A recent spate of cases has generally upheld, on First Amendment grounds, a developer’s right to include unlicensed trademarks in video games. However, until the body of case law becomes so prevalent that trademark owners recognize that they cannot possibly succeed in an action involving use in a video game, it may be wise for developers to be circumspect in what they include. In many cases, the costs of licensing a trademark may be much less than demonstrating rights under the First Amendment.
In some of today’s top-grossing video game titles, realism is a key component to the success of the game. In order to promote authenticity, many of the leading publishers incorporate the names, images and trademarks of famous brands into the video games. While many of the brands have historically agreed to the inclusion of their marks, more and more video game publishers are including trademarks in their games without the owner’s express authorization. For instance, in early May 2013, Electronic Arts issued a statement saying it will no longer be entering into licensing agreements with gun manufacturers but that it retains the right to continue to feature branded guns in EA games. "We're telling a story and we have a point of view," EA's President of Labels Frank Gibeau, said in an interview. "A book doesn't pay for saying the word 'Colt,' for example." Put another way, EA is asserting its First Amendment, constitutional free speech right to use trademarks without permission in its ever-more-realistic games.
In the past there has been some question as to whether video games are subject to First Amendment protections. Some of the early case law found that games like Pong did not contain sufficient creative elements to warrant First Amendment protection. As video games advanced and their narrative elements became more complex, the decisions in the case law likewise changed. Finally, in 2011 this question was clearly addressed by the Supreme Court in Brown v. Entertainment Merchants Ass'n, 131 S.Ct. 2729 (2011). In its landmark ruling, the Supreme Court held that video games have the same free speech protections as other “expressive works” such as films, books and music. In invalidating a California statute that prohibited the sale of violent video games to minors, the Supreme Court specifically held that video games qualify for First Amendment protection and that the "basic principles of freedom of speech…do not vary" with the creation of a new and different communication medium. The Court stated that "[l]ike the protected books, plays, and movies that preceded them, video games communicate ideas—and even social messages—through many familiar literary devices (such as characters, dialogue, plot and music) and through features distinctive to the medium (such as the player's interaction with the virtual world). That suffices to confer First Amendment protection."
Recently, the use of trademarks in video games has become a very hot topic in the courts. In the seminal 1989 case of Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), the Second Circuit crafted a First Amendment-protected-use test that has been applied in the vast majority of trademark-in-video-game cases which have followed. The Rogers test consists of two prongs: it asks whether the trademark use is (1) artistically relevant to the defendant’s work; and (2) explicitly misleading. More specifically, the defendant has the light burden of showing that the use has some minimal relevance to the artistic goal of the work, while the plaintiff has the heavy burden of showing that the defendant made an affirmative statement other than the use of the mark itself which indicated the plaintiff’s approval or endorsement. The modern Rogers test is thus highly protective of expressive trademark uses. In the following cases, the application of the Rogers test has been used to determine whether trademark use in a video game was expressive-work-protected speech.
Novalogic. Inc. v. Activision Blizzard et al.
Novalogic, Inc. filed an action against Activision Blizzard, and others, for federal and state trademark infringement, false designation of origin, and contributory infringement based on the use of Novalogic’s trademarks “Delta Force” and a Delta Force logo in Activision’s Call of Duty: Modern Warfare 3 video game and related products. Call of Duty: Modern Warfare 3 is a very realistic video game and the weapons, locations, and use of the names and logos of actual combat forces adds to the illusion of realism. In Novalogic v. Activision Blizzard...
