The enduring popularity of the “Call of Duty” video-game franchise—with more than 300 million copies sold since 2004—revolves around simulations of modern combat, including characters yelling “Get in the Humvee” from a detailed depiction of the military vehicle.
To Humvee maker AM General LLC, the concerted marketing usage goes over the line separating artistic liberty and branding rights. The outcome of its lawsuit against video game company
Activision, in its bid for a pre-trial victory, said AM General would have “a stranglehold on virtually any expressive depiction of 21st Century U.S. military history” if it wins the case. But AM General’s July 5 response says Activision strayed from First Amendment protection of depicting realistic combat by “slavishly” copying the military vehicle’s details, using its name in the game, and using Humvees in marketing and promotions.
“Activision crossed the line; in fact it blew through it,” AM General attorney Robert M. Schwartz, of Quinn Emanuel Urquhart & Sullivan LLP, said.
Trademark attorneys say an uneven standard to define that line for creators has developed across—and even within—circuits.
The Supreme Court’s 2011 decision in Brown v. Entertainment Merchants Association solidified that the First Amendment treats video games the same as books, TV, movies and news articles. That includes a right to use brands without clearly misleading consumers. But courts saying they treat them the same doesn’t mean they always do, according to intellectual property attorney William K. Ford of the John Marshall School of Law.
“In practice, video game publishers aren’t always treated the same way as the filmmakers,” Ford said. “It would be shocking if one of these entities like AMG went after a film about some modern military conflict and made this same argument.”
Activision’s reply to AM General’s response is due July 25.
Activision says its use of the Humvee “easily” satisfies the two-prong test from the U.S. Court of Appeals for the Second Circuit’s widely cited 1989 decision in Rogers v. Grimaldi. A group of 11 intellectual property professors and a video game trade association agreed in friend-of-the-court briefs, which are uncommon in district court cases.
Rogers permits trademark use with at least some artistic relevance, as long as it isn’t “explicitly misleading” consumers about whether the brand owner is associated with the work. Courts generally agree that sets a higher standard for consumer confusion than a traditional trademark test for likelihood of confusion, but not on how much higher.
A later Second Circuit case, Twin Peaks Prods. Inc. v. Publications Int’l Ltd., for example, applied a seemingly looser definition by requiring a “particularly compelling” likelihood of consumer confusion.
“That’s where all the disagreement in these cases come from: what does it mean to be ‘explicitly misleading?’” Ford said. “Even though the courts say they’re applying the same test, the test is not consistently applied.”
Intellectual property attorney Alan Behr of Phillips Nizer LLP, who has worked as general counsel for a video-game company, said “it would be nice” if new case law set clearer boundaries. But he doesn’t see the Humvee, however exact in depiction, as central to the user experience the way a specific car can be in a racing game or professional athlete’s persona in a sports game can be.
“If a Humvee is racing into battle, it’s not about the Humvee. It’s a thing needed to tell a story of combat effectively,” he said. “You have to take a top-down view of what you need to tell a story.”
AM General has licensed the Humvee to other game makers, while Activision has licensed other products. Whether a company has to get a license depends on a number of factors, attorneys say, but it largely still comes down to whether consumers would be confused by some standard.
Activision’s brief argues that Humvees appear in the advertisements for countless movies, TV shows, video games and the U.S. Army itself without AM General once suing for trade dress infringement or trademark dilution. It also faults AM General for waiting until 2017 to allege trademark violations in eight Call of Duty games released between 2007 and 2012.
“AMG cannot identify even a single bona fide purchaser that was confused about AMG’s involvement with the Call of Duty games over the nearly ten years since Activision first released Modern Warfare to the public. That fact alone is dispositive. It also is not surprising,” the video game maker said in its motion for summary judgment.
AM General’s opposing brief said “slavishly” copying the vehicle in the game while prominently using it in merchandise, trailers and advertisements falsely implies Humvee brand owners endorse the game. Even if the game enjoys First Amendment protection, using a real Humvee with a “Call of Duty” logo on it at a promotional event doesn’t.
“Advertisement is classic commercial speech that falls outside Rogers,” AM General argued. “No Second Circuit authority permits Activision’s Humvee merchandise to ride on any First Amendment interest Activision can claim in its games.”
Schwartz noted the professors and trade association hadn’t seen significant email evidence and depositions that Activision convinced the court to redact from public filings. He said that redacted evidence undercuts the “noble First Amendment interests” that Activision claims, and show “a commercial enterprise dedicated to using other people’s IP and getting away with it.” In response, Activision noted that both parties agreed to redaction parameters, and said AM General also designated much of its own materials as confidential.
The confusion question could be affected by the unique nature of military equipment with one primary domestic customer: the U.S. government. Ford said consumers would be less likely to think the government or Humvee manufacturers endorsed a game maker than the owner of a prominently featured commercial brand, nor that they’d care.
“I don’t think consumers defer to AM General at all on approval. This isn’t a Coke can in a movie. What matters is that it’s realistic,” Ford said. “Do we want makers of essential iconic military equipment to have the ability to control the stories that are told about these military conflicts?”
But Patchen M. Haggerty, chair of Perkins Coie’s trademark, copyright, internet and advertising practice, pointed to a survey conducted by AM General and cited in briefs. AM General claimed it showed consumers associated Humvees with the game, and were more likely to buy the game after seeing ads featuring them.
“Did they capitalize on the brand identity of the Humvee to sell video games?” Haggerty said. “That’s the interesting question we have in this case, where is the line, where does the First Amendment end and protection under the Lanham Act begin for brand owners.”