Where technology breathes, so does innovation, and where innovation breathes, intellectual property (IP) is born. In the automotive industry, this “technology to innovation to IP” cycle has hit overdrive. As a result, automotive IP disputes have shifted into a whole new gear.
Beyond the more pedestrian disputes about aftermarket trademark use and end-user licensing agreements, the automotive industry is hitting the gas on ground-rattling disputes about the nature and scope of IP protection. Take, for example, the recent Federal Court of Appeals’ decision upholding the validity of two design patents covering hoods and headlamps for Ford’s F-150 pickup truck, a Michigan-born case that put the Automotive Body Parts Association in the front seat of an infringement action filed by Ford, and one that highlights the purpose and parameters of design patent law (read our related blog post here).
A still-pending case, however, is treading new ground in automotive IP disputes and off-roading into First Amendment territory. Two years ago, AM General LLC, the military automaker of Humvee, sued Activision Blizzard, Inc., the publisher of the video game series Call of Duty, for among other things, trademark and trade dress infringement. The suit claimed that Activision did not seek or obtain its permission to use and depict HUMVEE® ─ AM General’s vehicle trademark ─ in its campaign titles and backgrounds of multiplayer maps. AM General (which has sold over 278,000 HUMVEE branded vehicles over thirty years) complained that its intellectual property-protected vehicle is pervasively displayed throughout the games in a way that makes the vehicle a key selling point for the games. Activision countered that the HUMVEE plays only a minor role in its games and its use is not artistically irrelevant or explicitly misleading such that it violates the law.
In a relatively recent set of filings, Activision pursued summary judgment against AM General, claiming its lawsuit directly attacks First Amendment rights of free expression. Activision opens its brief with its own “call of duty,” alleging that AM General’s lawsuit “is nothing less than a direct attack on the First Amendment right to produce creative works that realistically depict contemporary warfare.” According to Activision, AM General’s “use of purported trademark rights to restrict the content of expressive works is dangerous under any circumstance. But the claims in this case are particularly egregious because they involve a U.S. military vehicle paid for by American taxpayers and deployed in every significant military conflict for the past three decades.”
Naturally, AM General fired back with its own legal ammunition, arguing that Activision “made billions of dollars by using AM General’s iconic HUMVEE® military vehicle and its distinctive trade dress . . . in eight Call of Duty video games, numerous ads, two toys and several strategy guides. Activision neither sought nor obtained permission from AM General to do so.”
So here we sit, at the middle of the teeter-totter, balancing a trademark holder’s exclusive right to use its mark on the one end, and the First Amendment right to free expression on the other. Video games enjoy First-Amendment protected status under the 2011 U.S. Supreme Court’s decision of Brown v. Entertainment Merchant’s Ass’n (striking a California law prohibiting the sale or rental of violent video games to minors under the First Amendment). But protected free speech does not give one a free pass to use protected rights, at least not without some remuneration. As AM General argued: the First Amendment is “not a blanket defense to theft of intellectual property.” In other words, game on.
On the battlefield of legal warfare, intellectual property can serve as both a sword and shield. In this case, the reviewing court faces a Damocles’ sword of its own. Its ruling has the potential to change the intellectual property landscape for an automotive industry that has a genuine interest in protecting its exclusive trademark rights and a simulated gaming industry that seeks to realistically portray modern warfare. Regardless of which side ultimately wins this fight, Warner's Automotive Industry Group stands ready to help clients protect and defend their IP assets.
