Humvee vs. Call of Duty
You've all seen the Humvee aka HUMMER, it's more of a factory and export name, in movies and even on the streets of your cities. Back in 1983, the U.S. Department of Defense commissioned AMG to develop the High Mobility Multipurpose Wheeled Vehicle, which later became known as the HUMMER. Since then, the Humvee has become the U.S. Army's primary tactical vehicle and has been sold to more than 50 other armies.
The Humvee has appeared many times in movies such as Jurassic Park, The Simpsons, The Walking Dead, and video games.
Call of Duty is one of the most famous video games and of course, the Humvee has made a splash in it.
It all started in 1998 when AMG's patent attorneys filed a complaint against Activision for using the Humvee image in the Sin game. Then Activision removed the car from the game. We'll come back to this later and you'll see why sometimes it's okay not to respond to claims.....
Call of Duty
In June 2016, AMG again sent a complaint to Activision regarding the use of the Humvee in the Call of Duty game.
The defendant stated that the games simulate real-life military conflicts in which Humvees were used. The use of the plaintiff's brand and logo is necessary for the artistic portrayal of events, as "it gives players a sense of involvement in a real operation of elite special forces and increases the realism of the game".
This "realism," by the way, is protected by the right to free speech - the First Amendment of the U.S. Constitution. At the same time, a balance must be struck between realistic portrayal of events and preventing consumers from being misled (through the use of trademarks).
Back to our game. To establish trademark infringement, the so-called Rogers test is used and evaluated on the "Polaroid" factor (derived from the name of a party to one of the precedent cases). Within the test, 8 elements are assessed.
- 1) The Strength of the Slaintiff's Mark (trademark)
The court looks at the distinctiveness of the TM and its ability to identify the goods. Both the TM itself and its associations acquired through use are evaluated.
The Court concluded that Activision did not challenge the Claimant's TM, only the relevance of its use.
One point in favor of Plaintiff. - 2) Degree of Similarity
Would this use of the TM mislead a prudent user?
Here, the plaintiff and defendant are using the Humvee "for different purposes." AMG argues that Activision copied the Humvee design intentionally so that players would recognize the auto. But recognizing an auto is not misleading. AMG uses TM to sell autos to the military, while Activision creates a realistic simulation in a video game and sells the game.
I understand the court even compared the trademark descriptions or slogans of the parties. AMG - design, engineering, manufacture and supply speciality vehicles for military and commercial customers. Activision Blizzard - Interactive entertainment company and video game producer.
Activision Blizzard receives revenue from the sale and licensing of video games.Score one to Defendant. - 3) Proximity
Do the products compete with each other? The class of TKs is also evaluated and whether they can be used together. "Specialized auto and video games are far from being the same thing. Also, they fall into different classes of goods (classes of goods are used when registering TKs) and are definitely not used together."
Score two in favour of the Defendant. - 4) "Bridging the Gap."
The likelihood that the owner of the TK will be able to enter the "infringer's" market. Simply put, would AMG be able to start developing video games? Objectively, no.
Score three in favour of the Defendant. - 5) Evidence of Actual Confusion
Could consumers confuse products or services or think that Activision Blizzard is affiliated with AMG? No.
However, AMG provided research that 16% of players may have been misled about its relationship with Activision Blizzard. The court allows for such consumer confusion.
Another score to the Activision Blizzard. - 6) Good faith
Did Defendant use the TK with the intent to monetize AMG's reputation or prestige in the future? Activision did put the Call of Duty logo on the Humvee in-game and at promotional events.
And then AMG remembered about the 1998 claims. If you forgot - read the beginning of the post. AMG's problem was that the claim was sent on behalf of a contractor + Activision Blizzard did not respond to the claim. Despite the fact that in 1998 the image of the car was removed from the game and now it is not, the court decided that there is no product confusion and misleading consumers.Activision's fifth point. - 7) Quality of Defendant's Products
If the quality of the defendant's product or service is lower than the quality of the plaintiff's - there is a chance of injury in misrepresentation. Obviously, neither party was able to provide evidence that its product was of higher quality.
The Court gave another point to the Defendant. - 8) Consumer sophistication.
The Plaintiff's problem is that its customers, 50 military organizations around the world, including the U.S., don't buy the Call of Duty game and conversely players don't buy Humvee. Although, the latter, in my opinion, just might.
All in all, the court sees no risk of someone mistakenly ordering a game instead of a military auto.
Score seven to Gryffindorf.
Court's conclusions:
The primary purpose of using the Humvee in the game is to maximize realism. That said, both parties agreed that the military conflicts depicted in the game used Humvee autos.
"If realism is the goal of the game, then the presence of vehicles used by the armed forces in modern war games certainly contributes to that goal."
This ruling in favour of freedom of expression was not so much legally groundbreaking as it was the latest confirmation that games, such as movies and TV shows, can use real trademarks that have artistic value to the work without paying a license fee*. Otherwise, private companies could dictate and restrict the creative expression and creative free speech of others, giving trademark owners a "monopoly on reality."
Imagine how the movies will have cars with emblems taped up and a DG bag without a claim from the manufacturer can't be shown.
*With certain requirements. As they say - consult a lawyer.
Authors:
Yauheni Khodzkin
Partner and COO – IT Launchpad
