In Legal Warfare Over HUMVEE Trademarks, the First Amendment Goes Beyond the Call of Duty in Dismissing AM General’s Claims

Relying on the First Amendment, the Southern District of New York dismissed AM General LLC’s claims against Activision Blizzard, Inc. for featuring Humvee vehicles in the well-known video game franchise Call of Duty.

AM General designs and manufactures Humvee-branded vehicles for military and commercial use. The Humvee is primarily used for military operations by the United States Armed Forces and the militaries of over 50 countries. AM General owns various trademark registrations for the HUMVEE word mark and design elements of the vehicle itself.

Activision’s Call of Duty is one of the most successful and well-known video game franchises in the industry. Call of Duty is a series of first-person shooter video games that are known for their online multiplayer game modes and their single player campaigns, which include cinematic depictions of warfare intended to expose players to simulated military combat. The Humvee vehicle is displayed (and is sometimes driven by players) during various missions and game modes. The Humvee vehicle is also featured in various advertisements for the Call of Duty franchise.

AM General sued Activision for trademark infringement, trade dress infringement, unfair competition, false designation of origin, false advertising, and dilution under federal and state law. Activision moved for summary judgment on all claims.

In granting Activision’s motion, the court looked to the two-prong test in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), to determine whether the Lanham Act should be interpreted narrowly to avoid the suppression of protected speech under the First Amendment. In citing Rogers, the court noted that the “balance [between trademark interests and First Amendment speech interests] will normally not support application of the [Lanham] Act unless [the use of the trademark] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless [the use of the trademark] explicitly misleads as to the source or the content of the work.”

Under the two-prong Rogers test, courts in the Second Circuit must determine whether the use of the trademark (1) has any “artistic relevance to the underlying work whatsoever,” and (2) “explicitly misleads as to the source or the content of the work.”

With respect to the first prong, the court found that Activision’s uses of Humvees in Call of Duty had 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.’”

In analyzing the second prong, the court applied the Polaroid factors and found that six out of the eight factors weighed in Activision’s favor. Activision did not dispute the strength of AM General’s HUMVEE mark, and the evidence of actual confusion factor only “slightly” weighed in AM General’s favor. However, the court noted that AM General’s survey, which, it argued, “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,” was evidence of “some” confusion “at most.” Nonetheless, “the countervailing First Amendment consideration counsel[ed] against according [the evidence of actual confusion] undue importance in this context.”

On balance, the Polaroid factors showed AM General failed to demonstrate that Activision’s uses “explicitly mislea[d] as to the source or the content of the work.” Accordingly, AM General’s federal and state trademark infringement, trade dress infringement, unfair competition, false designation of origin, and dilution claims failed.

As for AM General’s false advertising claims, the court found that (1) none of Activision’s advertisements contained a literally or impliedly false statement, (2) Activision’s actions or practices were not deceptive, and (3) AM General did not provide any evidence that it suffered any actual or likely injury. Consequently, the court also dismissed the federal and state false advertising claims.

The case is AM General LLC v. Activision Blizzard, et al., No. 17 Civ. 8644 (GBD) (S.D.N.Y. March 31, 2020).