AM General LLC v. Activision Blizzard, Inc.

Background

AM General LLC sued Activision Blizzard, Inc., Activision Publishing, Inc., and Major League Gaming Corp. AM General alleged that Humvees appeared in nine Call of Duty games, including scenes in which players could ride in or control the vehicles, and that Humvee designs also appeared in trailers, strategy guides, and Call of Duty-branded toys. The complaint asserted federal claims under the Lanham Act for trademark infringement, trade dress infringement, unfair competition, false designation of origin, false advertising, and dilution, along with related New York claims.

The defendants moved for summary judgment on all claims. AM General moved for partial summary judgment on the defendants’ laches defense, which is a defense based on an unjustified delay that prejudices the opposing party. The defendants also filed two motions to strike evidence and portions of the parties’ factual submissions.

Trademark and Trade Dress Claims

The court applied the Rogers test, which limits trademark liability when a mark is used in an artistic or expressive work. Under that test, the use must have no artistic relevance to the work, or—if it has artistic relevance—it must explicitly mislead consumers about the work’s source or content. The court found that depicting actual military vehicles in simulated modern-warfare games had artistic relevance because the vehicles increased realism and helped communicate ideas through the games’ virtual world.

For the second part of the analysis, the court considered the Polaroid factors, which are used to assess likely consumer confusion. The court found that AM General’s mark was strong and that a survey showed less than 20 percent confusion about an association with Call of Duty. But it found that the parties used the Humvee-related material for different purposes, that vehicles and video games were not commercially close products, that AM General had not shown it was likely to enter the video-game market, and that the evidence did not show actual confusion, bad faith, or a quality difference creating relevant confusion. The court also found that consumers were unlikely to buy one product mistakenly believing it came from the other.

The court concluded that the Polaroid factors did not show that Activision’s uses explicitly misled consumers. It further held that Activision offered a persuasive explanation that the Humvee depictions were integral elements of the games’ artistic expression because they enhanced realism. The court therefore granted summary judgment to the defendants on the federal and New York trademark-infringement claims.

The court applied the same confusion analysis to the federal and New York trade-dress claims. Even assuming that the claimed Humvee trade dress was nonfunctional and had acquired a secondary meaning, the court found no likelihood of confusion between a military vehicle and a video game, or between a toy vehicle and a full-sized military vehicle. It granted summary judgment to the defendants on those claims as well.

Other Claims

The court granted summary judgment to the defendants on the federal and New York unfair-competition claims because AM General had not shown likely confusion. The court did not decide whether AM General had shown bad faith for its New York unfair-competition claim because the claim failed for lack of the required confusion showing.

The court also granted summary judgment on the federal and New York false-designation-of-origin claims. It found that the statements in the games’ user guides did not reasonably show likely confusion about the origin or sponsorship of the defendants’ products.

The court granted summary judgment on the federal false-advertising claim because the challenged advertisements were not shown to contain literally or impliedly false statements, and AM General had not provided evidence of actual or likely injury. It granted summary judgment on the New York false-advertising claim because AM General had not provided admissible evidence that the defendants’ conduct was deceptive or that AM General suffered actual injury.

Finally, the court granted summary judgment on the federal and New York dilution claims. It found that AM General had not shown that the Humvee appearances would blur or tarnish its marks and stated that any dilution that might occur would be tolerated to preserve broad opportunities for expression.

Other Motions and Disposition

The court denied AM General’s partial motion for summary judgment on laches. Because no claims remained against the defendants, the court did not reach whether laches applied.

The court denied the defendants’ motions to strike, except that it granted them in part to strike documents AM General had not produced during discovery. The court denied the request to strike the expert survey because the alleged defects went to the survey’s weight rather than its admissibility.

Judge Daniels’ final order granted the defendants’ summary-judgment motion, denied AM General’s partial-summary-judgment motion, and denied the motions to strike except for the stated partial ruling concerning documents not produced during discovery.