Rockstar Games, Inc., the developer of the “Grand Theft Auto” series of video games, successfully defended itself against a claim of trademark infringement related to images used in its San Andreas version of the game.  The US Court of Appeals for the Ninth Circuit ruled that Rockstar’s use of the defendant’s intellectual property was protected by the First Amendment. E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., et al, No. CV-05-02966-MMM (9th Cir., Nov. 5, 2008).

E.S.S. Entertainment 2000, Inc., the owner of the Play Pen Gentlemen’s Club, claimed that the “Pig Pen,” Rockstar’s virtual strip club in its video game, used its distinctive logo and trade dress without its authorization.  This use, it claimed, had created a likelihood of confusion among consumers as to whether E.S.S. had endorsed, or was associated with, the video game.  In response, Rockstar claimed that its use of any protected trademarks and trade dress, if it had occurred, was protected by the doctrine of nominative fair use and the First Amendment.

The doctrine of nominative fair use protects an entity from liability for trademark infringement when it deliberately uses the trademark or trade dress of another for the purposes of comparison, criticism, or as a point of reference.  For example, an auto repair shop that specializes in repairing a particular type of car can use the registered trademark of the car manufacturer in its advertising so long as it does not claim or imply that it has any business relationship with the car manufacturer. In this case, the Ninth Circuit found that the nominative fair use doctrine was inapplicable because the trademark and trade dress used in Rockstar’s video game was neither identical to E.S.S’s trademark / trade dress nor was the use of E.S.S.’s trademark and trade dress used to comment on the Play Pen.

After finding that the defense of nominative fair use was inapplicable, the appeals court examined whether the First Amendment protected Rockstar from liability.  The Lanham Act has been construed by the courts to only apply to the use of a trademark in an artistic work when either: (1) the use of the trademark has no artistic relevance to the underlying work whatsoever; or (2) if it has some artistic relevance, the use of the trademark explicitly misleads as to the source or content of the work. Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989).  This limited application of the Lanham Act to artistic works is designed to protect the public interest in free expression. 

E.S.S. argued that the use of its Play Pen trademark and trade dress had no artistic relevance to the game and, in the alternative, that the use was explicitly misleading.  The court disagreed.  Instead, it found that the level of the artistic relevance of the trademark and trade dress must merely be above zero.  Thus, while it was true that the game was not “about” the Play Pen, the neighborhood and all of its characteristics, the court determined, was relevant to Rockstar’s artistic goal of developing a parody of East Los Angeles.  The court also held that Rockstar’s Pig Pen did not explicitly mislead consumers as to the source or content of the work by finding that players of the game would not be confused into thinking that E.S.S. was somehow affiliated with, or had sponsored, the video game.

This case demonstrates the complexity of the intersection between trademark law and the First Amendment.  Developers of video games are advised to seek counsel during the creative process to discuss any potential trademark and copyright issues.  For further information regarding Arent Fox’s work in this area, please contact:

Anthony V. Lupo
lupo.anthony@arentfox.com
202.857.6353

Sarah L. Bruno
bruno.sarah@arentfox.com
202.775.5760

Matthew R. Mills
mills.matthew@arentfox.com
202.715.8582