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A Legal “Modern Warfare”: Activision and the First Amendment Triumph in Humvee Trademark Dispute

By Tim Carter

In the early 1980s, the Department of Defense awarded a contract to AM General LLC ("AM General") to manufacture a new type of light tactical vehicle for the U.S. armed forces: a "High Mobility Multipurpose Wheeled Vehicle" or "HMMWV" (an acronym coined by the Defense Department). Nicknamed "Humvees" by the soldiers who used them on the frontlines, the HMMWV was deployed in some of the most well-known military campaigns of the past half century, most notably the first and second Gulf Wars and the wars in Afghanistan and Iraq.

With these deployments came extensive news coverage, and as a result of their wartime ubiquity, Humvees quickly assumed historical and cultural significance, becoming a symbol of the modern American military. As war dragged on, the Humvees' prevalence soon became mainstream: Humvees were no longer only found in coverage and depictions of war, but were now appearing in Hollywood blockbusters like Jurassic Park and The Avengers, television dramas such as The Walking Dead, 24, and the Long Road Home, and even animated comedies such as Cars and The Simpsons.

On November 7, 2017, AM General filed a lawsuit in the Southern District of New York against Activision Blizzard, Inc. and Activision Publishing, Inc. and Major League Gaming Corp. (collectively, "Activision") alleging trademark infringement, trade dress infringement, unfair competition, false designation of origin, false advertising, and dilution under the Lanham Act, 15 U.S.C. §§ 1114, 1125, and l 125(c), respectively. These claims were primarily based on Activision's alleged infringement of AM General's purported alleged trade dress rights in a selection of exterior elements of certain configurations of Humvees (of which there are many), and of AM General's "Humvee" and "HMMWV" trademarks. AM General also raised pendant New York state law claims for trademark infringement, unfair competition, false designation of origin, trade dress infringement, false advertising, and dilution.

At issue were various depictions of Humvees in six separate Call of Duty PC and console games and three mobile "tie-in" games released between 2007 and 2014, all of which depicted contemporary or near-future warfare. Activision, a leading worldwide developer, publisher, and distributor of interactive entertainment, built the Call of Duty franchise into one of the "most popular and well-known video game franchises in the world" with over 130 million units sold.

First released in 2003, Call of Duty depicts highly realistic military combat set in a particular time period, such as World War II, the Vietnam War, the 1980s, the present day, the near future, and the far future. See, e.g., Mil-Spec Monkey, Inc. v. Activision Blizzard, Inc., 74 F. Supp. 3d 1134, 1137 (2014) (Call of Duty games depict "highly realistic combat in a ... war-torn setting, featuring numerous characters, complex narratives, and advanced graphics[.]"). To fully realize their artistic vision, Activision utilized real-world, identifiable locations and landmarks, real-life military organizations, and dozens of contemporary military weapons and vehicles.

On March 31, 2020, District Judge George B. Daniels of the Southern District of New York granted Activision's motion for summary judgment, dismissing all of AM General's claims for trademark and trade dress infringement, unfair competition, false designation of origin, false advertising, and dilution under the Lanham Act and New York law. AM General v. Activision Blizzard.

In analyzing AM General's federal and state law claims for trademark infringement, the Court applied the two-part Rogers test, articulated in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). Under Rogers, where a defendant's product is artistic or expressive, courts have interpreted the Lanham Act narrowly in order to avoid suppressing protected speech under the First Amendment. While Rogers dealt only with a potentially confusing title, the Second Circuit has since held that "the Rogers balancing approach is generally applicable to Lanham Act claims against works of artistic expression." Cliff Notes v. Bantam Doubleday Dell Publ'g Grp., 886 F.2d 490,495 (2d Cir. 1989).

Under the first prong—whether the use of AM General's alleged trademarks had artistic relevance to the games—the Court held that Activision's use of the Humvee in Call of Duty was artistically relevant: "Featuring actual vehicles used by military operations around the world in video games about simulated modern warfare surely evokes a sense of realism and life likeness to the player who 'assumes control of a military soldier and fights against a computer controlled or human-controlled opponent across a variety of computer-generated battlefields.'" AM Gen. LLC v. Activision Blizzard, Inc., No. 17 CIV. 8644 (GBD), 2020 WL 1547838, at *6 (S.D.N.Y. Mar. 31, 2020) (quoting Novalogic, Inc. v. Activision Blizzard, 41 F. Supp. 3d 885, 890 (C.D. Cal. 2013)). According to the Court, "[i]f realism is an artistic goal, then the presence in modern warfare games of vehicles employed by actual militaries undoubtedly furthers that goal." AM Gen. LLC, 2020 WL 1547838, at *10.

As to the second prong of the Rogers test—whether the use was "explicitly misleading"—the Court held that the mere existence of some confusion is insufficient. Rather, "the finding of likelihood of confusion must be particularly compelling to outweigh the First Amendment interest recognized in Rogers." Id. at *4 (quoting Twin Peaks Prods., Inc. v. Publ'ns Int'l, Ltd., 996 F.2d 1366, 1379 (2d Cir. 1993)). Finding no "particularly compelling" likelihood of confusion, the Court held that "[t]o the extent that any of the Polaroid factors are satisfied—such that a modicum of confusion might be present[,]" AM General failed to present sufficient evidence to rebut Defendants' "persuasive explanation regarding the use's status as an 'integral element' of the artistic expression." Id. at *10.

As to the federal and state law trade dress claims, the Court declined to reach the question of whether AM General had any protectable trade dress rights in the Humvee design, and held that "[a]ssuming arguendo that a Humvee's trade dress is non-functional and has secondary meaning, Plaintiff still fails to demonstrate a likelihood of confusion according to the Polaroid analysis performed above" in light of the "improbability of confusion between a vehicle and a video game—or, in the case of the contested toys, between a plastic figurine and a full-blown military machine[.]"

Because AM General failed to show a likelihood of confusion, its federal and state law unfair competition claims were similarly dismissed. "Any degree of confusion that does exist[,]" the Court held, "is outweighed by the First Amendment interests reflected in the Rogers balancing test." AM General's remaining claims for federal and state false designation of origin, false advertising, and trademark dilution failed for lack of sufficient evidence.

In the end, the use of purported trademark rights to restrict the content of expressive works is dangerous under any circumstance. But the claims made by AM General were particularly egregious because they involved a U.S. military vehicle paid for by American taxpayers and deployed in every significant military conflict for the past three decades. Judge Daniels' opinion helps reaffirm First Amendment protections for video game developers and publishers in realistically portraying modern warfare.

Karin Pagnanelli, Marc Mayer, Bradley Mullins, attorneys in the Los Angeles office of Mitchell Silberberg & Knupp LLP, and Lillian Lee and Tim Carter, attorneys in the New York office of Mitchell Silberberg & Knupp LLP, represented Activision Blizzard, Inc., Activision Publishing, Inc., and Major League Gaming Corp. in the trademark and trade dress infringement suit brought by AM General LLC. AM General LLC is represented by Carey Ramos, Cory Struble, Courtney Whang, Margret Caruso, Michael Carlinsky, Rachel Epstein, Todd Anten of Quinn Emanuel Urquhart & Sullivan, LLP's New York office, and Robert Schwartz of Quinn Emanuel Urquhart & Sullivan, LLP's Los Angeles office.

 
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