Actual confusion irrelevant when Rogers v. Grimaldi applies

Mil-Spec Monkey, Inc. v. Activision Blizzard, Inc., No. 14-cv-02361 (N.D. Cal. Nov. 24, 2014) 

MSM alleged that the video game Call of Duty: Ghosts made infringing use of MSM’s “angry monkey” mark, “among the most popular morale patch designs” MSM sells.  (Morale patches are patches that military personnel can’t wear officially, but are allegedly frequently used in unofficial contexts.)  
 

Angry Monkey patch

Ghosts includes an image visually similar to the angry monkey mark as a patch players can use on their avatars’ uniforms in multiplayer mode.  When selected, the patch appears at various points during play, and it also appeared in Activision’s pre-release promotional trailer for Ghosts’ multi-player edition.  MSM alleged copyright and trademark infringement and related claims.

Activision moved to dismiss the non-copyright claims based on the First Amendment, and won.  Ghosts’ use of the patch was artistically relevant and not explicitly misleading, thus passing Rogers v. Grimaldi.

Ghosts is the tenth installment in the Call of Duty franchise.  Ghosts “depicts highly realistic combat in a near-future, war-torn setting, featuring numerous characters, complex narratives, and advanced graphics. Its main protagonists are the Ghosts—a force of U.S. Special Operations personnel trained to conduct secret missions behind enemy lines.”  The game uses “dozens of contemporary weapons and vehicles that players can customize with modifications or attachments, and a variety of military equipment based on real-life counterparts or portrayals of future designs.”  It likewise uses “names and insignia of contemporary forces such as the National Security Agency, the United States Marine Corps, and the United States Air Force.”  A new feature allows players in multiplayer mode the option to customize their avatars, including gender, uniform style, gear, accessories, and over 600 patches. Thirty-two patches are available at the beginning, while more can be unlocked as rewards, and others are available for download; the angry monkey is one of the standard 32.

Patch selection screen

Closeup

The patches may appear onscreen during multiplayer matches “when a player may glimpse a patch on the uniform of another player, or alongside a flash of the name of an avatar wearing a patch who just performed a particular objective in the ongoing mission. The patches also appear alongside other player information in match summaries,” which are displayed at the end of play. Thus, patches serve to identify characters during play.  In the pre-release trailer, the design is visible for about 2 seconds at the bottom of the screen, associated with an avatar, along with other patches for other avatars.

Screenshot from trailer, monkey near bottom left

Ghosts is an expressive work entitled to First Amendment protection.  MSM argued that before applying Rogers to an expressive work, the Ninth Circuit requires a mark to be a cultural icon.  This argument was based on a misreading of Mattel v. MCA.  While it found support in “an outlier decision from this district,” Rebelution, LLC v. Perez, 732 F. Supp. 2d 883 (N.D. Cal. 2012), the court distinguished Rebelution even if it was consistent with governing law: That case favored a reggae band using the name Rebelution in a case against Pitbull’s album with the same name, but there Pitbull wasn’t referring to the band.  (If “Rebelution” was artistically relevant to Pitbull’s own message, for example through its slightly punny connotations, of course, that should count too, as the court here seems to signal with its skepticism.)  But Ghosts’ use of a patch drawing on a design that’s extremely popular in the military world was artistically relevant.

Mattel “stands for the proposition that a trademark owner may not control public discourse whenever the public ‘imbues his mark with a meaning beyond its source-identifying function’—a far more inclusive standard than the ‘cultural icon’ one MSM advocates.”  Plus, this rule wasn’t a threshold limitation, but just part of the first prong analysis.  ESS Entertainment 2000 v. Rock Star Videos didn’t require the Play Pen strip club to be a cultural icon; Rogers applies as long as the game is an artistic work.

Rogers provides that a use of a mark in an artistic work 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.” This is a highly speech-protective standard.  Ghosts’ multiplayer mode was supposed to be a realistic combat experience, “the intensity of which is heightened by sophisticated features permitting players to customize their avatars’ identities and engage with other players in the virtual environment.”  The use of many real-world references creates a “critical mass” to achieve a “look and feel” consistent with the game creators’ vision. The angry monkey patch is a small part of this vision, helping to create “an authentic universe of morale patches, like those available in the real world.”  Thus, the inclusion of the patch had “some artistic relevance,” all that was required.  MSM argued that there was no artistic relevance because the armed forces ban morale patches on uniforms in the field.  “But MSM invokes no authority, nor is there any, for the proposition that use of a mark must sufficiently mimic reality to fall within the First Amendment’s safe haven.”

MSM argued that the use of the patch was commercial speech, but it wasn’t.  Its brief appearance in the pre-release trailer and in a menu that also allowed players to access additional patches for purchase didn’t change its artistic relevance in the game.  Creators of artistic works can market them, and can even choose to focus on trademarked products as a “crass marketing tool” as long as they’re also artistically relevant. Winchester Mystery House, LLC v. Global Asylum, Inc., 210 Cal. App. 4th 579 (2012).

Nor was the use explicitly misleading.  Explicit misleadingness requires “an affirmative and overt statement that indicates a relationship with or endorsement by the plaintiff.” Using the mark can’t itself be affirmatively misleading, or Rogers would be meaningless, and this rule extended to using the mark in promotional materials for the work (as is necessarily entailed by Rogers’ origin in a case against a movie title!). MSM didn’t show any way in which Activision affirmatively purported to “share a relationship” with MSM.  The packaging was very clear about origin and source.

MSM’s evidence of “actual confusion” from a blogger was irrelevant.  As the Ninth Circuit has already held in Brown v. EA, survey evidence can’t change mere use of a mark to “explicitly” misleading.  The only relevant evidence under Rogers relates to the nature of the behavior of the defendant, not the impact of the use.  Rogers itself disregarded a survey showing 38% confusion.  The risk of confusion was outweighed by the First Amendment interests at stake.