Written by Lillian Lee and Timothy M. Carter

On March 31, 2020, District Judge George B. Daniels of the Southern District of New York granted MSK’s motion for summary judgment filed by Video Game Practice Co-Chairs Karin Pagnanelli and Marc E. Mayer on behalf of Activision Blizzard, Inc., Activision Publishing, Inc., and Major League Gaming Corp. (“Defendants”), dismissing all of Plaintiff AM General’s claims for trademark and trade dress infringement, unfair competition, false designation of origin, false advertising, and dilution under the Lanham Act and New York law.  AM General, the manufacturer of the High Mobility Multipurpose Wheeled Vehicle (colloquially known as the Humvee), filed its suit in November 2017, alleging that some of Activision’s popular Call of Duty games and associated strategy guides and toys depicted the Humvee without AM General’s authorization.

In analyzing AM General’s federal and state law claims for trademark infringement, the Court applied the two-part Rogers test, articulated in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).  Under the first prong—whether the use of AM General’s alleged trademarks had artistic relevance to the games—the Court held there were no triable issues.  According to the Court, “[i]f realism is an artistic goal, then the presence in modern warfare games of vehicles employed by actual militaries undoubtedly furthers that goal.”  As to the second prong of the Rogers test—whether the use was “explicitly misleading”—the Court held that the mere existence of some confusion is insufficient.  Rather, “the finding of likelihood of confusion must be particularly compelling to outweigh the First Amendment interest recognized in Rogers.”  Finding no “particularly compelling” likelihood of confusion, the Court held that “[t]o the extent that any of the Polaroid factors are satisfied—such that a modicum of confusion might be present[,]”AM General failed to present sufficient evidence to rebut Defendants’ “persuasive explanation regarding the use’s status as an ‘integral element’ of the artistic expression.”

As to the federal and state law trade dress claims, the Court held that “[a]ssuming arguendo that a Humvee’s trade dress is non-functional and has secondary meaning, Plaintiff still fails to demonstrate a likelihood of confusion according to the Polaroid analysis performed above” in light of the “improbability of confusion between a vehicle and a video game—or, in the case of the contested toys, between a plastic figurine and a full-blown military machine[.]”

Because AM General failed to show a likelihood of confusion, its federal and state law unfair competition claims were similarly dismissed.  “Any degree of confusion that does exist[,]” the Court held, “is outweighed by the First Amendment interests reflected in the Rogers balancing test.”  AM General’s remaining claims for federal and state false designation of origin, false advertising, and trademark dilution failed for lack of sufficient evidence.

This is a significant win for Activision, MSK’s Karin Pagnanelli, Marc E. Mayer, Bradley J. Mullins and MSK’s entire IP team in the video game practice, whose work has developed a substantial body of case law resulting in strong First Amendment protections for video game developers and publishers.