AM General LLC v. Activision Blizzard, Inc.

UNITED STATES DISTRICT COURT 
SOUTHERN DISTRICT OF NEW YORK 
ee HX 
AM GENERAL LLC,      
                             Plaintiff, 
                                                      MEMORANDUM DECISION 
           ~against-                            :               AND ORDER 
ACTIVISION BLIZZARD, INC., ACTIVISION            :             17 Civ. 8644 (GBD) 
PUBLISHING, INC., and MAJOR LEAGUE GAMING        : 
CORP.,                                           : 
                             Defendants.        : 
    eee  ee  ee em      ee  ee eR ee ee   HH 
GEORGE B. DANIELS, United States District Judge: 
     Plaintiff AM General LLC (“AMG”) brings this  action against Defendants Activision 
Blizzard,  Inc,  and Activision  Publishing,  Inc.  (collectively,  “Activision”)  and  Major  League 
Gaming Corp. (“MLG”) for trademark infringement, trade dress infringement, unfair competition, 
false  designation of origin,  false  advertising,  and dilution  under the Lanham Act,  

15 U.S.C. §§ 1114

,  1125, and 1125(c), respectively.  (Compl., ECF No.  1,    82-147.)  AMG also raises 
pendant  New  York  state  law  claims  for  trademark  infringement,  unfair  competition,  false 
designation of origin, trade dress infringement, false advertising, and dilution.  (/d. ff] 148-81.) 
     On May 31, 2019, Defendants moved for summary judgment on all of AMG’s claims 
pursuant to Federal Rule of Civil Procedure 56.  (Defs. Activision and MLG’s Notice of Mot. for 
Summ. J., ECF No.  131.)  On the same day, Plaintiff moved for partial summary judgment on 
Defendants’ laches claim pursuant to Federal Rule of Civil Procedure 56(a).  (PI. AMG’s Notice 
of Mot, for Partial Summ. J., ECF No. 138.)  Subsequently, Defendants filed a motion to strike (1) 
certain portions of Plaintiffs Rule 56.1  statement of material  facts  and (2) the “experiment” 
contained in the rebuttal report of Plaintiff's expert, Dr. Yoran Wind (“MTS I”).  (See Mem. of 
Law of Defs, Activision and MLG’s in Supp. of Their Mot. to Strike Pl. AMG’s Local Rule 56.1 

Statement and Wind Rebuttal Report, ECF No. 163.)  Shortly thereafter, Defendants filed a motion 

to  strike  (1) certain portions  of Plaintiff's  opposition to  Defendants’  Rule  56.1  statement of 

material facts and counterstatement of additional facts, (2) the survey undertaken by Plaintiffs 

expert, Dr. Wind, and (3) documents submitted by Plaintiff in opposition to Defendants’ motion 

for summary judgment (“MTS II”).  (See Mem. of Law in Supp. of Defs. Activision and MLG’s 

Mot. to Strike, ECF No. 194.) 
     Defendants’ motion for summary judgment is GRANTED.  Plaintiffs motion for partial 

summary judgment is DENIED.  Defendants’ motions to strike are DENIED, except GRANTED 

in part to strike those documents which were not produced during discovery.! 
                        I.    FACTUAL BACKGROUND 

   A.  The Parties. 
      In 1983, the U.S. Department of Defense first awarded AMG a  contract to build the High 

Mobility Multipurpose Wheeled Vehicle.  (Pl. AMG’s Response to Defs. Activision and MLG’s 

Statement of Undisputed Facts and Counterstatement of Additional Facts (“Pl.’s Counter 56.1”), 

ECE No,  175, { 20.)  Since then, the yehicle—known colloquially as the “Humvee”—has been 

“the backbone of U.S, defense tactical vehicle fleets around the world” and “an essential part of 

ee 
   Zor seasons stated in Part IIL(A)(2)(A), infra, Defendants’ motion to strike portions concerning a letter sent 
 by the Beanstalk Group to Activision in 1998 contained in Plaintiffs opposition to Defendants’ Rule 56.1 
 statement is GRANTED.  Beyond that, MTS IL 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 Co., 

61 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 4 
 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.) 

    military operations.”  (Defs, Activision and MLG’s Mem. of Law in Support of Mot. for 

 Summ.  J.  (“Defs.”  Mem.”), ECF No.  139, at 6 (quoting Pl. AMG’s Statement of Undisputed 
Material Facts in Support of Pl AMG’s Mot. for Partial Summ. J., ECF No. 143, 4 23).)  From 
Panama to Somalia, and to this day in Iraq and Afghanistan, the Humyee has become an iconic 
and a ubiquitous symbol of the modern American military.  (Defs.” Mem. at 6; Pl. AMG’s Mem, 
of Law in Opp’n to Mot. for Summ. J. (“PI.’s Mem.”), ECF No.  171, at 3.)  AMG continues to 
produce Humvees for the U.S. armed forces and the militaries of over 50 countries.  (Compl. 
   15-16.) 
     Since the early  1990s,  AMG has also  granted licenses to other companies to use the 
Humvee trademark “on or in connection with a wide variety of products,” including toys and at 
least four video games.  (Compl. ff] 25-31.)  Humvees have also appeared in a wide variety of 
other  media,  including  Hollywood  blockbusters,  such  as  Jurassic  Park  and  The  Avengers, 
television series,  such as  24,  The Simpsons,  The  Walking Dead,  and Long Road Home,  and 
Academy Award-winning dramas, such as The Hurt Locker,  (Defs.’ Mem, at 7.)  Additionally, a 
number of video games, manufactured by video game developers other than Defendants, have 
featured Humvees.  (/d. at 8.) 
     Call of Duty is one of the “most popular and well-known video game franchises in the 
world” with over 130 million units sold. (Rule 56.1  Statement of Undisputed Facts in Supp, of 
Mot. of Defs. Activision and AMG for Summ. J. (“Defs.’ 56.1”), ECF No. 158,   2.)  Indeed, the 
Call of Duty franchise—which is a first-person shooter series developed, produced, and distributed 
by Activision—is characterized by its realism, cinematic set-pieces, and fast-paced multiplayer 
mode.  Ud. §{ 7-10; Compl. ff 3-4; Defs.’ Mem. at 4-5.)  While various consumers play Call of 
Duty from the comfort of their own homes, both through single-player campaigns and in online

multiplayer mode, others compete +n tournaments hosted by organizations, such as MLG.  (ld. at 3; 

Defs.’ 56.1 4 89.) 
  B.  Alleged Infringing Conduct: Humvees and Call of Duty. 
     Humvees are depicted in nine Call of Duty games for varying durations,  (PL.’s Mem, at 4; 

Defs.’? Mem. at 9-10.)  In particular, whereas sometimes they appear briefly in the background or 

are mentioned in passing through dialogue, at other times, players ride in  a Humvee for several 

minutes during a scene or level.  (P1.’s Counter 56.1 {4 56-62.)  Further, at times, the player can 

even “assumfe] control of the [Humvec],” including by firing a turret-mounted machine gun.  (Pl.’s 

Counter  56.1  § 3.)  In certain instances, the player cannot progress to the next level without 

interacting with the Humvee.  (PI.’ Counter 56.1   456.)  Humvees are also shown in several trailers 

for the games and in Call of Duty-branded strategy guides. (Defs.” Mem. at 10-11.)  Defendants 

also licensed a toy company to manufacture Call of Duty-branded construction sets, two of which 

include toy vehicles.  (Compl. { 8.)  According to AMG, they bear the distinctive elements of the 

Humvee’s  trade  dress.   Ud  {ff  54-55.)   Plaintiff  asserts  that  Defendants  did  not  receive 

authorization from AMG for such uses.  (Ud. { 102.) 
       As to an instruction manual included inside each disk case for Call of Duty 4: Modern 

 Warfare, Activision included the following language: 
             All title, ownership rights and intellectual property rights in and to this 
             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 of Duty 4: Modern Warfare), ECF No. 

  141-10, at AMG0075793.)  Similar language appears in comparable sections of the instruction 

booklets accompanying Call of Duty: Modern Warfare 2, Call of Duty: Modern Warfare 3, and 

Call of Duty: Black Ops IL.  (See Struble Decl., Ex. 119 (Call of Duty: Modern Warfare 2), ECF 

No. 141-11, at AMG0075815; Struble Decl, Ex. 120 (Call of Duty Modern Warfare 3), ECF No. 
141-12, at AMG0075835; Struble Decl., Ex. 117 (Call of Duty: Black Ops ID), ECF No. 141-9, at 

AMG0075777.} 
  C.  Plaintiff's Letters. 
     In 1998, the Beanstalk Group——a third-party that served at the time as a licensing agent for 

AMG—-sent a letter? to Activision regarding the video game Sin, which is unaffiliated with the 

Call of Duty franchise (the “1998 letter”). (PI.’s Counter 56.1 49 53-54.)  According to AMG, in 

the  1998  letter, the Beanstalk Group “complained to Activision about its use of the [Humvee] 
Trade Dress in a video game called Sin.”  (id. 454.)  AMG cites the 1998 letter for the proposition 
that Activision “agreed to remove [Humvee] vehicles from the video game Sin.”  (Ud. 755.) 
      On or about June 20, 2016, counsel for Global Icons, LLC-—an outside licensing agency 
contracted by AMG—-sent a cease-and-desist letter to Defendants objecting to the appearances of 

Humvees in Cail of Duty games and toys.  (Compl. §{ 78-79.)  Shortly thereafter, on November 

4, 2016, Defendants released Call of Duty: Modern Warfare Remastered, which included scenes 

with Humvees.  (P1.’s Counter 56.1 95.)  Subsequently, AMG initiated this action on November 

7, 2017.  (See Compl.) 
                          Il    LEGAL STANDARDS 
      Summary judgment is appropriate when there is no genuine issue of material fact and the 

moving party is entitled to jadgment as a matter of law.  See Fed. R. Civ. P, 56(a).  “An issue of 

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 Decl., Ex.  121  (1998 
 Letter), ECF No. 141-13.) 

fact is  ‘genuine’  if ‘the evidence is such that a reasonable jury could return a verdict for the 

nonmoving party.””  Gayle v.  Gonyea, 

313 F.3d 677, 682

 (2d Cir. 2002) (quoting Anderson v. 

Liberty Lobby,  Inc., 

477 U.S. 242, 248

 (1986)).  A fact is material when it “might affect the 

outcome of the suit under the governing law.”  Jd. (quoting Anderson, 

477 U.S. at 248

) (internal 
quotation marks omitted). 
     “The party seeking summary judgment has the burden to demonstrate that no genuine issue 

of material fact exists.”  See Marvel Characters, Inc. v. Simon, 3 

10 F.3d 280, 286

 (2d Cir. 2002). 
In turn, to defeat a motion for summary judgment, the opposing party must raise a genuine issue 

of material fact.  See Caldarola v. Calabrese, 

298 F.3d 156, 160

 (2d Cur, 2002) (explaining that 

the nonmoving party “must come forward with specific facts showing that there is a genuine issue 

for trial”).  To do so, the opposing party “must do more than simply show that there is some 

metaphysical doubt as to the material facts,” 

id.

  (quoting Matsushita Elec, Indus.  Co. v.  Zenith 

Radio  Corp., 

475 U.S. 574, 586

  (1986)),  and  it “may not rely  on conclusory  allegations  or 

unsubstantiated speculation,” Fujitsu Lid. y. 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), 
Rather, the opposing party must produce admissible evidence that supports its pleadings. See First 

Nat’! Bank of Ariz. v. Cities Serv. Co., 

391 U.S. 253, 289-90

 (1968).  In this regard, “[t]he ‘mere 

existence of a scintilla of evidence’ supporting the non-movant’s case is also insufficient to defeat 

summary judgment.”  Niagara Mohawk Power Corp. v. Jones Chem., Inc., 315 ¥.3d 171, 175 (2d 

Cir, 2003) (quoting Anderson, 

477 U.S. at 252

). 
      In determining whether a genuine issue of material fact exists, the court must construe the 

evidence in the light most favorable to the opposing party and draw all reasonable inferences in 

that party’s favor.  See 

id.

  However, “a court must not weigh the evidence, or assess the credibility 

                                       £ 

of witnesses, or resolve issues of fact.”  Victory v. Pataki, 

814 F.3d 47, 59

 (2d Cir. 2016) (citation 

and internal quotation marks omitted).  Summary judgment is therefore “improper if there is any 

evidence in the record that could reasonably support a jury’s verdict for the non-moving party.” 

Marvel, 310 F.3d at 286, 
  Ii.    DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT IS GRANTED 

  A.  Federal and New York Trademark Infringement Claims. 
     Where the defendant’s product is artistic or expressive, courts have interpreted the Lanham 

Act narrowly in order to avoid suppressing protected speech under the First Amendment. See 

Rogers y. 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 

[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 of the trademark] 

explicitly misleads as to the source or the content of the 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.” CliffNotes v. Bantam Doubleday Dell Publ’g 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 

 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.”  /d. at 

 998. See Louis Vuitton Malletier S.A, 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 

contested  film’s  titlk—“Ginger  and  Fred”—possessed  artistic  relevance  because  “the  central 
characters in the film [we]re named ‘Ginger’  and ‘Fred,’  and these names  ..  . ha[d]  genuine 
relevance  to  the  film’s  story.”  Rogers,  

875 F.2d at 1001

.   Accordingly,  no  more  rigorous 
examination of artistic merit was required or even appropriate. 
     If the contested use has artistic relevance, then the court must proceed to the second prong 
of the Rogers test and determine whether the use “explicitly misleads as to the source or the content 
of the work.”  Rogers, 

875 F.2d at 999

,  It is not enough that a likelihood of confusion exists; 
rather, “the finding of likelihood of confusion must be particularly compelling to outweigh the 
First Amendment interest recognized in Rogers.”  Twin Peaks Prods., Inc. v. Publ’ns Int 7, Ltd, 

996 F.2d 1366

, 1379 (2d Cir. 1993).  Such evaluation of misleadingness “must be made, in the 
first instance, by application of the venerable Polaroid factors.”  Id.  See also DeClemente v. 
Columbia Pictures Indus., Inc., 

860 F. Supp. 30, 51

 (E.D.N.Y. 1994) (“The analysis to determine 
consumer confusion and misleading under the balancing test of Rogers is conducted by applying 
the eight[-]factor test for consumer confusion set forth in Polaroid [v. Polarad Elecs. Corp.   

287 F.2d 492, 495

  (2d  Cir.  1961)].”).  Notably,  “the finding  of likelihood  of confusion must be 
particularly compelling to outweigh the First Amendment interest recognized in Rogers.”  Twin 
Peaks, 996 F.2d at 1379; see Cliff Notes vy. Bantam Doubleday Dell Publ’g Grp., 

886 F.2d 490, 494

 (2d Cir. 1989) (courts must “strike the balance between the two competing considerations of 
allowing artistic expression and preventing consumer confusion”). 
     A comparison of two cases—namely, Louis  Vuitton and Simon & Schuster—illustrates 
how courts employ the Rogers framework to weigh trademark concerns against First Amendment 
interests,  In Louis Vuitton, a character in the defendant’s film, The Hangover: Part H, humorously 
mispronounced his knockoff Louis Vuitton bag as a “Lewis Vuitton.” Louis Vuitton, 868 F. Supp.

od  at  174-75.   The  plaintiff filed  an  action,  claiming that the defendant had  “affirmatively 

misrepresent[ed]” that the knockoff was one of the plaintiff's 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 of the knockoff, 

Id.

  As the court explained, the film’s use of the bag had artistic 

relevance:  its  flaunting  and  subsequent  mispronunciation  revealed  that  the  character  was 

“snobbish” and “socially inept,” and “introduce[d] the comedic tension between [two characters] 

that appear[ed] throughout the [flilm.”  Jd. at 178.  And even if there were some confusion as to 

whether this scene “impl[ied] that [the plaintiff] approved the use of the [knockoff] bag in the 

[flilm,” the court held that “the public’s interest in avoiding consumer confusion . . . [wa]s not so 

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 

trademark claim.  /d. 
      In contrast, the court in Simon & Schuster held that the presence of many of the Polaroid 

factors outweighed a meager invocation of the First Amendment.  Simon & Schuster, Inc. v. Dove 

Audio, Inc., 

970 F. Supp. 279, 301

 (S.D.N.Y.  1997).  The plaintiff, publisher of “The Book of 

 Virtues” both in print and as an audiobook, sued the defendant for publishing “The Children’s 

 Audiobook of Virtues,” an audiobook, and planning to publish “The Children’s Book of Virtues,” 

 a print book,  Jd. at 282.  The court found that at least five of the eight Polaroid factors favored 

 the plaintiff.  Jd.  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 

 interests are seriously threatened by Lanham Act liability in this case.”  Jd.  at 300.  The court 

 explained that “lujnlike the film title in Rogers,  [the defendant’s] title [wa]s not an  ‘integral 

  element’ of its books and their creator’s ‘artistic expressions.’  Rather, the evidence show|ed] that 

[the defendant] deliberately gave its children’s story books confusingly similar titles in a blatant 
and ill-conceived effort to piggy-back on the goodwill associated with [the plaintiffs] best-selling 

title.”  Jd. at 300-01 (quoting Rogers, 

875 F.2d at 1001

). 
     It can be inferred from Louis Vuitton and Simon & Schuster that an artistically relevant use 

will  outweigh  a  moderate  risk  of confusion  where  the  contested  user  offers  a  “persuasive 
explanation” that the use was an “integral element” of an artistic expression rather than a willful 

attempt to garnish the trademarl owner’s goodwill for profit.  Jd.  An “integral element” does not 

have to be a “but-for” aspect of the work.  It was metaphysically possible for Defendants to have 

produced video games without the presence of Humvees, just as it was fechnically possible for the 

film in Rogers to have had a different title or for the film in Louis Vuitton to have deleted the scene 

with the knockoff bag.  Cf Matsushita Elec, Indus. Co, LTD vy. Zenith Radio Corp., 

475 U.S. 574, 586

, 

475 U.S. at 586

 (noting that the opposing party needs more than “some metaphysical doubt 

as to the material facts” to avoid summary judgment).  Instead, an integral element is one that 

“ceommunicate[s]  ideas—and  even  social  messages,”  either  “through  many  familiar  literary 

devices (such as characters, dialogue, plot, and music)” or “through features distinctive to the 

medium (such as the player’s interaction with the virtual world).” Brown v. Entm't Merchs. □□□□□□ 

564 U.S. 786, 790

 (2011); see also Yankee Publ’g Inc. v. News America Publ’g Inc. 

809 F. Supp. 267, 275

  (S.D.N.Y.  1992)  (“the  Furst  Amendment  confers  a  measure  of protection  for  the 

unauthorized use of trademarks when that use is a part of the expression of a communicative 

message”); Rogers,  

875 F.2d at 1001

  (explaining that where the title effectively satirized the 

 “saudiness and banality of contemporary television,” it was “an integral element of the film and 

 the film-maker’s artistic expressions”). 

     The elements of a successful New York common law claim of trademark infringement 
parallel the elements required for  a Lanham Act trademark infringement claim.  See Van Praagh 
v. Gratton, 

993 F. Supp. 3d 293

, 302 (E.D.N.Y. 2014) (citing Allied Interstate LLC v. Kimmel & 
Silverman P.C., No.  12 Civ. 4204 (LTS) (SN), 

2013 WL 4245987

, at *5  (S.D.N.Y. Aug.  12, 
2013)); Allied Maint. Corp. v.  Allied Mech. Trades, Inc., 

369 N.E.2d 1162, 1165

 (N.Y, 1977).  As 
such, both state and federal trademark infringement claims will be assessed together. 
        I.  Artistic Relevance 
     Starting at the first prong of the Rogers test, Defendants’ uses of Humvees in Call of Duty 
games have artistic relevance.  Featuring actual vehicles used by military operations around the 
world in video  games about simulated modern warfare surely evokes a sense of realism and 
lifelikeness to the player who “assumes control of a military soldier and fights against a computer- 
controlled or human-controlled opponent across a variety of computer-generated battlefields.” 
Novalogic, Inc. y. Activision Blizzard, 

41 F. Supp. 3d 885, 890

 (C.D. Cal, 2013).  The reasoning 
articulated by the court in Novalogic is highly persuasive in this regard.  Specifically, the court 
applied the Rogers framework to a motion for summary judgment in a dispute over contested uses 
in a Call of Duty game.  See 

id. at 898-99

.  Upon reviewing a copy of the Cail of Duty game, the 
court explained that the uses of the plaintiff's name and logo “easily met the artistic relevance 
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.”  Jd. at 900; see also Mil-Spec Monkey, Inc. v. Activision Blizzard, Inc., 

74 F. Supp. 3d 1134, 1136

 (NLD,  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 

                                      li 

games possesses an artistic value that is at least “above zero.”  Communico, Lid. v. DecisionWise, 

Inc., No. 14 Civ. 1887 (RNC), 

2018 WL 1525711

, at *8 (D. Conn. Mar. 28, 2018) 

        2.  Polaroid Factors 
     Proceeding to the second prong of the Rogers test, Defendants’ uses of Humvees in the 

Cail of Duty 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 

evidence goes only to the ‘impact of the use’ on a consumer.”  Twentieth Century Fox Television 

y. Empire Distribution Inc., 

161 F. Supp. 3d 902, 909

 (C.D. Cal. 2016) (emphasis added) (quoting 

Brown v.  Elec.  Arts,  Inc., T24 F.3d  1235,  1245-46 (9th Cir.  2013)).  Instead, “the venerable 

Polaroid factors” rust be applied.  7win Peaks, 996 F.2d at 1379.  “No one of the Polaroid factors 

is dispositive,  and the list is not exhaustive;  ‘the analysis of the factors is not a mechanical 

process.’”  Estee Lauder Inc.  v.  The Gap,  

108 F.3d 1593

,  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's] mark.”  Polaroid, 

287 F.2d at 495

,  Courts considering this factor “focu[s} on the ‘distinctiveness of the mark, or more precisely, 

 its tendency to identify the goods’ as coming from a particular source.”  Museum of Modern Art v. 

 MOMACHA IP LLC, 

339 F. Supp. 3d 361, 373

 (S.D.N.Y. 2018) (quoting Lang v.  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 

distinctiveness, based on associations the mark has gained through use in commerce.” Akira LLC 

y. House of Cheatham, Inc., 946 ¥. Supp. 2d 324, 333 (S.D.N.Y. 2013) (citing Streetwise Maps, 

Inc. vy.  VanDam, Inc., 

159 F.3d 739

, 743-44 (2d Cir. 1998)).  Here, Defendants do not challenge 

the strength of Plaintiff's mark-—instead, they contest its relevancy.  (See Reply Mem. of Defs. 

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 Plaintiff's favor. 

            b.  Degree of Similarity 
      The second Polaroid factor is “the degree of similarity between the two marks.” Polaroid, 

987 F.2d at 495.  “[T]he test .. . is whether confusion is probable among numerous customets who 

are ordinarily prudent.”  Lstee 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.  (PI.’s Mem. at 19.) While both parties 

 have the general “purpose” of selling products for profit, Plaintiff's 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 

 simulating modern warfare video games for purchase by consumers,  (Compare Compl,   14 “AM 

 General designs, engineers, manufactures, supplies, and supports specialized vehicles for military 

 and commercial customers.”), with 

id.

   {4 (“Defendant Activision Blizzard, Inc. is an interactive 

 entertainment company and video game developer.  Defendant Activision Blizzard, Inc. earns 

revenue through the sale, distribution, and licensing of content related to its video games.”).  Thus, 
the second Polaroid factor weighs in Defendants’ favor. 
           c.  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's, Inc. v, Brennan's Rest., L.L.C., 

360 F.3d 125, 134

 (2d Cir, 2004).  Here, the products are far from proximate.  Specifically, Plaintiffs 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 582

. 
     In an attempt to salvage this factor in its favor, Plaintiff asserts that “Tilt 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. 
of Am.  v.  Bantam Doubleday Dell Publ’g Grp., 

808 F. Supp. 1112, 1126-27

 (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.”  /d.  (See Compl.   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. 

                                      14 

           d.  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 the junior user’s market in the future, or that consumers will perceive the senior user as likely 

to do so.”  Star Indus., Inc. v. Bacardi & Co. Lid, 

412 F.3d 373, 387

 (2d Cir, 2005) (citing Sports 

Auth., Inc.  v. Prime Hosp.  Corp., 

89 F.3d 955, 963

 (2d Cir.  1996)).  When “First Amendment 

considerations figure strongly in [a] case, however, the weight of this factor must be minimal.” 

Girl Scouts, 

808 F. Supp. at 1127

.  Plaintiff has 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 

“consider the evidence that consumets are actually confused as to the origin of a particular product 

or service or as to whether the junior user of a mark is sponsored by or affiliated with the senior 

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.”  Louis Vuitton, 

868 F. Supp. 2d at 184

 n.19 (quoting Rogers, 

875 F.2d at 1001

)).  Here, there is no evidence of actual 

 confusion,  As evidence of actual confusion Plaintiff proffers a survey? which, it argues, “found 

 that 16% of consumers shown actual video game play from Activision’s games were confused as 

 to AM General’s association with Call of Duty.”  (PL’s Mem. at 23 (emphasis deleted).) 


 3 As discussed previously, Defendants’ motion to strike Dr.’s Wind’s survey is denied because any defects 
  that Defendants claim exist in Dr.  Wind’s expert report go to the weight of the evidence, not to its 
  admissibility, See MeCullock, 

61 F.3d at 1044

. 

     Less than 20 percent confusion regarding two companies’ “association” (PI.’s Mem. at 23) 
is  at most some  confusion.  Further,  “Rogers teaches that mark owner’s must accept  ‘some’ 
confusion when outweighed by free speech interests.”  Louis Vuitton, 

868 F. Supp. 2d at 184

 n.19 
(quoting Rogers, 

875 F.2d at 1001

)).  Even the most favorable reading of the sole survey upon 
which Plaintiff relies does not hurdle this requirement.  See Twin Peaks, 996 F.2d at 1379 (“[T]he 
finding  of  likelihood  of  confusion  must  be  particularly  compelling  to  outweigh  the  First 
Amendment interest recognized in Rogers.”’)  (emphasis added).  Accordingly, while the fifth 
Polaroid factor only  slightly weighs in Plaintiffs favor, the countervailing First Amendment 
considerations counsel against according it undue importance in this context. 
            f.   Good Faith 
      The  sixth Polaroid factor  is  the  “defendant’s  good  faith  in  adopting  its  own  mark.” 
Polaroid, 

287 F.2d at 495

.  “This factor considers whether the defendant adopted its mark with the 
intention  of capitalizing  on  [the]  plaintiff's reputation and goodwill  and  [on]  any confusion” 
between the two products.  Hypnotic Hats, Ltd.  v.  Wintermantel Enters., LLC, 

335 F. Supp. 3d 566, 591

  (S.D.N.Y. 2018) (alterations in original) (quoting Savin Corp. v. Savin Grp., 

391 F.3d 439, 460

 (2d Cir. 2004)).  While “[bJad faith may be inferred from the junior user’s actual or 
constructive knowledge of the senior user’s mark,” the gravamen of bad faith is “the intent to sow 
confusion between the two companies’ products.” Star Indus., 

412 F.3d at 388-89

; see also Radio 
Channel Networks, Inc. y. Broadcast.Com, Inc., No. 98 Civ. 4799 (RPP), 

1999 WL 124455

, at *5 
(S.D.N.Y. Mar. 8, 1999), aff'd, 

201 F.3d 432

 (2d Cir.  1999) (“[E]ven assuming that plaintiff is 
able to prove that defendant knew of plaintiff's mark, it must allege something more than mere 
knowledge of the claimed mark on the part of the defendant.”),  “Although deliberate copying may 
indicate that the defendant acted in bad faith, the District Court is not required to draw that 

                                      16 

inference where there is evidence to the contrary.”  Starbucks Corp. v.  Wolfe’s Borough Caffee, 
Inc., 

588 F.3d 97, 118

 (2d Cir. 2009) (citation ommited),  Finally, “[t]he fact that, prior to the 
comimencement of the lawsuit, defendant did not abandon its project at plaintiff's suggestion, does 
not itself evidence a lack of good faith.” Andy Warhol Enters., Inc. v. Time Inc., 

700 F. Supp. 760, 766

 (S.D.N.Y. 1988). 
      In order to demonstrate bad faith, Plaintiff relies largely on the 1998 letter,  (Pls Mcm. 
at 24 (citing Pl. AMG’s Mem. of Law in Supp. of Mot. for Partial Summ. J. (“P1.’s Partial Summ. 
J, Mem.”), ECF No. 142, at 15-16),.}  However, where the 1998 letter would be inadmissible at 
trial, this Court need not consider it at summary judgment.’ See First Nat’l Bank of Ariz., 

391 U.S. at 289-90

; Jackson v. Fed. Exp., 

766 F.3d 189, 194

 (2d Cir. 2014); Pacenza v. IBM Corp., 

363 F. App’x 128, 130

 (2d Cir. 2010). 
      Apart from the 1998 letter, Plaintiff points to (1) a handful of statements by Defendants’ 
employees in “documents, emails, and witness testimony,” (PI.’s Mem. at 24 (citing PI.’s Partial 
Summ. J. Mem. at 18-20)); (2) the presence of Humvees decorated with Call of Duty logos at 
several in-person promotional events, (see id. at 2); and (3) the statements in several user guides 
included  inside  the  Call  of Duty  games  which,  Plaintiff argues  falsely  tell  consumers  that 
Activision either owns or licenses the Humvee IP,  (/d. at 28.)  However, these three clutches of 

4 First, Defendants did not “manifest[t] that it adopted or believed [the 1998 letter] to be true.”  Fed. R. 
Evid. 801(D)(2)(B).  Since there is no indication that Defendants responded to Plaintiffs letter, the only 
basis for adoption would be admission by silence.  “In most circumstances silence is so ambiguous that it 
is of little probative force.”  United States v. Hale, 

422 U.S. 171, 176

 (1975).  A recipient’s failure to reply 
to a letter does not demonstrate acquiescence unless it was reasonable under the circumstances for the 
sender to expect a response.  See Hellenic Lines Lid. v. Gulf Oil Corp., 

340 F.2d 398, 401

 (2d Cir. 1965). 
Particularly, the 1998 letter came from a third-party licensing agent—hardly a  likely source of potential 
liability such that it would have been “natural under the circumstances [for Defendants] to object” to any 
potential mischaracterizations in the letter. Hale, 

422 U.S. at 176

. Nor was the 1998 letter akin to the 2016 
cease-and-desist letter sent by counsel for Global Icons (on behalf of AMG).  (see Compl.  79).  The latter 
would have alerted Defendants to seek legal advice in a way that the former would not have. 

                                      17 

circumstantial evidence, even if afforded the benefit of all reasonable inferences in Plaintiffs 
favor, Niagara Mohawk, 315 F.3d at 175 (quoting Anderson, 477 U.S, at 252), do not demonstrate 
a desire to “sow confusion between the two companies’ products,” Star Indus., 

412 F.3d at 388

 
(emphasis added).  For instance, the user guide statements do not affirmatively tell consumers that 
Activision either owns or licenses the Humvee IP.  All that reasonably may be said is that a 
paragraph in miniscule type buried in a user guide—a paragraph which does not allude to, let alone 
mention, Humvees af a//—does not “tell consumers” much of anything.  Indeed, such back-end 
boilerplate provides no basis for “confusion between the two companies’ products.” fd. (emphasis 
added}.  Accordingly, the sixth Polaroid factor tips in Defendants’ favor. 
            g.  Quality of Defendants’ Products 
      The seventh Polaroid factor is “the quality of defendant’s product.” Polaroid, 

287 F.2d at 495

.  “Ifthe quality of a junior user’s product or service is low compared to the senior user, ‘there 
is an increased chance of actual injury when there is confusion.’”  Flushing Bank y.  Green Dot 
Corp., 

138 F. Supp. 3d 561, 591

 (S.D.N.Y. 2015) (quoting Savin, 

391 F.3d at 461

).  At the same 
time, however, a greater disparity in quality makes confusion less likely.      Put otherwise, a 
larger gap in quality between users increases the magnitude but decreases the likelihood of harm. 
Here, neither side has presented evidence that one party’s product is superior to the other party’s 
product.  As such, this factor favors Defendants.  See Schutte Bagclosures Inc. v. Kwik Lok Corp., 

193 F. Supp. 3d 245, 274

 (S.D.N.Y, 2016). 
           h,  Consumer Sophistication 
     The eighth Polaroid factor is “the sophistication of the buyers.” Polaroid, 

287 F.2d at 495

. 
One  problem  for  Plaintiff on  this  point  is  that  the  purchasers  of Humvees—that  is,  some 
50 militaries from around the world, including the U.S. Armed Forces—are not buying Call of 

                                      18 

Duty games, and vice versa.  (Compl. {if 15-16.)  Thus, there is no risk whatsoever that someone 

will buy the wrong product by accident out of sheer confusion about who built or distributed the 

product.  Indeed, the court in Louis Vuitton noted that “moviegoers are sophisticated enough to 

know that the mere  presence  of a brand name  in  a film,  especially  one  that  is briefly  and 

intermittently shown, does not indicate that the brand sponsored the movie.”  Louis Vuitton, 

868 F. Supp. 2d at 184

.19,  There is no reason to believe that video game players are any less astute. 

Accordingly, the eighth Polaroid factor tips in Defendants’ favor. 
            i.   Balancing the Polaroid Factors 
      On balance, the Polaroid factors weigh in Defendants’ favor.  The only Polaroid showings 

made by Plaintiff are the strength of its mark and a less than 20 percent risk of confusion.  As such, 

Plaintiff has failed to demonstrate that the contested uses “explicitly mislead] as to the source or 

the content of the work.”  Rogers, 

875 F.2d at 999

. 
         3.  Rogers Balancing Test                                                    □ 
      To the extent that any  of the Polaroid factors are satisfied—such that a modicum of 

confusion might be present—Plaintiff nonetheless has failed to present sufficient evidence to 

defeat summary judgment.  The Rogers balancing inquiry examines whether the contested user 

has offered a “persuasive explanation” regarding the use’s status as an “integral element” of the 

artistic expression. Simon & Schuster, 

970 F. Supp. at 300

-01 (quoting Roger's, 

875 F.2d at 1001

). 

Defendants have offered a persuasive explanation: the uses of Humvees in the Cail of Duty games 

 enhance the games’ realism.  Both parties agree that at least “some of the vehicles in the Call of 

 Duty Games are representative of those that a real-life soldier would expect to see in the time and 

 place depicted.”  (PI.’s Counter 56.1 J 19 (some emphasis deleted). )  Both parties also agree that 

 U.S. and foreign militaries use Humvees in operations around the world. (/d. ff] 23-26.) If realism 

                                       19 

is an artistic goal, then the presence in modern warfare games of vehicles employed by actual 
militaries  undoubtedly  furthers  that  goal.   The  inclusions  of Humvees  in  the  foreground  or 
background of various scenes—including several instances of players using Humvees to advance 
to the next level—are integral elements of a video game because they “communicate ideas □ □ . 
through features distinctive to  the medium (such as the player’s  interaction with the virtual 
world)”  Brown v. Entm’t Merchs, Ass'n, 

564 U.S. 786, 790

 (2011) (emphasis added).  Further, 
assuming arguendo that realism is the only artistic interest that Call of Duty games possess—an 
assumption potentially belied by the presence of narrative campaign modes in all of the challenged 
games-—it is also true that realism can have artistic merit in itself.  See United States v. One Book 
Entitled Ulysses by James Joyce, 

72 F.2d 705, 706

 (2d Cir,  1934) (A. Hand, J.) (demonstrating 
that novel accused of obscenity “as a whole ha[d] a realism characteristic of the present age” and 

was a “sincere portrayal with skillful artistry,” which accordingly, gave the novel an “artistic 
merit”). 
      Based on the undisputed facts regarding Humvees’ widespread use by modern militaries 
coupled with other evidence that Defendants have submitted and cited on their behalf, see Defs.’ 
Reply Mem, at 6 (citing Defs.’ 56.1    14-19), Defendants have satisfied their initial burden of 
production under Federal  Rule  of Civil  Procedure  56.  The  evidence  submitted  “negates  an 
essential element of [Plaintiff's] claim,” Nick's Garage, Inc. v. Progressive Cas. Ins. Co., 

875 F.3d 107, 114

 (2d Cir. 2017) (quoting Farid v. Smith, 

850 F.2d 917, 924

 (2d Cir. 1988)), insofar as it 
negates Plaintiffs claim that the uses of the Humvees are “a blatant and ill-conceived effort to 
piggy-back on the goodwill associated with” Humvees rather than “an ‘integral element’ of [the 
Call of Duty games] and their creator’s ‘artistic expressions.’”  Simon & Schuster, 

970 F. Supp. at 301

 (quoting Rogers, 

875 F.2d at 1001

). 

                                      20 

     In  response,  Plaintiff  offers  “conclusory  allegations,”  ijitsu,  

247 F.3d at 428

, 
“unsubstantiated speculation,” 

id.,

 and “[t]he mere existence of a scintilla of evidence.” Anderson, 
477 U.S, at 252.  Plaintiff challenges Defendants’ claims of realism and artistic relevance only “to 
the extent that the proffered statement of fact is meant to suggest that [Defendants’] use of the 
[Humvee] was motivated by artistic rather than commercial considerations,”  (PI.’s Counter 56.1 
{4 14, 16.) However, merely insinuating that a commercial motivation might exist is not enough— 
an attist can sell her art without the First Amendment abandoning her.  See City of Lakewood v. 
Plain Dealer Publ’g Co., 

486 U.S. 750

, 755-56 n.5 (1988) (“[T]he degree of First Amendment 
protection is not diminished merely because the newspaper or speech is sold rather than given 
away.”).  Instead, Plaintiff must present admissible evidence that Defendants’ invocation of the 
First Amendment was pretextual.  See Simon & Schuster, 

970 F. Supp. at 300

 (finding that there 
is no First Amendment protection afforded when Defendant appears to have “reflexively invoked 
the First Amendment without offering a persuasive explanation of why free speech interests are 
seriously  threatened  by  Lanham  Act  liability  in  this  case”).   Apart  from  innuendo  and 
“unsubstantiated speculation,” Fujitsu, 

247 F.3d at 428

, Plaintiff has failed to present evidence 
that Defendants’ sole interests were commercial. 
     Unable to offer anything more than “some metaphysical doubt as to the material facts” 
offered  by  Defendants,  Matsushita,  

475 U.S. at 586

,  Plaintiff is  unable  to  “overcome  the 
presumption of Rogers.”  Twin Peaks, 996 F.2d at 1379.  Accordingly, Defendants’ motion for 

summary judgment is granted dismissing trademark infringement claims under the Lanham Act. 
As a result, Plaintiff's pendant state law trademark infringement claim fails as well.  See  Van 
Praagh, 993 F. Supp. 3d at 302,

  B.  Federal and New York Trade Dress Claims. 
     “To plead a claim of trade dress infringement involving the appearance of a product, [a 
plaintiff] must allege that (1) the claimed trade dress is non-functional; (2) the claimed trade dress 

has secondary meaning; and (3) there is a likelihood of confusion between the plaintiffs good and 

the defendant’s.”  Sara Designs, Inc. v.  A Classic Time Watch Co. Inc., 

234 F. Supp. 3d 548, 555

 

(S.D.N.Y. 2017) (alteration in original) (quoting Sherwood 48 Assocs, v. Sony Corp. of Am., 76 □□ 

App’x  389,  391  (2d  Cir.  2003)).  Courts  determine likelihood of confusion by  applying the 

Polaroid factors.  See, e.g., Best Cellars, Inc. v.  Wine Made Simple, Inc., 

320 F. Supp. 2d 60, 73

 

(S.D.N.Y. 2003).  (“The likelihood of consumer confusion is determined by considering the eight 
non-exhaustive factors originally elaborated in Polaroid... .”). 
      Trade dress infringement claims under New York state common law contain the same 

elements as trade dress infringement claims pursuant to the Lanham Act. See Sports Traveler, inc. 

y, Advance Magazine Publishers, Inc., 

25 F. Supp. 2d 154, 166

 (S.D.N.Y. 1998) (“The analysis 
for trade dress infringement is the same under both the Lanham Act and New York State common 

law.”).  Thus, the two trade dress infringement claims will be considered together. 
      Assuming arguendo that a Humvee’s trade dress ig non-functional  and has secondary 
meaning, Plaintiff still fails to demonstrate a likelihood of confusion according to the Polaroid 

analysis performed above.  Given the improbability of confusion between a vehicle and a video 

game—or, in the case of the contested toys, between a plastic figurine and a full-blown military 
machine—this Court grants Defendants’ motion for summary judgment on Plaintiff’s federal and 

New York trade dress claims. 

  C,  Federal and New York Unfair Competition Claims. 
     “A Lanham Act unfair competition claim examines  ‘whether the public is likely to be 
misled into believing that the defendant is distributing products manufactured or vouched for by 
the plaintiff.’”  Zar’? Diamond Imps., Inc. v. Oriental Gemco (N_Y.), inc., 

64 F. Supp. 3d 494, 513

 
(S.D.N.Y. 2014) (quoting Warner Bros., Inc. v. Gay Toys, Inc,, 

658 F.2d 76, 79

 (2d Cir.  1981)). 
Just as with a trademark infringement claim,  a Lanham Act unfair competition claim requires 
showing “(1) that [the plaintiff] has a valid mark that is entitled to protection under the [Lanham] 
Act and (2) that [the djefendant[’s] actions are likely to cause confusion as to the origin of the 
mark.”  Gucci Am., Inc. v. Duty Free Apparel, Ltd., 286 F. Supp, 2d 284, 287 (S.D.N.Y. 2003); 
see also L’Oreal USA, Inc. v.  Trend Beauty Corp., No.  11 Civ. 4187 (RA), 

2013 WL 4400532

, 
at *14 (S.D.N.Y. Aug. 15, 2013).  The same Polaroid factors relevant to trademark infringement 
claims  also  help  establish  a  likelihood  of confusion  in  unfair  competition  cases,  see  Lois 
Sportswear,  US.A., Inc. v. Levi Strauss & Co., 

799 F.2d 867, 871

 (2d Cir. 1986), and the Rogers 
balancing test governs in order to address First Amendment concerns, see Twin Peaks, 996 F.2d 
at 1378-80 (applying Rogers to a Lanham Act unfair competition claim). 
     “An unfair competition claim under New York common law requires all the elements of a 
Lanham Act unfair competition claim plus a showing of bad faith.”  C—Holdings BV. v. Asiarim 
Corp., 

992 F. Supp. 2d 223, 244

 (S.D.N.Y. 2013) (citation omitted). 
     Although neither party disputes the validity of Plaintiff’s mark, Plaintiff fails to show a 
likelihood of confusion under the Polaroid factors.  Any degree of confusion that does exist is 
outweighed by the First Amendment interests reflected in the Rogers balancing test.  Insofar as a 
New York unfair competition claim requires, at a minimum, satisfaction of all of the elements of 
a federal claim, this Court need not reach the question of whether Plaintiff has made a showing of 

                                     23 

bad faith.  See   C=Holdings, 922 F. Supp. 2d at 244.  Therefore, Defendants’ motion for summary 
judgment is granted with respect to Plaintiff's federal and state unfair competition claims. 
  D.  Federal and New York False Designation of Origin Claims. 
     Under the Lanham Act, a plaintiff makes out a false designation of origin claim upon 
showing that the defendant “attempt[ed] to sell its product with a false designation that suggests 
the product originated from the plaintiff.”  Pulse Creations, Inc. v.  Vesture Group,  Ine., 

154 F. Supp. 3d 48, 57

 (S.D.N.Y. 2015) (quoting Sun Trading Distrib. Co., Inc. v. Evidence Music, Inc., 

980 F. Supp. 3d 722

, 727 (S.D.N.Y.  1997)).  Such false designation must be “likely to cause 

consumers [to have] ‘confusion as to the origin or sponsorship of defendant's goods.’”  

Id.

 at 56 
(quoting Victorinox AG v. B & F Sys., Inc., 

114 F. Supp. 3d 132, 139

 (S.D.N.Y. 2015)). 
      False designation of origin claims under New York state law are evaluated under the “same 
standards” as those under the Lanham Act.  Disney, 

322 F. Supp. 3d at 430

. 
      The only thing remotely close to a “false designation” is the legalese buried inside several 
games’ user guides.  For the reasons discussed above in the Polaroid analysis, Plaintiff has not 

reasonably shown that these statements are “likely to cause consumers [to have] ‘confusion as to 

the origin or sponsorship of defendant’s goods.’”  Pulse Creations, 154 F. Supp. at 56 (quoting 
Victorinox,  

114 F. Supp. 3d at 139

).  Defendants’ motion for summary judgement on Plaintiff's 
federal and New York false designation of origin claims therefore is granted. 
   E.  Federal False Advertising Claim. 
      “To prevail on a Lanham Act false advertising claim, a plaintiff must establish that the 

challenged message is (1) either literally or impliedly false, (2) material, (3) placed in interstate 

commerce, and (4) the cause of actual or likely injury to the plaintiff.”  Church & Dwight Co., Inc. 

y. SPD Swiss Precision Diagnostics, GmBH, 

843 F.3d 48, 65

 (2d Cir. 2016) (citation ommitted). 

“Under a ‘literal falsity’ theory, a plaintiff must show that the challenged advertisement is ‘false 
on its face’ or ‘explicitly false.”  Merck Eprova AG v. Brookstone Pharms., LLC, 

920 F. Supp. 2d 404, 417

 (S.D.N.Y. 2013) (quoting Johnson & Johnson Vision Care, Inc. vy.  Ciba Vision Corp., 
348 F, Supp. 2d 165, 178 (S.D.N.Y. 2004)),  “That is, the message must be unambiguous.”      
(citing Time Warner Cable, Inc. v. DIRECTV, Inc., 

497 F.3d 144, 158

 (2d Cir. 2007)). 
     None of the advertisements complained of by Plaintiffs, (see Compl. 4] 47-53), contain a 
literally or impliedly false statement, nor has Plaintiff provided any evidence that it has suffered a 
corresponding “actual or likely injury.”  Church & Dwight Co., 

843 F.3d at 65

 (citing Gnosis, 760 
    at 25556).  As such, Defendants’ motion for summary judgment on Plaintiffs federal false 
advertising claim is granted. 
  F.  New York False Advertising Claim. 
     A plaintiff mounting a false advertising claim under New York law “must show: (1) that 
the defendant’s conduct is consumer-oriented; (2) that the defendant is engaged in a deceptive act 
or practice;  and (3)  that the plaintiff was injured by this practice.”  Blockchain Lux.  S.A.  v. 
Paymium,  SAS, No.  18 Civ. 8612 (GBD), 

2019 WL 4199902

, at *11  (S.D.N.Y. Aug. 7, 2019) 
(quoting Heskiaoffv. Sling Media, Inc., 

119 F. App’x 28

, 31 (2d Cir. 2017)). 
     Plaintiff has not provided any admissible evidence that (1) Defendants’ actions or practices 
were deceptive or (2) Plaintiff suffered any actual injury as a result of a Defendants’  actions. 
Accordingly, Defendants’ motion for summary judgment on Plaintiffs New York false advertising 
claim is granted. 
  G.  Federal and New York Trademark Dilution Claims, 
     Federal  trademark  dilution  claims  require  showing  that “(1)  the mark  is  famous;  (2) 
defendant’s use of the mark is made in commerce; (3) the defendant used the mark after the mark 

                                     25 

is famous; and (4) the defendant’s use of the mark is likely to dilute the quality of the mark by 
blurring or tarnishment.”  DigitALB, Sh.a v. Setplex, LLC, 

284 F. Supp. 3d 547, 557

 (S.D.N.Y. 
2018) (citation omitted),  Importantly, the “risk [of] some dilution of the identifying or selling 
power of the mark . . , is generally tolerated in the interest of maintaining broad opportunities for 
expression.”  Deere & Co. v. MTD Prods., Inc., 

41 F.3d 39, 44

 (2d Cir. 1994) (citing Rogers, 

875 F.2d at 1000

); see also United We Stand Am., Inc. v. United We Stand Am. N.Y., Inc., 

128 F.3d 86

, 
91 (2d Cir. 1997) (“[E]ven if plaintiff suffered some trademark dilution, defendants’ right under 
the First Amendment to use plaintiff's mark to communicate the message might prevail over 
plaintiff's rights under the trademark law to avoid all dilution.”) (citing Rogers, 875 F,2d at 999 
and Yankee Publ’g, 

809 F. Supp, at 275-76

). 
     The legal standard for New York trademark dilution claims is “essentially the same” as 
that applied to federal trademark dilution claims.  Twentieth Century Fox F iim Corp. v. Marvel 
Enters., Inc., 

220 F. Supp. 2d 289, 297

 (S.D.N.Y. 2002).  As discussed with respect to the Polaroid 
factor of the quality of Defendants’ product, see Part HI(A)(2)(g), supra, Plaintiff has failed to 
show that the presence of Humvees in the Call of Duty games will tarnish or blur Plaintiff and 
Defendants’ trademarks,  To the extent that any dilution might occur, it must be “tolerated in the 
interest of maintaining broad opportunities for expression.”  Deere & Co., 

41 F.3d at 44

 (citing 
Rogers, 

875 F.2d at 1000

).  In view of the above application of the Rogers framework, Defendants’ 
motion for summary judgment on Plaintiffs federal and New York trademark dilution claims is 
granted. 
IV.    PLAINTIFF’S PARTIAL MOTION FOR SUMMARY JUDGMENT IS DENIED 
      “Laches is an equitable defense available to a defendant who can show ‘that the plaintiff 
has inexcusably slept on [its] rights so as to make a decree against the defendant unfair,’ and that 

the defendant ‘has been prejudiced by ‘the plaintiffs unreasonable delay in bringing the action.”” 
Zuckerman y. Metro. Museum of Art, 

928 F.3d 186, 190

 (2d Cir, 2019) (modification in original) 
(quoting Merrill Lynch Inv. Managers v. Optibase Lid., 337 ¥.3d 125, 132 @d Cir. 2003)).  The 
laches determination is a “factual question that requires the court to weigh the equities of each 
case.”  Leopard Marine & Trading, Ltd. v. Easy St., Ltd., 

896 F.3d 174, 194-95

 (2d Cir. 2018) 
(citation omitted).  Ifa plaintiff has no remaining claims against a defendant, the court need not 
reach the issue of whether laches applies.  See  Valentine v. Metro,  Life Co., No. 85 Civ, 3006 
(CSH), 

2005 WL 1278524

, at *3 n.2 (S.D.N.Y. May 31, 2005). 
     Because Plaintiff has no remaining claims against Defendants, this Court need not reach 
the issue of whether laches applies,  See 

id.

 at *3 n.2.  Accordingly, Plaintiff's motion for partial 
summary judgment is denied. 
                            Vy.    CONCLUSION 
     Defendants’ motion for summary judgment, (ECF No.  131), is GRANTED..  Plaintiff's 
motion for partial summary judgment, (ECF No. 138), is DENIED.  Defendants’ motions to strike, 
(ECF Nos. 162 and 193), are DENIED, except GRANTED in part to strike those documents which 

were not produced during discovery. 
      The Clerk of Court is directed to close the motions accordingly. 

Dated: New York, New York 
      March 31, 2020 
                                            SO_ORDERED, 
                                            fi ae   B   Dane 
                                            JEpR  #3}. DANIELS 
                                               ted States District Judge 

 Case 1:17-cv-08644-GBD-JLC  Document 1  Filed 11/07/17  Page 6 of 54 

Do         a          ee        ee 
Sceiae hata   oer   Oc   cae Cent Site yn □□□      □□    □    eet 
ee     ep       eae ee 
 we             Te  2     agmeniy                anSoned ia   iat 
THNSENAS EOE = aaa ee a perro eee ares Fe        melee Se       Shed 
se Seep cgid            RP ee   EE   ee | eo ca 
OSES oe       I  a ec Ne   i  eed 
ae  eee ne ee      Ener   ce oo ESS ae eee ged 
CEE Bae    cer RE   ESOC ee ements      ieee a. See ce to ser  eR AR 
1G a  ance er      aE cnc   Om  te ee eee     
copes     el    ree  ct   eee  ea                    
a           Pete    rt       a      a □□□ 
Rae         ee   FF neg ener  Se eam       ;   ee Es   ao 
inka  te        Ba aa cae   ac  CT       Pee  ne  ee 
Se             ee 
iS   oa aa  A   mn eR   Sea RE   a eee  ee  ae   tO cea tree ee ee 
FET OP  abe Papi cs Ae ag te rc  amas em acta gag  ema  □□□ ol   ER a 
    reas a  ae  ee ee      ee Soe ee      
BE yet eat age me pM LE        2   RR   ag CaaS age  □□   a ch! 
OR ae  een ice ea BR Ba gt ome Me ea gegen Nh  Stas gw     sn eM    ry ag 
                        Figure 2 
 Se   eae  a  □□ ee Sucker  ee oi athe  REE   or a ec mee   ee | 
eR ee me □□□ mo are      CE OR  aa   COUT  PAE area   tere ee ee 
    ete cee  □□            ie ner   eC Sn ie  □□□ aceasta ec    Rc 
Sc ee ee □□ Ue   ee ee CELTS  ee      
Bee ee erent  aie     ES   ee a  ee mas ore  ae nena 
ee   ee       ee           ee 
Se   ee en   carter, |e  De a 
Ree eM rer eee ies i  a ete ert Se   i le   St Oa  ae ee ee 
    es PT as Pe          ea  ee SPE oe   earn ee ae ne OTE 
Lea  eacngetet  a pee    ey 4 a epi   ae En er       arse 
Renee et  ed er □□ os eee  Opt ee ey eee  ie  ee ee ne      et 
Pan  se    ee   ena ee ee Aue  a eee  ed 

FE gees ce eee ates MOM EM ee   ge ae ne ce  re greet 
Ese ie ees   oe  ee  ae     a 25 ME, [ie aes   ee 
Eee  Cet  ey   eee Sf i  ER  AG ie  ce ee  ee  ee en 
pect   ee re cae       cs    [2  nT  goes oN   7     ae ia racks metietint inte ene   meat 
ESS Sc              □□     Figen    □□ ete ere ER  Ae  □□  eS 
Feces  uae ee  Ue meet ee    een     Or De  cree cocee tent 
Sa eg  ce ae a cr   pee □□   er      SS eg en ed ie  ee ec Oe Nan 
a eae  En  mea    ee er Trcic a apr ee mec rer te ae □□ nce □□□     ere carer erat ony cen nami     □□□ □□□ 
be ee ee 
BAe caret ea area ae a    Co □□□ ee Mere   Ye aoe eee ee ee omen etree     ses cei a   mea   atin agi erred 
                        Figure 3 

  Case 1:17-cv-08644-GBD-JLC  Document1  Filed 11/07/17  Page 14 of 54 

Tiree starsbo ae    ane Wega a  Ca olga RIM eae a ice □□ ae UE GEE    EN CU  Sn a 
ESS SRS AS i rece Ra ea iter Stee errs a eae MEE TS ES    ES  EE Re  De cS ee eae aed 
BeOS  ee                   SE   ee 
See  en IER An 0 eager tthe ee        Sete evn gin acids ce TET pen 
Iga  □□  eae cee eS  Se  □□ AES ECE   Seer ne a a  GCI ec 
He  fe ee Rag SE ene ca ci eh ig Pate tetas sa ote ete ee iC eae et  cee ee    ee 
  2 ee □□□ Ce  ee  ne ee ee ee Le ee eee   4 
pase   ee    ee  ee            ee    eee 
Ee                     ee     ee 
ge    Ge   ee   ee     ke poy tee     Rennes oa ee 
Fi              ee     Lr 
Ba ER  □  eager   ae  eee  ER ee □□ 
Bee ee Co ae  wn Se lg RR   SC  ee  ae a RR     RM  eT ARV 
   Rates A    oN  le cee  i  EO a   Oe i Me ve eam A  Reape ae aie, eee 
ee eS See etc a       eR 
ee ee ee 
eR carpe ree ce cc yo     en       ce es 
Pr re ay ene ae ooo                oe eee   ee eee 
Pe one RRR   ct eine ne    ce         =e      ee ee   ee 
Ee 
gee ae    are  RC Oe Ue Rant © ca on Oot OR ON  RRR   me Mee me   in ARCO 
et         eee  ee          ee ee 
□□□ cin ene   eae Re   aeRO apne Re aera eR ec  Btn a □□□   ae    5  ocean 
Be    eee  eer  ee eR    eee       er 
□ eee eect onan   eee ee  Sh   eee eee ee eee  eee  er 
 Bg   ee Dr   ee         ee                  

                         Figure 6 
  eR   ce 2   nn tee eee Bry peices Weer news oe ones   □□   es 
  ME   ee Re er  ee eee ee  A   ee    ee 
   a  Beer en  Meer aa  eee Ce  ane Perce eee ee    ee ened 
   pee    Ceca    vn □□□   Sere   eee      ne ee 
  er  ce □□ oe See  tk eR    ae   ee     ee 
   eee   en   SMSO  Sm  pec tt a      ee ee a     Rc 
  □□□    as Ne  re eroyremmeomrireneee ee Tecan at Re ke eee ae Se a     ere   ema  ce a cea 
  le       —C“= 
  □□ ae ae  ery rn ey |      ON Pca San     ie eo, me Re  Nt 
  Sets eg Mm repre er ee ee re nen  RE SN    Te ee  peg  ee pr ee   ee 

  OC 
  Re ieee  ge  ee eee  ee   ac   eS a 
  Sees eee ee ee   Cee Coen  eae ame ROM   Monee once    ee 
  ies    ice  ee ea  ee      aa  Ne 
  □□ Cg ee □□  □□     eee UN     en.       ad Cn  eM CCG         nine 
  e—“( eC     Lr 
  ee ee re ee a  me   □□ Eel ee  ee  eee 
  Poe oteec     megane aren en ar ea a  ee et Ca eM  Mae eR:  RR  Me    RR  Le  cote nee 
  ee    ee ee   ee ee    me ee 
  ee      go ra i    eee     eS aN a 
  teen  ee ce      Te 
            ec  re     eer oie □□□ ea     i    eee   ea  □□    Foie] 
  Red  Bee aes Re □□ □□□ EG a    a)      cone  gos) 
                         Figure 7