Warzone Doesn’t Infringe Warzone Strategy Game
From Activision Publishing, Inc. v. Warzone.com, LLC, determined final month by Decide Fernando L. Aenlle-Rocha (C.D. Cal.), however simply posted on Westlaw (presumably as a result of it has simply been appealed); this appears fairly appropriate:
Warzone.com develops and makes out there to the general public a browser-based recreation titled Warzone. Warzone is a free-to-play, turn-based technique recreation. Gamers shift numbers, which signify armies, throughout a map of the world to take management of nations or territories. Warzone.com markets that recreation as “Higher than Hasbro’s RISK recreation.” Warzone.com launched Warzone in November 2017, and it’s out there on Warzone.com’s web web site and cellular gadgets. Warzone just isn’t out there on online game consoles.
On or about June 25, 2020, Activision filed purposes for registration of the emblems WARZONE and CALL OF DUTY WARZONE. On October 30, 2020, Warzone.com filed purposes for registration of the trademark WARZONE. Warzone.com filed a Discover of Opposition to the registration of the Activision marks and the opposition continuing is at the moment pending earlier than the USPTO. On November 20, 2020, Warzone.com’s counsel despatched a cease-and-desist letter to Activision’s counsel, demanding that Activision “change the title of its video games, cease utilizing Warzone’s WARZONE mark, and abandon the trademark purposes.” Activision and Warzone.com had been unable to resolve the dispute, and Warzone.com indicated it supposed to hunt injunctive reduction and damages towards Activision….
[W]hen a trademark is included in an expressive work, the protections afforded beneath trademark legal guidelines should even be balanced towards broader First Modification considerations. In circumstances involving an expressive work, a plaintiff with Lanham Act claims should as an alternative overcome the check articulated in Rogers v. Grimaldi (2nd Cir. 1989), which was adopted by the Ninth Circuit ….
The “threshold for making use of the Rogers check is whether or not the allegedly infringing use is contained in an expressive work.” If the brink requirement is met, the courtroom applies the two-prong Rogers check, which supplies First Modification safety to “using a trademark in an expressive work if using the mark has [1] creative relevance to the underlying work and [2] doesn’t explicitly mislead as to the supply or content material of the work.” … [T]he Lanham Act “must be construed to use to creative works solely the place the general public curiosity in avoiding client confusion outweighs the general public curiosity in free expression[.]” …
The Rogers check squarely applies right here. To start, Defendant admits that CODWZ is an expressive work and thus, the Rogers check applies. The Supreme Court docket has clearly acknowledged that video video games are topic to First Modification safety….
“The primary prong of the Rogers check requires a exhibiting that using a mark has creative relevance to the underlying work.” “[T]he stage of relevance merely should be above zero.” … In CODWZ, recreation play takes place in a big computer-generated battlefield that accommodates over 100 gamers at a given time…. Activision’s use of the time period “Warzone” is clearly related to the content material in CODWZ. That Activision might have chosen different related names doesn’t negate the creative worth of the title it in the end chosen….
“The second prong of the Rogers check requires a junior person to indicate that their work doesn’t explicitly mislead as to the supply or content material of the work.” Ordinarily, “the mere use of a trademark alone can not suffice to make such use explicitly deceptive.” Nonetheless, this “doesn’t prolong to cases during which shoppers would anticipate using a mark alone to determine the supply.” Additional, “similar utilization might mirror the kind of ‘explicitly deceptive description’ of supply that Rogers condemns.” Concern about deceptive shoppers is “usually allayed when the mark is used as just one part of a junior person’s bigger expressive creation.” …
Defendant fails to allege plausibly that Activision explicitly mislead shoppers through the use of the time period “Warzone” within the title of CODWZ as a part of the broader Name of Responsibility franchise. In its try to fulfill the second prong of the Rogers check, Defendant depends on allegations that Activision’s use of “Warzone” has precipitated client confusion. However “[t]o fail the second prong of the Rogers check, it’s key that the creator should explicitly mislead shoppers,” and the courtroom “should ask not solely in regards to the chance of client confusion but additionally whether or not there was an specific indication, overt declare, or specific misstatement that precipitated such client confusion.” Warzone.com alleges Activision makes use of an similar mark to supply comparable items and companies, saturating the market and overwhelming Warzone.com, leading to precise client confusion. Nonetheless, nothing within the allegations plausibly counsel that Activision’s use of the time period “Warzone” is explicitly deceptive….
Congratulations to Karin G Pagnanelli, Lindsay R. Edelstein, and Marc Ellis Mayer of Mitchell Silberberg & Knupp LLP, who represented Activision.
