On January 6, 2012, Electronic Arts, Inc. (EA) filed a complaint seeking a declaratory judgment from the United States District Court for the Northern District of California that its unlicensed use of trademarked helicopters in the popular video game, Battlefield 3, is free speech under the First Amendment. EA argued that its identification of the Bell helicopters (AH-1Z, UH-1Y, and V-22) by name has artistic relevance to its "expressive work", which authentically simulates modern-day, military combat for users. Underlying this argument, EA claimed its depiction of the helicopters in no way misleads consumers as to the source or endorsement of its work. EA additionally defended its actions under the fair use doctrine, arguing that the trademarks are used only to identify the helicopters at issue.

EA’s filing comes fresh off its recent victory in the United States District Court for the Southern District of Indiana where summary judgment was granted on a similar issue. In that case – Dillinger, LLC v. Electronic Arts, Inc. – EA was sued for its unlicensed use of “Dillinger” to identify the “Dillinger Tommy Gun” in the hit games, The Godfather I and The Godfather II. The court resolved the issue by employing the Second Circuit’s two-pronged test (Rogers v. Grimaldi, 875 F.2d 994 (2nd Cir. 1989)) to determine whether EA’s unlicensed use of “Dillinger” was free speech protected by the First Amendment. The Rogers’ test examines whether: (1) the use of the mark has some above-zero, artistic relevance to the expressive work – a video game, and (2) if there is some artistic relevance, does the use mislead the public as to the source or the content of the work? In Dillinger, the court granted EA summary judgment after finding that the “Dillinger Tommy Gun” had some artistic relevance to the gangster-themed video games and that the plaintiff had failed to submit factual evidence to support the existence of consumer confusion.

Trademark owners and licensors should take a watchful stance with regard to EA’s latest filing, especially in light of its victory in Dillinger. The question is raised as to whether these legal activities suggest a move towards the marginalization of certain trademarks in various mediums, specifically video game. If EA is successful in its action, trademark owners could face increasing unlicensed use of marks in a wide array of expressive arenas.

The EA complaint for declaratory judgment may be read by clicking here.

The Dillinger decision may be read by clicking here.

For further information about these decisions or to discuss implications for your licensing program, contact the attorneys listed above.