MSK Obtains Win for Activision in Battle Over Use of the Title “Warzone”

Written by Lindsay R. Edelstein

On August 15, 2022, in Activision Publishing, Inc. v., LLC, Judge Fernando L. Aenlle-Rocha of the Central District of California granted Activision’s motion to dismiss Defendant, LLC’s counterclaim alleging trademark infringement, unfair competition, and false advertising under the Lanham Act and California law.  The Court also granted Activision’s motion for judgment on the pleadings, finding that Activision’s use of the terms “Warzone” and “Call of Duty Warzone” did not and does not infringe any of Defendant’s trademark rights.

Defendant is the developer of a niche virtual board game titled “Warzone.”  In 2020, Activision released a stand-alone free-to-play mode of its military-themed “first-person shooter” franchise Call of Duty, aptly titled Call of Duty: Warzone.  After Defendant threatened to sue Activision for trademark infringement, in April of 2021, Activision filed a lawsuit seeking a declaration of non-infringement.  Defendant counterclaimed, alleging infringement of various state and federal trademark laws.  Shortly thereafter, Activision sought judgment on its declaratory relief claims and dismissal of the counterclaims on the basis that its use of the Call of Duty: Warzone title was protected by the First Amendment.

In analyzing Defendant’s claims, the Court applied the two-part Rogers test, articulated in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).   Under the Rogers test, the use of a trademark in connection with an expressive work (which includes video games) cannot give rise to an infringement claim unless it (1) has no artistic relevance to the work, or (2) if the use is artistically relevant, it does not “explicitly mislead” consumers as to source or sponsorship.  Applying the first prong—whether Activision’s use of the title “Warzone” has any artistic relevance to the game—the Court held that the title was “clearly relevant to the content in [Call of Duty: Warzone].”  The Court compared Merriam-Webster’s definition of “war zone” as “a zone in which belligerents are waging war” and “an area marked by extreme violence,” with the game play of Call of Duty: Warzone, which “takes place in a large computer-generated battlefield that accommodates over one hundred players at a given time.”  The Court agreed with Activision that “this virtual battlefield has all the hallmarks of the definition of a real-life warzone, and thus the title ‘Warzone’ is logically and artistically relevant to the content of its video game.”  The Court rejected Defendant’s argument that the purported availability of other war-related terms, such as “combat zone,” “battle zone,” or “warfare,” could affect the analysis under the first Rogers prong. 

As to the second prong of the Rogers test—whether the use was “explicitly misleading”—the Court held that Defendant failed to allege that there was an “explicit indication, overt claim, or explicit misstatement” by Activision that caused consumer confusion, and that Defendant’s generalized claims of consumer confusion were insufficient to negate the second Rogers prong.  The fact that “Warzone” is a common word with a general meaning independent of Defendant’s game, and that Activision’s marketing made clear that Call of Duty: Warzone is part of the larger Call of Duty franchise further militated against a finding that the use was “explicitly misleading” under Rogers.

Because Defendant failed to satisfy either prong of the Rogers test, the Court held that “Activision’s use of the term ‘Warzone’ is entitled to First Amendment protection and does not violate the Lanham Act.”  Since the First Amendment protection articulated in Rogers applies equally to state law claims, the Court dismissed all of Defendant’s federal and state law claims.

The Court’s application of Rogers to the facts in this case should help give creators greater creative flexibility in the choice of artistically relevant titles for their works, insofar as the ruling makes clear that First Amendment protections apply even where similar titles are used for the same general type of work, such as video games.  Furthermore, the court cemented the proposition that purported consumer confusion alone is not sufficient to satisfy the second Rogers prong, a distinction that will surely help fend off frivolous, conclusory trademark infringement claims.

MSK’s Marc E. Mayer, Karin G. Pagnanelli, and Lindsay R. Edelstein represented Activision.

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