Electronic Artists Inc. (EA) produces and distributes the popular Battlefield 3 video game, which is set in a fictional nuclear war in 2014 at the Iraq/Iran border. Displayed throughout the video game are assorted military weapons, vehicles, and aircrafts, including the AH-1Z Viper, the UH-1Y Venom, and the V-22 Osprey, three military helicopters created by Bell Helicopter Textron, Inc. (collectively, the “Bell Helicopters”). In the game, payers can engage in non-scripted, simulated flights in the Bell Helicopters. The Helicopters are referred to by both their call numbers (e.g. “V-22”) and common names (e.g. “Osprey”) throughout the game, and also appear in promotional materials for the game.

In January 2012, EA filed a declaratory judgment action in the US District Court for the Northern District of California, seeking confirmation that its use of the Bell Helicopters in connection with Battlefield 3 is protected as an expressive work under the First Amendment, and as nominative fair use.

Bell Helicopter Textron Inc. and Textron Innovations, Inc., the party that owns the intellectual property rights to the Bell Helicopters (collectively, “Bell”), paint a very different story. Last month, Bell filed a lawsuit in the US District Court for the Northern District of Texas, claiming that EA’s use of the Bell Helicopters constitutes trademark and trade dress infringement, false designation of origin, common law misappropriation and unfair competition, and injury to business reputation. Bell claims common law trademark rights in the word marks VIPER, VENOM, and OSPREY, federal trademark protection in the allegedly “distinctive and non-functional trade dress” of the Bell Helicopters, and federal trademark registrations for AH-1Z, UH-1Y, and V-22.

Notably, Bell sued EA in the past over the unauthorized use of its products in EA video games. That case resulted in a confidential settlement wherein EA agreed to pay a lump sum to Bell for a license to use Bell’s products in the video games at issue in that case. According Bell’s current complaint, the parties were negotiating the terms of a license for EA to use the Bell Helicopters in Battlefield 3 when EA filed its declaratory judgment action. The current Bell complaint mentions the prior settlement agreement and goes on to note that EA has also licensed the rights to use the intellectual property of other third parties in its video games, including Porsche, the NFL, and the NFL Players’ Association. Thus, according to Bell, EA was well aware of Bell’s trademark and trade dress rights, and was aware that it is customary for video game producers to pay a licensing fee for the use of third-party trademarks and trade dress in video games. Bell therefore claims that EA’s actions amount to willful infringement of its rights.

Neither party disputes that the Bell Helicopters appear throughout Battlefield 3 nor that EA did not secure a license or authorization to use the Bell Helicopters in the video game. Thus, the question is whether Bell will be able to prove its federal and state claims, or whether EA will be able to rely on its First Amendment and nominative fair use defenses. The next step will be for the courts and the parties to decide whether the litigation will move forward in Texas or California.