Can you trademark the look of a vehicle? AM GENERAL v. ACTIVISION

Can you trademark the look of a vehicle? AM GENERAL v. ACTIVISION

Trademark law in the United States is implemented by a federal statue referred to as the Lanham Act.  It is intended to protect consumers from inferior quality products.  The Lanham Act achieves this goal by granting trademark owners the exclusive right to brand goods with their trademark.  Traditionally a trademark is thought of as a symbol, word or short phrase.  However, trademark protection can be granted to just about anything that a product producer uses to distinguish its products from the products of others.  If someone other than the trademark owner uses a trademark to brand products in a way which is likely to cause consumer confusion that can be considered trademark infringement.

Because trademark law does not exist in a vacuum, the rights of a trademark holder must balanced with the rights of the general public.  The United States Constitution First Amendment grants the public the right to free speech. When a trademark or trade dress is included in or on an artistic or expressive work, the narrow source-identification protections afforded to companies under trademark laws give way to broader First Amendment concerns. Silverman v. BCS, Inc., 870 F.2d 40, 48 (2d Cir. 1989).  This means that artists can use a trademark in their art, provided the use of a trademark does not indicate the source of a product.  When a defendant accused of trademark infringement argues that they are exercising their First Amendment right to free speech, a court will apply the Rogers test.

The Court of Appeals for the Second Circuit articulated the Rogers test in Rogers v. Grimaldi, 875 F.2d at 998.  Simply stated the test holds that in the case of works of artistic expression, the First Amendment bars the application of the Lanham Act unless: 1) the use of the trademark has no artistic relevance to the underlying work whatsoever, or, 2) if it has some artistic relevance, unless the use of the trademark explicitly misleads as to the source or the content of the work. When First Amendment rights are implicated by the use of a trademark, the relevant inquiry is not whether some consumers might be confused, or even were confused, by the defendant’s use. Rather, even if “some members of the public would draw the incorrect inference” that the plaintiff sponsored or was affiliated with the work, “that risk of misunderstanding, not engendered by any overt claim … is so outweighed by the interests in artistic expression as to preclude application of the Lanham Act.”

An example of a case which involves the Rogers test is AM GENERAL LLC, v. ACTIVISION BLIZZARD, INC.,  1:17-cv-08644 (S.D.NY 2017)  The defendant in this case is a video game publisher.  One of the defendant’s more popular game franchises is Call of Duty.  The Call of Duty games are military action games in which a player assumes control of a military soldier and fights against a computer-controlled or human-controlled opponent across a variety of computer-generated battlefields.  The defendant published its first Call of Duty game in 2003 and has subsequently published 15 core versions of the game.  To fully realize their artistic vision, the defendant worked hard to create a convincing depiction of real-life military combat.  Locations, uniforms, equipment and vehicles in the game are all modeled after their real life counter parts.  One of the featured vehicles in the the defendant’s game is the HUMVEE.  The HUMVEE is a vehicle that serves as a platform for various different purposes, such as troop mobility and ambulance.  The HUMVEE plays a prominent role in the defendant’s games because it would be the vehicle used by soldiers during the period of time the defendant’s game is set.

The plaintiff in this case is the manufacturer of HUMVEEs.  In 2017 the plaintiff filed a lawsuit against the defendant for trademark infringement and trade dress infringement.  The plaintiff alleges that the defendant’s inclusion of a HUMVEE shaped vehicle in the game, and advertisements for the game, causes consumer confusion.  Specifically the plaintiff contends that the defendant’s are trying to capitalize off the plaintiff’s trademark and trade dress to lead consumers to believe that there is some connection between the plaintiff and the defendant.

In May of 2019 the defendant filed a motion to dismiss the lawsuit.  The defendant contends that its use of the HUMVEE shaped vehicles in the game are protected by the First Amendment and further that the shape of a HUMVEE is not protectable as trade dress because it does not have secondary meaning.

We will have to wait and see which party the court sides with.

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