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The United States District Court for the Central District of California has recently decided a case clarifying the rights of video game companies to use other party's trademarks in their games. The Court held that video game maker, Activision, had the right to use the DELTA FORCE mark and logo because the use was protected by the First Amendment.

NovaLogic Inc. v. Activision Blizzard

The case, NovaLogic Inc. v. Activision Blizzard, arose out of Activision's use of the marks DELTA FORCE and the Delta Force logo in the game "Call of Duty: Modern Warfare 3." This game was one of the most popular video games of all time, with worldwide sales of over $1 billion. It was a combat simulation that used the names and logos of various U.S. and British combat forces, including the U.S. Army Special Forces unit known as "Delta Force."

NovaLogic objected to Activision's use of the "Delta Force" name and logo in the game on the basis of two prior registrations for DELTA FORCE in connection with computer games and video games. NovaLogic had used this mark in connection with a series of popular video games it had sold since 1998, which were intended to be military simulations of the U.S. Delta Force unit. Activision argued in defense that its use of DELTA FORCE was protected by the First Amendment.

The court analyzed NovaLogic's claims under the Rogers test, which generally allows the use of trademarks in an artistic work as long as the use has no artistic relevance to the underlying work or is expressly misleading. The court first determined that video games were "artistic works" that were entitled to the same level of protection as motion pictures, novels or television shows. This determination was based on a recent statement by the Supreme Court in Brown v. Entertainment Merchants Ass'n (2011), stating that video games were expressive works entitled to basic principles of freedom of speech. It effectively overruled earlier precedent, which held that primitive games such as "Pong" did not contain enough creative elements to receive First Amendment protection.

The court went on to find that Activision's use of the DELTA FORCE mark had artistic relevance to the works, since the use of the names of authentic combat forces helped to satisfy increasing consumer demand for authenticity and realism in combat games.

The court also found that Activision's use of the DELTA FORCE mark did not mislead consumers into believing that NovaLogic was associated with the game. This finding was based in part on the fact that consumers associated DELTA FORCE with the U.S. Army even outside of NovaLogic's prior video game series, since it had long been used as the name of a Special Forces unit.

Therefore, the Court concluded that Activision's use of the DELTA FORCE mark was protected by the First Amendment.

Earlier Related Case Law – Electronic Arts v. Textron Inc.

The case is somewhat in conflict with the earlier decision in Electronic Arts v. Textron Inc., a case considered by the Northern District of California in 2012. In that case, Bell Helicopter alleged that EA's depiction of Bell Helicopters in the video game "Battlefield 3" infringed its marks. As with the Novalogic case, the Textron court admitted that the use of the marks had artistic relevance to the game. However, the court found that it could be plausible for consumers to believe that Bell Helicopter had provided EA with information on its helicopters in order for EA to realistically simulate the movement of the helicopters in the game. The use of the BELL HELICOPTER mark under these circumstances could "expressly mislead" consumers into believing that the trademark owner had authorized the use of its mark in the game.

Based on these two recent decisions, it appears that the right of video game manufacturers to use trademarks without a license in their game depends primarily on the extent to which the mark is used and how closely the mark is integrated within the game. In nearly all cases, the use of a mark will be considered "artistically relevant" to the game, particularly in light of the increasing consumer demand for games that authentically replicate real-world places and experiences.

However, in some cases, the use of marks may create the impression that the trademark owner has authorized the use of the mark in the game. For example, in an open-world game which attempts to depict a real-world city (such as "Grand Theft Auto"), if the player drives past a Porsche dealership, it would not necessarily lead consumers to believe that Porsche has authorized the use of its marks in the game. However, in an automobile racing game (such as "Gran Turismo”), if the player is given the option to drive a Porsche 911 (with the appearance and handling characteristics of an actual Porsche 911), it would be reasonable for consumers to believe that Porsche has licensed or authorized the use of its car within a game.

Therefore, it is important for trademark owners to closely monitor the use of their marks in video games to ensure that such use does not rise to the extent that it "expressly misleads" consumers into believing that the trademark owner has licensed or authorized its marks to appear in the game.