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Video Game Weapons Dispute Can Charge On

(CN) - Electronic Arts can pursue claims that its combat game "Battlefield 3" does not infringe on a military helicopter maker's trademarks, a federal judge ruled.

Bell Helicopter Textron, the designer and manufacturer of the AH-1Z, UH-1Y and V-22, initially sued Electronic Arts in 2008 over "Battlefield: Bad Company 2 - Vietnam."

After that Texas lawsuit settled in 2010, Bell granted EA licensing rights to prior games in the "Battlefield" franchise.

In November 2011, however, Textron notified EA in a cease-and-desist letter that the agreement did not cover "Battlefield 3."

EA in turn sued for declaratory relief in the Northern District of California, naming Textron, Bell Helicopter Textron and Textron Innovations as defendants.

The complaint says a license was unnecessary because the use of the helicopters was expressive and entitled to First Amendment protection.

Bell countered with trademark and trade-dress infringement claims in the Northern District of Texas, and it asked the California court to stay, transfer or dismiss EA's action.

Its motion accused EA of racing to the courthouse and forum shopping. U.S. District Judge William Alsup refused Thursday.

"EA waited approximately two months after notice of its potential infringing use, and two weeks after threat of litigation by defendants, before filing for declaratory judgment in this district," he wrote. "Defendants had been on notice for three months that EA did not believe they would need a license in order to proceed with production and sale of 'Battlefield 3.' Defendants waited approximately seven weeks after the instant action was filed to file their own competing action in Texas. Based on the above time line, it is clear that defendants here were not ready to file suit immediately."

"EA was within its rights to file for declaratory judgment, and not wait until defendants made good on their threat to sue," he added.

"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.

Alsup noted that Bell Helicopter conceded that it "has no ownership interest in the intellectual property at issue."

"This was not a race to the courthouse, a reactive or a defensive declaratory-judgment action could have commenced suit," Alsup wrote.

The court also rejected Bell's request to transfer the action.

"First, defendants' arguments that Texas is the more convenient forum because it is the location of Bell Helicopter, and that Bell Helicopter should not be party to this suit as it does not own nor hold exclusive license to the trademarks at issue, conflict," Alsup wrote. "Second, defendants have filed at least four trademark and trade dress suits in California, one of which was in the Northern District. Defendants' claim that Texas is a 'neutral' location for plaintiff because it participated in prior litigation there, but California is inconvenient, even though defendants engaged in prior litigation in California, is contradictory."

"For the foregoing reasons, defendants' motion to dismiss, or in the alternative, stay or transfer, is denied," the ruling concludes.

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