When can you use another company’s trademark in an artistic work? A recent trademark dispute involving the video game Call of Duty: Ghosts and an image of a monkey (no, not the famous monkey selfie) digs into this question.
Mil-Spec Monkey, Inc. (“MSM”) is a military supply company. They sell patches, among other products, that military members often wear – these aren’t official Department of Defense patches; they’re solely for the purpose of self-expression. MSM owns a US trademark registration for their “Angry Monkey” image.
Activision Blizzard, Inc. is the publisher of the military video game Call of Duty: Ghosts. In the game, players can select from a variety of patches to customize their solider characters, including MSM’s Angry Monkey patch. Realism is one of the main selling points of the Call of Duty series of games. There’s no indication that Activision sought or obtained a license from MSM for the monkey image.
MSM sued Activision for trademark and copyright infringement in the 9th Circuit (the federal court that includes California, among other states.) Activision replied that their use of the Angry Monkey image was protected First Amendment artistic expression. On November 24, 2014, the US District Court for the Northern District of California ruled in favor of Activision, dismissing the trademark infringement claims.
Citing a prior case on point, the court noted that “[v]ideo games are expressive works entitled to as much First Amendment protection as the most profound literature.”
OK, so when can you use another party’s trademark in your expressive work? The court in this matter restated the existing 2-prong test:
[A]n artistic work’s use of a trademark that would otherwise violate the Lanham Act [is] not actionable unless (1) the use of the mark has “no artistic relevance to the underlying work whatsoever,” or (2) it has some artistic relevance, but “explicitly misleads as to the source or the content of the work.” [The Lanham Act is the federal trademark statute.]
So, in order for the use of a 3rd party trademark to be actionable, one of those two points have to be satisfied. Either the trademark has to have no artistic relevance to the work, or it must be explicitly misleading.
The First Prong
Let’s consider the first prong – how do you determine if a trademark as used in an expressive work has “artistic relevance?” The answer is that almost all examples will meet this standard. Again, the court cited a relevant case:
[O]nly the use of a trademark with ‘no artistic relevance to the underlying work whatsoever’ would not merit First Amendment protection. In other words, the level of relevance merely must be above zero.”
The Second Prong
This suggests that plaintiffs shouldn’t rely on the first prong. Instead, they’ll have to prove that the use is explicitly misleading (the second prong of the test.) This, too, is a difficult standard to meet. From the Angry Monkey case:
“Explicitly misleading” use of a mark requires that the defendant make an affirmative and overt statement that indicates a relationship with or endorsement by the plaintiff.
The court stated that “MSM has not put forth a single argument that Activision has affirmatively purported in any way to share a relationship with MSM.” Naturally, they found that Activision’s use of the Angry Monkey did not explicitly mislead consumers as to the relationship between the plaintiff and the defendant.
How Famous Does the Trademark Have to Be?
Previous cases on point have often involved trademarks that are more widely known to the general public than the Angry Monkey. MSM cited a case in which the use of the trademark “Barbie” in the pop song “Barbie Girl” was entitled to First Amendment protection. MSM suggested that this case should be understood to mean that a 3rd party trademark can be used without the trademark owner’s permission only when the mark is a “cultural icon.” Because the Angry Monkey image has, apparently, not achieved that level of fame, MSM claimed that the 2-prong test cited above didn’t apply to this case.
The Angry Monkey court (let’s pause for a moment and consider that image…ok, back to the legal stuff) rejected that claim, stating that the Barbie case…
…stands for the proposition that a trademark owner may not control public discourse whenever the public “imbues his mark with a meaning beyond its source-identifying function”—a far more inclusive standard than the “cultural icon” one MSM advocates.
The court stated that this question – does the public imbue the trademark in question with a meaning beyond the function of identifying the source of the goods or services? – is, more or less, absorbed into the first prong of the test cited above (is the use of the 3rd party trademark artistically relevant to the expressive work?)
The takeaway is that 3rd party trademarks may be used in expressive, artistic works as long as the use meets a fairly lenient constitutional standard. That said: when in doubt, try to get a license for use of the trademark and save yourself the cost and trouble of defending against this type of claim.