As if the ubiquitous videogames-simulating-battlefront-experiences were not enough, a fight to the finish between the elite videogame developers who make them has been playing out on the legal battlefield inside the U.S. District Court for the Central District of California. The battle is between the makers of the "Delta Force" and "Call of Duty" games and the battle lines lie at the border of trademark protection and the First Amendment.
In NovoLogic, Inc. v. Activision Blizzard, et al., the U.S. District Court recently decided that the First Amendment trumps trademark rights in this context. It awarded summary judgment to the makers of "Call of Duty," who the makers of "Delta Force" had accused of trademark infringement.
In real life, the secretive U.S. unit "1st Special Forces Operational Detachment – Delta" was formed in the 1970s and is popularly known as "Delta Force." It is widely known to be a U.S. Army Special Forces unit, although the U.S. army never has officially recognized its existence. Photographs of Delta Force often appear with members' faces blacked out so as not to reveal their identities. (Although there is a logo Delta Force logo, it is not a logo of any unit officially recognized by the Pentagon.)
In 1998, videogame developer Novalogic, Inc. developed a military first person shooter game called "Delta Force" and has published at least 10 games under that name in the last 15 years, grossing more than $150 million. In 1999, Novalogic registered the word mark "Delta Force" with the U.S. Patent & Trademark Office. In 2003, it also registered a related design mark for its logo.
In 2003, Activision, a gaming competitor, released its first game in a series of an extremely successful "Call of Duty" games. In 2007 Activision released the first in another series, "Call of Duty – Modern Warfare." The 2011 edition, "Call of Duty – Modern Warfare 3," displayed of the words "Delta Force" and a related logo that NovoLogic alleges infringes its trademarks. Within sixteen days of its release, Activision's grossed approximately $1 billion in sales. NovoLogic filed suit for trademark infringement, contributory trademark infringement, false designation of origin, and common law infringement under California law.
In its defense, Activision asserted that its use of the name "Delta Force-United States Army" and a logo that evokes the U.S. Army logo was permitted and protected under the First Amendment. The court agreed.
The court explained that, when it comes to reconciling trademark law and an alleged infringer's First Amendment interests the general rules of trademark law are a bit murky on a national level. However, the Ninth Circuit has drawn clearer boundaries. In light of the Supreme Court's 2011 decision recognizing that videogames are entitled to First Amendment Protection, the district court in this case concluded Activision was entitled to rely on the First Amendment as a defense.
[B]ased on [Call of Duty – Modern Warfare 3]'s compelling narrative and music, distinctive characters, how the players interact with the virtual environment as they complete a series of combat missions, how players can interact with other players, and how players control the fate of the characters and the world that they inhabit, [it] is an expressive work entitled to as much First Amendment protection as any motion picture or any other expressive work.
Notably, the court only addressed the issue only under the First Amendment while ignoring the state free speech rights guaranteed by the California Constitution. As I have previously written, the state's Constitution affords even greater protections than the First Amendment.
At any rate, the court held that under the First Amendment, the Ninth Circuit applies a two-part test. The test provides that " 'an artistic work's use of a trademark that would otherwise violate the Lanham Act is not actionable' unless (1) the use of the mark has 'no artistic relevance to the underlying work whatsoever' or (2) it has some artistic relevance, but 'explicitly misleads as to the source or the content of the work.' "
In this case, the court found the use of the Delta Force name and logo in the Call of Duty games to be artistically relevant and related to the content of the work because they gave users:
a sense of a particularized reality of being part of an actual elite special forces operation and serve as a means to increase specific realism of the game. Moreover, they help satisfy the ever increasing demand for "authentic simulation" in video games and add immensely to the enjoyment users receive from playing the complicated game, which undoubtably accounts for its enormous success.
The court also found the test's second prong was satisfied because there was no evidence that Activision had made any "explicitly misleading" affirmative statement of Novalogic's sponsorship or endorsement, beyond the mere use of the mark.
Thus, the court granted summary judgment on all four of NovoLogic's trademark infringement claims. Like the members of the actual Delta Force, the parties' attorneys have been relatively quiet since the court's ruling and have not made public what their next tactical steps will be.
Thus, the court granted summary judgment on all four of NovoLogic's trademark infringement claims. Like the members of the actual Delta Force, the parties' attorneys have been relatively quiet since the court's ruling and have not made public what their next tactical steps will be.
The case is NovoLogic, Inc. v. Activision Blizzard, et al., U.S. District Court, C.D. Cal., Case No. CV 12-4011-JFW (SHx).
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