That is, IF the ways you use them are “artistically relevant” to your game.

This April, and in the wake of a strong month for video games at the judge’s bench (see Take 2’s win to use player tattoos in-game), Activision prevailed in a lawsuit against the automotive manufacturer AM General’s claim Activision is piggy backing off of the rep of the Humvee. By this New York judgement in AM General LLC v. Activision Blizzard, Inc., Activision may now display Humvees in their popular Call of Duty franchise without a license.

Similar in 2019, but with an opposite result, the iconic heavy metal band, Iron Maiden, sued the developer 3D Realms for their use of Ion Maiden as title for a Duke Nukem-esque throwback shooter. 3D Realms gave in, elected not to continue in the lawsuit, changed the title of their game to “Ion Fury” in July of 2019, and since is receiving positive reviews.

In each controversy, studios used popular or well-known names and brands and the rightful holders of these trademarks claimed that the studios’ use in or on their games was infringing their trademark. However, Activision won and got to keep using “Humvee”. 3D Realms “lost” and changed the title of their game to avoid further trouble. Why is that? Or, when will the use of a trademark in a video game (or creative work in general) mean trouble and how do you use it but avert trouble?

Trouble? When you use a trademark on or in your game!

You may be thinking “Well, we have a right to free speech in this country, right? Why can’t I just use the trademarks I want in my game and be done with it?” Unfortunately (or fortunately, depending on your perspective), free speech under the First Amendment does not mean that ALL expression is free. In fact, the limiting effect that trademark law has on one’s ability to freely express was core to both Activision and 3D Realms’ disputes! So what do you need to keep in mind?

First, you need to ask yourself: is my game using someone else’s trademark? But what is a trademark and what does trademark law protect? Simply put: trademark law lets a company own (and therefore restrict use of) certain words which act as “source identifiers” for their products or services. Why do we do this? A few reasons but, first and foremost, trademark law aims to protect consumers from being confused. If two similarly-named companies (let’s say “Skrollex” and “Scrollex”) manufacture and sell watches, then some consumers might get confused when purchasing watches from the local department store. “I know I want a Skrollex watch”, one might think, “but this watch says ‘Scrollex’, so surely that must be the same brand, right?” Wrong—and now the consumer has a watch from the wrong brand, and the right brand has been deprived a sale—all because the consumer was confused as to what the source of the watch he wanted was. Trademark law aims to prevent this.

Were consumers confused about buying a video game instead of a Humvee?

Not exactly. While trademark law is chiefly concerned with preventing consumer confusion, we also use it to protect against other kinds of source confusion as well. In this instance, AM General didn’t want consumers to assume that (1) AM General granted permission to Activision to use their mark; or (2) AM General had associated with Activision in some way in making the game. In other words, AM General was worried that Activision was unfairly using AM General’s good reputation to boost Activision’s visibility and salability. We call this “free-riding.”

What about Freedom of speech?

Trademark law is one of the few areas of law where one’s right to free speech can be trumped by commercial concerns. Your right to speak freely and call your doughnut business “Dunkin’” will be trumped by Dunkin’ Donut’s trademark registration. However, there are some exceptions where expressive works are concerned. An expressive work is non-commercial speech (i.e., not an advertisement), presented in a fixed, tangible medium containing some minimal amount of creative input. Films, novels, songs, paintings and, yes, video games are all expressive works. However, historically, although courts grant expressive works passage, video games more often than not choose to license (like when Brawlhalla wanted to include WWE wrestlers in their game) or not use similar items or names (remember “Nuka Cola” in the Fallout series?). There are several reasons why this is the case (one of them being costs and uncertainty of litigation in the US).

Nevertheless, any studio willing to embark on that road has to pass the so-called Roger’s Test, developed in a case from 1989, and which asseses when you can and when you can’t use someone’s Trademark in your expressive work (i.e. game). . In Rogers v. Grimaldi actress Ginger Rogers, a long-time collaborator with actor/dancer Fred Astaire, objected to the title of Alberto Grimaldi film about two Italian impersonators of Rogers and Astaire. The title itself is meant to reference the film’s impersonator protagonists, but Rogers was concerned that viewers would assume that she and Astaire were involved in the film or condoned it in some way, alleging that such confusion painted them in a “false light.” The Second Circuit Court was not convinced, and they left us with the Rogers Test to help guide artists and lawyers alike as to proper trademark use in expressive works. With respect to video game development that means a studio may use a trademark in an expressive work IF:

the use of the trademark is “artistically relevant” to the content of the work; AND

the use of the trademark is not “explicitly misleading” to the source or the content of the work.

Why did this work for Activision and why not for 3D Realms?

Activision convinced the court that the use of a Humvee in Call of Duty bolstered credibility to the realism they intended to portray in their military shooters; in other words: You can’t depict a realistic U.S. soldier if they don’t ride in a Humvee at some point. Further, Activision could refute AM General’s claim that consumers would be explicitly confused or misled into thinking that AM General and Activision were somehow associated. To come to this conclusion, the court observed the “Polaroid Factors”, a common test in New York’s jurisdiction to see if there is confusion between brands. The most convincing element to the court was that AM General was unable to provide evidence (usually in the form of privately conducted surveys) that a significant number of consumers were confused about an association between the automotive company and Activision.

3D Realms did not go for the Rogers Test: why? we will never know, as the issue never went to court. However, certain facts in 3D Realm’s situation weigh against their favor. For example, Activision primarily used the Humvee in-game, whereas 3D Realms gave their game a titlewhich seemed at worst explicitly misleading, and at best cheekily referential. Furthermore, lawsuits are very, very expensive. While Activision is one of the Games Industry’s biggest names with money to burn on litigation, 3D Realms is a relativelysmall developer. They likely weighed their options and found changing the title to “Ion Fury” to be the more economically efficient choice.

If 3D Realms would have had the money, this is a guess as to the outcome:

Is the use of the trademark “artistically relevant” to the content of the work?

3D Realms likely could have argued this to their benefit - here an example how. “Ion Maiden” refers to the game protagonist’s primary weapon, attached to her robotic arm. This weapon was featured in her previous game, “Bombshell”, and is strongly associated to the character. This would likely pass the threshold for “artistically relevant”. Think about Activision’s use of “HUMVEE” or the inclusion of the “Angry Monkey Patch” (see Mil-Spec, Inc. v. Activision Blizzard, Inc.) in their Call of Duty titles. Why did they include these real-world marks? They wanted their game to look and feel realistic as a military shooter. Similarly, EA’s use of Sam Keller’s likeness in their NCAA Football series was similarly geared toward realism (see Keller v. Electronic Arts). In Bombshell’s case, her robotic arm is related to her character’s story, so titling a game “Ion Maiden” after her arm serves to call the consumer’s mind to Bombshell’s character arc in the previous game, and continued in Ion Maiden/Ion Fury.

Is the use of the trademark “explicitly misleading” to the source or the content of the work?

Here is where 3D Realms would get into trouble. Titling your game with a phrase which is one letter away from one of heavy metal’s most well known trailblazers is likely to suggest an association between the game and the band. Iron Maiden provided initial evidence that consumers had already become confused by the “Ion Maiden” title, and had assumed that the game and the band were related. As was the case in AM General v. Activision, actual evidence of consumer confusion goes a long way in convincing a court that trademark use is explicitly misleading.

Long story short, it is possible that 3D Realms may have prevailed in their suit with Iron Maiden, however it was unlikely.

What can an indie dev do to use a famous trademark?

First, understand that if you use a mark in your game that you don’t own, make sure the use has a cogent artistic relevance to the game itself. Also, try to avoid using a mark in a way that’s misleading. If the protagonist of your game is named “Hermit the Toad”, you probably should not title your game “The Moppets”, unless it is absolutely core to the artistic goals of the game. Think—perhaps Interplay (original developers of the Fallout franchise) and Bethesda Studio stuck with “Nuka Cola” less to reinforce themes of nuclear devastation and more to avoid associating the Coca-Cola mark with Armageddon. Would including Google as the corporate antagonist of your narrative-driven Cyberpunk game be worth the tango with Alphabet, Inc.’s lawyers? These are important questions to ask during any stage of game development.

Second, consider your trademark use relative to your practical circumstances. Before you title your game “The Moppets”, ask yourself: “If someone sues us for referencing this mark, could we afford to see the lawsuit through, like Activision?” If litigation requires your studio to seek additional funding, it could potentially derail your development pipeline.

Author: Edward Baxter and Daniel Koburger

First Published: 06/18/2020