Activision is suing an indie developer over the 'Warzone' trademark

[stormfire]

After attracting over a million players to his game, "Warlight," and with the impending demise of Adobe Flash in 2014, indie video game developer Randy Ficker decided to make a sequel. He began searching for available domain names and titles that would embody the turn-based, strategy game, which is very similar to the board game Risk and playable on Web browsers and mobile platforms.

"'Warzone' was the only one for sale," Ficker told The Washington Post.

After three years of work, he launched "Warzone" in 2017 and was thrilled by the public's response, with over 750,000 downloads from the Apple (iOS) and Google (Android) app stores.

Fast forward to 2020. In his email, a Google Alert informed Ficker that video game publishing behemoth Activision was about to release a free-to-play battle royale version of its juggernaut Call of Duty franchise. The name: "Warzone."

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Since Ficker had previously used "Warzone" as a title for his game, it gives him the right to use the mark in commerce, as well as a priority claim, according to Kendra Albert, a clinical instituter at the Harvard Law School's Cyberlaw Clinic. "Once you start using a mark in commerce, you can start acquiring rights," Albert said.

The legal determination over rights is more complicated, however. Should Ficker's case proceed, the court would determine whether consumers are likely to confuse Ficker's game as being affiliated or made by Activision, whether their title violates Ficker's common law trademark rights (having used it first), and which party should ultimately have the right to use Warzone as their title. The two parties also have a legal filing with the United States Patent and Trademark Office's Trademark Trial and Appeal Board (TTAB), should the courts not rule on which party can use the Warzone name.

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On June 25, 2020, some three years after Ficker purchased the Warzone.com URL and launched his game, Activision filed an application with the United States Patent and Trademark Office to trademark "Warzone" and "Call of Duty: Warzone." Ficker filed his application for the trademark on Oct. 30 of last year, along with an opposition to Activision's claim the following month with the Trademark Trial and Appeal Board, which decides if disputed marks will be registered or removed.

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Ficker's attorney, Derek A. Newman, later sent a cease-and-desist letter to Activision, and the two parties began trying to settle the case. Ficker said his ask was 0.25% of Call of Duty Warzone's profits. While Activision has not released any revenue figures specifically around "Warzone," which monetizes by selling in-game currency that can be used on cosmetics and a seasonal battle pass, the company announced in May that it had been played by 100 million people. Activision countered with an offer of $10,000, according to Ficker, which he rejected.

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Having failed to come to terms, on April 8, 2021, Activision filed a lawsuit in U.S. District Court asking the court to declare that the corporation has permission to use the Warzone name, that usage does not infringe on Ficker's rights, that their trademark should be registered, that Ficker's should not, and that Ficker should be prevented from bringing further claims against the company regarding the Warzone trademark. The filing states Ficker had threatened to seek an injunction to prevent the corporation from using the name. Activision's filing also asks for the court to force Ficker to pay its attorneys fees and costs.

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Ficker acknowledged he never expected to get his initial ask, but said "I figured I needed to ask for something higher than I what I wanted because I expected they'd negotiate down from there." "At the very least, I would like to be made whole," he said. "I spent about $60,000 on the domain name and legal fees, plus three years of my life into this brand and it hurts business to have to change the title."

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Activision's filing argues that their Warzone game is distinct from Ficker's game on several fronts and that consumers are unlikely to confuse one for the other. They point out that their game is a first person shooter, has higher, more realistic production quality, and is marketed as part of the Call of Duty franchise. Their filing also notes that their game is available on consoles, whereas Ficker's is not, and that several other video games use "Warzone" as part of their title.

"I would be a little worried if Activision wins this one," Albert said. "Activision has a lot more money than some indie game developer, and oftentimes in trademark litigation, like lots of forms of litigation, it comes down to who can sustain it longer and who has more money."

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https://www.washingtonpost.com/video-games/2021/06/04/warzone-name-lawsuit/

 

[Jawmuncher]

 

[JigglesBunny]

Good luck, David.

 

[Chie Satonaka91]

Really hoping Activision loses this one, always love watching Goliath lose to David.

 

[Jawmuncher]

The fact Activision has "Billions" and was like "We'll give you 10K for the Domain" is so scummy. They're going to pay MORE than that with legal stuff.

 

[Keyser S]

My guess is this will end in the indie developer adding an "s" to the end

 

[Sirhc]

$10,000 counter offer? What a fucking joke.

 

[JustinBB7]

I don't know shit about laws, specially USA ones, but I don't think he has much chance of winning against the lawyer army of activision. They must have checked if Warzone was available before settling on it right? They must have known it was already taken but still used it anyway.

 

[ryan299]

warzone for Halo came first. Not sure how Microsoft doesn't have it

 

[Zomba13]

I mean, if he was first then Activision should give him millions and change the name of their mode.

 

[poklane]

warzone for Halo came first. Not sure how Microsoft doesn't have it

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Because it's just a MP mode and being able to trademark that kinda stuff would be fucking stupid.

 

[The Lord of Cereal]

warzone for Halo came first. Not sure how Microsoft doesn't have it

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Probably didn't go for it because it wasn't a standalone game or anything, just a specific mode in the game, and since the game (and thus the mode) wasn't even a huge success (relatively) I think it just didn't matter for them.

But I also know jack shit so yeah

 

[Mr.Deadshot]

Rename it to "Call of Warzone" or "Warzone Duty" to troll Activision.
These lawsuits are ridiculous. Similar to when Bethesda sued a game named "Scrolls". These are just common words, lol.

 

[nsilvias]

Acti is overstepping

 

[jelly]

The rich bastards way of winning, bleed them dry until they can't compete.

Activision's filing also asks for the court to force Ficker to pay its attorneys fees and costs.

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[Mbolibombo]

10000$ that must be like a minute of warzone revenue

 

[Syriel]

I don't know shit about laws, specially USA ones, but I don't think he has much chance of winning against the lawyer army of activision. They must have checked if Warzone was available before settling on it right? They must have known it was already taken but still used it anyway.

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They likely didn't care.

I worked with someone in the distributed computing space that had a long existing trademark. LogMeIn decided they wanted to use the name for a distributed computing thing, so they bought a domain and started using it.

It took a chunk of legal fees and many hours to convince them that it wasn't worth it because he wouldn't roll over.

 

[Ravelle]

Imagine sueing over one of the most generic words.

 

[DukeBlueBall]

Isn't the title backwards? Seems like the indie is suing Activision.

 

[Vexii]

Is there any available way to crowdfund his legal efforts? Frankly I think a mass contribution for his defence against Activision and their absolutely disgusting behaviour would be so, so beautiful

 

[makingmusic476]

warzone for Halo came first. Not sure how Microsoft doesn't have it

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Warzone always brings back fond memories of Killzone 2 back in 2009.

Though given the amount of games using it for various modes I'm sure there's more games before that.

 

[Niosai]

It's not even that they're asking him to change the name of his game, it's that they're asking to retroactively steal the Trademark from him for the reason of...uh...they have more money, I guess?

 

[olag]

Good luck dude, Activision as always are scummy as fuck. litigation battles against large entities are a lot of hard work and most likely activision's strategy would be to outlast/out money you.

Is there any way around this? I also wouldnt mind supporting him via gofundme or patreon if this is set up. Hopefully more journalists pick this up , review copies be damned.

 

[Megamind.]

warzone for Halo came first. Not sure how Microsoft doesn't have it

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Because warzone for killzone came before it.

You can see my point here?

 

[DanarchyReigns]

Rename it to "Call of Warzone" or "Warzone Duty" to troll Activision.
These lawsuits are ridiculous. Similar to when Bethesda sued a game named "Scrolls". These are just common words, lol.

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What's funny now is that Scrolls (now Caller's Bane) was made by Mojang, who are now owned by Microsoft. Now Bethesda is owned by Microsoft.

 

[Niosai]

Is there any available way to crowdfund his legal efforts? Frankly I think a mass contribution for his defence against Activision and their absolutely disgusting behaviour would be so, so beautiful

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They made a GoFundMe to cover legal fees. Not sure if I can link a GoFundMe here, but it's on the Warzone website.

 

[Jawmuncher]

Is there any available way to crowdfund his legal efforts? Frankly I think a mass contribution for his defence against Activision and their absolutely disgusting behaviour would be so, so beautiful

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Activision is suing Warzone, organized by Randy Ficker

Hello, my name is Randy, and I’m being sued by Activision for being an indie game developer. … Randy Ficker needs your support for Activision is suing Warzone

www.gofundme.com

They made a GoFundMe to cover legal fees. Not sure if I can link a GoFundMe here, but it's on the Warzone website.

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You can link to GoFundMe in situations like that, you just can't make a thread about them (In this case, it's just an additional aspect of the article listed.
Also, Era isn't responsible for anything you donate to.

 

[Hexa]

Am I misunderstanding something? The article is saying the opposite of the title. An indie dev is suing Activision for the use of Warzone, not the other way around.

 

[Era of not Yakuza]

Warzone bring back memories of every country USA brought democracy

 

[Jawmuncher]

They made a GoFundMe to cover legal fees. Not sure if I can link a GoFundMe here, but it's on the Warzone website.

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You can link to GoFundMe in situations like that, you just can't make a thread about them (In this case, it's just an additional aspect of the article listed.
Also, Era isn't responsible for anything you donate to.

 

[Jakisthe]

Because warzone for killzone came before it.

You can see my point here?

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Man Killzone's Warzone mode ruled. I never did understand why no game since copied it.

 

[JuicyPlayer]

When I think Warzone I think of WWF Warzone

 

[Eoin]

Activision's offer was low but 0.25% of Warzone's profits wasn't a credible offer in the first place. If this ends up being settled it'll probably be with some kind of flat fee.

My guess is this will end in the indie developer adding an "s" to the end

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Very unlikely. Can you think of any other trademark case that has ended that way?

I don't know shit about laws, specially USA ones, but I don't think he has much chance of winning against the lawyer army of activision. They must have checked if Warzone was available before settling on it right? They must have known it was already taken but still used it anyway.

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They definitely would have checked for any registered trademarks. However, Ficker only applied for a trademark in October 2020, so his use of the name could have gone unnoticed by Activision until he opposed their own trademark application.

warzone for Halo came first. Not sure how Microsoft doesn't have it

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A mark is something that you use to sell a product or service. Elements of a game that will be trademarked will typically include a name and logo and very little else. Mode names would almost never be trademarked unless they're also the name of the game or unless they're such a big part of the game that the game is selling itself specifically based on the mode name.

 

[boontobias]

Everything I just read says the indie dev is suing Activision

?

 

[Adam Tyner]

Am I misunderstanding something? The article is saying the opposite of the title. An indie dev is suing Activision for the use of Warzone, not the other way around.

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Everything I just read says the indie dev is suing Activision

?

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Read the excerpted portion beginning with "Having failed to come to terms…". Activision is the plaintiff, and warzone.com is the defendant.

 

[Hexa]

Read the excerpted portion beginning with "Having failed to come to terms…".

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Oh. I see. My bad. In that case I'm rooting against both of them and hopefully the case will end with both of their trademarks getting denied and both being allowed to continue doing what they're doing.

 

[StrykerIsland]

Making the little guy pay for their legal fees makes my blood boil. Hope Activision loses. The fact that they offered him 10k shows they knew he was in the right.

 

[Vash]

This is the Warzone I always think about. But yeah, Acti-Bliz showing their asses for the umpteenth time.

 

[Amauri14]

Am I misunderstanding something? The article is saying the opposite of the title. An indie dev is suing Activision for the use of Warzone, not the other way around.

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Yeah, I'm also confused about that.

 

[WalshyB]

Making them pay their legal fees, actual rats

 

[grand]

The thread title is sorta misleading as it's the indie developer who started the legal battle with the C&D and now Activision is suing to protect their own usage of the mark after the two couldn't come to terms. It's an intriguing twist on the typical corporation vs indie trademark battle.

The courts probably won't grant exclusive use of the trademark to either party. But if they do decide between the two, I think Activision will prevail as no one is going to confuse Activision's usage of the mark with the original. The indie developer messed up by not bothering to protect their mark until after Activision popularized the term. Also, the indie developer has used Warlight 2, Warzone Classic and Warzone Idle as the titles of their free to play game, which are all derivatives from just "Warzone". So both parties already act like "Warzone" isn't an identifying mark by itself.

 

[Aztechnology]

Yeah, I'm also confused about that.

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Counter suit by Activision to be able to use warzone after not coming to terms.

 

[Dis]

$10,000 counter offer? What a fucking joke.

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Bobby could literally give the guy 10 times that out of his own pocket and he'd not even notice it in anyway. All this is about is the power game to try and make sure when they want to do this shit again in future the little indie devs don't try to stop them. Fuck Activision with this shit.

 

[Megamind.]

Man Killzone's Warzone mode ruled. I never did understand why no game since copied it.

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I 100% agree. It was honestly the best FPS mode I ever played. Killzones multiplayer is extremely underrated IMO

 

[Senator Toadstool]

after having take multiple IP and entertainment law courses.

if you put ANYTHING into the stream of commerce and you intend to make ANY money off of it ALWAYS ALWAYS ALWAYS register potential trademarks and copyrights (the latter isn't required) never rely on common law trademarks.

It's also probably advisable to hire a lawyer for the registration so it's done right and you have potential malpractice protections should they fuck up. it's not that expensive and will save you so much should a situation like this come up.

 

[leburn98]

When I think Warzone I think of WWF Warzone

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Haha I was coming in here to post the N64 version of WWF Warzone. Everytime I here Warzone, I always think of that N64 commercial where the guy yells WAARRZONNNE.

 

[Senator Toadstool]

The thread title is sorta misleading as it's the indie developer who started the legal battle with the C&D and now Activision is suing to protect their own usage of the mark after the two couldn't come to terms. It's an intriguing twist on the typical corporation vs indie trademark battle.

The courts probably won't grant exclusive use of the trademark to either party. But if they do decide between the two, I think Activision will prevail as no one is going to confuse Activision's usage of the mark with the original. The indie developer messed up by not bothering to protect their mark until after Activision popularized the term. Also, the indie developer has used Warlight 2, Warzone Classic and Warzone Idle as the titles of their free to play game, which are all derivatives from just "Warzone". So both parties already act like "Warzone" isn't an identifying mark by itself.

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So can't trademark generic or merely discriptive terms. I don't see either NOT using it to clearly label a series with an identifying mark. Activision probably has a better secondary meaning claim too.

 

[Senator Toadstool]

When I think Warzone I think of WWF Warzone

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I doubt that trademark is still valid in video games. they only last 10 years and you have to be actively using a mark to reregister is

 

[TheRealTalker]

GG should sue Activision then.

Spoiler

Yes I know that wasn't trade marked because it wasn't an independent game but just a game mode.

 

[jesu]

They have to or there is a chance they will lose the trademark