Trademark Law | Expert Legal Commentary

January 6, 2009

E.S.S. Entm’t 2000 v. Rock Star Videos: First Amendment Trumps Trademark Rights

E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc.

By Jeff Zuber of Zuber Lawler & Del Duca and D. Dennis La

E.S.S. Entm’t 2000 v. Rock Star Videos: First Amendment Trumps Trademark Rights

In E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008), the 9th Circuit U.S. Court of Appeals confirmed that when trademark rights clash with the First Amendment, the First Amendment usually wins – at least in cases involving artistic or creative endeavors. The court affirmed the grant of summary judgment in favor of the creators and publishers of the Grand Theft Auto series of video games against the owner of a Los Angeles strip club who claimed that the game infringed on the club’s trademark and trade dress. Specifically, the court applied the Rogers v. Grimaldi two-prong analysis to find that the First Amendment protects the game’s use of the club’s mark in the face of a Lanham Act challenge.

Background

E.S.S. Entertainment 2000 (“E.S.S.”) owns and operates a strip club in the eastern part of downtown Los Angeles called “The Play Pen.” Most of the logos for the Play Pen use a publicly available font, and feature a silhouette of a nude woman within the stem of the first “P.”

The defendants (“Rock Star”) manufacture and publish the Grand Theft Auto series of video games, including Grand Theft Auto: San Andreas, which is roughly set in fictionalized and animated versions of Los Angeles, San Francisco, and Las Vegas. The portion of the game that resembles a fictional version of Los Angeles is called “Los Santos” in the game. Many of the neighborhoods and elements in Los Santos resemble neighborhoods and elements in the real Los Angeles, including “East Los Santos” that (just like seedier parts of L.A.) includes bars, tattoo parlors, prostitutes, drug-pushers, and strip clubs. One of the strip clubs in “East Los Santos” is called “The Pig Pen” – the name of the club is written in the same public font as “The Play Pen” font, and a silhouette of a nude woman appears in the first “P.”

Grand Theft Auto artists drove around Los Angeles taking pictures – including photographs of The Play Pen – to inspire their creation of Los Santos. They admitted that the Play Pen photos did inspire them to some degree when designing The Pig Pen, but so did several other East Los Angeles locations. For example, though the signage is similar, the appearance of The Pig Pen’s physical building in the game is quite different from the appearance of The Play Pen’s building.

E.S.S. sued Rock Star in the U.S. District Court for the Central District of California, alleging: trade dress and trademark infringement and unfair competition in violation of section 43(a) of the Lanham Act and provisions of California’s Business and Professions Code. The District Court granted summary judgment in favor of Rock Star, finding that their use was protected by the First Amendment. E.S.S. filed this appeal.


Rock Star’s use is not protected as “nominative fair use

Rock Star asserted two theories in its defense: 1) nominative fair use, and 2) the First Amendment. The nominative fair use doctrine “protects those who deliberately use another’s trademark or trade dress ‘for the ‘purposes of comparison, criticism[,] or point of reference.’’” E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1096, 1098 (9th Cir. 2008) (citing Mattel Inc. v. Walking Mountain Prods., 353 F.3d 792, 809 (9th Cir. 2003)(citations omitted)).

Both the District Court and the 9th Circuit rejected Rock Star’s fair use defense because Rock Star’s use of “Pig Pen” was not identical to E.S.S.’s mark, and because Rock Star did not use the mark for the purpose of commenting on the Play Pen. E.S.S. Entertainment, 547 F.3d at 1099.

The First Amendment does protect Rock Star’s use under Rogers v. Grimaldi

For its second defense, Rock Star asserted that its use of The Play Pen’s mark was protected by the First Amendment. Both the District and Circuit courts agreed, citing Rogers v. Grimaldi, 875 F.2d 994, 999 (2nd Cir. 1989) for the proposition that the Lanham Act infringement laws apply “to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.”

The court cited the two-prong analysis set forth in Rogers: “An artistic work’s use of a trademark that otherwise would violate the Lanham Act 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 of the content of the work.’’” E.S.S. Entertainment, 547 F.3d at 1099 (citing Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002) (citing Rogers, 875 F.2d at 999)).

As to the first prong, E.S.S. claimed that Rock Star’s use of the mark had no artistic relevance to the game, in that The Play Pen is not a primary focus of the game. But the Circuit Court stated that E.S.S. missed the point because the amount of artistic relevance the use of the mark has to the overall product is irrelevant. “[O]nly the use of a trademark with ‘no artistic relevance to the underlying work whatsoever’ does not merit First Amendment protection… In other words, the level of relevance merely must be above zero.” E.S.S. Entertainment, 547 F.3d at 1100 (citing Mattel v. MCA Records, 296 F.2d at 902).  The court found that the game’s inclusion of a strip club that may be similar in look and feel to The Play Pen does have artistic relevance to the game’s goal of creating a fictional version of a particular urban area. Id.

As to the second prong, R.S.S. argued that even if there were artistic relevance, Rock Star’s use explicitly misleads users regarding the source or content of the work, in violation of the very purpose of trademark law to avoid consumer confusion. The court explained the issue as determining “whether the Game would confuse its players into thinking that the Play Pen is somehow behind the Pig Pen or that it sponsors Rockstar’s product.” Id.

The court found no such confusion, largely because the Pig Pen was very generic, and its existence is purely incidental to the story of the game. The court wrote: “Nothing indicates that the buying public would reasonably have believed that ESS produced the video game or, for that matter, that Rockstar operated a strip club.” Id.

Perhaps one of the most entertaining paragraphs of the opinion clarifies the Court’s view on this issue: “ESS also argues that, because players are free to ignore the storyline and spend as much time as they want at the Pig Pen, the Pig Pen can be considered a significant part of the Game, leading to confusion. But fans can spend all nine innings of a baseball game at the hot dog stand; that hardly makes Dodger Stadium a butcher’s shop. In other words, the chance to attend a virtual strip club is unambiguously not the main selling point of the Game.” Id. at 1101.

Conclusion

While E.S.S. Entertainment did not forge new ground, it still solidly confirms First Amendment protection for creatives who use third-party marks in their artistic endeavors. The entertainment industry at large should feel comfortable that the First Amendment protects their right to recreate the look and feel of particular environments, including using third-party marks to do so, unless their use is explicitly misleading.

About the Author

Jeff Zuber is a Partner of Zuber Lawler & Del Duca, focusing on intellectual property litigation and arbitration.

Image Credit: ©iStockphoto.com/vasiliki

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Jeff Zuber

Companies Mentioned

ESS Entertainment 2000, Inc.e.s.a. Rockstar Games, Inc.

Rockstar Games, Inc. d.b.a. Play Pen

Take-Two Interactive Software, Inc.

Also See:

Brown v. Electronic Arts, Inc.: Lanham Act Protects Video Games, not Athletes

Already, LLC v. Nike, Inc.: Supreme Court Affirms that Covenant Not to Sue Can Moot Trademark Case

Louboutin v. Yves Saint Laurent: Second Circuit Upholds Trademark Protection for Red-Soled Shoes

Louis Vuitton Malletier S.A., v. Ly USA: Second Circuit Splits, Allows Attorney’s Fees Under § 1117(c) Trademark Infringement

Chloé v. Queen Bee: Exercising Personal Jurisdiction for Infringement in Internet Transactions

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Companies Mentioned

Trademark Law

The following companies are mentioned in Trademark Law Updates:

Louis Vuitton Malletier S.A.

Tiffany (NJ) Inc.

Tiffany & Co.

eBay, Inc.

NTU Electronics, Inc.

Midway Services, Inc.

Trademark Trial and Appeal Board

MDCO, Inc.

Custom Manufacturing and Engineering, Inc.

Automated Engineering Corp.

Woofies, LLC d.b.a. Woofie’s Pet Boutique

Internet Specialties West, Inc.

International Trademark Association

Haute Diggity Dog, LLC

JA Apparel Corp.

Houndstooth Corp.

Harringbone Creative Services, Inc.

Mars, Inc.

Chute Gerdeman, Inc.

Take-Two Interactive Software, Inc.

Rockstar Games, Inc. d.b.a. Play Pen

Volkswagen of America, Inc.

Shokan Coachworks, Inc.

Audi AG

University of Southern California

University of Oklahoma

Smack Apparel Company

Ohio State University

Louisiana State University

Collegiate Licensing Company

Creation Seventh Day & Adventist Church

U.S. Patent and Trademark Office

The Associated Press

Super Duck Tours, LLP

All Headline News Corp.

Boston Duck Tours, L.P.

Spirits International B.V.

AHN Media Corp.

University of Wisconsin System

Milon-DiGiorgio Enterprises, Inc.

OBX-Stock, Inc.

Phoenix Software International, Inc.

ISPWest

Bicast, Inc.

Dessert Beauty, Inc.

Princess Paper, Inc.

The Craig Allen Company, LLC

Ace-Web Internet

Sysco Corp.

John Allan Company

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