Video game dispute pits trademark What happens when an adult entertainment venue takes on a video game designer in court? The Ninth Circuit provided one answer in E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., a case that pitted a trademark infringement claim against a First Amendment defense. The players Rockstar Games manufactures and distributes the Grand Theft Auto (GTA) series of video games. The games occur in cartoonish virtual realms based on real American cities. GTA San Andreas includes Los Santos, based on Los Angeles. One neighborhood, East Los Santos, contains a fictitious strip club known as the Pig Pen. E.S.S. Entertainment operates an in-the-flesh strip club called “Play Pen” on the eastern edge of the real downtown Los Angeles. It claimed that the Pig Pen in GTA San Andreas infringed its trademark by creating a “likelihood of confusion among consumers as to whether E.S.S. has endorsed, or is associated with, the video depiction.” The district court granted summary judgment to Rockstar based on a First Amendment defense. The rules Rockstar’s defense prompted the Ninth Circuit Court of Appeals to consider the intersection of trademark law and the First Amendment. It found that courts must construe the Lanham Act, the federal trademark law, “to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” Determining whether this is the case requires the application of a two-prong test. Under the test, otherwise infringing use of a trademark is not actionable unless the use: 1) has no artistic relevance to the underlying work whatsoever, or 2) has some artistic relevance yet explicitly misleads as to the work’s source or content. The deal Looking at the first prong, if the use of the trademark has no artistic relevance to the underlying work, it does not merit First Amendment protection. But, as the court cautioned, the bar is set quite low: “The level of relevance merely must be above zero.” The court acknowledged that Play Pen has little cultural significance but pointed out that the same could be said of most of the individual establishments in East Los Angeles. The neighborhood’s distinctiveness lies not in its particular destinations, as with a downtown or tourist district, but in its “look and feel.” The Ninth Circuit found that the East Los Angeles neighborhood, including all that characterizes it, is relevant to Rockstar’s artistic goal of developing a cartoon-style parody of the neighborhood. Thus, incorporating a strip club similar in look and feel to Play Pen did indeed have at least some artistic relevance. (Lack of) confusion As to the second prong, the court explained, the question was whether the game would confuse players into thinking that Play Pen is somehow behind the Pig Pen or sponsors the GTA San Andreas game. It warned, though, that the mere use of a trademark alone cannot suffice to make the use explicitly misleading. The court concluded that the game and Play Pen have little in common. The game is not complementary to Play Pen — “video games and strip clubs do not go together like a horse and carriage or, perish the thought, love and marriage.” Further, the Pig Pen is incidental to the overall story of the game. The game is not about running or patronizing a strip club. The court ultimately concluded that a reasonable consumer would not think the owner of a strip club in East Los Angeles, not well known to the public at large, also produces a technologically sophisticated video game such as GTA San Andreas. Game over The case makes clear that the mere use of a mark will not defeat a First Amendment defense. If that were so, the court observed, “… the First Amendment would provide no defense at all.” • |