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 and
2,304,869).  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 Warfare
3], 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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