AM General, LLC, the maker of Humvee vehicles has filed a lawsuit against the video game publisher for Call of Duty for trademark infringement for use of its vehicles in its video game. The lawsuit was filed in Federal Court in the Southern District of New York in early November and occurred at about the same time as the newest game in the Call of Duty franchise debuted.
The makers of the vehicle believe that the use of its four-wheel drive, military truck recently used in war zones in Iraq and Afghanistan has contributed to the success of its video game sales. Activision claims that over 250 million copies have been sold of its first-person shooter game attributing to more than $15 billion in revenue. The video game can be played on all major consoles and was the number one video game in 2016.
The lawsuit claims that Activision deceived gameplayers in believing that “AM General license the games or is somehow involved [in their] creation.” It is “[w]rongfully leveraging the goodwill and reputation AM General has developed in these marks [HUMVEE} and [HMMWV]…” AM General owns the marks for HUMVEE and HMMWV, an acronym for High Mobility Multipurpose Wheeled Vehicle.
AM General lists 8 video game releases for the Call of Duty franchise in which it alleges infringement of its trademark and trade dress. This does not include Call of Duty’s latest release although it might be added at a later date. The lawsuit includes screenshots of the use of Humvee (or HMMWV) marks in its video games as well as promotional screenshots which bolster the company’s claim that Activision used the Humvee to promote the franchise.
The lawsuit presents two interesting questions many applying for marks and markholders ask when it comes to the use of trademark material. As noted in this post, there is a number of issues related to the physical world and the digitized world when it comes to whether consumers would actually perceive relatedness and confusion. The argument here is that there would be no consumer confusion as to the maker of the military trucks (AM General) and the video game maker (Activision). Essentially, gamers would not be confused that Humvee makers produced the video game or that Activision made trucks.
The second issue is whether there is an inferred endorsement, sponsorship or approval between AM General and Activision. In its Complaint, AM General notes that it has licensed the use of the HUMVEE mark in several other video games. Thus, other video game makers have paid for the use of the HUMVEE trademark and/or HUMVEEs in its games. But, it appears Activision did not seek a license with AM General.
Activision might be able to argue a nominative fair-use defense which would allow the use of a trademark without permission so long as the use is for description and reference to the product simply as a point of reference. There is also the “Rogers test” which states that “an artistic work’s use of a trademark that otherwise would violate the Lanham Act is not actionable unless the [use of the mark] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless [it] explicitly misleads as to the source or the content of the work.” The test stems from the Ginger Rogers-Alberto Grimaldi case. In that case, the Second Circuit ruled in favor of the defendant as it related to a lawsuit filed by Ginger Rogers who sued Alberto Grimaldi for a film which emulated a dance routine featuring Rogers and Fred Astaire. The Court stated that there is a conflict between the right to protect a celebrity’s name and the right for others to express themselves freely in their own artistic work. In that case, the Court sided with the right to express versus trademark protection when it came to the mark’s minimal use so long as it did not “explicitly denote authorship, sponsorship, or endorsement by the celebrity or explicitly mislead as to content. See Rogers v. Grmaldi, 875 F.2d 994, 1005.
It will be interesting to see how the Second Circuit will rule on this case. If the Court determines to use the Rogers test, it would bode well for Activision although AM General may argue that the use of the Humvee in promotion would assume endorsement and mislead. But, if it is believed to be used as a mere source identifier, Activision would have a solid case. The issue of consumer confusion appears to be a subjective one and will be dependent on briefing to determine the outcome.
I will keep you posted.