It’s War: Humvee Takes On Activision Over Call of Duty Video Game

The lawsuit centers on a gray area of IP law, the intersection between the public’s First Amendment rights and a brand owner’s trademark rights in the context of entertainment works (like movies, video games, and television shows).

In the landmark case of Rogers vs. Grimaldi, the Second Circuit concluded that a third party can use a brand owner’s trademark without permission in an entertainment work so long as the use of the mark has artistic relevance to the work in question, and the use is not explicitly misleading as to the source of the goods/services.  Here, the question is whether Activision has borrowed too much, or gone a step too far, tipping the scales in favor of an infringement claim.  Is Activision’s conduct on the whole “explicitly misleading?”

AM General alleges that Activision copies not only the incontestable HUMVEE trademark, but also the registered trade dress in the overall shape of the vehicle and its distinctive features (e.g., windshield wipers attached to the top of the front windows, an X design on the lower portion of two vehicle doors, etc.).  Further, Activision not only uses this IP within the CALL OF DUTY video game itself, but also in the advertising and marketing for the game, and on related consumer goods.  Examples of such unauthorized use are shown below:

In its complaint, AM General notes that it licenses the HUMVEE intellectual property to assorted companies, including video game makers (e.g., Delta Force – Black Hawk Down) and toy companies (e.g., Mattel), and is therefore losing valuable revenue as a result of Activision’s actions.  According to AM General, consumers have come to assume that goods bearing the HUMVEE IP originate from AM General or are authorized, licensed, or approved by AM General.  Accordingly, Activision is guilty of trademark and trade dress infringement, false designation of origin, false advertising, dilution, and related claims.

Activision, in response, argues that the use of the HUMVEE trademark and trade dress is artistically relevant to, and necessary in, the context of a military-themed video game, that such IP appears in numerous other entertainment works without authorization, and that barring the use of the IP in this instance would stifle Activision’s First Amendment rights and creative expression.  Further, Activision notes that AM General slept on its rights by not asserting a claim when the vehicle first appeared in CALL OF DUTY games over ten years ago. Activision is seeking to have the case dismissed pre-trial on a Motion for Summary Judgment, but AM General is aggressively fighting those arguments.  We wait to see how the Court will rule.

Entertainment companies should actively monitor this case to see if the Court will provide further guidance on the “explicitly misleading” prong of the Rogers test, or greater certainty on where the line between the First Amendment and the Lanham Act falls.