NovaLogic, Inc. v.
Activision Blizzard et. al.

U.S. District Court for the Central District of California
Case Number: 2:12-cv-04011
In March 2012, NovaLogic sued Call of Duty developer, Activision, for trademark infringement of its mark “Delta Force” (USPTO marks 2,704,298 and2,304,869).  NovaLogic maintained that Activision’s “Modern Warfare 3” title (which grossed billions of dollars) infringed upon the mark they had held since the late 1990s when they released “Delta Force”.  The game spawned a few sequels including 2003’s “Delta Force: Black Hawk Down”.  NovaLogic also sued Penguin Group USA, Inc. (who made the official guide for the game) as well as Microsoft on similar grounds.
Judge John F. Walter ruled that Activision’s use of the term “Delta Force” fell within free speech, and that the term would not confuse consumers into thinking NovaLogic endorsed the game.  The court went on to say, “Because the phrase ‘Delta Force’ and its insignia have an established and well-known prior meaning and connotation . . . that is unrelated to plaintiff and that meaning and connotation predate plaintiff’s use of the registered trademarks, it is highly unlikely that consumers will be misled.”  The claims against Penguin were dismissed on similar grounds.
NovaLogic argued that Activision had waived its free speech rights because it had initially paid NovaLogic royalties. Judge Walter said this argument was, “unpersuasive and borders on the frivolous,” because NovaLogic had licensed the mark to Vivendi Games in 2005, a company which was later acquired by Activision.  “Plaintiff fails to explain how an unrelated third party’s contract could have resulted in the surrender of Activision’s First Amendment rights with respect to a product, [Modern Warfare3], that was not produced until 2011.” Activision had moved for summary judgment in March on the grounds that Delta Force was part of the “public lexicon” and is similar to terms like “West Wing” and “Scotland Yard.”
With games having an ever-increasing focus on true-to-life realism, this victory is significant for publishers like Activision. It allows them to pull inspiration from news headlines and make games directly referencing groups like the “Delta Force” without having to worry about potential litigation or licensing agreements with subsequent groups who use the term as a trademark.  Similarly, trademark owners should be careful when choosing a mark, and might think twice about trying to usurp rights to a name that has a previously understood public meaning.
While these particular claims were dismissed, the court did not address allegations regarding Activision’s and Microsoft’s prominent use of the mark on the packaging of the special-edition Xbox 360 consoles that were bundled with the game.
We will update as more information becomes available.
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