First Amendment May Protect Use of Trademarks As Artistic Expression
In a recent decision from the Southern District of New York, Judge George B. Daniels held that the strong First Amendment interests in protecting free artistic expression warranted summary judgment that Activision Blizzard’s use of Humvee vehicle models in the blockbuster Call of Duty videogames was not a violation of the Lanham Act. Because the inclusion of Humvees represented genuine artistic expression—specifically, the creation of a more realistic depiction of the armed forces—and was not in service of misappropriation or otherwise misleading as to the source of the game, the defendants were entitled to the dismissal of all of the plaintiff’s claims.
In AM General LLC v. Activision Blizzard, Inc. et al. (No. 17-cv-8644), Plaintiff AM General (AMG) had been the contract supplier of Humvees to the armed forces since the early 1980s, during which time they had seen ubiquitous use and deployment among U.S. military land forces. Since the 1990s, AMG had granted a few licenses to use the Humvee trademark in connection with products and services including at least some toys and at least four video games, although its primary business line remained the manufacture and sale of physical automobiles.
Defendant Activision Blizzard published the extremely popular Call of Duty videogame franchise, a series of military-styled first person shooters. In nine of these games, Humvees were depicted for various durations, at times requiring the player to interact with or ride in a Humvee, and with Humvees shown in promotional trailers and strategy guides. Following the 2016 release of Call of Duty: Modern Warfare Remastered, AMG brought suit in November of 2017 for trademark and trade dress infringement under the Lanham Act and various substantially related claims under the Lanham Act and parallel state laws.
At summary judgment, Activision Blizzard argued that the strong First Amendment interest in protecting free expression warranted dismissal of AMG’s claims. The Court noted that there was a long line of precedent, beginning with Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), that weighed strongly in favor of protecting works of artistic expression against Lanham Act claims. (slip op. at 7). Rogers generally precluded the application of the Lanham Act to works of artistic expression where “the use of the trademark has any ‘artistic relevance to the underlying work whatsoever’”—so long as the artistically relevant use of the trademark did not “explicitly mislead as to the source or the content of the work.” (Id.)
Examining past cases implicating Rogers, the court held that a Lanham Act violation would not be supported against countervailing First Amendment concerns by the mere existence of a likelihood of confusion, but rather only in circumstances where the evidence for a likelihood of confusion was “compelling,” such as where undertaken for the purposes of misappropriation. The court further observed that the requirement that an artistic use of a mark have artistic relevance was not the same thing as being artistically required or obligatory—the use had to be in artistic good faith but there was no “but for” requirement that the use be indispensable.
The court found that Activision Blizzard’s interest in presenting military verisimilitude easily met the low bar for artistic relevance. The Court further found that, in view of the Polaroid factors [Polaroid v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961)], Activision Blizzard’s use of Humvees was not explicitly misleading. Despite some survey evidence showing potential confusion as to whether AMG had approved the use of Humvees in the game, there was ultimately little to suggest that Activision Blizzard’s use was of an appropriative rather than artistic character. In particular, the fact that AMG was a manufacturer of automobiles while Activision Blizzard produced videogames weighed heavily against any compelling finding of confusion. The Court was unmoved by AMG’s argument that its licensing activities created an overlap in the market segments for Activision Blizzard and AMG, due to the “sporadic and marginal” nature of such licensing relative to AMG’s primary business of making and selling automobiles. (slip op. at 14).
Summing up its analysis, the Court held that ”enhanc[ing] the games’ realism” was a sufficient rationale to establish that the use of Humvees was an integral element of the games’ artistic expression under the Rogers line of cases. (slip op. at 19). That the art in question was commercially sold did not negate the protection afforded it under the First Amendment. Activision Blizzard was thus entitled to summary judgment against all of AMG’s claims.
Takeaways from AMG v. Activision Blizzard
AMG v. Activision Blizzard is broadly helpful to both amateur and commercial producers of art who wish to include potentially trademarked material as part of a broader commitment to realism. Where a mark’s presence, even if not necessarily “required,” is so entwined with a realistic portrayal of artistic subject matter (as with Humvees and the military) that its use can be readily characterized as in good faith, AMG suggests that the use of the mark would generally be protected.
How far the holding of AMG extends, however, is not entirely clear with respect to marks for which licensing represents a more common and widespread business model than the “sporadic and marginal” business lines of the plaintiff in AMG. The AMG court put significant weight on the fact that there was no evidence of significant market overlap or direct competition between the plaintiff’s automobiles and Activision Blizzard’s games, and thus no compelling case for consumer confusion in the context of such wildly different goods. The issue would, presumably, be more difficult to resolve in those instances in which a plaintiff’s mark had a longer or more substantial history of being licensed in the same field in which an accused infringer sought to establish a protected use of that mark.