From Activision Publishing, Inc. v. Warzone.com, LLC, decided last month by Judge Fernando L. Aenlle-Rocha (CD Cal.), but just posted to Westlaw (presumably because it was just appealed); this seems correct to me:
Warzone.com is developing and making a browser-based game titled war zone. war zone is a free-to-play, turn-based strategy game. Players move numbers representing armies across a map of the world to take control of countries or territories. Warzone.com markets that game as “Better than Hasbro’s RISK game.” Warzone.com released war zone in November 2017, and it is available on the Warzone.com web site and on mobile devices. war zone is not available on video game consoles.
On or about June 25, 2020, Activision filed for registration of the WARZONE and CALL OF DUTY WARZONE trademarks. On October 30, 2020, Warzone.com filed for registration of the WARZONE trademark. Warzone.com has filed an appeal against the registration of the Activision marks and the opposition proceedings are currently pending with the USPTO. On November 20, 2020, Warzone.com counsel sent a letter to Activision’s counsel, demanding that Activision “change the name of its games, relinquish the use of Warzone’s WARZONE mark and trademark applications.” . Activision and Warzone.com were unable to resolve the dispute, and Warzone.com indicated its intention to seek an injunction and damages against Activision….
[W]If a trademark is incorporated into an expressive work, the protections afforded by the trademark laws must also be weighed against broader First Amendment concerns. In circumstances involving an expressive work, a plaintiff with Lanham Act claims must instead overcome the test articulated in: Rogers v. Grimaldic (2d Cir. 1989), which was passed by the Ninth Circuit….
The “threshold for applying the” Rogers The test is whether the alleged infringing use is contained in a visual work.” If the threshold requirement is met, the judge applies the twofold Rogers test, which provides First Amendment protection for “the use of a trademark in an expressive work if the use of the trademark has” [1] artistic relevance to the underlying work and [2] does not explicitly mislead as to the source or content of the work.” … [T]The Lanham Act “should only be construed as applying to artistic works where the public interest in avoiding consumer confusion outweighs the public interest in free expression.”[.]”…
The Rogers test is fully applicable here. To begin with, Defendant admits that: CODWZ is an expressive work and so the Rogers test applies. The Supreme Court has clearly recognized that video games are subject to the protection of the First Amendment….
“The first leg of the Rogers test requires demonstrating that the use of a brand has artistic relevance to the underlying work.”[T]The relevance level should only be above zero.” … In CODWZ, the game takes place on a large computer-generated battlefield that can accommodate more than a hundred players simultaneously…. Activision’s use of the term “Warzone” is clearly relevant to the content in CODWZ. The fact that Activision could have chosen other relevant names does not detract from the artistic value of the name ultimately chosen….
“The second leg of the Rogers test requires a junior user to demonstrate that their work is not explicitly misleading as to the source or content of the work.” Usually, “the mere use of a trademark alone is not sufficient to make such use explicitly misleading.” However, this does not apply to cases where consumers would expects the use of a brand only to identify the source.” Furthermore, “identical use could reflect the type of ‘explicitly misleading description’ of the source that Rogers Condemns.” Concerns about consumer deception are “generally allayed when the brand is used as just one part of a junior user’s greater expressive creation.” …
Defendant does not plausibly argue that Activision has explicitly misled consumers by using the term “Warzone” in the title of CODWZ as part of the wider Duty franchisee. In its effort to comply with the second pillar of the Rogers test, defendant relies on allegations that Activision’s use of “Warzone” has caused consumer confusion. But “[t]o failing the second leg of the Rogers test, it is essential that the maker must express consumers,” and the court “should ask not only the likelihood of consumer confusion, but also whether there was an explicit indication, overt claim, or explicit error that caused such consumer confusion.” Warzone.com claims that Activision uses an identical brand to offer similar goods and services, saturating the market and overwhelming Warzone.com, resulting in actual consumer confusion. Nothing in the allegations, however, suggests that Activision’s use of the term “Warzone” is explicitly misleading….
Congratulations to Karin G Pagnanelli, Lindsay R. Edelstein and Marc Ellis Mayer of Mitchell Silberberg & Knupp LLP, who represented Activision.
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