Minimal relevance of mark sufficient to excuse use in artistic work

United States of America

In ESS Entertainment 2000 Inc v Rock Star Videos Inc (Case 06-56237, November 5 2008), the US Court of Appeals for the Ninth Circuit has held that use of a name similar to the plaintiff’s trademark within a video game was protected by the First Amendment.

ESS Entertainment 2000 Inc, the owner of a Los Angeles strip club called Play Pen, sued Rock Star Videos Inc for trademark infringement based on the inclusion of a strip club called Pig Pen in the video game Grand Theft Auto: San Andreas. 
The game takes place in the fictional city of Los Santos, which is modelled after Los Angeles. In order to mimic the look and feel of actual Los Angeles neighbourhoods, Rock Star populated the cityscape in the video game with virtual stores such as liquor stores, casinos, tattoo parlours and strip clubs. The artists who designed the game took reference pictures of locations in Los Angeles that they thought evoked the desired theme of the game. They then changed the images as needed to fit into the fictional world of the game. The idea was to create a fictional city that “lampooned the seedy underbelly of Los Angeles and the people, businesses and places [that] comprise it”. Among the businesses included in the game was the Pig Pen strip club. ESS claimed that the Pig Pen strip club in the game infringed its PLAY PEN trademark and the trade dress associated with its establishment.
The court decided that the only relevant similarity between ESS's establishment and the one depicted in the game was the name itself, as the characteristics of the Play Pen building differed significantly from the Pig Pen building in the game. Rock Star prevailed before the district court on summary judgment based on its First Amendment defence. However, the district court rejected Rock Star’s nominative fair use defence and did not reach a decision on the merits of ESS's trademark infringement claim. ESS appealed.
The Ninth Circuit affirmed in all respects. The court quickly disposed of the nominative fair use defence, because Rock Star did not use the Pig Pen name in order to compare, critique or comment deliberately on ESS's establishment. Without that necessary element, the defence failed.

As for the First Amendment defence, the court revisited its 2002 decision in Mattel Inc v MCA Records Inc (296 F3d 894), in which it held that a song called "Barbie Girl" was protected as free speech. Rock Star tried to distinguish the Mattel Case as being a commentary on the Barbie doll and its related values, whereas the game at issue was not about ESS's strip club. Following the Mattel line of cases, the court noted that only the use of a trademark with “no artistic relevance to the underlying work whatsoever” would not merit First Amendment protection. The court emphasized this point by expounding that “in other words, the level of relevance merely must be above zero”. Thus, even though the game at issue was not about the Play Pen club in the same way that the "Barbie Girl" song was about the Barbie doll, there was some artistic relevance of the Play Pen establishment to the parody style of Los Angeles in the game. As such, inclusion of the Play Pen establishment in the game was protected.

ESS also argued that inclusion of the similarly named strip club in the game misled consumers as to the source of the game. Quoting again from Mattel, the court noted that “use of a trademark alone cannot suffice to make such use explicitly misleading”. Ultimately, the court found that video games and strip clubs are not complementary goods/services that the buying public would reasonably believe to be connected. Additionally, the court noted that the inclusion of the Pig Pen establishment in the video game was incidental to the overall game and thus not likely to mislead consumers as to the source of the game.
Karin Segall, Foley & Lardner LLP, New York

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