Ninth Circuit: Trademark claim over use in video game stripped away by First Amendment

In a decision Wednesday, the Ninth Circuit affirmed a district court's grant of summary judgment that the producer of Grand Theft Auto: San Andreas had a First Amendment defense against a claim of trademark infringement.  The plaintiff owns a strip club known as the "Play Pen" on the eastern edge of downtown Los Angeles.  Grand Theft Auto: San Andreas includes, in its fictional city "Los Santos," a virtual strip club "Pig Pen" in the neighborhood "East Los Santos."  The Ninth Circuit, agreeing with the district court, held the First Amendment defeated the infringement claim.  Specifically, the court held the game's producers' "modification of [the] trademark is not explicitly misleading and is thus protected by the First Amendment."

More detail of E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc. after the jump.

Rockstar Games manufactures and distributes the Grand Theft Auto video game series, the most recent of which is Grand Theft Auto IV.  The previous game in the series is the game at issue, Grand Theft Auto: San Andreas.  As described by the Ninth Circuit, "[t]he Series is known for an irreverent and sometimes crass brand of humor, gratuitous violence and sex, and overall seediness."  Each game in the Grand Theft Auto series takes place in a "dystopic, cartoonish" city which is modeled after real American cities and urban areas. Grand Theft Auto: San Andreas is played in the virtual city of "Los Santos," which is modeled after Los Angeles, as well as in "San Fierro" (modeled after San Francisco) and "Las Venturas" (modeled after Las Vegas).  While Los Santos is designed to mimic actual Los Angeles areas and neighborhoods, "[t]he brand names, business names, and other aspects of the locations have been changed to fit the irreverent 'Los Santos' tone."  For example, the neighborhood "East Los Santos" is based on the East Los Angeles neighborhood.  East Lost Santos includes a strip club called the "Pig Pen."

E.S.S. runs a strip club in eastern Los Angeles named the "Play Pen Genetlemen's Club."  The "Play Pen" logo includes the phrases "the Play Pen" and "Totally Nude," as well as a silhouette of a female dancer around the first "P."  E.S.S. accused Rockstar of trademark and trade dress infringement based on its inclusion of the "Pig Pen" fictional strip club in the game.  A comparison of the two is shown below:

Play Pen Pig Pen

As described by the Ninth Circuit, "[t]he heart of ESS's complaint is that Rockstar has used Play Pen's distinctive logo and trade dress without its authorization and has created a likelihood of confusion among consumers as to whether ESS has endorsed, or is associated with, the video depiction."  The district court granted summary judgment based on Rockstar's First Amendment defense.  

Regarding Rockstar's First Amendment defense, the Ninth circuit noted that it had adopted the Second Circuit's approach from Rogers v. Grimaldi, which "requires courts to construe the Lanham Act to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression."  There are two prongs to this test.  An otherwise infringing use of a trademark is not actionable "unless the [use of the mark] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless [it] explicitly misleads as to the source or the content of the work."  In order to satisfy the second prong, there must be something more that just use of the mark.  

E.S.S. argued the use of "Pig Pen" in Grand Theft Auto: San Andreas did not have artistic relevance and was explicitly misleading.  The Ninth Circuit noted that only use of a trademark with "no artistic relevance in the underlying work whatsoever" does not merit First Amendment protection.  Rockstar's goal was to create a parody of Los Angeles, including the neighborhood of East Los Angeles.  The court noted that "the only way, and certainly a reasonable way, to do that is to recreate a critical mass of the businesses and buildings that constitute it."  Accordingly, including a strip club in the game which was similar to the Play Pen has "some artistic relevance."  

With respect to E.S.S.'s argument that the use of the "Pig Pen" was explicitly misleading, the court noted that there was no evidence that the buying public would have believed that E.S.S. produced Grand Theft Auto: San Andreas or, conversely, that Rockstar operated a strip club.  Accordingly, because the Rogers test was met, the court affirmed the district court's grant of summary judgment to the defendants.

To read the full decision in E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc., click here.

Eric Goldman reports on the case here.

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