An ongoing dispute between Saber Interactive and Oovee Ltd. is  the latest involving real-world vehicles in games.  On October 6, 2022, the Western District of Washington issued an order dismissing Saber’s Lanham Act, Washington Consumer Protection Act (“WCPA”) and unjust enrichment claims without prejudice, but granting Saber’s motion for leave to file an amended complaint.

The case began on September 2, 2021, when Saber filed suit against Oovee in a Washington federal court for false designation of origin under the Lanham Act, violation of the WCPA, and unjust enrichment under Washington state law. Saber claims that the depiction of a tractor in Oovee’s game is an unauthorized use of the trademarks and trade dress of a tractor manufacturer.  

Why would Saber sue for infringement of another company’s trademarks? Saber alleges it is the holder of an exclusive license to depict the K-700 tractor in video games that it signed with the tractor manufacturer, a Russian company known for its Kirovets brand of tractors. Saber uses the K-700 design in its truck simulator game, Mudrunner, under such an exclusive license dated December 29, 2020. Previously in November 2015, Oovee updated its own truck simulator game, Spintires, to include the K-700 tractor and used the tractor in its marketing for the game. Around the end of 2020, Steam removed Spintires due to Oovee’s allegedly unauthorized use of the exclusively-licensed IP, leading to the ongoing lawsuit between the developers today.

In response to Saber’s claims to enforce its exclusive license of the Kirovets trademarks and trade dress, Oovee argued that the First Amendment bars Saber’s claims. Saber countered that its claims are not barred by the First Amendment because Oovee’s Spintires is not an “expressive work” under the law, and even if it is considered an expressive work, Oovee’s use of the K-700 marks is misleading as to Saber’s endorsement of Oovee’s game.

The court applied the Rogers test, from the Second Circuit case Rogers v. Grimaldi, which requires a defendant to meet a low bar legal showing that the allegedly infringing use is part of an expressive work. If the defendant meets this threshold, the plaintiff must show that 1) the use of the trademark is “not artistically relevant” to the expressive work, or 2) the use of the trademark “explicitly misleads” consumers as to the source of the work.

First, the court determined that Ooovee made a sufficient legal showing that Spintires is an expressive work. The court cites supporting precedent, including Brown v. Entertainment Merchants in which the Supreme Court held that video games qualify for First Amendment protection as expressive works. Here, the court notes that in Spintires the vehicles are like characters and navigating the game’s environment is like a plot, which supports finding that the game may be similarly deserving of First Amendment protection as an expressive work.

Next, the burden shifts to Saber to satisfy either of the two prongs of the Rogers test. As to the first prong, the court notes that the artistic relevance of Oovee’s use must “merely…be above zero.” However, Saber failed to explain how Oovee’s use is artistically irrelevant, and so the court similarly did not consider this prong in its analysis.

For the second prong, the court concludes that Oovee did not explicitly mislead consumers to believe that Saber or the tractor manufacturer endorsed Spintires. Despite Saber’s unsupported arguments that consumers expect vehicles in games to be licensed, the court finds that this potential confusion is not enough without an explicitly misleading statement by Oovee. Although the court acknowledges that a disclaimer for Spintires “is far from a model of clarity,” it finds that Oovee is not “explicitly” misleading consumers to believe it has obtained a license for all real-world vehicles in its game. Also, Oovee’s disclaimer expressly notes another licensed trademark. The court points out that it is this lack of a similar statement about the K-700 to support its finding that Oovee does not explicitly mislead consumers into believing that the K-700 is licensed, or that Saber or the tractor manufacturer are affiliated with the game.

This case is the most recent in a line of cases which similarly deal with trade dress of vehicles in games. In AM General v. Activision Blizzard, the makers of the Humvee sued Activision for featuring the iconic vehicle in the Call of Duty videogames. The court ultimately granted Activision’s motion for summary judgment, finding that the First Amendment protects expressive works like videogames. Under the Rogers test the court found that Activision’s use possessed artistic relevance in part because use of Humvees “enhance[d] the games’ realism” in depicting modern warfare, and that the use did not mislead consumers.

By contrast, in an earlier case Electronic Arts v. Textron, publisher EA sought declaratory judgment that use of Textron’s Bell-manufactured helicopter models in its Battlefield 3 game did not constitute trademark or trade dress infringement. On a preliminary motion to dismiss, the court found that EA did not satisfy the second prong of the Rogers test and Textron’s arguments were enough to survive the motion. Textron argued that EA’s prominent use of the helicopters in the game and in marketing materials misled consumers into believing that Textron somehow sponsored or was associated with the game. The parties later settled.

Overall, Saber did not succeed on its Lanham Act and related state law claims because it failed to show that Oovee’s use of the K-700 trademark and trade dress was explicitly misleading or deceptive. However, the court did grant Saber’s request to amend its complaint and to include claims for defamation and tortious interference based on a press release from Oovee in June of 2022, which Saber claims falsely accused Saber of stealing Oovee’s IP and depicted Saber as a “bully.” There is a similar case underway in the UK, and is one of several disputes from the pair’s rocky history.

Game publishers and developers are urged to be thoughtful when incorporating real-world vehicles and other objects into games. While the First Amendment may be a viable defense for use of trademarks in games, this protection is not absolute -- particularly where the use is prominently featured in a way that can be misleading to consumers.