'Call of Duty' Wins First Amendment Victory Over Use of Humvees

Call of Duty Modern Warfare-Publicity-H 2019
Courtesy of Activision

Call of Duty maker Activision has prevailed in a closely watched trademark dispute brought by AM General, the government contractor for Humvees. On Tuesday, a New York federal judge responded favorably to Activision's argument that it had a First Amendment right to depict contemporary warfare in its game by featuring Humvees.

"If realism is an artistic goal, then the presence in modern warfare games of vehicles employed by actual militaries undoubtedly furthers that goal," writes U.S. District Court Judge George B. Daniels in granting summary judgment in favor of Activision.

The video game publisher fought AM General's claims along with Major League Gaming Corp., a professional esports organization. The dispute was potentially worth tens of millions of dollars, and the discussion attracted intellectual property professors and the Electronic Software Association to weigh in with amicus briefs.

One of the reasons why the dispute became such a big deal was its potential to complicate a test established in Rogers v. Grimaldi, a 1989 decision that resulted from a lawsuit brought by the actress Ginger Rogers over the Fellini film Ginger and Fred. The test directs judges to examine whether use of a mark has artistic relevance, and if so, whether the work is explicitly misleading. But in this Call of Duty case, AM General argued that trademark laws hardly give way to the First Amendment when an infringing work is expressive, and when dealing with famous marks, judges should heed an additional eight-factor test for consumer confusion set forth in Polaroid v. Polarad. That's because, AM General told the judge, the "explicitly misleading" prong could be satisfied upon particularly compelling evidence of the likelihood of confusion.

Judge Daniels decides to travel down this road, and after coming to the conclusion that use of Humvees in Call of Duty has some artistic relevance, he ends up with a more surprising finding: The Polaroid factors actually favor Activision.

He acknowledges that there's strength in plaintiff's mark (i.e., consumers recognize Humvees) but doesn't see much similarity in how the two sides are using the mark. One is selling vehicles to the military while the other is creating realistic modern warfare video games. As for proximity of the products, while AM General may license out the rights to depict Humvees in games and toys, the judge isn't impressed because that's not its central purpose as a business. Then, there's the evidence of actual confusion. The judge acknowledges an expert's survey that shows some confusion (less than 20 percent), but says it tips only slightly in AM's favor.

One of the more notable Polaroid factors here is good faith, basically an analysis of why Activision decided to adopt Humvees into its game. AM general pointed to "documents, emails and witness testimony," the presence of Humvees decorated with Call of Duty logos at promotional events, and statements in user guides where consumers were allegedly told that Activision either owns or licenses the Humvee IP.

And yet it all fails as Daniels concludes that these "three clutches of circumstantial evidence, even if afforded the benefit of all reasonable inferences in Plaintiff's favor, do not demonstrate a desire to 'sow confusion between the two companies' products.'"

Here's the full opinion.

"To the extent that any of the Polaroid factors are satisfied — such that a modicum of confusion might be present — Plaintiff nonetheless has failed to present sufficient evidence to defeat summary judgment," writes the judge who takes up whether Activision has offered a "persuasive explanation" of its use. That's because according to this judge, "an artistically relevant use will outweigh a moderate risk of confusion where the contested user offers a 'persuasive explanation.'”

That might be some sort of new test or reworking of the Rogers one, but that's a discussion for another day. Here, the judge is persuaded by the game maker's explanation of attempting "realism" given Humvees' widespread use by modern militaries.

Daniels writes, "[A]ssuming arguendo that realism is the only artistic interest that Call of Duty games possess — an assumption potentially belied by the presence of narrative campaign modes in all of the challenged games — it is also true that realism can have artistic merit in itself."