Humvees in Call of Duty are constitutionally protected realism, not confusing/diluting

AM General LLC v. Activision
Blizzard, Inc., No. 17 Civ. 8644 (GBD) (S.D.N.Y. Mar. 31, 2020)
The district court
allows Humvees to appear in realistic videogames by performing a full confusion
analysis, despite purporting to follow Rogers v. Grimaldi.
The Humvee has become
“an iconic and a ubiquitous symbol of the modern American military.” AMC has
granted licenses to use the Humvee trademark “on or in connection with a wide
variety of products,” including toys and at least four video games. Humvees
have also appeared in “a wide variety of other media, including Hollywood
blockbusters, … television series, … and Academy Award-winning dramas,” as well
as in video games. 
Call of Duty is a
popular, realistic military video game. Humvees are depicted in nine Call of
Duty games, sometimes in the background or mentioned; players sometimes ride in
a Humvee for several minutes during a scene or level and they can occasionally “assum[e]
control of the (Humvee],” including by firing a turret-mounted machine gun. Humvees
are also shown in several trailers for the games and in Call of Duty-brand d strategy
guides. Activision also licensed a toy company to manufacture Call of
Duty-branded construction sets, two of which include toy vehicles that
allegedly bear the distinctive elements of the Humvee’s trade dress.          
An instruction
manual for Call of Duty 4: Modern Warfare included the following language:
All title, ownership rights and intellectual property rights in and to
this Program (including but not limited to any patches and updates) and any and
all copies thereof (including but not limited to any titles, computer code,
themes, objects, characters, character names, stories, dialog, catch phrases,
locations, concepts, artwork, animation, sounds, musical compositions,
audio-visual effects, methods of operation, moral rights, any related
documentation, and “applets” incorporation into this Program) are owned by
Activision, affiliates of Activision or Activision’s licensors.
Similar language
occurs in other manuals for other iterations. Activision also received a letter
in 1998 complaining about the use of Humvees in the video game Sin, which is
unaffiliated with the Call of Duty franchise; Activision supposedly “agreed to
remove [Humvee] vehicles from the video game Sin.”
Infringement: Rogers
is the test for uses in artistic works generally, not just for titles. But then
the court cites a title-v-title case for the proposition that a First
Amendment-sensitive analysis must be done using the Polaroid factors,
which is not the rule in the Second Circuit when the plaintiff doesn’t own
rights in the title of an expressive work. 
Rogers prong two is meaningless if it’s just likely confusion all
over again, but the court cited Twin Peaks Prods., Inc. v. Publ’ns lnt’l, Ltd.,
996 F.2d 1366, 1379 (2d Cir. 1993) (title v. title) and DeClemente v. Columbia
Pictures Indus., Inc., 860 F. Supp. 30, 51 (E.D.N.Y. 1994) (which indeed also
completely misread Rogers as just something to think about when you’re
doing the multifactor confusion analysis, which is kind of amazing if you’ve
read Rogers, which among other things rejects a consumer survey and
evidence of confusion by sophisticated marketers).
By contrasting a
non-title trademark case (the Hangover case with Louis Vuitton) with a
title-v-title case (The Book of Virtues v. The Children’s Audiobook of Virtues), the
court concludes that “an artistically relevant use will outweigh a moderate
risk of confusion where the contested user offers a ‘persuasive explanation’ that
the use was an ‘integral element’ of an artistic expression rather than a
willful attempt to garnish the trademark owner’s goodwill for profit.”  At least the court is clear that the Humvees don’t
need to be “metaphysically” required for the game; an integral element
is one that “communicate[s] ideas—and even social messages,” either “through
many familiar literary devices (such as characters, dialogue, plot, and music)”
or “through features distinctive to the medium (such as the player’s
interaction with the virtual world).”
Of course there was
artistic relevance. “Featuring actual vehicles used by military operations around
the world in video games about simulated modern warfare surely evokes a sense of
realism and lifelikeness to the player who ‘assumes control of a military soldier
and fights against a computer­ controlled or human-controlled opponent across a
variety of computer-generated battlefields.’”
Proceeding to the Polaroid
factors, the court found that the use wasn’t explicitly misleading because
it wasn’t confusing. [sigh] It even quoted Rogers: “no amount of evidence showing
only consumer confusion can satisfy the ‘explicitly misleading’ prong of the
Rogers test because such evidence goes only to the ‘impact of the use’ on a
consumer.” And then it did the multifactor confusion test anyway.
Unsurprisingly, some
distortions appeared in the multifactor test: the court said that the marks
weren’t very similar because the purpose of the uses were different. “Plaintiff
s purpose in using its mark is to sell vehicles to militaries, while Defendants’
purpose is to create realistically simulating modern warfare video games for
purchase by consumers.” AMC’s licensing practices were “sporadic and marginal”
and thus didn’t show market overlap. And anyway, First Amendment considerations
required the court to give minimal weight to bridging the gap.
AMC’s survey
allegedly “found that 16% of consumers shown actual video game play from
Activision’s games were confused as to AM General’s association with Call of
Duty.” That wasn’t enough, given Rogers.
Bad faith: the 1998
letter couldn’t show bad faith, because Activision didn’t respond to it;
silence wasn’t probative of Activision’s agreement about rights in the Humvee.  Nor were a handful of statements by
Activision employees, the use of Humvees decorated with Call of Duty logos at
several in-person promotional events, or the statements in user guides evidence
of an intent to confuse:
For instance, the user guide statements do not affirmatively tell
consumers that Activision either owns or licenses the Humvee IP. All that reasonably
may be said is that a paragraph in miniscule type buried in a user guide—a
paragraph which does not allude to, let alone mention, Humvees at all—does not “tell
consumers” much of anything. Indeed, such back-end boilerplate provides no
basis for “confusion between the two companies’ products.”
Sophistication: The Hangover
court noted that “moviegoers are sophisticated enough to know that the mere presence
of a brand name in a film, especially one that is briefly and intermittently shown,
does not indicate that the brand sponsored the movie.” Here, “[t]here is no
reason to believe that video game players are any less astute.”
Trade dress claims:
Same thing, “[g]iven 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.”
Unfair competition/false
designation of origin. Same thing. “The only thing remotely close to a ‘false
designation’ is the legalese buried inside several games’ user guides,” which
wasn’t enough.
Lanham Act false
advertising: There were no literally or impliedly false statements.  NY false advertising: same. Also, AMC didn’t
show injury.
Federal and NY
dilution: NY dilution is “essentially the same” as federal dilution, and
without evidence of the quality of Activision’s games, AMC failed to show
tarnishing or blurring. If any dilution did occur, it would be “tolerated in
the interest of maintaining broad opportunities for expression.” [Also in the
interest of obeying the federal statute’s requirements and exemptions, but here
I won’t quibble.]

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