Nancy Chen is an IPilogue Writer and a 2L JD/MBA Candidate at the University of Toronto.
For all the gamers out there, do you still remember the classic, pixelated games of the 2000s? Gone are the days where fiction and reality were easily discernible, with the emergence of hyper-realistic video games such as Call of Duty, NBA 2K and God of War depicting entire fantasy worlds at a crisp 1080p quality or better.
The video game industry has sky-rocketed in the last decade, especially due to historic amounts of people turning to digital forms of entertainment to wait out the pandemic. In this new billion dollar industry, game developers must be especially cautious of potential trademark infringements. Two recent U.S. court cases addressed the question of whether depictions of real vehicles in video games constitutes trademark infringement.
Battle of the tractors: Saber Interactive Inc v. Oovee Ltd (2022)
The star of this case is a K-700 tractor. Saber Interactive Inc.(“Saber”) had entered into a licensing agreement with the trademark owner for the exclusive intellectual property rights to depict the K-700 in its video game, Mudrunner. The agreement included the right to enforce the license in court. Subsequently, Oovee Ltd (“Oovee”) released its game Spintires, featuring the K-700 as a playable vehicle. Saber then sues Oovee for unfair competition caused by unauthorized use of the K-700 trademark and trade dress under the American Lanham Trademark Act.
Expressive works are granted expression rights by the First Amendment. Oovee’s use of the K-700 was hence protected as such, as the Court found video games to indeed be expressive works. Accordingly, then, Saber had to satisfy the two-prong Rogers test to bypass this defense by showing that Oovee’s use of the K-700, as follows:
- Had no artistic relevance to its Spintires game; or
- Explicitly misled consumers regarding the source of the K-700.
The Court found that Saber “did not explain why Oovee’s use of the K-700 is artistically irrelevant,” and did not satisfy the high bar of “explicitly misleading” in their submissions. Saber argued that because consumers expect that “actual vehicles featured in simulations are licensed,” there arises a likelihood of confusion amongst the public as to the involvement of Saber in Oovee’s game. The Court found that without an explicitly misleading statement, this likelihood of confusion is insufficient to satisfy the second prong. Accordingly, Oovee’s use of the K-700 did not infringe upon any marks and the motion was dismissed.
Humvee v. Call of Duty, aka AM General LLC v. Activision Blizzard Inc (2020)
The Saber case ruling follows an earlier case concerning the appearance of Humvee vehicles in the Call of Duty franchise games. Call of Duty, created by Activision Blizzard, is a first-person shooter game simulating a modern warfare setting with Humvees depicted throughout the game. AMG sued Activision Blizzard for these depictions since Blizzard did not acquire authorization for such uses. Like the Saber case, First Amendment protection applied to the video game, and this protection was subjected to the Rogers test.
Ultimately, the Court found that the use of Humvees was artistically relevant to the game because they evoked “a sense of realism and lifelikeness” to the players. The second prong, however, was unmet because despite there being survey evidence of confusion, the confusion itself did not arise from Activision Blizzard’s actions. The case was dismissed in favour of Activision Blizzard.
As more of our world moves online, these such lawsuits help guide the direction of developers designing the digital space. To make video games more immersive and realistic, developers would have to bring in real-life characteristics and these precedents help to shield designers from tedious trademark litigation. However, as we have seen from the Orton case , similar protection may not be granted to copyright infringements in games. Regardless, we expect further guidance as the courts continue to clarify how the nuances of IP law apply online.