Trademark Law Updates | New Judicial Opinions

January 8, 2009

Ninth Circuit Dismisses Trademark Infringement Claim Against "Grand Theft Auto" Video Games Maker

E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc
No. 06-56237, U.S. Court of Appeals for the Ninth Circuit, 11/5/2008

Ninth Circuit Dismisses Trademark Infringement Claim Against "Grand Theft Auto" Video Games Maker

Holding:

The U.S. Court of Appeals for the Ninth Circuit has dismissed a trademark lawsuit by owners of the East Los Angeles strip club"The PlayPen" against Rockstar's video game depiction in "Grand Theft Auto" of a similar strip club called "The Pig Pen," located in the game's fictional city of East Los Santos. In its complaint, ESS alleged that Rock Star’s use of the PlayPen logo and look without their permission was likely to confuse customers as to whether ESS endorsed or was associated with the virtual strip club. Citing court precedent, the Ninth Circuit held that the First Amendment protected Rockstar from liability. It reasoned that the video game’s similarity in the look and feel to “The Play Pen” has some artistic relevance to Rockstar’s artistic goal, which was to develop a cartoon-style parody of East Los Angeles. The Ninth Circuit added that nothing indicated that the buying public would reasonably have believed that ESS produced the video game or that Rockstar operated a strip club. It is true that a player can enter the virtual strip club in Los Santos, but ESS failed to provide any evidence that the setting is anything but generic. On the basis of the foregoing, the Ninth Circuit affirmed the district court's grant of summary judgment.

Detailed Summary:

The issue in this case is whether a producer of a video game in the “Grand Theft Auto” series has a defense under the First Amendment against a claim of trademark infringement. Opinion, p. 15146.

Rockstar Games, Inc. (“Rockstar”), a wholly owned subsidiary of Take-Two Interactive Software, Inc., manufactures and distributes the Grand Theft Auto series of video games (the “Series”), including Grant Theft Auto: San Andreas (“San Andreas” or the “Game”). The Series is known for an irreverent and sometimes crass brand of humor, gratuitous violence and sex, and overall seediness. Id., pp. 15146-15147.

Consistent with the tone of the Series, San Andreas allows a player to experience a version of West Coast “gangster” culture. The Game takes place in the virtual cities of “Los Santos,” “San Fierro,” and “Las Venturas,” based on Los Angeles, San Francisco, and Las Vegas, respectively. Los Santos, of course, mimics the look and feel of actual Los Angeles neighborhoods. Instead of “Hollywood,” “Santa Monica,” “Venice Beach,” and “Compton,” Los Santos contains “Vinewood,” “Santa Maria,” “Verona Beach,” and “Ganton.”

ESS Entertainment 2000, Inc. (“ESS”), operates a strip club, which features females dancing nude, on the eastern edge of downtown Los Angeles under the name Play Pen Gentlemen’s Club (“Play Pen”). ESS claims that Rockstar’s depiction of an East Los Santos strip club called the Pig Pen infringes its trademark and trade dress associated with the Play Pen.

ESS filed the underlying trademark violation action in the U.S. District Court for the Central District of California against Rockstar. The 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. Id., p. 15149.

In response, Rockstar moved for summary judgment on all of ESS’s claims, arguing that the affirmative defenses of nominative fair use and the First Amendment protected it against liability. It also argued that its use of ESS’s intellectual property did not infringe ESS’s trademark by creating a “likelihood of confusion.”

Although the district court rejected Rockstar’s nominative fair use defense, it granted summary judgment based on the First Amendment defense. The district court did not address the merits of the trademark claim because its finding that Rockstar had a defense against liability made such analysis unnecessary.

In this appeal, Rockstar argued that, regardless of whether it infringed ESS’s trademark under the Lanham Act or related California law, it is entitled to two defenses: one under the nominative fair use doctrine and one under the First Amendment.

Addressing the nominative fair use defense of Rockstar, the Ninth Circuit held that since Rockstar did not use the trademarked logo to describe ESS’s strip club, the district court correctly held that the nominative fair use defense does not apply in this case.  Id., pp. 15150-15151, citing Playboy Enters, Inc. v. Welles, 279 F.3d 796, 801.

With regard to Rockstar’s first Amendment defense, ESS argued both that the incorporation of the Pig Pen into the Game has no artistic relevance and that it is explicitly misleading. It based its argument on two observations: (1) the Game is not “about” ESS’s Play Pen club the way that “Barbie Girl” was “about” the Barbie doll in Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002) ; and (2) also unlike the Barbie case, where the trademark and trade dress at issue was a cultural icon (Barbie), the Play Pen is not a cultural icon.

The Ninth Circuit described ESS’s objection as factually accurate, but missed the point. Specifically , it held: “Under MCA Records and the cases that followed it, only the use of a trademark with ’ ‘no artistic relevance to the underlying work whatsoever’ ‘does not merit First Amendment protection. Id. (emphasis added) (quoting Rogers, 875 F.2d at 999). In other words, the level of relevance merely must be above zero. It is true that the Game is not ‘about’ the Play Pen the way that Barbie Girl was about Barbie. But, given the low threshold the Game must surmount, that fact is hardly dispositive. It is also true that Play Pen has little cultural significance, but the same could be said about most of the individual establishments in East Los Angeles. Like most urban neighborhoods, its distinctiveness lies in its ‘look and feel,’ not in particular destinations as in a downtown or tourist district. And that neighborhood, with all that characterizes it, is relevant to Rockstar’s artistic goal, which is to develop a cartoon-style parody of East Los Angeles. Possibly 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. In this context, we conclude that to include a strip club that is similar in look and feel to the Play Pen does indeed have at least ‘some artistic relevance.’ See id.” Id., pp. 15152-15153.

ESS also argued that Rockstar’s use of the Pig Pen “ ‘explicitly misleads as to the source or the content of the work.’ ” Id.

The Ninth Circuit however rejected this argument of ESS, stating that both “San Andreas and the Play Pen offer a form of lowbrow entertainment; besides this general similarity, they have nothing in common. The San Andreas Game is not complementary to the Play Pen. 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. A player can enter the virtual strip club in Los Santos, but ESS has provided no evidence that the setting is anything but generic. It also seems far-fetched that someone playing San Andreas would think ESS had provided whatever expertise, support, or unique strip-club knowledge it possesses to the production of the game.” Id., p. 15154.

Considering all of the foregoing, the Ninth Circuit concluded that Rockstar’s modification of ESS’s trademark is not explicitly misleading and is thus protected by the First Amendment. Since the First Amendment defense applies equally to ESS’s state law claims as to its Lanham Act claim, the Ninth Circuit held that the district court properly dismissed the entire case on Rockstar’s motion for summary judgment.

View a PDF of the judicial opinion

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.

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Companies Mentioned

Trademark Law

The following companies are mentioned in Trademark Law Updates:

Tiffany (NJ) Inc.

Tiffany & Co.

eBay, Inc.

Louis Vuitton Malletier S.A.

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

NTU Electronics, Inc.

Trademark Trial and Appeal Board

Midway Services, Inc.

MDCO, Inc.

Custom Manufacturing and Engineering, Inc.

Automated Engineering Corp.

Internet Specialties West, Inc.

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

International Trademark Association

Google, Inc.

Adidas-Salomon AG

Hansen Energy and Environmental, LLC

Bose Corp.

Adidas America, Inc.

Ly U.S.A., Inc.

Field Sanitation Solutions, Inc.

Wham-O, Inc.

Venture Tape Corp.

Coco U.S.A. Inc.

Faith Unlimited, Inc.

Manley Toys, Ltd.

McGills Glass Warehouse

Marco Leather Goods, Ltd.

WMS Gaming, Inc.

AW Computer Holdings LLC

WPC Productions Ltd.

Wolfe’s Borough Coffee, Inc. d.b.a. Black Bear Micro Roastery

PartyGaming PLC

Starbucks U.S. Brands, LLC

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