realism of the games was a persuasive explanation, given the widespread military use of Humvees. Their inclusion was integral because it communicated ideas through features distinctive to the videogame medium, such as player interaction. Although AMG suggested that Activision’s use of the Humvee was for commercial rather than artistic purposes, its use can still be protected by the First Amendment because AMG did not present admissible evidence that AMG’s First Amendment arguments were pretextual.

Other claims. The court granted summary judgment on the federal and state trade dress claims because even if a Humvee’s trade dress is nonfunctional and has secondary meaning, the Polaroid analysis showed the improbability of confusion between a military vehicle and a videogame. For the same reason, Activision was entitled to summary judgment on the federal and state New York unfair competition claims. The false designation of origin claims failed because the only evidence presented was a paragraph of "legalese" in small text buried inside user guides for several games that was not likely to cause confusion as to the origin or sponsorship of the games. Summary judgment was granted to Activision on the federal false advertising claim because none of the cited advertisements contained a statement that was literally or impliedly false, and there was no evidence that AMG was injured; the state false advertising claim failed because there was no admissible evidence that Activision’s actions were deceptive or that AMG had been injured. Summary judgment was granted on the federal and state trademark dilution claims because AMG did not show that the use of Humvees in the Call of Duty games would tarnish or blur its mark, and some dilution must be tolerated in the interest of free expression.

This case is No. 1:17-cv-08644-GBD-JLC.

Attorneys: Carey Richard Ramos (Quinn Emanuel Urquhart & Sullivan LLP) for AM General LLC. Karin G. Pagnanelli (Mitchell Silberberg & Knupp LLP) for Activision Blizzard, Inc., Activision Publishing, Inc. and Major League Gaming Corp.

Companies: Activision Blizzard, Inc.; Activision Publishing, Inc.; Major League Gaming Corp.

MainStory: TopStory TechnologyInternet Trademark GCNNews NewYorkNews

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