Activision Publishing, Inc. v. Warzone.com, 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 Warzone.com 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 Warzone.com 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 Warzone.com’s game, and that its marketing made clear that CODWZ was part of
the broader Call of Duty franchise. Warzone.com 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 Warzone.com. 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:
Warzone.com alleges Activision uses
an identical mark to offer similar goods and services, saturating the market
and overwhelming Warzone.com, 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?
The registrations can potentially be used to address counterfeiting, which can sometimes be a problem for game makers.
ReplyDeleteThe 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 warzone.com would have done better if they beat Activision to the punch and managed to file in CA2 or CA5?
-Giulio
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).
ReplyDeleteI 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.
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.
ReplyDeleteHow 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.
-Giulio