Given the ever increasing cross-referencing of pop culture in entertainment products, video games frequently may portray or reference actual persons, places or things, including trademarks, in their representation of the digitized worlds they depict. This raises questions of whether such uses, if unauthorized, violate the trademark rights and similar rights of third parties. In such cases, the First Amendment may protect expressive artistic works from trademark infringement actions under the Lanham Act, the federal trademark law. In two recent cases, the United States Court of Appeals for the Ninth Circuit and the United States District Court for the Eastern District of Michigan each held that video game manufacturers were not liable under the Lanham Act for infringement and false endorsement based on First Amendment protections.

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

In the first case, the owner of a strip club in Los Angeles called “Play Pen” sued the manufacturer of the video game Grand Theft Auto: San Andreas for trade dress infringement, trademark infringement and unfair competition.1 The video game depicts cartoonish cities modeled after actual American urban cities including “Los Santos,” modeled after Los Angeles. East Los Santos contains variations of actual businesses and architecture including a virtual cartoon-style strip club known as “Pig Pen,” which was designed in part using photographs of the Play Pen.

The club owner claimed that the video game manufacturer had used Play Pen’s logo and trade dress without authorization, and had created a likelihood of confusion among consumers as to whether the club owner had endorsed, or was associated with, the video game. The video game manufacturer argued that the First Amendment protected it against liability.

The Ninth Circuit noted that the issue under consideration involved “the intersection of trademark law and the First Amendment,” and that it had adopted the Second Circuit’s approach from Rogers v. Grimaldi,2 which “requires courts to construe the Lanham Act ‘to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.’” The court further noted that an artistic work’s use of a trademark that otherwise would constitute trademark infringement under the Lanham Act is not actionable (1) unless the use of the mark has no artistic relevance to the underlying work whatsoever or (2) if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work. The court stated that although the test traditionally has been applied to the use of a trademark in the title of an artistic work, there is no reason why the test should not also apply to the use of a trademark in the body of the artistic work.

With respect to the first prong of the test, the court concluded that the use of the modified “Play Pen” mark and location in the video game had “some artistic relevance,” because recreating businesses in the area is the only way to achieve the artistic goal of developing a cartoon-style parody of East Los Angeles. With respect to the second prong of the test, the court noted that it seems “far-fetched” that someone playing the video game would think that the strip club owner provided any expertise or knowledge to the production of the video game, and determined that a reasonable consumer would not think that a company that owns one strip club in East Los Angeles, which is not well known to the general public, also produces a technologically sophisticated video game. The court concluded that because video games and strip clubs have nothing in common, nothing indicates that the buying public would reasonably have believed that the club owner produced the video game, or that the video game manufacturer operated a strip club. Accordingly, the court held that the video game manufacturer’s use and modification of the club owner’s mark was not explicitly misleading and was protected by the First Amendment.  

The Romantics v. Activision Publishing, Inc.

In the second case, a video game manufacturer used the musical composition “What I Like About You,” written and recorded by the band The Romantics, in its video game Guitar Hero Encore: Rock the 80’s.3 The manufacturer had obtained a valid synchronization license from the owner of the copyright in the song, EMI Entertainment World, Inc., which permitted the manufacturer to record its own version of the song to use in the video game. If and when a player encounters the song in the game, it is clearly identified by the song title and the words “as made famous by The Romantics,” which the court noted informs players and onlookers that The Romantics are not actually performing the song.

The Romantics’ members sued the video game manufacturer for, among other things, false endorsement and unfair competition under the Lanham Act, claiming that players of the game had been, or were likely to be in the future, confused, deceived or mistaken about whether the band sponsored or endorsed the game. The manufacturer in this case also argued that the First Amendment protected it against liability

The district court noted that the video game contains numerous creative elements – for example, it allows players to select a character, costumes and model of guitar to be used by the character on screen. When game play begins, a stylized display of a rock concert appears, with an audience, stage, band, lighting and stage effects. One mode of the game allows players to start off playing small venues and to advance to progressively larger venues, much like the progression of an up-and-coming band. Because it allows players to customize their game play and contains large amounts of original artwork, the court concluded that the video game was an expressive artistic work entitled to First Amendment protection.

The court noted that the Sixth Circuit (in which the court is located) applies the Rogers test to Lanham Act claims, observing that under this test, “the Lanham Act should be applied to artistic works only where the public interest in avoiding confusion outweighs the public interest in free expression.” The court found that neither the video game nor any of its promotional materials contained any explicit indication that the band members endorsed the game or had any role in producing it. In addition, the court noted that the song is described “as made famous by The Romantics,” which informs consumers that the version of the song in the game is not actually performed by The Romantics. The court concluded that these and other facts illustrated that the manufacturer’s use of the song did not expressly mislead the public as to the song’s source. Accordingly, the court held that the use of the song was protected by the First Amendment.

Conclusion

These decisions indicate that in many instances game manufacturers’ unauthorized uses of trademarks or trade dress in their video games may be protected by the First Amendment. The analysis of whether a particular game is protected, however, and whether third party permissions are necessary in order to use certain content, can be complicated, making a comprehensive legal clearance review a necessary pre-release step when third party trademarks or other content are to be included in a game.