Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. An Order out of the Southern District of New York granted summary judgment to Activision on First Amendment grounds defeating claims under the Lanham Act brought against it for its use of the Humvee design in the popular video game Call of Duty. Activision was sued for trademark infringement and related claims by AMG, the supplier of Humvees to the armed forces, for depicting the Humvee design in Call of Duty without authorization from AMG. AMG had granted several licenses of the Humvee design to others for toys and other video games in the past. Activision relied on a First Amendment defense and the well-known Rogers case to argue that AMG’s trademark infringement claim was barred. Activision’s argument was that it used the design in an artistic manner to promote the realism of the game, and not to create an association with AMG. Activision also noted that the parties were not in competition. The Court agreed and granted summary judgment for Activision. The takeaway here is that, in connection with artistic trademarks, the First Amendment may be a defense to trademark infringement claims particularly where the parties are not in competition or in the same market.
2. In another trademark case, this one out of the District of Massachusetts, a manufacturer and seller of baby strollers had its summary judgment motion denied, although the Court ruled that the first sale doctrine did not apply to gray market goods. The defendant had purchased the plaintiff’s strollers, but outside the normal domestic distribution chain. While the goods were genuine, the plaintiff argued that differences in quality control between the authorized distribution chain and the one through which the defendant purchased the products, differences in customer support, and differences in warranties support its infringement claim. While the Court denied the plaintiff’s summary judgment motion, that did not extinguish the plaintiff’s claims, but merely found that factual issues remained. The Court’s order keeps the door open to trademark infringement claims against unauthorized re-sellers that do not provide the same quality control, customer service, and warranties.
3. In an important opinion from the Second Circuit Court of Appeals, the Court held that whether a court applies the discovery rule or the injury rule to the accrual of a copyright infringement claim, a plaintiff may only seeks monetary damages going back three (3) years from the filing date of the complaint. This is an important decision that clarifies an issue that may have been left open by some dicta in Petrella v. MGM case. It does potentially present a circuit split with the Ninth Circuit, and courts within the Ninth Circuit, which continue to allow plaintiffs to recover damages beyond three (3) years before the filing of the complaint. The takeaway here is that a copyright plaintiff must look carefully at the law in the particular circuit where its case is filed to determine if the rule adopted by the Second Circuit applies, or a rule like that of the Ninth Circuit applies.