Video Games & ‘Copters & Trademarks—Oh My!

Video Games & ‘Copters & Trademarks—Oh My!

by Jerry Glover
April 9, 2012

Electronic Arts (EA), a major U.S. video game developer and publisher, recently filed a lawsuit for declaratory relief asking a California federal district court to rule that its use of recreated images of helicopters manufactured by Textron, Inc. and the trademarks associated with the helicopters in EA’s latest video game, “Battlefield 3”, does not infringe Textron’s trademark rights because EA’s use of those trademarks is a “fair” one that is protected by the free speech provision of the First Amendment since the video game is, in the words of EA, an “expressive work.” Textron has filed a lawsuit of its own against EA in a federal district court in Texas (where Textron is based and perhaps giving Textron a home advantage) alleging, among other things, trademark infringement and false designation of origin. We expect these cases to be consolidated and heard by one court.

The concept of trademark “fair use” is an interesting one which has come into play many times over the past few years. The EA/Textron lawsuits may provide a classic fair use example.

“Battlefield 3” is described by EA as a “first-person military combat simulation.” The game allows players to “fly” the helicopters as the player chooses. Pictures of the helicopters as used in the video game are reproduced in Textron’s complaint against EA and look identical to the actual Textron helicopters. Textron alleges that EA uses both the common numerical designations for the Textron helicopters and also their alternative names (e.g., Huey, Venom, Cobra, Viper and Osprey). Textron also alleges that EA uses images of the helicopters in video “trailers” to promote the video game.

The parties faced off in a similar lawsuit in 2006 when Textron sued EA for trademark infringement after EA used Textron’s helicopter images in its video games “Battlefield Vietnam,” “Battlefield Vietnam: Redux” and “Battlefield 2”. After the trial court refused to dismiss the case on EA’s motion, the parties reached a confidential settlement in the matter. Textron claims that EA paid Textron a lump sum license fee for use of the helicopter images/marks as part of the settlement.

Although the parties had negotiated for a similar license for EA’s use of helicopter images in “Battlefield 3”, no agreement was reached. EA was the first to seek legal redress.

In its complaint for declaratory relief, EA argues that its use of Textron’s helicopters and marks has “artistic relevance to EA’s expressive work [the video game].” EA additionally argued that its video game has the same type of First Amendment protection as books and movies. The game, EA argues, “realistically and authentically depicts modern-day armed conflict on land, in air and at sea.” EA added that the game includes combat vehicles of various types actually manufactured by a variety of companies which is common, EA argues, in works dealing with war and combat. EA anticipates Textron’s trademark arguments when it declares that as part of an expressive work EA’s use of Textron’s helicopters “in no way misleads consumers as to the source or content of the work.” EA added that nothing in the video game “contains any indication that … Textron endorses the game or had a role in producing it.” EA notes that it is not using Textron’s trademarks to identify EA products but to identify Textron as the source of the helicopters portrayed in the video game—a so-called nominative fair use of the marks.

Textron claims that EA was obviously aware of Textron’s helicopter trademarks as a result of the 2006 litigation between the parties. EA’s use of the marks without Textron permission in EA’s latest game was, therefore, a willful infringement of the Textron trademarks. Textron noted in its complaint that EA had entered into license agreements with the National Football League and the NFL Player’s Association for use of players’ likenesses, team colors, names and logos for its “Madden” videogame. Textron concludes that EA’s decision to utilize Textron’s trademarks without permission in “Battlefield 3” was made in bad faith.

EA is correct that video games receive full First Amendment protection as a result of the U.S. Supreme Court’s decision in Brown v. Entertainment Merchants Ass’n, 131 S. Ct. 2729 (2011). Whether EA’s prominent use of the Textron helicopters and associated trademarks in the video game are merely expressive or an infringement of Textron’s trademarks is not so clear cut.

Litigation involving third party trademarks used by producers in films, television series and titles for films and television series is not new. Here are some representative examples:

Gottlieb Development LLC v. Paramount Pictures Corporation, 590 F. Supp. 2d 625 (S.D.N.Y. 2008)—Plaintiff owned a trademark for a pinball machine used, without plaintiff’s consent, for seconds at a time in the background of a 3-minute scene in a Mel Gibson film. Plaintiff claimed that use of the trademark led viewers to believe that the plaintiff had approved of this use or was somehow associated with the film in violation of the federal trademark act. Plaintiff had no evidence whether a consumer would be confused about the sponsorship or affiliation of the pinball machine.   Plaintiff also produced no evidence the Paramount intended to “poach or free-ride” on the fame of the plaintiff’s trademark.

Dillinger, LLC v. Electronic Arts Inc., 2011 WL 2457678 (S.D. Ind. 2011)—EA is no stranger to litigation in this area. EA used “Dillinger” (as in “John Dillinger”) as the name of weapons featured in its Godfather video games. The court used a test first developed in an earlier case, Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), to determine when the First Amendment would protect the use of a mark without the owner’s consent (in the Rogers case, a celebrity name) in the title of a film. The Rogers test uses a “relatedness” test to determine whether the unconsented use of the mark “related” in some way to the content of the expressive work. According to Rogers, if the use of the mark was wholly unrelated to the work or if the work itself was simply a disguised commercial advertisement for the sale of goods or services, it would not have First Amendment protection. In Dillinger, the plaintiff argued that the use of “Dillinger” had nothing to do with the Godfather game since the name appeared only on a series of weapons and that John Dillinger did not appear in the Godfather novel, movies or video game.   Since the use of Dillinger for various weapons was simply an isolated element in the work with no relation to the game’s story-line, the Dillinger estate argued that EA’s use of the mark cannot pass the relatedness test. The plaintiff did admit, however, that the Dillinger name was at least superficially linked to weapons, especially the Tommy Gun. The court held that even if the connection between the name Dillinger and the video game was “attenuated”, that type of connection is enough to satisfy the relatedness test noting it was not the court’s job “to determine how meaningful the relationship between a trademark and the content of a literary work must be; …any connection whatsoever is enough for the Court to determine that the mark’s use meets the ‘appropriately low threshold of minimal artistic relevance.’”   Id. at *6 citing Rogers, 875 F.2d at 999.

Rin Tin Tin, Inc. v. First Look Studios, Inc., 671 F. Supp. 2d 893 (S.D. Tex. 2009)—Defendant distributed a home video entitled “Finding Rin Tin Tin: The Adventure Continues,” a movie based on the life of the famous dog who appeared in numerous films in the 1920s. Plaintiff claimed there would be a likelihood of confusion in the marketplace about the source of the film since Rin Tin Tin was used in the title. Defendant claimed its use of the Rin Tin Tin mark was a fair use. The court noted that the use of an “historical figure’s name” in a film title was a descriptive use (a use that merely denotes a characteristic or quality of an article or service) and not a use that indicates origin of the product. The court also noted that the defendant did not put anything on the video box or in the video credits which used plaintiff’s name but defendant did use its own name on the box and in the credits.

Dallas Cowboy Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979)—Defendant used plaintiff’s cheerleader outfits in adult film. Defendant argued the public would not be confused about the origin of that film but the court noted that “a consumer need not believe that the owner of the mark [the cheerleader uniform] actually produced the item … . The public’s belief that the mark’s owner sponsored or otherwise approved the use of the trademark satisfies the confusion requirement.” The court noted that despite defendant’s argument that the use of the uniforms was part of a parody on sex and athletics, the court noted that film conveyed “a barely discernible message” and added that there were other ways the defendant could have comments on sex and athletics without using plaintiff’s trademark.

Films of Distinction, Inc. v. Allegro Film Productions, Inc., 12 F. Supp. 2d 1068 (C.D. Cal. 1998)—Plaintiff network used “The Crime Channel” as its trademark. Defendant produced a cable television film that included five scenes where a young boy was watching a television channel labeled the “Crime Channel” which was described in the film as “America’s first and only cable channel devoted exclusively to crime.” The court denied defendant’s motion to dismiss because plaintiff alleged (and the court had to accept as true plaintiff’s allegations when deciding a motion to dismiss) that defendant had intentionally used plaintiff’s trademark in the film and had used the mark in a way that caused public confusion whether plaintiff was associated with or endorsed plaintiff’s film

DeClemente v. Columbia Pictures Industries, Inc., 860 F. Supp. 30 (E.D.N.Y. 1994)—Plaintiff claimed to be known as the “Karate Kid” and had a karate school named “The Karate Kid Dojo.” Defendant produced the motion picture entitled “The Karate Kid.” Using the Rogers test, the court held that the film title had “considerable artistic relevance to the film’s content.” The court added that in this case the film title did not explicitly mislead the public as to the source or content of their work because (i) the plaintiff was not famous and (ii) the film’s title does not state the plaintiff is associated with the film or an explicitly endorsement of the film.

Wham! O, Inc. v. Paramount Pictures Corp., 286 F. Supp. 2d 1254 (N.D. Cal. 2003)—Plaintiff’s trademarked “p ‘n Slide” was used in a 70-second scene in a comedy film where the slide was not inflated and was not adequately wet causing harm to the film’s protagonist. The court held that the plaintiff was not likely to prevail on its trademark infringement claim because the public would not mistake plaintiff for a movie production house and will not mistake the film producer as a purveyor of toys (i.e., no likelihood of consumer confusion as to the source of the toy). The court also held that defendant’s use of the mark was a nominative use (a use to identify or refer to the plaintiff’s product) noting that the toy could not be readily identified without use of the trademark. The court noted that alternative terms like “water slide” or “lubricated plastic sheet” would not, according to the court adequately capture or identify the toy adding that the law did not require film producer’s to use “absurd turns of phrase” to avoid trademark liability. The court also noted that the producer did nothing in the film that would cause the public to believe that the mark owner sponsored or endorsed the film.

Does EA’s use of the Textron trademarks and helicopter images cause public confusion as to the source of the video game? Would the public believe Textron endorsed or in some way sponsored the video game simply because its mark and products were incorporated into that game? Does the First Amendment prohibit a trademark infringement claim because the use of the marks and helicopter images were necessary to the story of the game? Is the use of the trademarks related to the content of the game under the Rogers test? Is EA’s use of the trademarks a “nominative fair use” in that EA is only using the mark to describe the helicopters shown in the game and there is no other acceptable alternative to identify the helicopters?

These are questions that will probably be confronted by the court hearing these cases. We will keep you informed about the outcome.

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