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Electronic Arts, Inc. (“EA”), the premier video game developer and publisher, is going on the offensive. Its latest hit, Call of Duty: Modern Warfare 3, was a phenomenal success, selling 8 million copies in the first month of its release. EA wants to enjoy the hefty profits being produced and make sure that nothing stands in the way of its efforts to continue the Call of Duty franchise. That’s why it’s taking the fight to Textron, Inc., the Fortune 500 company that owns Bell Helicopters and the Cessna Aircraft Company. In 2006, Textron sued EA, alleging that it engaged in trademark and trade dress infringement (among other things) when it produced video games prominently displaying some of Textron’s major products, the AH-1Z, UH-1Y and V-22 model helicopters. The suit was dismissed, likely because the parties reached a settlement.
In late 2011, Textron demanded that EA cease its depiction of AH-1Z, UH-1Y and V-22 model helicopters in Modern Warfare 3 or face legal action for trademark and trade dress infringement. This time, EA took the initiative and sued Textron in an action seeking declaratory relief pursuant to 28 U.S.C. § 2201 in the Northern District of California. The move was appropriate because, as EA alleged, there is a definite and concrete controversy between EA and Textron in which the legal rights and obligations of each party are in dispute. EA’s complaint asked the court to declare that EA’s identification and depiction of the helicopter models do not constitute trademark or trade dress infringement and to enjoin Textron from bringing suit under those theories.
EA appears to stand on solid footing. It claimed the Bell helicopters have “artistic relevance to EA’s expressive work” and thus are protected by the First Amendment “just as they would be in any book or movie.” The Supreme Court’s 2011 decision in Brown v. Entertainment Merchants Ass’n, 131 S. Ct. 2729 (2011), which recognized First Amendment protection for video games, bolsters EA’s position.
It is well known that trademarks are distinct marks or signs used to identify and distinguish products or services, but trade dress is a bit more esoteric. It refers to nonfunctional features that comprise the “look and feel” or “dressing” of a product. The pivotal question facing the Northern District in deciding whether to declare that EA’s depictions do not constitute trademark or trade dress infringements is whether or not they cause a likelihood of confusion among consumers. Essentially, it must decide whether, due to the helicopter depictions, the public will believe that Textron sponsored or otherwise approved of the use of the trademark or trade dress or was involved in producing the depictions.
There are eight factors widely recognized to be non-exclusive factors for courts to consider when deciding whether the use of a trademark or trade dress is likely to cause confusion. They are: 1) the strength of the plaintiff’s mark; 2) the relatedness of the goods; 3) the similarity of the marks; 4) evidence of actual confusion; 5) the marketing channels used; 6) the likely degree of purchaser care; 7) the defendant’s intent in selecting the mark; and 8) likelihood of expansion of the product lines.
It is unclear how the Northern District will apply these factors, but a few things are clear. First, the depictions are extremely similar to the real life model helicopters at issue. Second, Bell Helicopter’s trademark is likely going to be deemed “strong” in that it is distinct in the eyes of consumers routinely using or purchasing such aircraft. This population is large, seeing as Textron’s website boasts that 13,000 Bell Helicopters are being used in 29 different countries. The strength of its trade dress depends on its uniqueness and the degree to which it indicates to consumers that the helicopters are products of Textron. Finally, the marketing channels are vastly dissimilar. Since the disputed depictions appear in a video game, it is less likely that consumers will think that Textron was affiliated with or developed them.
EA made it clear that its depiction of the helicopters “in no way misleads consumers as to the source or content of the work.” It claimed the game does not suggest that Textron endorsed or assisted in developing the game, and the packaging of the game contains a disclaimer notifying consumers that the depictions do not indicate affiliation, sponsorship, or endorsement by any of the vehicle manufacturers.
Also, EA asserted the affirmative defense of nominative fair use, claiming that the depictions in Modern Warfare 3 serve only to identify the actual Bell helicopters at issue. EA will no doubt argue that its depictions only serve to create a realistic game for its consumers, and accurate visuals of military weapons and vehicles is necessary for that end. Such a use is encouraged, and is closely linked with the First Amendment right to freedom of speech.
Although it is unclear how the court will rule, one thing is clear: EA filed suit quickly in order to get these issues in front of the California court. The declaratory judgment action which gave rise to the Supreme Court’s ruling in Brown v. Entertainment Merchants Ass’n originated in the Northern District of California. Previously, Textron sued EA in the Northern District of Texas, and would have surely done so again if it had filed first.
– Andrew Farrell