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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

 


AM GENERAL LLC,

Plaintiff,

MEMORANDUM DECISION
?against- AND ORDER

ACTIVISION BLIZZARD, INC., ACTIVISION 17 Civ. 8644 (GBD)
PUBLISHING, IN C., and MAJOR LEAGUE GAMING 
CORR, 

Defendants.


GEORGE B. DANIELS, United States District Judge:

Plaintiff AM General LLC brings this action against Defendants Activision
Blizzard, Inc. and Activision Publishing, Inc. (collectively, ?Activision?) and Major League
Gaming Corp. 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, 82447.) 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. (Id. 148431.)

On May 31, 2019, Defendants moved for summary judgment on all of claims
pursuant to Federal Rule of Civil Procedure 56. (Defs. Activision and 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). (Pl. Notice
of Mot. for Partial Summ. ., ECF No. 138.) Subsequently, Defendants filed a motion to strike (1)
certain portions of Plaintiff? Rule 56.1 statement of material facts and (2) the ?experiment?
contained in the rebuttal report of Plaintiff? expert, Dr. Yoran Wind (See Mem. of

Law of Defs. Activision and in Supp. of Their Mot. to Strike Pl. Local Rule 56.1

 

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Statement and Wind Rebuttal Report, ECF No. 163.) Shortly thereafter, Defendants ?led 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 Plaintiff?s
expert, Dr. Wind, and (3) documents submitted by Plaintiff in opposition to Defendants? motion
for summary judgment (See Mem. of Law in Supp. of Defs. Activision and 
Mot. to Strike, ECF No. 194.)

Defendants? motion for summary judgment is GRANTED. Plaintiff?s 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.1

1. FACTUAL BACKGROUND
A. The Parties.

In 1983, the US. Department of Defense ?rst awarded AMG a contract to build the High
Mobility Multipurpose Wheeled Vehicle. (Pl. Response to Defs. Activision and 
Statement of Undisputed Facts and Counterstatement of Additional Facts Counter 
ECF No. 175, 20.) Since then, the vehiclewknown colloquially as the ?Humvee?mhas been

?the backbone of US. defense tactical vehicle ?eets around the world? and ?an essential part of

 

For reasons stated in Part infra, Defendants? motion to strike portions concerning a letter sent
by the Beanstalk Group to Activision 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 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 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. Mem. of Law in Opp?n to Defs.? Second Mot. to Strike, ECF No. 206, at 7.)

 

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US. military operations.? (Defs. Activision and Mem. of Law in Support of Mot. for
Summ. J. (?Defs.? ECF No. 139, at 6 (quoting P1. Statement of Undisputed
Material Facts in Support of P1. Mot. for Partial Summ. ., ECF No. 143, 1l23).) From
Panama to Somalia, and to this day in Iraq and Afghanistan, the Humvee has become an iconic
and a ubiquitous symbol of the modern American military. (Defs.? Mem. at 6; P1. Mem.
of Law in Opp?n to Mot. for Summ. J. (?Pl?s ECF No. 171, at 3.) AMG continues to
produce Humvees for the US. 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. 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 I'lumvees. (Id. at 8.)

Call ofDuty 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? ECF No. 158, ?l 2.) Indeed, the
Call of Duty franchise?which is a ?rst-person shooter series developed, produced, and distributed
by Activision?uis characterized by its realism, cinematic set?pieces, and fast-paced multiplayer
mode. (Id. 111] 7?10; Comp]. 3?4; Defs.? Mem. at 45.) While various consumers play Call of

Duty from the comfort of their own homes, both through single?player campaigns and in online

 

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multiplayer mode, others compete in tournaments hosted by organizations, such as MLG. (Id. at 3;
Defs.? 56.11[ 89.)
B. Alleged Infringing Conduct: Humvees and Call of Duty.
Humvees are depicted in nine Call of Duty games for varying durations. Mem. at 
Defs.? Mem. at 9?10.) In particular, whereas sometimes they appear brie?y 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 1111 56w62.) Further, at times, the player can
even ?assum[e] control of the [Humvee],? including by ?ring a turret-mounted machine gun. (Plfs
Counter 56.1 1  3.) In certain instances, the player cannot progress to the next level without
interacting with the Humvee. Counter 56.1 11 56.) Humvees are also shown in several trailers
for the games and in Call strategy guides. (Defs.? Mom. at 10w11.) Defendants
also licensed a toy company to manufacture Call of Duty?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. 54*55.) Plaintiff asserts that Defendants did not receive
authorization from AMG for such uses. (Id. 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 Deck?), BX. 118 (Call ofDury 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 of Duty: Modern Warfare 3, and
Call of Duty: Black Ops 11. (See Struble Decl., BX. 119 (Cal! of Dun?: Modern Warfare 2), ECF
No. 141?1 1, at Struble Decl., EX. 120 (Call ofDuly Modern Warfare 3), ECF No.
141?12, at Struble Decl., BX. 117 (Cal! ofDm?y: Black Ops H), ECF No. 141.93 at
AMG0075777.)

C. Plaintiff?s Letters.

In 1998, the Beanstalk Groupwa third-party that served at the time as a licensing agent for
AMGw?sent a letter2 to Activision regarding the video game Sin, which is unaf?liated with the
Call ofDmy franchise (the ?1998 letter?). (Pl.?s Counter 56.1 11?? 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. 54.) AMG cites the 1998 letter for the proposition
that Activision ?agreed to remove [Humvee] vehicles from the Video game Sin.? (Id. 55.)

On or about June 20, 2016, counsel for Global Icons, outside licensing agency
contracted by AMGm?sent a cease-and-desist letter to Defendants objecting to the appearances of
Humvees in Call of Duty games and toys. (Compl. 78?79.) Shortly thereafter, on November
4, 2016, Defendants released Call ofDuty: Modern Warfare Remastered, which included scenes
with Humvees. (Pl.?s Counter 56.1 5.) Subsequently, AMG initiated this action on November
7, 2017. (See Compl.)

II. LEGAL STANDARDS
Summary judgment is appropriate when there is no genuine issue of material fact and the

moving party is entitled to judgment 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 Acti?vision, is under seal with this Court. (See Struble Decl., 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
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.? Id. (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, 310 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 Coidarola v. Calabrese, 298 F.3d 156, 160 (2d Cir. 2002) (explaining that
the nonmoving party ?must come forward with speci?c 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,? ay'itsu Ltd. v. Fed. Express Corp. 247 F.3d 423, 428 (2d Cir. 2001)
(quoting Scotto v. Aimenas, 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 irst
Not?l Bank ofAriz. v. Cities Serv. Co, 391 U.S. 253, 289?90 (1968). In this regard, ?[t]he ?Inere
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 F.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

 

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of witnesses, or resolve issues of fact.? Victory v. Parakr', 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.
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 v. Grimaldz', 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.? Clz?? Notes v. Bantam Doubleday Dell Pub] ?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.? Id. at
998. See Louis Vuitton Malletier SA. v. Warner Bros. Em?m 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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9

contested ?lm?s title?~? ?Ginger and Fred? ?possessed artistic relevance because ?the central
characters in the ?lm [we]re named ?Ginger? and ?Fred,? and these names . . . ha[d] genuine
relevance to the ?lm?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 ?nding of likelihood of confusion must be particularly compelling to outweigh the
First Amendment interest recognized in Rogers.? Twin Peaks Prods, Inc. v. Pabl ?ns Int?l, Ltd,
996 F.2d 1366, 1379 (2d Cir. 1993). Such evaluation of misleadingness ?must be made, in the
?rst 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 test for consumer confusion set forth in Polaroid [12. Polarad Elecs. Corp. 287
F.2d 492, 495 (2d Cir. Notably, ?the ?nding 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 ClifNotes v. 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 casesmnamely, Louis Vuitton and Simon Sebaster?illustrates
how courts employ the Rogers framework to weigh trademark concerns against First Amendment

interests. In Louis Vuitton, a character in the defendant?s ?lm, The Hangover: Part II, humorously

mispronounced his knockoff Louis Vuitton bag as a ?Lewis Vuitton.? Louis Vuitton, 868 F. Supp.

 

 

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2d at 17445. The plaintiff filed an action, claiming that the defendant had ?af?rmatively
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 ?aunting 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 [f]i1rn.? Id. at 178. And even if there were some confusion as to
whether this scene ?iinpl[ied] that [the plaintiff] approved the use of the [knockoff] bag in the
[?ilrn,? the court held that ?the public?s interest in avoiding consumer confusion . . . [wa]s not so
great as to overcome the signi?cant threats to free expression from holding [the defendant] liable
for its noncommercial speech in this case.? Id. at 183. Thus, the court rejected the plaintiff?s
trademark claim. Id.

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. Sci/luster, 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. Id. at 282. The court found that at least five of the eight Polaroid factors favored
the plaintiff. Id. at 2974 00. Subsequently, the court held that the defendant had ?re?exively
invoked the First Amendment without offering a persuasive explanation of why free speech
interests are seriously threatened by Lanham Act liability in this case.? Id. at 300. The court
explained that ?[u]nlike 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

 

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[the defendant] deliberately gave its children?s story books confusingly similar titles in a blatant
and ill?conceived effort to pi ggy-back on the goodwill associated with [the plaintiff?s] best-selling
title.? Id. at 300?01 (quoting Rogers, 875 F.2d at 1001).

It can be inferred from Louis Vuitton and Simon Sehusz?er 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 trademark owner?s goodwill for pro?t. M. An ?integral element? does not
have to be a ?but-for? aspect of the work. It was metaphysicaliy possible for Defendants to have
produced video games without the presence of Humvees, just as it was technically possible for the
?lm in Rogers to have had a different title or for the ?lm in Louis Vuitton. to have deleted the scene
with the knockoff bag. Cf. Matsashita Elec. Indus. Co, LTD v. 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
?communicate[s] ideas?end 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 Merchs. ASS 
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 First 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
?gaudiness and banality of contemporary television,? it was ?an integral element of the ?lm and

the ?lm-maker?s artistic expressions?).

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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 Praagl?z
v. Gratton, 993 F. Supp. 3d 293, 302 (E.D.N.Y. 2014) (citing Allied Interstate LLC v. Kimmel cf:
Silverman P. C., No. 12 Civ. 4204 (LTS) (SN), 2013 WL 4245987, at *5 (S.D.N.Y. Aug. 12,
2013)); AlliedMaz'nt. Corp. v. Allied Mech. Trades, Inc, 369 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 battle?elds.?
Novalogz'c, Inc. v. Activisz'on Blizzard, 41 F. Supp. 3d 885, 890 (CD. Cal. 2013). The reasoning
articulated by the court in Novalogt'c is highly persuasive in this regard. Speci?cally, the court
applied the Rogers framework to a motion for summary judgment in a dispute over contested uses
in a Call ofDaty game. See id. at 898-99. Upon reviewing a copy of the Call of Duty game, the
court explained that the uses of the plaintiff 3 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.? Id. at 900; see also Mil?Spec Monkey, Inc. v. Activision Blizzard, Inc. 74 F. Supp.
3d 1134, 1136 (N .D. 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 ofDaty

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games possesses an artistic value that is at least ?above zero.? Communieo, Ltd. v. Decision Wise,
Inc, No. 14 Civ. 1887 (RNC), 2018 WL 1525711, at *8 (D. Conn. Mar. 28, 2018)
2. Polaroid actors

Proceeding to the second prong of the Rogers test, Defendants? uses of Humvees in the
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 Lanharn 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
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
Polaroid factors? must be applied. Twin. 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 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 3 Mark

The first Polaroid factor is ?the strength of [the plaintiff 5] 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 12. Ret. Living
Publ ?g (30., 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 of Cheatham, Inc, 946 F. Supp. 2d 324, 333 (S.D.N.Y. 2013) (citing Streetwise Maps,
Inc. v. 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 in Further Supp. of Mot. for Summ. J. (?Defs? Reply ECF No.
195, at 9.) Accordingly, the ?rst Polaroid factor weighs in Plaintiff 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. 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. (P1.?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? 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. ?l 14 
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

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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 Inc. v. Brennan ?3 Rest, LL. C., 360 F.3d 125,
134 (2d Cir. 2004). Here, the products are far from proximate. Speci?cally, 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 582.

In an attempt to salvage this factor in its favor, Plaintiff asserts that is also in the
business of licensing?out the rights to depict [Humvees] in video games and toys.? 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, 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.? Id. (See Compl. ll 14 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 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 the junior user? market in the future, or that consumers will perceive the senior user as likely
to do so.? Star Indus, Inc. v. Bacardi (it, Co. Ltd. 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 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 ?fth Polaroid factor is ?actual confusion.? Polaroid, 287 F.2d at 495. Courts
?consider the evidence that consumers 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 survey3 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 ofDuty.? (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 McCullock, 61 F.3d at 1044.

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Less than 20 percent confusion regarding two companies? ?association? (Plfs 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 Vuition, 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 
?nding 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 weighs in Plaintiff?s 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 ?[b]ad 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 Nemiorks, Inc. v. Broadcast. Corn, Inc., No. 98 Civ. 4799 (RPP), 1999 WL 124455, at *5
(S.D.N.Y. Mar. 8, 1999), 201 F.3d 432 (2d Cir. 1999) 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

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inference where there is evidence to the contrary.? Starbucks Corp. v. Wolfe ?s Borough Coffee,
Inc, 588 F.3d 97, 118 (2d Cir. 2009) (citation omrnited). Finally, ?[t]he fact that, prior to the
commencement 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. (Pl.?s Mem.
at 24 (citing Pl. Mem. of Law in Supp. of Mot. for Partial Summ. J. Partial Summ.
J. ECF No. 142, at However, where the 1998 letter would be inadmissible at
trial, this Court need not consider it at summary judgment.4 See ?rst Not 7 Bank ofAriz. 391 US.
at 289?90; Jackson v. Fed. Exp, 766 F.3d 189, 194 (2d Cir. 2014); Paeenza 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,? (P1.?s Mem. at 24 (citing Pl.?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 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 1P. (Id. 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. Since there is no indication that Defendants responded to Plaintiff?s 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. Haie, 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 HeZlenic Lines Ltd. v. GulfOiZ 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 potentiai
liability such that it would have been ?natural under the circumstances [for Defendants] to object? to any
potential mischaracterizations in the letter. Hale, 422 US. 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. 11 79). The latter
would have alerted Defendants to seek legai advice in a way that the former would not have.

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circumstantial evidence, even if afforded the bene?t of all reasonable inferences in Plaintiff?s
favor, Niagara Mohawk, 315 .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 guidewa paragraph which does not allude to, let alone
mention, Humvees at allmdoes not ?tell consumers? much of anything. Indeed, such back-end
boilerplate provides no basis for ?confusion between the two companies? products.? Id. (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. ?If the quality of a junior user?s product 01' service is low compared to the senior user, ?there
is an increased chance of actual injury when there is confusion.? Flashing Bank v. 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. Id. 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 Schatte Bagclosares 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 Humveesm?that is, some

50 militaries from around the world, including the U.S. Armed Forces?are not buying Call of

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Duty games, and vice versa. (Compl. 15m16.) 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 brie?y and
intermittently shown, does not indicate that the brand sponsored the movie.? Louis Vuitton, 868
F. Supp. 2d at 184 n.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 mislea[d] 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 presenF?Plaintiff nonetheless has failed to present suf?cient 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 Sehusz?er, 970 F. Supp. at 300e01 (quoting Rogers, 875 F.2d at 1001).
Defendants have offered a persuasive explanation: the uses of Humvees in the Call ofDuty 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.? Counter 56.1 1[ 19 (some emphasis deleted).) Both parties also agree that

US. and foreign militaries use Humvees in operations around the world. (Id. 23?26.) 1f realism

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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. Ent?m ?t Merchs. Ass ?71, 564 US. 786, 790 (2011) (emphasis added). Further,
assuming arguendo that realism is the only artistic interest that Call games possess?man
assumption potentially belied by the presence of narrative campaign modes in all of the challenged
gamesw-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 I 14?49), Defendants have satisfied their initial burden of
production under Federal Rule of Civil Procedure 56. The evidence submitted ?negates an
essential element of [Plaintiff 5] claim,? Nick ?5 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 Plaintiff?s 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 (is Schuster, 970 F. Supp. at

301 (quoting Rogers, 875 F.2d at 1001).

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In response, Plaintiff offers ?conclusory allegations,? th'itsu, 247 F.3d at 428,
?unsubstantiated speculation,? id. and ?[t]he mere existence of a scintilla of evidence.? Anderson,
477 US. 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.? (Pl.?s Counter 56.1
14, 16.) However, merely insinuating that a commercial motivation might exist is not enough??
an artist can sell her art without the First Amendment abandoning her. See ity of Lakewood v.
Plain Dealer Publ?g Ca, 486 US. 750, 755?56 n.5 (1988) 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 Sci/luster, 970 F. Supp. at 300 (?nding 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 US. 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.

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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 the claimed trade dress is non-functionali (2) the claimed trade dress
has secondary meaning; and (3) there is a likelihood of confusion between the plaintiff?s 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 F.
App?x 389, 391 (2d Cir. 2003)). Courts determine likelihood of confusion by applying the
Polaroid factors. See, e. 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.
v. 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 is 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
machinew?this Court grants Defendants? motion for summary judgment on Plaintiff?s federal and

New York trade dress claims.

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C. Federal and New York Unfair Competition Claims.

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.? Int?l 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 that [the plaintiff] has a valid mark that is entitled to protection under the [Lanham]
Act and (2) that [the 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 ?Oreal USA, Inc. 1). 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, USA, 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.? =Holdings B. V. 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 re?ected 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

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bad faith. See =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 ?atternpt[ed] to sell its product with a false designation that suggests
the product originated from the plaintiff.? Pque Creations, Inc. v. Vesiure Group, Inc, 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. FSys., 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 Poiaroid 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.? Pnise Creations, 154 F. Supp. at 56 (quoting
Victorinox, 114 F. Supp. 3d at 139). Defendants? motion for summary judgment 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 plaintif Church Dwight Co, Inc.

v. SPD Swiss Precision Diagnostics, 843 F.3d 48, 65 (2d Cir. 2016) (citation ommitted).

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?[U]nder a ?1iteral falsity? theory, a plaintiff must show that the challenged advertisement is ?false
on its face? or ?explicitly false?? Merck Eprova AG v. Brooksione Pharms., LLC, 920 F. Supp. 2d
404, 417 (S.D.N.Y. 2013) (quoting Johnson Johnson Vision Care, Inc. v. Ciba Vision Corp,
348 F. Supp. 2d 165, 178 (S.D.N.Y. 2004)). ?That is, the message must be unambiguous.? Id.
(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. 47?53), contain a
I literally or impliedly false statement, nor has Plaintiff provided any evidence that it has suffered a
corresponding ?actual or likely injury.? Church Dwight 843 F.3d at 65 (citing Gnosis, 760
F.3d at 255?56). As such, Defendants? motion for summary judgment on Plaintiff? 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 Lax. SA. v.
Paymium, SAS, No. 18 Civ. 8612 (GBD), 2019 WL 4199902, at *11 (S.D.N.Y. Aug. 7, 2019)
(quoting Heskiao?v. 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 Plaintiff New York false advertising
claim is granted.

G. Federal and New York Trademark Dilution Claims.
Federal trademark dilution claims require showing that the mark is famous; (2)

defendant?s use of the mark is made in commerce; (3) the defendant used the mark after the mark

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is famous; and (4) the defendant?s use of the mark is likely to dilute the quality of the mark by
blurring or tarnishment.? Digit/1L8, Sha v. Setptex, 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. MT Prods, Inc, 41 .3d 39, 44 (2d Cir. 1994) (citing Rogers, 875
F.2d at 1000); see also United We Stand/1m, Inc. v. United We StandAm. N.Y., Inc, 128 F.3d 86,
91 (2d Cir. 1997) 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 Pub! 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 Corp. v. Marvet
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 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 Plaintiff?s federal and New York trademark dilution claims is
granted.

IV. 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

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the defendant ?has been prejudiced by 'the plaintiff?s unreasonable delay in bringing the action.?
Zackerman v. Metro. Museum ofArt, 928 F.3d 186, 190 (2d Cir. 2019) (modi?cation in original)
(quoting Mei-rid Inv. Managers 12. Optibase Ltd, 337 F.3d 125, 132 (2d 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). If a plaintiff has no remaining claims against a defendant, the court need not
reach the issue of whether laches applies. See Valentine v. Metro. Life Ca, 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 11.2. Accordingly, Plaintiff?s motion for partial
summary judgment is denied.

V. 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.

  
   

em


ted States District Judge

 

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