Author: Morgan Galland
In E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., the United States Court of Appeals for the Ninth Circuit ruled that the makers of a popular video game did not violate section 43(a) of the Lanham Act by depicting a modified version of plaintiff’s Los Angeles strip club. On Appeal from the United States District Court for the Central District of California, the Ninth Circuit upheld a summary judgment decision for defendants, holding that use of a modified trademark in a video game to create a parody of a real setting is protected under the First Amendment of the United States Constitution. In doing so, it expanded the traditional application of the test developed by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994, 999 (2nd Cir. 1989).
On Appeal from the United States District Court for the Central District of California, the United States Court of Appeals for the Ninth Circuit upheld a summary judgment decision for defendants, deciding that use of a modified trademark in a video game to create a parody of a real setting is protected under the First Amendment of the United States Constitution.
Appellant, E.S.S. Entertainment 2000 (“ESS”), operates an East Los Angeles strip club, called the Play Pen Gentlemen’s Club. Appellee, Rock Star Videos (“Rockstar”) is the manufacturer and distributer of the popular and controversial Grand Theft Auto video game series. The dispute arose from Rockstar’s depiction, in the video game Grand Theft Auto: San Andreas, of a strip club called the Pig Pen. In the game, the Pig Pen appears in a setting similar to East Los Angeles and both its name and appearance are similar to ESS’s Play Pen. In creating the game’s appearance, some of the artists flew to East Lost Angeles, took photographs of the places that they thought represented the feel of the area, and then returned home to draw the scenery based on those photographs. ESS brought four counts against Rockstar, asserting trade dress infringement and unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. §1125(a) as well as trademark infringement and unfair competition under California code and common law. Rockstar moved for summary judgment on all four claims, arguing affirmative defenses of nominative fair use and protection from liability under the First Amendment. The District Court rejected the nominative fair use argument, but granted summary judgment on First Amendment grounds. The Ninth Circuit affirmed.
The court quickly rejected Rockstar’s nominative fair use argument, holding that nominative fair use occurs only when the defendant uses the trademarked term “‘to describe not its own product, but the plaintiff’s.’” Mattel Inc. v. Walking Mountain Prods., 353 F.3d 792, 809 (9th Cir. 2003). Because Rockstar’s use of “Pig Pen” was not identical to the “Play Pen” trademark and Rockstar was not using the trademark to describe the real institution, nominative fair use did not apply in this case.
The court affirmed the First Amendment defense, however, expanding the test that it had previously adopted from the Second Circuit’s Rogers v. Grimaldi, 875 F.2d 994, 999 (2nd Cir. 1989). See, e.g., Walking Mountain. 353 F.3d at 807. Expanding the applicability of the test from cases involving use of a trademark only in the title of an artistic work, the Ninth Circuit here applied the test to a case involving use of a trademark in the body of the work.
The Rogers test renders not actionable an artistic work’s use of a trademark that would otherwise violate the Lanham Act (a) unless the use “has no artistic relevance to the underlying work whatsoever” or (b) if it has some artistic relevance, unless it “explicitly misleads as to the source or content of the work.” Mattel, Inc. v. MCA Records, Inc. 296 F.3d 894, 902 (9th Cir. 2002). In evaluating the first prong of the test, the court noted the extremely low threshold requirement for artistic relevance (“the level of relevance merely must be above zero”). It then concluded that including a strip club “that is similar in look and feel to the Play Pen” in a game designed to create the atmosphere of Los Angeles crossed this threshold.
The court then turned to the second prong of the Rogers test. It concluded that the game did not mislead as to the source or content of the work because it did not confuse its players into thinking that the Play Pen is in any way behind the Pig Pen or that the Play Pen sponsors the video game. It reasoned that a reasonable consumer would not think that the company behind a strip club would also be the manufacturer of a complex video game. Moreover, a reasonable person would not be confused by the significance of the Pig Pen because the strip club was merely a small part of the game that users could visit, but was otherwise unrelated to the main selling point of the game – performing a variety of missions throughout the virtual city. It is unclear whether the court’s latter line of reasoning would hold in cases where the virtual location at issue is more central to the purpose of the game.
Without addressing the question of whether the use of the trademark actually violated the Lanham Act, the court finally concluded that the depiction of the Pig Pen in Rockstar’s game was protected by the First Amendment because it met the Rogers test’s requirements, making any potential violation not actionable. As the defense applied equally to all four counts, the Ninth Circuit affirmed the dismissal of the case on the motion for summary judgment.