Using third party brands in video games: issues and opportunities

By Miriam Stiel
Competition, Consumer & Regulatory Cyber Data & Privacy Disputes & Investigations Healthcare Intellectual Property Patents & Trade Marks

In brief

One of the emerging battlegrounds for brand owners is video games, particularly with the growth of virtual reality applications. A recent claim made in the US illustrates how having your brand featured in a video game can be a problem - but depending on the circumstances, it could also present a commercial opportunity. Associate Kaelah Ford reports.

Claim against Call of Duty

Vehicle manufacturers AM General, LLC recently made a claim against Activision Blizzard, Inc., Activision Publishing, Inc., and Major League Gaming Corp, the creators of the Call of Duty video game, over the use of Humvees in their games. For the uninitiated, Call of Duty is a first-person shooter video game franchise that has sold over 250 million copies worldwide. Humvees are military vehicles used primarily by the US army. AM General claims that by featuring the Humvee 'trade dress' (ie the visual appearance of the vehicles) and trade marks (HUMVEE and HMMWV) in their games, the creators of Call of Duty have deceived consumers into believing that AM General approves, licenses or sponsors the games.

Causes of action under Australian law

There is a number of different claims a brand owner might be able to make under Australian law in relation to the alleged unauthorised use of their IP in a video game.

Misleading or deceptive conduct

AM General's claim under the US Lanham Act is similar to a claim under s 29 of the Australian Consumer Law, which provides that a person must not make false or misleading representations that goods or services have a particular sponsorship or approval. AM General could also make a claim under s 18 which is the general prohibition against misleading or deceptive conduct. The success of such a claim would likely depend on the prominence of the featured product in the game. By way of illustration, if a can of Dr Pepper is in the background of a film scene, a consumer may not notice it, but if the main character is depicted drinking Dr Pepper, that may suggest to consumers that there is a commercial relationship between Dr Pepper and the film.

Trade mark infringement

To prove infringement, a brand owner would need to show that the relevant trade mark was being used as a trade mark (ie as a badge of origin) to indicate a connection in the course of trade between the goods (the video game) and the person who applied the marks to the goods (the creators). Any use of HUMVEE in Call of Duty would not seem to be use "as a trade mark", as it merely reflects the kind of vehicle that the character is driving.

Copyright infringement

If AM General had (for example) a stylised logo for HUMVEE in which it owned copyright, it could potentially make out a claim for copyright infringement.

If you can't beat them, join them?

Of course, the use of IP in video games can also be seen as an opportunity for brand owners. Product placement in films is widespread and offers benefits both to brand owners (who get their products out to a large audience) and film producers (who receive financial support for the film). The practice has made its way into video games, for example, skateboarding brands were featured heavily in the Tony Hawk series. AM General has in fact licensed its IP to a video game - it just wasn't Call of Duty.

With the increasing level of interaction consumers can have with video games, brand owners should consider whether or not they are open to opportunities to license their IP for these purposes. Similarly, content creators should be mindful of the potential need to obtain consent to feature products in their virtual worlds, particularly where the public might be led to believe that a brand owner has some association with the game.