450 F.Supp.3d 467
S.D.N.Y.2020Background
- Plaintiff AM General LLC (AMG), maker and licensor of the Humvee trade dress/trademark, sued Activision Blizzard, Inc., Activision Publishing, Inc., and Major League Gaming Corp. (collectively, Activision) alleging Lanham Act and New York claims for trademark infringement, trade dress infringement, unfair competition, false designation of origin, false advertising, and dilution based on depictions of Humvees in multiple Call of Duty video games and related toys.
- Humvees are widely used military vehicles and AMG has licensed the Humvee mark for toys and several video games in the past; Humvees also appear in numerous films, TV shows, and other video games by third parties.
- Call of Duty (a highly realistic, narrative-driven first-person shooter franchise) depicts Humvee-like vehicles in multiple games; players sometimes control the vehicles and use mounted weapons; Humvees also appear in trailers, strategy guides, and licensed toys.
- AMG sent a licensing/complaint letter (via agent) to Activision in 1998 and a cease-and-desist via counsel in 2016; AMG sued in 2017. Defendants moved for summary judgment; AMG moved for partial summary judgment on laches.
- The Court applied the Rogers v. Grimaldi framework (artistic relevance + no explicit misleadingness) and the Polaroid likelihood-of-confusion factors, granted Defendants’ motion for summary judgment on all federal and state claims, denied AMG’s partial motion on laches as moot, and granted in part/denied in part motions to strike (striking documents not produced in discovery).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Trademark infringement (Lanham Act & NY) — application of Rogers test | AMG: Activision copied Humvee trade dress/mark in games and toys without license, causing consumer confusion and implying AMG sponsorship | Activision: Uses are artistically relevant to realistic modern-warfare games and not explicitly misleading; any confusion is minimal and outweighed by First Amendment interests | Court: Rogers applies; artistic relevance satisfied and Polaroid analysis favors defendants; summary judgment for defendants (trademark claims dismissed) |
| Trade dress infringement (federal & NY) | AMG: Humvee trade dress is nonfunctional, has secondary meaning, and defendants’ depictions create likelihood of confusion | Activision: Products (vehicles vs. video games/toys) are not proximate; realistic depiction not likely to confuse consumers | Court: Even assuming nonfunctionality/secondary meaning, Polaroid factors show no likely confusion; summary judgment for defendants |
| Unfair competition / false designation of origin | AMG: Public may believe Call of Duty depictions are sponsored/authorized by AMG | Activision: No likelihood of confusion; Rogers balancing protects expressive use | Court: No likelihood of confusion and Rogers controls; federal and NY unfair competition/false designation claims dismissed |
| False advertising (federal & NY) | AMG: Statements (including boilerplate in game manuals) imply ownership/licensing or sponsorship | Activision: Statements are not literally or impliedly false or material and AMG suffered no injury | Court: No literal or implied falsity or causal injury shown; summary judgment for defendants |
| Trademark dilution (federal & NY) | AMG: Fame of Humvee mark means depictions dilute by blurring/tarnishment | Activision: Any minimal dilution tolerated under First Amendment; no tarnishment shown | Court: No actionable dilution given Rogers and lack of harm; summary judgment for defendants |
| Laches (AMG's partial SJ seeking to preclude defense) | AMG: Defendants cannot claim laches because they were on notice and delay was not prejudicial | Activision: Laches asserted as defense | Held: Court did not reach merits because all claims were dismissed; AMG's partial summary judgment on laches denied as moot |
Key Cases Cited
- Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (establishing two-prong test protecting expressive uses of marks unless the use has no artistic relevance or explicitly misleads)
- Twin Peaks Prods., Inc. v. Publications Int'l, Ltd., 996 F.2d 1366 (2d Cir. 1993) (likelihood-of-confusion must be particularly compelling to overcome Rogers)
- Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) (establishing factors for likelihood of confusion analysis)
- Louis Vuitton Malletier S.A. v. Warner Bros. Entm't Inc., 868 F. Supp. 2d 172 (S.D.N.Y. 2012) (applying Rogers balancing where artistic relevance outweighed risk of confusion)
- Simon & Schuster, Inc. v. Dove Audio, Inc., 970 F. Supp. 279 (S.D.N.Y. 1997) (refusing Rogers protection where defendant appeared to deliberately copy to trade on plaintiff's goodwill)
- Brown v. Entertainment Merchants Ass'n, 564 U.S. 786 (2011) (recognizing interactive features of videogames as expressive and part of protected communication)
- Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574 (1986) (nonmoving party must show more than metaphysical doubt to defeat summary judgment)
- Nick's Garage, Inc. v. Progressive Cas. Ins. Co., 875 F.3d 107 (2d Cir. 2017) (summary-judgment burden can be met by negating an essential element of the nonmoving party's claim)