Calling Captain Obvious: Trademark use versus saying something

Archie Bunker Generic Beer
“Beer.”

Stop the presses and raise a glass in belated farewell toast to Archie Bunker’s generic beer!  Here’s the big trademark decision that had the IP law Internet foaming last week, per the writeup by the talented Aaron D. Johnson:

Trademark use Within an Expressive Work Must Only Pass the Rogers test, Not a Likelihood of Confusion Analysis: Mil-Spec Monkey v. Activision

The likelihood of confusion test is often called the “cornerstone” of trademark infringement law.  It may be in many circumstances, but it does not apply to allegations of infringement within expressive works, as the recent Northern District of California case of Mil-Spec Monkey, Inc. v. Activision Blizzard, Inc., No. 14-cv-2361 (N.D. Cal. Nov. 24, 2014), makes clear.  If the trademark use occurs within an expressive work, the only test that applies (at least in certain circuits) is the Rogers test.  The Rogers test is a far harder standard to meet, requiring that the trademark use have “no artistic relevance to the underlying work” or “explicitly mislead[] as to the source” of the work.

The Mil-Spec case revolves around the latest version of the Call of Duty video game series.  Like the earlier editions in the series, the latest version, Call of Duty: Ghosts, has its players participate in realistic combat missions, either in single-player campaigns that involve plots and storylines, or with and against other players in multiplayer contests.  The court highlights the fact that while the game takes place in a fictional setting in the near-future, the game strives to Arthur Johnsonbe “highly realistic,” with military equipment based on weapons and vehicles that currently exist, incorporating the names and logos of existing armed forces and organizations, and the use of advanced graphics. . . .

Call of Duty: Ghosts allows players in multiplayer mode to customize their digital personas – choosing gender, uniform, weapons, accessories, and whether to include any patches on their uniform. Crucially, one of the patches that the game allows players to put on their characters is highly similar to the Mil-Spec “angry monkey” patch. The patches are visible during the course of the game if one of the players has chosen to put them on his or her character. The angry monkey patch also makes a brief appearance during the course of gameplay featured in an advertisement for the game. Mil-Spec brought a lawsuit against Activision alleging a variety of claims including copyright infringement and trademark infringement. Activision moved for summary judgment on the trademark and unfair competition claims, on the basis that its use of the angry monkey patch was protected by the First Amendment.

And Acti-Vision won.  Why?

 It won because, the court held, we’re not even talking about LIKELIHOOD OF CONFUSION where, as in this video game, the use of a trademark is — per Rogers v. Grimaldi, 875 F.2d 944 (1989) —  “use of a trademark in an expressive work.”

In other words, not use of a trademark as a trademark at all, except insofar as that the trademark is part of the semiotic reality of the world we live in.  Does it denote a known, specific, real thing?  Yes.  Does that mean you need permission to say or use or refer to it?

No, no, no.  No.  Of course not.

So why was this story such a big deal last week?  Two possible reasons.

First, because everyone is, likely, confused about this concept, just as the people trying to explain what happened to the Charlie Brown specials were confused about it, as I explained in this post.  Just as, per Judge Denny Chin, there is no intellectual property right inherent in the fact of your existence — even if that fact is signified by, alluded to by reference to, or contained within the vague envelope of evanescence called brand equity.  (Mostly.)

That’s so obvious that it should be dog-bites-man, not news at all.  But so many are so confused by it that, well, maybe that is why it’s the story.  After all, is it such a stretch from referring to a branded reality to outright trading on it… to having a party to celebrate it?

The other possible reason?  Gaming, dude!  Which, me, I wouldn’t know from.

Anyway, awesome non-screwup there by the Northern District of California, by virtue of which a very angry monkey was not created in New York.

Oh, and one more thing, Mr. Johnson — don’t want to get all angry-monkey about this, now, but, well, you did say, this: “The likelihood of confusion test is often called the ‘cornerstone’ of trademark infringement law. It may be in many circumstances, but” — hey.

angry monkey patch
Morale hazard

Hey.  Easy does it there.  “Many circumstances?”

Remember:  What’s the lesson of this case?

NO trademark infringement.  No trademark use.  Just a trademark, in the world.

Don’t drag LIKELIHOOD OF CONFUSION into this.  The Northern District of California didn’t, after all.  Leave those cornerstones alone.

Ron Coleman

I write this blog.