From Activision Publishing, Inc. v. Warzone.com, LLC, decided last month by Judge Fernando L. Aenlle-Rocha (C.D. Cal.), but just posted on Westlaw (presumably because it has just been appealed); this seems quite correct:
Warzone.com develops and makes available to the public a browser-based game titled Warzone. Warzone is a free-to-play, turn-based strategy game. Players shift numbers, which represent 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 Warzone in November 2017, and it is available on Warzone.com's internet website and mobile devices. Warzone is not available on video game consoles.
On or about June 25, 2020, Activision filed applications for registration of the trademarks WARZONE and CALL OF DUTY WARZONE. On October 30, 2020, Warzone.com filed applications for registration of the trademark WARZONE. Warzone.com filed a Notice of Opposition to the registration of the Activision marks and the opposition proceeding is currently pending before the USPTO. On November 20, 2020, Warzone.com's counsel sent a cease-and-desist letter to Activision's counsel, demanding that Activision "change the name of its games, stop using Warzone's WARZONE mark, and abandon the trademark applications." Activision and Warzone.com were unable to resolve the dispute, and Warzone.com indicated it intended to seek injunctive relief and damages against Activision….
[W]hen a trademark is included in an expressive work, the protections afforded under trademark laws must also be balanced 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. Grimaldi (2d Cir. 1989), which was adopted by the Ninth Circuit ….
The "threshold for applying the Rogers test is whether the allegedly infringing use is contained in an expressive work." If the threshold requirement is met, the court applies the two-prong Rogers test, which provides First Amendment protection to "the use of a trademark in an expressive work if the use of the mark has [1] artistic relevance to the underlying work and [2] does not explicitly mislead as to the source or content of the work." … [T]he Lanham Act "should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression[.]" …
The Rogers test squarely applies here. To begin, Defendant admits that CODWZ is an expressive work and thus, the Rogers test applies. The Supreme Court has clearly recognized that video games are subject to First Amendment protection….
"The first prong of the Rogers test requires a showing that the use of a mark has artistic relevance to the underlying work." "[T]he level of relevance merely must be above zero." … In CODWZ, game play takes place in a large computer-generated battlefield that accommodates over one hundred players at a given time…. Activision's use of the term "Warzone" is clearly relevant to the content in CODWZ. That Activision could have chosen other relevant names does not negate the artistic value of the name it ultimately selected….
"The second prong of the Rogers test requires a junior user to show that their work does not explicitly mislead as to the source or content of the work." Ordinarily, "the mere use of a trademark alone cannot suffice to make such use explicitly misleading." However, this "does not extend to instances in which consumers would expect the use of a mark alone to identify the source." Further, "identical usage could reflect the type of 'explicitly misleading description' of source that Rogers condemns." Concern about misleading consumers is "generally allayed when the mark is used as only one component of a junior user's larger expressive creation." …
Defendant fails to allege plausibly that Activision explicitly mislead consumers by using the term "Warzone" in the title of CODWZ as part of the broader Call of Duty franchise. In its attempt to satisfy the second prong of the Rogers test, Defendant relies on allegations that Activision's use of "Warzone" has caused consumer confusion. But "[t]o fail the second prong of the Rogers test, it is key that the creator must explicitly mislead consumers," and the court "must ask not only about the likelihood of consumer confusion but also whether there was an explicit indication, overt claim, or explicit misstatement that caused such consumer confusion." 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….
Congratulations to Karin G Pagnanelli, Lindsay R. Edelstein, and Marc Ellis Mayer of Mitchell Silberberg & Knupp LLP, who represented Activision.
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