Monday, September 12, 2022

Warzone is artistically relevant/not explicitly misleading for wargames

Activision Publishing, Inc. v., LLC, 2022 WL 4117035, No. 2:21-cv-03073-FLA (JCx) (C.D. Cal. Aug. 15, 2022)

Applying Gordon v. Drape, in response to Activision’s request for a declaratory judgment, the court finds that Activision’s use of “Warzone” in connection with Call of Duty is protected by the First Amendment despite the gaming .com’s reverse confusion claims.

In 2020, Activision released a stand-alone multiplayer game, Call of Duty: Warzone, “a first-person shooter game that features a large computer-generated battlefield, or warzone, that accommodates up to 150 payers, and sometimes 200 players, at one time.” Meanwhile, Warzone is a free-to-play, turn- and strategy-based game available on since 2017 (through the browser, not a console). “Players shift numbers, which represent armies, across a map of the world to take control of countries or territories” and the marketing pitch is “Better than Hasbro’s RISK game.”

Activision sought to register trademarks for WARZONE and CALL OF DUTY WARZONE, which opposed. Eventually, this declaratory judgment/counterclaims for trademark-related claims resulted.

Although this is a title-v-title case, Rogers applies to it in the Ninth Circuit, and CODWZ is clearly an expressive work. Just as clearly, “Warzone” had artistic relevance to the game, even if Activision could have chosen other names—lack of alternatives isn’t part of the artistic relevance test, nor is reference to the trademark owner.

But “explicitly misleads” has been distorted in the Ninth Circuit, essentially to handle title-v-title conflicts, which seems like it could have been bad for Activision. As the court explained, the cases say that, ordinarily, “the mere use of a trademark alone cannot suffice to make such use explicitly misleading,” but this principle “does not extend to instances in which consumers would expect the use of a mark alone to identify the source.” How do you know what consumers would expect on a motion to dismiss? Good question! In addition, “identical usage could reflect the type of ‘explicitly misleading description’ of source that Rogers condemns.” But misleadingness is “generally [not a problem] when the mark is used as only one component of a junior user’s larger expressive creation.”

Activision argued that “Warzone” couldn’t be explicitly misleading because it is a common English word with general meaning independent of’s game, and that its marketing made clear that CODWZ was part of the broader Call of Duty franchise. rejoined that Activision’s use of “Warzone” was explicitly misleading because consumers searching for its video game are diverted to Activision’s game, and that it sufficiently alleged confusion, which proved explicit misleadingness.

The court disagreed with Confusing consumers is not the same thing as explicitly misleading them, which requires “an explicit indication, overt claim, or explicit misstatement that caused such consumer confusion.” Now the magic happens, and I invite you to identify the difference between this case and Gordon: alleges Activision uses an identical mark to offer similar goods and services, saturating the market and overwhelming, resulting in actual consumer confusion. However, nothing in the allegations plausibly suggest that Activision’s use of the term “Warzone” is explicitly misleading.

Also, Rogers can be applied both to reverse confusion and on a motion to dismiss.

Rogers also barred California claims. Given this result, the court had no authority to decide whether Activision’s pending applications should proceed to registration.

Query: Since Rogers applies to game titles, what rights if any should Activision’s registrations, if issued, confer on it?


Anonymous said...

The registrations can potentially be used to address counterfeiting, which can sometimes be a problem for game makers.

The case differs from Gordon in that the mark isn't essentially the product, as was the case with the greeting card. The title of a game is a single (albeit important) component of a much larger creative work. Take away "Honey Badger Don't Care" from the greeting cards, and what are buyers really left with?

12(b)(6) sounds dubious. But it seems likely MSJ would have yielded the same result for more money. I'm not sure the issue with CA9's standard is so much what the court said in Gordon as much as what the court has said in earlier cases, e.g. the statement in Brown that Rogers liability turns on the user's behavior instead of the impact of the use. They're basically applying an actual-malice standard now, notwithstanding Gordon's purported explanations/guidance. Doubtful discovery would have made a difference here.

Do you think would have done better if they beat Activision to the punch and managed to file in CA2 or CA5?


RT said...

Interestingly, the court doesn't even mention the "is the product bigger" part of Gordon, which reinforces my conviction that such a distinction is not about *explicit* misleadingness at all--it's basically an equitable doctrine asking 'did you do enough work?' (the defendants in GvD did create their own work from a (c) perspective, but the 9th Circuit apparently wants more).

I think the analysis in CA2 would have to be different because of the title v title exclusion, but, especially after the recent RISE case, I expect the result would be the same.

Anonymous said...

RISE was good. Leval came with some heaters in that decision. Really shows how much bite conceptual strength can (and should) have, even in cases with registered marks.

How certain are you that the title v. title exclusion still exists in CA2?

I've always thought it fishy that neither Cliffs Notes nor Twin Peaks affirmatively blessed Footnote 5, or even really addressed it any length. Cliffs Notes sort of acknowledges the footnote (which explicitly said the "limiting construction would not apply" in title v. title cases), but then effectively says the limiting construction still applied. The court hardly engaged with the footnote. Then in Twin Peaks, the court says absolutely nothing about it. I'm not aware of any CA2 decision from after the trilogy that discusses the footnote's exclusion.

So since CA2 has never really addressed or expressly applied the footnote (feel free to correct me if I'm wrong on that point), I do wonder about what the court would say about it nowadays.

Maybe MSCHF will shed light.