(CN) - A federal judge denied Electronic Arts' motion to dismiss a trademark suit over whirlybirds featured in its popular video game, "Battlefield 3."
Textron Innovations and Bell Helicopter Textron, maker of AH-1Z, UH-1Y and V-22 helicopters, sued EA in 2008 for infringing on Bell-manufactured vehicles in the "Battlefield Vietnam," "Battlefield Vietnam: Redux" and "Battlefield 2" video games.
The companies reached a confidential settlement agreement in February 2008, but were unable to come to terms over EA's planned use of the helicopters in "Battlefield 3," which was released in October 2011.
Textron sent EA in a cease-and-desist letter regarding the game in November 2011, and EA filed a non-infringement suit in the Northern District of California in January.
EA argued the use was expressive and entitled to First Amendment protection, and contended that it did not require a license.
Textron answered the action in May and alleged six counterclaims, including trademark infringement, California common law misappropriation and violation of California Business and Professions Code Section 17200.
In response, EA moved to dismiss the counterclaims as barred by the First Amendment and doctrine of nominative fair use.
Ruling on the motion, U.S. District Judge William Alsup denied EA's request and vacated a hearing scheduled for September 6.
"[I]t is plausible that consumers could think Textron provided expertise and knowledge to the game in order to create its realistic simulation of the actual workings of the Bell-manufactured helicopters," Alsup wrote.
"Although consumers are unlikely to think Textron has entered the video-game business, Textron has alleged sufficient facts to support the inference that the game explicitly leads consumers to believe it is 'somehow behind' or 'sponsors' 'Battlefield 3.' ...
"Textron's allegations are sufficient to establish plausible disputes as to the existence of actual consumer confusion and the effectiveness of the disclaimer. Accordingly, EA's motion to dismiss the counterclaims on First Amendment grounds is denied," he added.
Alsup also denied EA's fair use claim.
"EA argues that nominative fair use is evident from 'allegations made by Textron, or subject to judicial notice.' To the contrary, this order finds the counterclaims raise factual questions that make a nominal fair use determination inappropriate at this time," he said.
"This is a Rule 12 motion that really amounts to a summary judgment motion and was very premature. No more summary judgment motions shall be brought herein until the end of the discovery period without prior permission, such permission to be sought in advance via a five-page precis explaining the proposed motion," the ruling concludes.
"Battlefield 3" depicts modern-day armed conflict on land, in air and at sea. Characters use U.S. military weapons, accessories and vehicles, from tanks and jeeps to jets and naval assault vehicles.
EA allegedly sold 5 million copies of the first-person shooter in its first week of availability.