Changing Landscape for Video Game Developers in Third-Party IP Suits?

Perkins Coie
Contact

Perkins Coie

What do the manufacturer of a military-grade light tactical wheeled vehicle and a 19th century private-detective agency have in common? Each has recently been involved in litigation with a video game developer for infringing their trademark or trade dress rights—and the media has taken notice. While the law currently tolerates some unauthorized uses of third-party intellectual property in video games, rights owners are now asking “how much is too much?” 

Although these cases present a variety of intellectual property questions, this update will focus on the trademark and trade dress rights at stake and provide some practical guidance for navigating this shifting landscape. Stay tuned for future updates on other related intellectual property issues.

First Amendment and Trademark Rights in Video Games

Courts have long recognized that video games are core, expressive speech protected under the First Amendment. Because of this protection, individuals that hold trademark or trade dress rights in real-life items have faced an uphill battle to succeed with their claims against video game developers that use their trademarks or trade dress in the virtual world. Developers could use these trademarks or trade dress so long as the use of the marks (1) has any artistic relevance to the video game and (2) is not explicitly misleading as to the source or content of the video game.[1]

Historically, both requirements have been straightforward for a video game developer to satisfy. A developer can meet the first requirement so long as using the trademark helps the developer accomplish some artistic goal in any minimal way, such as creating a sense of realism, parody or personal identity. Under the second factor, a developer’s use of a mark was usually not “explicitly misleading” unless the video game contained an explicit statement that the holder of the mark sponsored or otherwise associated itself with the video game.

But over time, trademark rights holders have been pushing back on this First Amendment defense, attempting to redefine the meaning of “explicitly misleading.” This began in 2012, when a prominent helicopter manufacturer, Textron Inc., overcame a motion to dismiss against the developers of the popular Battlefield video game series for using the designs of Textron’s military helicopters in their games.[2] The court held that the developer’s use of the helicopters’ designs could be “explicitly misleading”—even though there was no explicit statement in the game that it was sponsored by Textron—because the helicopters were prominently featured as a main component of the game, the ability to use them was a major reason for the game’s success and they were frequently highlighted in the developer’s advertising and promotional materials.

Active Litigation Testing This Defense

Two ongoing cases from the U.S. District Court for the Southern District of New York will directly bear on the same issue. In AM General LLC v. Activision Blizzard, Inc.,[3] the manufacturers of the HUMVEE line of military vehicles sued the developers of the wildly-popular Call of Duty video game franchise, claiming infringement in the HUMVEE trade dress because the vehicle is featured prominently in advertising for the game and the games themselves.

In Take-Two Interactive Software, Inc. v. Pinkerton Consulting & Investigations, Inc.,[4] the video game developer sought a declaratory judgment that its use of the “Pinkerton Detective Agency” mark and historical badge in its recently-released video game Red Dead Redemption 2 did not infringe on the rights of the Pinkerton Detective Agency. The game, set in the Wild West during the 1800s, features an outlaw gang pursued by bounty hunters and mercenaries, including members of the Pinkerton National Detective Agency, a real-life private detective agency founded in the 1800s that operated in the Wild West. 

So what quality and quantity of unauthorized use of third-party trademarks or trade dress makes such use explicitly misleading? When do video game developers leave the First Amendment’s relatively safe harbors? The video game industry—rights holders and developers alike—should pay close attention as these cases may shed light on this important line-drawing question. 

Practical Considerations

As these cases illustrate, trademark and trade dress rights owners and video game developers should be both diligent and vigilant. Here are several, high-level practical considerations to keep in mind:

  • Does the mark contribute to the artistic goals of the game? For example, does it help create a sense of realism, parody or personal identity for the player? Or is inclusion of the mark merely gratuitous?
  • How prominently is the mark featured in the game? Is it a major element of the game that players will encounter or use often? Or is the mark merely incidental to the overall game?
  • With regards to trade dress, how similar is the real-life item to the in-game counterpart? Is it such a realistic or accurate depiction that a consumer could believe that the owner of the trade dress must have provided their expertise to create it?
  • Finally, has the mark been used as a major selling point for the game? Is it heavily featured in advertising and promotional material, such as trailers or websites asking consumers to buy the game?

ENDNOTES

[1] E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1100 (9th Cir.  2008).

[2] Electronic Arts, Inc. v. Textron Inc., No. C 12-00118 WHA, 2012 WL 3042668 (N.D. Cal. July 25, 2012).

[3] No. 1:17-cv-08644-GBD (S.D.N.Y. Nov. 7, 2017).

[4] No. 1:19-cv-00338 (S.D.N.Y. Jan. 11, 2019).

[View source.]

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Perkins Coie | Attorney Advertising

Written by:

Perkins Coie
Contact
more
less

Perkins Coie on:

Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
- hide
- hide