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`Case 1:17-cv-O8644-GBD-JLC Document 218 Filed 03/31/20 Page 1 of 29
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`UNITED STATES DISTRICT COURT
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`SOUTHERN DISTRICT OF NEW YORK
`________________________________________ X
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`AM GENERAL LLC,
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`Plaintiff,
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`—against-
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`.
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`:
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`MEMORANDUM DECISION
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`AND ORDER
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`:
`ACTIVISION BLIZZARD, INC, ACTIVISION
`PUBLISHING, INC, and MAJOR LEAGUE GAMING :
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`CORR,
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`'
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`Defendants.
`________________________________________ x
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`GEORGE B. DANIELS, United States District Judge:
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`17 Civ. 8644 (GBD)
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`Plaintiff AM General LLC (“AMG”) brings this action against Defendants Activision
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`Blizzard, Inc. and Activision Publishing, Inc. (collectively, “Activision”) and Major League
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`Gaming Corp. (“MLG”) for trademark infringement, trade dress infringement, unfair competition,
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`false designation of origin, false advertising, and diiution under the Lanham Act, 15 U.S.C.
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`§§ 1114, 1125, and 1125(0), respectively.
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`(Compl., ECF No. 1, 1111 82—147.) AMG also raises
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`pendant New York state law claims for trademark infringement, unfair competition, false
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`designation of origin, trade dress infringement, false advertising, and dilution.
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`(Id. 1111 148—81.)
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`On May 31, 2019, Defendants moved for summary judgment on all of AMG’s claims
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`pursuant to Federal Rule of Civil Procedure 56. (Defs. Activision and MLG’S Notice of Mot. for
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`Summ. J., ECF No. 131.) On the same day, Plaintiff moved for partial summary judgment on
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`Defendants’ laches claim pursuant to Federal Rule of Civil Procedure 56(a).
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`(Pl. AMG’s Notice
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`of Mot. for Partial Summ. J., ECF No. 138.) Subsequently, Defendants filed a motion to strike (1)
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`ce1tain portions of Plaintiff’s Rule 56.1 statement of material facts and (2) the “experiment”
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`contained in the rebuttal report of Plaintiff’s expert, Dr. Yoran Wind (“MTS I”).
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`(See Mem. of
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`Law of Defs. Activision and MLG’s in Supp. of Their Mot. to Strike Pi. AMG-”s Local Rule 56.1
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`Statement and Wind Rebuttal Report, ECF No. 163.) Shortly thereafter, Defendants filed a motion
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`to strike (1) certain portions of Plaintiff’s opposition to Defendants’ Rule 56.1 statement of
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`material facts and counterstatement of additional facts, (2) the survey undertaken by Plaintiff’s
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`expert, Dr. Wind, and (3) documents submitted by Plaintiff in opposition to Defendants’ motion
`for summary judgment (“MTS 11”).
`(See Mem. of Law in Supp. of Defs. Activision and MLG’S
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`Mot. to Strike, ECF No. 194.)
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`Defendants’ motion for summary judgment is GRANTED. Plaintiffs motion for partial
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`summary judgment is DENIED. Defendants’ motions to strike are DENIED, except GRANTED
`in part to strike those documents which were not produced during discovery.1
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`I.
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`FACTUAL BACKGROUND
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`A. The Parties.
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`In 1983, the US. Department of Defense first awarded AMG a contract to build the High
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`(Pl. AMG’s Response to Defs. Activision and MLG’s
`Mobility Multipurpose Wheeled Vehicle.
`Statement of Undisputed Facts and Counterstatement of Additional Facts (“PL’S Counter 56.1”),
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`ECF No. 175, ll 20.) Since then, the vehiclewknown colloquially as the “Humvee”_has been
`“the backbone of US. defense tactical vehicle fleets around the world” and “an essential part of
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`_________,_,_____...____———-~—-
`‘ For reasons stated in Part III(A)(2)(f), infra, Defendants’ motion to strike portions concerning a letter sent
`by the Beanstalk Group to Aetivision in 1998 contained in Plaintiff’s opposition to Defendants’ Rule 56.1
`statement is GRANTED. Beyond that, MTS II is DENIED as to Dr.’s Wind’s survey because any defects
`that Defendants claim exist in Dr. Wind’s report go to the weight of the evidence rather than to its
`admissibility. See McCullock v. HB. Fuller Ca, 6l F.3d 1038, 1044 (2d Cir. 1995) (citation omitted)
`(“Disputes as to the strength of [an expert’s] credentials, faults in his use of differential etiology as a
`methodology, or lack of textual authority for his opinion, go to the weight, not the admissibility, of his
`testimony”). Finally, MTS II is GRANTED as to certain of the documents submitted by Plaintiff in
`opposition to Defendants’ motion for summary judgment given that Plaintiff never produced such
`documents during discovery.
`Indeed, Plaintiff concedes and “asks the Court to strike documents AM
`General filed in opposition to Activision’s motion on the grounds that AM General did not produce them
`in discovery.” (Pl. AMG’S Mem. of Law in Opp’n to Defs.’ Second Mot. to Strike, ECF No. 206, at 7.)
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`

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`US. military operations.” (Defs. Activision and MLG’S Mem. of Law in Support of Mot. for
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`Summ. J. (“Defs’ Mem.”), ECF No. 139, at 6 (quoting Pl. AMG’S Statement of Undisputed
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`Material Facts in Support of P1. AMG’S Mot. for Partial Summ. J., ECF No. 143, 1l23).) From
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`Panama to Somalia, and to this day in Iraq and Afghanistan, the Humvee has become an iconic
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`and a ubiquitous symbol of the modern American military.
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`(Defs.’ Mem. at 6; P1. AMG’s Mem.
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`of Law in Opp’n to Mot. for Summ. J. (“PL’S Mem.”), ECF No. 171, at 3.) AMG continues to
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`produce Humvees for the US. armed forces and the militaries of over 50 countries.
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`(Compl.
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`W 15—16.)
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`Since the early 19903, AMG has also granted licenses to other companies to use the
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`Humvee trademark “on or in connection with a wide variety of products,” including toys and at
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`least four video games.
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`(Compl. W 25—31.) Humvees have also appeared in a wide variety of
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`other media,
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`including Hollywood blockbusters, such as Jurassic Park and The Avengers,
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`television series, such as 24, The Simpsons, The Walking Dead, and Long Road Home, and
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`Academy Award-winning dramas, such as The Hurt Locker. (Defs.’ Mem. at 7.) Additionally, a
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`number of video games, manufactured by video game developers other than Defendants, have
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`featured I-lumvees.
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`(Id. at 8.)
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`Call of Duty is one of the “most popular and well-known video game franchises in the
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`worid” with over 130 million units sold. (Rule 56.1 Statement of Undisputed Facts in Supp. of
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`Mot. of Defs. Activision and AMG for Summ. I. (“Defs’ 56.1”), ECF N0. 158, ll 2.) Indeed, the
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`Call ofDuty franchise—which is a firstuperson shooter series developed, produced, and distributed
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`by Activisioneis characterized by its realism, cinematic set—pieces, and fast-paced multiplayer
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`mode.
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`(10’. ill 740; Comp]. W 3—4; Defs.’ Mem. at 4—5.) While various consumers play Call of
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`Duty from the comfort of their own homes, both through singleuplayer campaigns and in online
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`multiplayer mode, others compete in tournaments hosted by organizations, such as MLG. (Id. at 3;
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`Defs.’ 56.111 89.)
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`B. Alleged Infringing Conduct: Humvees and Call ofDuty.
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`Humvees are depicted in nine Call ofDuty games for varying durations. (Pl.’s Mem. at 4',
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`Defs.’ Mem. at 940.) In particular, whereas sometimes they appear briefly in the background or
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`are mentioned in passing through dialogue, at other times, players ride in a Humvee for several
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`(P1.’s Counter 56.1 {[11 56e62.) Further, at times, the player can
`minutes during a scene or level.
`even “assum[e] control ofthe [Humvee],” including by firing a turret-mounted machine gun. (P13 s
`Counter 56.1 1] 3.)
`In certain instances, the player cannot progress to the next level without
`interacting with the Humvee. (Pl.’ Counter 56.1 ‘11 56.) Humvees are also shown in several trailers
`for the games and in Call ofDuty—branded strategy guides. (Defs.’ Mem. at 10—11.) Defendants
`also licensed a toy company to manufacture Call ofDuty—branded construction sets, two of which
`include toy vehicles.
`(Compl. 11 8.) According to AMG, they bear the distinctive elements of the
`Humvee’s trade dress.
`(Id. W 54:55.) Plaintiff asserts that Defendants did not receive
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`authorization from AMG for such uses.
`(Id. 11 102.)
`As to an instruction manual included inside each disk case for Call of Duty 4: Modern
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`Warfare, Aetivision included the following language:
`and intellectual property rights in and to this
`All title, ownership rights
`Program (including but not limited to any patches and updates) and any and
`all copies thereof (including but not limited to any titles, computer code,
`themes, objects, characters, character names, stories, dialog, catch phrases,
`locations, concepts, artwork, animation, sounds, musical compositions,
`audio—visual effects, methods of operation, moral rights, any related
`documentation, and “applets” incorporation into this Program) are owned
`by Activision, affiliates of Activision or Activision’s licensors.
`(Decl. of Cory D. Struble (“Struble Decl.”), EX. 118 (Call ofDuty 4: Modern Warfare), ECF No.
`141-10, at AMG0075793.) Similar language appears in comparable sections of the instruction
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`booklets accompanying Call ofDuty: Modern Warfare 2, Call ofDuty: Modern Warfare 3, and
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`Call ofDuty: Black Ops 11.
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`(See Struble Decl, BX. 119 (Call ofDuly: Modern Warfare 2), ECF
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`No. 141—1 1, at AMG0075815; Struble Decl., EX. 120 (Call ofDuty Modern Warfare 3), ECF No.
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`141~12, at AMG007S835; Struble Decl., EX. 11'1r (Call ofDm‘y: Black Ops H), ECF No. 141—9, at
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`AMG0075777.)
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`C. PlaintifPs Letters.
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`In 1998, the Beanstalk Group—ea third-party that served at the time as a licensing agent for
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`AMG—sent a letter2 to Activision regarding the video game Sin, which is unaffiliated with the
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`Call ofDuty franchise (the “1998 letter”). (PL’S Counter 56.1 1111 53254.) According to AMG, in
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`the 1998 letter, the Beanstalk Group “complained to Activision about its use of the [Humvee]
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`Trade Dress in a video game called Sin.” (Id. ‘11 54.) AMG cites the 1998 letter for the proposition
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`that Activision “agreed to remove [Humvee] vehicles from the video game Sin.” (Id. 11 55.)
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`On or about June 20, 2016, counsel for Global Icons, LLC—an outside licensing agency
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`contracted by AMGwsent a cease—and-desist letter to Defendants objecting to the appearances of
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`Humvees in Call ofDuty games and toys.
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`(Compl. 1111 78—79.) Shortly thereafter, on November
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`4, 2016, Defendants released Call ofDuty: Modern Warfare Remastered, which included scenes
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`with Humvees.
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`(P1.’s Counter 56.1 ‘11 5.) Subsequently, AMG initiated this action on November
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`7, 2017. (See Compl.)
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`II.
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`LEGAL STANDARDS
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`Summary judgment is appropriate when there is no genuine issue of material fact and the
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`moving party is entitled to judgment as a matter of law. See Fed. R. Civ. P. 56(a). “An issue of
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`2 The 1998 letter, which includes a purported conversation between a representative from Beanstalk Group
`and a representative from Activision, is under seal with this Court.
`(See Struble Dec1., BX. 121 (1998
`Letter), ECF No. 141-13.)
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`fact is ‘genuine’ if ‘the evidence is such that a reasonable jury could return a verdict for the
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`nonmoving party.” Gayle v. Gonyea, 313 F.3d 677, 682 (2d Cir. 2002) (quoting Anderson v.
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`Liberty Lobby, Inc, 477 U.S. 242, 248 (1986)). A fact is material when it “might affect the
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`outcome of the suit under the governing law.” Id. (quoting Anderson, 477 US. at 248) (internal
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`quotation marks omitted).
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`“The party seeking summary judgment has the burden to demonstrate that no genuine issue
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`of material fact exists.” See Marvel Characters, Inc. v. Simon, 310 F.3d 280, 286 (2d Cir. 2002).
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`In turn, to defeat a motion for summary judgment, the opposing party must raise a genuine issue
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`of material fact. See Caldaroia v. Calabrese, 298 F.3d 156, 160 (2d Cir. 2002) (explaining that
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`the nonmoving party “must come forward with specific facts showing that there is a genuine issue
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`for trial”). To do so, the opposing party “must do more than simply show that there is some
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`metaphysical doubt as to the material facts,” id. (quoting Matsushiia Eiee. Indus. Co. v. Zenith
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`Radio Corp, 475 US. 574, 586 (1986)), and it “may not rely on conclusory allegations or
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`unsubstantiated speculation,” Fujitsu Ltd. v. Fed. Express Corp. , 247 F.3d 423, 428 (2d Cir. 2001)
`(quoting Scotto v. Almenas, 143 F.3d 105, 114 (2d Cir. 1998)) (internal quotation marks omitted).
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`Rather, the opposing party must produce admissible evidence that supports its pleadings. See First
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`Nai’l Bank ofAriz. 1). Cities Serv. Co, 391 US. 253, 289—90 (1968). In this regard, “{t]he ‘mere
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`existence of a scintilla of evidence’ supporting the non—movant’s case is also insufficient to defeat
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`summary judgment.” Niagara Mohawk Power Corp. v. Jones Chem, Inc, 315 F.3d 171, 175 (2d
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`Cir. 2003) (quoting Anderson, 477 U.S. at 252).
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`In determining Whether a genuine issue of material fact exists, the court must construe the
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`evidence in the light most favorable to the opposing party and draw all reasonable inferences in
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`that party’s favor. See id. However, “a court must not weigh the evidence, or assess the credibility
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`of witnesses, or resolve issues of fact.” Victory v. Pofaki, 814 F.3d 47, 59 (2d Cir. 2016) (citation
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`and internal quotation marks omitted). Summary judgment is therefore “improper if there is any
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`evidence in the record that could reasonably support a jury’s verdict for the non—moving party.”
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`Marvel, 310 F.3d at 286.
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`III.
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`DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT IS GRANTED
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`A. Federal and New York Trademark Infringement Claims.
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`Where the defendant’s product is artistic or expressive, courts have interpreted the Lanham
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`Act narrowly in order to avoid suppressing protected speech under the First Amendment. See
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`Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (explaining). The court in Rogers articulated a
`two—prong test that allows artistic or expressive works to make use of trademarks under most
`circumstances without facing liability under the Lanham Act. The court found that the “balance
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`[between trademark interests and First Amendment speech interests] will normally not support
`application of the [Lanham] Act unless [the use of the trademark] has no artistic relevance to the
`underlying work whatsoever, or, if it has some artistic relevance, unless [the use ofthe trademark]
`explicitly misleads as to the source or the content ofthe work.” Rogers, 875 F.2d at 999. Although
`Rogers dealt only with a potentially confusing title, the Second Circuit has since held that “the
`Rogers balancing approach is generally applicable to Lanham Act claims against works of artistic
`expression.” ClifiNotes v. Bantam Doubleday Dell Pub] ’3; Grp., 886 F.2d 490, 495 (2d Cir. 1989).
`Under the first prong of the Rogers test, courts must determine whether the use of the
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`trademark has any “artistic relevance to the underlying work whatsoever.” Rogers, 875 F.2d at
`999. This requirement, though real, is not unduly rigorous out of the understanding that the
`“overextension of Lanham Act restrictions .
`.
`. might intrude on First Amendment values.” Id. at
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`998. See Louis Vuitton Malletier SA. v. Warner Bros. Entm ’t, 868 F. Supp. 2d 172, 178 (S.D.N.Y.
`2012) (describing the artistic relevance threshold as “purposely low”). In Rogers, for example, the
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`contested film’s title—M“Ginger and Fred”—possessed artistic relevance because “the central
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`characters in the film [we]re named ‘Ginger’ and ‘Fred,’ and these names .
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`.
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`. ha[d] genuine
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`relevance to the film’s story.” Rogers, 875 F.2d at 1001. Accordingly, no more rigorous
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`examination of artistic merit was required or even appropriate.
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`If the contested use has artistic relevance, then the court must proceed to the second prong
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`of the Rogers test and determine whether the use “explicitly misleads as to the source or the content
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`of the work.” Rogers, 875 F.2d at 999.
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`It is not enough that a likelihood of confusion exists;
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`rather, “the finding of likelihood of confusion must be particularly compelling to outweigh the
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`First Amendment interest recognized in Rogers.” Twin Peaks Prods, Inc. v. Publ 'ns Int 1, Ltd,
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`996 F.2d 1366, 1379 (2d Cir. 1993). Such evaluation of misleadingness “must be made, in the
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`first instance, by application of the venerable Polaroid factors.” Id. See also DeClemente v.
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`Columbia Pictures Indus, Inc, 860 F. Supp. 30, Sl (E.D.N.Y. 1994) (“The analysis to determine
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`consumer confusion and misleading under the balancing test of Rogers is conducted by applying
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`the eight[-]factor test for consumer confusion set forth in Polaroid {12. Polarad Elecs. Corp, 287
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`F.2d 492, 495 (2d Cir. 1961)}3’). Notably, “the finding of likelihood of confusion must be
`'55
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`particularly compelling to outweigh the First Amendment interest recognized in Rogers.
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`Twin
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`Peaks, 996 F.2d at l379; see Clifl Notes v. Bantam Doubleday Dell Publ ’g Gnu, 886 F.2d 490,
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`494 (2d Cir. 1989) (courts must “strike the balance between the two competing considerations of
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`allowing artistic expression and preventing consumer confusion”).
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`A comparison of two cases—namely, Louis Vuitton and Simon & Schasier—illustrates
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`how courts employ the Rogers framework to weigh trademark concerns against First Amendment
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`interests. In Louis Vuitton, a character in the defendant’s film, The Hangover: Part I], humorously
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`mispronounced his knockoff Louis Vuitton bag as a “Lewis Vuitton.” Louis Vuitton, 868 F. Supp.
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`2d at 174—75. The plaintiff filed an action, claiming that the defendant had “affirmatively
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`misrepresent[ed]” that the knockoffwas one ofthe plaintiffs products. Id. at 175. Such a use, the
`plaintiff asserted, likely confused the public into believing that the plaintiff had “sponsored and
`approved” the use ofthe knockoff. Id. As the court explained, the film”3 use ofthe bag had artistic
`relevance:
`its flaunting and subsequent mispronunciation reveale
`“snobbish” and “socially inept,” and “introduce[d] the comedic tension between [two characters]
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`the character was
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`d that
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`that appear[ed] throughout the [flilrn.” Id. at 178. And even if there were some confusion as to
`whether this scene “irnpl[ied] that [the plaintiff] approved the use of the [knockoff] bag in the
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`. [wa]s not so
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`[f]ilm,” the court held that “the public’s interest in avoiding consumer confusion .
`great as to overcome the significant threats to free expression from holding [the defendant] liable
`for its noncommercial speech in this case.” Id. at 183. Thus, the court rejected the plaintiffs
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`trademark claim.
`Id.
`In contrast, the court in Simon & Schusier held that the presence of many of the Polaroid
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`Virtues” both
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`factors outweighed a meager invocation of the First Amendment. Simon & Schusier, Inc. v. Dove
`Audio, Inc., 970 F. Supp. 279, 301 (S.D.N.Y. 1997). The plaintiff, publisher of “The Book of
`in print and as an audiobook, sued the defendant for publishing “The Children’s
`Audiobook ofVirtues,” an audiobook, and planning to publish “The Children’s Book ofVirtues,”
`a print book.
`Id. at 282. The court found that at least five of the eight Polaroid factors favored
`the plaintiff.
`Id. at 297—300. Subsequently, the court held that the defendant had “reflexively
`invoked the First Amendment without offering a persuasive explanation of why free speech
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`interests are seriously threatened by Lanham Act liability in this case.”
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`’
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`Id. at 300. The court
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`explained that “[u]nlike the film title in Rogers, [the defendant’s] title [wa]
`element’ of its books and their creator’s ‘artistic expressions.’ Rather, the evidence show[ed] that
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`s not an “integral
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`[the defendant] deliberately gave its children’s story books confusingly similar titles in a blatant
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`and ill—conceived effort to piggy-back on the goodwill associated with [the plaintiff’s] best-selling
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`title.” Id. at 300—01 (quoting Rogers, 875 F.2d at 1001).
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`It can be inferred from Louis Vuiiton and Simon & Schusier that an artistically relevant use
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`will outweigh a moderate risk of confusion where the contested user offers a “persuasive
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`explanation” that the use was an “integral element” of an artistic expression rather than a willful
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`attempt to garnish the trademark owner’s goodwill for profit. 1d. An “integral element” does not
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`have to be a “but—for” aspect of the work. It was metaphysically possible for Defendants to have
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`produced video games without the presence ofHumvees, just as it was technically possible for the
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`film in Rogers to have had a different title or for the film in Louis Vuitton to have deleted the scene
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`with the knockoff bag. Cf. Motsushita Elec. Indus. Co, LTD v. Zenith Radio Corp, 475 U.S. 574,
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`586, 475 US. at 586 (noting that the opposing party needs more than “some metaphysical doubt
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`as to the material facts” to avoid summary judgment).
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`Instead, an integral element is one that
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`“communicate[s]
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`ideas—and even social messages,” either “through many familiar literary
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`devices (such as characters, dialogue, plot, and music)” or “through features distinctive to the
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`medium (such as the player’s interaction with the virtual world)” Brown v. Entm ’r Mercns. Ass ’11,
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`564 US. 786, 790 (2011); see also Yankee Publ’g Inc. v. News America Publ’g Inc. 809 F. Supp.
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`267, 275 (S.D.N.Y. 1992) (“the First Amendment confers a measure of protection for the
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`unauthorized use of trademarks when that use is a part of the expression of a communicative
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`message”); Rogers, 875 F.2d at 1001 (explaining that where the title effectively satirized the
`“gaudiness and banality of contemporary television,” it was “an integral element of the film and
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`the film-maker’s artistic expressions”).
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`The elements of a successful New York common law claim of trademark infringement
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`parallel the elements required for a Lanham Act trademark infringement claim. See Van Praagl’z
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`v. Grafton, 993 F. Supp. 3d 293, 302 (E.D.N.Y. 2014) (citing Allied Interstate LLC v. Kimmel d’c
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`Silverman P. C., No. 12 Civ. 4204 (LTS) (SN), 2013 WL 4245987, at *5 (S.D.N.Y. Aug. 12,
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`2013));AllfedMaint. Corp. v. AlliedMech. Trades, Inc, 369 N.E.2d 1162, 1165 (N.Y. 1977). As
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`such, both state and federal trademark infringement claims will be assessed together.
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`I. Artistic Relevance
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`Starting at the first prong of the Rogers test, Defendants’ uses of Humvees in Call ofDuty
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`games have artistic relevance. Featuring actual vehicles used by military operations around the
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`world in video games about simulated modern warfare surely evokes a sense of realism and
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`lifelikeness to the player who “assumes control of a military soldier and fights against a computer-
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`controlled or humanacontrolled opponent across a variety of computer-generated battlefields.”
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`Novalogic, Inc. v. Aetivision Blizzard, 41 F. Supp. 3d 885, 890 (CD. Cal. 2013). The reasoning
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`articulated by the court in Novalogic is highly persuasive in this regard. Specifically, the court
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`applied the Rogers framework to a motion for summary judgment in a dispute over contested uses
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`in a Call ofDuty game. See id. at 898m99. Upon reviewing a copy of the Call ofDuty game, the
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`court explained that the uses of the plaintiffs name and logo “easily met the artistic relevance
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`requirement under Rogers” because they gave players “a sense of a particularized reality of being
`
`part of an actual elite special forces operation and serve[d] as a means to increase specific realism
`
`of the game.” Id. at 900; see also Mil—Spec Monkey, Inc. v. Activision Blizzard, Inc, 74 F. Supp.
`
`3d 1134, 1136 (ND. Cal. 2014) (similar). The same is true here with respect to Humvees.
`
`Accordingly, any reasonable juror would conclude that the presence of Humvees in Call of Duty
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`games possesses an artistic value that is at least “above zero.” Communico, Ltd. v. Decision Wise,
`
`Inc, No. 14 Civ. 1887 (RNC), 2018 WL 1525711, at *8 (D. Conn. Mar. 28, 2018)
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`2. Polaroid Factors
`
`Proceeding to the second prong of the Rogers test, Defendants’ uses of Humvees in the
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`
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`Call ofDuty games are not explicitly misleading. As the court in Rogers recognized, a survey
`documenting confusion is not dispositive. See Rogers, 875 F.2d at 1001 (“The survey evidence,
`even if its validity is assumed, .
`.
`. is so outweighed by the interests in artistic expression as to
`preclude application of the Lanham Act”).
`Indeed, “no amount of evidence showing only
`consumer confusion can satisfy the ‘explicitly misleading’ prong of the Rogers test because such
`’ Twentieth Century Fox Television
`
`evidence goes only to the ‘impact of the use’ on a consumer.’
`v. Empire Distribution Inc, 161 F. Supp. 3d 902, 909 (CD. Cal. 2016) (emphasis added) (quoting
`Brown v. Elec. Arts, Inc, 724 F.3d 1235, 1245416 (9th Cir. 2013)).
`Instead, “the venerable
`“No one of the Polaroid factors
`
`Polaroid factors” must be applied. Twin Peaks, 996 F.2d at 1379.
`is dispositive, and the list is not exhaustive; ‘the analysis of the factors is not a mechanical
`process.m Estee Lauder Inc. v. The Gap, 108 F.3d 1503, 1510 (2d Cir. 1997) (quoting Arrow
`Fastener Co, Inc. v. Stanley Works, 59 F.3d 384, 391 (2d Cir. 1995)).
`
`a. Strength of Plaintiff’s Mark
`The first Polaroid factor is “the strength of [the plaintiff’3] mark.” Polaroid, 287 F.2d at
`495. Courts considering this factor “focu[s] on the ‘distinctiveness ofthe mark, or more precisely,
`its tendency to identify the goods’ as coming from a particular source.” Museum ofModern Art v.
`MOMACHA 1P LLC, 339 F. Supp. 3d 361, 373 (S.D.N.Y. 2018) (quoting Lang 12. Ret. Living
`Publ ’g Co., 949 F.2d 576, 581 (2d Cir. 1991)). Additionally, courts consider both “the mark’s
`inherent distinctiveness, based on the characteristics of the mark itself, and its acquired
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`distinctiveness, based on associations the mark has gained through use in commerce.” Akiro LLC
`
`v. House ofChearham, Inc, 946 F. Supp. 2d 324, 333 (S.D.N.Y. 2013) (citing Streetwise Mops,
`Inc. v. Var/(Dam, Inc, 159 F.3d 739, 74344 (2d Cir. 1998)). Here, Defendants do not challenge
`em. of Defs.
`
`(See Reply M
`the strength of Plaintiff’s made—instead, they contest its relevancy.
`Activision and MLG’s in Further Supp. of Mot. for Summ. J. (“Defs’ Reply Mem.”), ECF No.
`
`195, at 9.) Accordingly, the first Polaroid factor weighs in Plaintiffs favor.
`
`
`
`b. Degree of Similarity
`The second Polaroid factor is “the degree of similarity between the two marks.” Polaroid,
`287 F.2d at 495. “[T]he test .
`.
`. is whether confusion is probable among numerous customers who
`are ordinarily prudent.” Estee Lauder, 108 F.3d at 1511. “[If] the marks are used for different
`purposes and are presented to the public differently, even though they say the same thing, they are
`dissimilar and no issue of fact is created.” DeClemente, 860 F. Supp. at 47. Here, Plaintiff and
`Defendants use Humvees “for different purposes.”
`Id.
`Plaintiff contends that Defendants
`replicated the Humvee design in its games with the “admitted intention that consumers would
`recognize it" as a Humvee, but recognition is not confusion. (Pl.’s Mem. at 19.) While both parties
`” of selling products for profit, Plaintiffs purported concept of shared
`purpose is far too abstract to argue reasonable confusion. Put simply, Plaintiff’s purpose in using
`its mark is to sell vehicles to militaries, while Defendants’ purpose is to create realistically
`mpare Compl. fil 14 (“AM
`
`simulating modern warfare video games for purchase by consumers. (C0
`General designs, engineers, manufactures, supplies, and supports specialized vehicles for military
`and commercial customers”), with id. 1i 4 (“Defendant Activision Blizzard, Inc. is an interactive
`entertainment company and video game developer. Defendant Activision Blizzard, Inc. earns
`
`have the general “purpose
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`revenue through the sale, distribution, and licensing of content related to its video games”). Thus,
`
`the second Polaroid factor weighs in Defendants’ favor.
`
`0. Proximity
`
`The third Polaroid factor is “the proximity of the products.” Polaroid, 287 F.2d at 495.
`
`This factor “focuses on whether the two products compete with each other,” with special attention
`
`devoted to assessing whether goods “serve the same purpose, fall within the same general class,
`
`or are used together.” Lang, 949 F.2d at 582. Proximity may be measured both in terms of “market
`
`proximity” and “geographic proximity.” Brennan ’5, Inc. 12. Brennan 15‘ R6311, LL. C, 360 F.3d 125,
`
`134 (2d Cir. 2004). Here,lthe products are far from proximate. Specifically, Plaintiff’s vehicles
`
`and Defendants” video games do not “serve the same purpose” nor “fall within the same general
`
`class,” and certainly are not “used together.” Lang, 949 F.2d at 5 82.
`
`In an attempt to salvage this factor in its favor, Plaintiff asserts that “[i]t is also in the
`
`business of licensing—out the rights to depict [Humvees] in video games and toys.” (Pl.’s Mem.
`
`at 21). However, the competitive proximity inquiry focuses on a user’s “central purpose” and
`
`“focus” rather than a “sporadic and marginal aspect of [the user’s] purposes.” Girl Scouts of US.
`
`ofAm. v. Bantam Doubleday Dell Publ’g Grp., 808 F. Supp. 1112, 1126727 (S.D.N.Y. 1992).
`
`Where Plaintiff’s business is solely focused on automobiles, a reasonable jury would view its
`
`forays into video game licensing as merely a “sporadic and marginal aspect” of its business rather
`
`than its “central purpose” and “focus.” Id.
`
`(See Compl. ll 14 (“AM General designs, engineers,
`
`manufactures, supplies, and supports specialized vehicles for military and commercial customers.
`
`It is best known today for its global leadership in the design and production of, and support for,
`
`the [Humvee].”).) The third Polaroid factor therefore points in Defendants’ favor.
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`(1. Bridging the Gap
`The fourth Polaroid factor is “the likelihood that the prior owner will bridge the gap.”
`Polaroid, 287 F.2d at 495. “‘Bridging the gap’ refers to the likelihood that the senior user will
`enter thejunior user’s market in the future, or that consumers will perceive the senior user as likely
`to do so.” Star Indus, Inc. v. Bacardi (f5, Co. Ltd, 412 F.3d 373, 387 (2d Cir. 2005) (citing Sports
`Auth, Irrc. v. Prime Hosp. Corp, 89 F.3d 955, 963 (2d Cir. 1996)). When “First Amendment
`ctor must be minimal.”
`
`considerations figure strongly in [a] case, however, the weight of this fa
`Girl Scouts, 808 F. Supp. at 1127. Plaintiffhas presented no evidence that it is likely to enter the
`video game industry let alone evidence that consumers would expect it to do so. As such, the
`
`fourth Polaroid factor tips in Defendants’ favor.
`
`
`
`e. Evidence of Actual Confusion
`The fifth Polaroid factor is “actual confusion.” Polaroid, 287 F.2d at 495. Courts
`sumers are actually confused as to the origin of a particular product
`
`liated with the senior
`
`“consider the evidence that con
`or service or as to whether the junior user of a mark is sponsored by or affi
`user.” Disney Enters. v. Sarelli, 322 F. Supp. 3d 413, 435 (S.D.N.Y. 2018). Importantly, “[e]ven
`assuming that factor (5), actual confusion, favors [Plaintiff], Rogers teaches that mark owner’s
`must accept ‘some' confusion when outweighed by free speech interests.’
`. 2d at 184 n.19 (quoting Rogers, 875 F.2d at 1001)). Here, there is no evidence of actu