Activision, the makers of the Call of Duty, received a win in the U.S. District Court for the Southern District of New York over AM General, LLC from a lawsuit stemming from the use of Humvees in its video game. The Court determined that the use of the vehicle without authorization did not infringe on the company’s trademark as the game makers were protected by the First Amendment.
Humvee Lawsuit – Order on MSJ by MMA Payout on Scribd
The Court also granted Summary Judgment for Major League Gaming, an esports league that was also a co-defendant in the lawsuit.
Call of Duty is a video game described in the opinion as one of the “most popular and well-known video game franchises in the world” with over 130 million units sold. It is a first-person shooter series developed, produced, and distributed by Activision.
The overarching issue with the lawsuit which drew many eyes from the IP community is the potential that it would muddle the test established in Rogers v. Grimaldi. In that case, the Court endorsed a test as to whether the use of a mark has artistic relevance, and if so, whether the work is explicitly misleading. The opinion states:
[t]he balance [between trademark interests and First Amendment speech interests] will normally not support application of the [Lanham] Act unless [the use of the trademark] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless [the use of the trademark] explicitly misleads as to the source or the content of the work.”
Essentially, courts must “strike the balance between the two competing considerations of allowing artistic expression and preventing consumer confusion.”
The makers of Humvee, the Plaintiff in this case, indicated that the Court should establish an additional eight-factor test for consumer confusion set forth in Polaroid v. Polarad. Humvee argued that the “explicitly misleading” prong could be satisfied upon particularly compelling evidence of the likelihood of confusion.
When acknowledging the Polaroid test, the Judge finds in favor of Activision as he believes that the use of Humvees in Call of Duty has some artistic relevance. The Judge states, that “realism can have artistic merit in itself,” in supporting Activision’s argument for its use in the game.
The opinion in the Humvee case may provide some guidance in interpreting the
balance between the First Amendment and Lanham Act protections. Here, the Court sided with Activision for its
use of the Humvee in its video game because the depiction of realism has “artistic
merit.” The question is whether this
ruling expands the bounds of First Amendment protection for those that would
like to use brands in video games, video, books, etc. One might argue that the definition of “artistic
merit” under the guise of First Amendment is being expanded to depict
realism.
We will see if the makers of Humvee push back with an appeal.