The Ninth Circuit affirmed summary judgment in favor of defendant, finding the inclusion of a potentially confusing mark and trade dress within a video game to be protectable speech under the First Amendment, and explicitly extended the balancing test first set forth in Rogers v. Grimaldi for titles of creative works to use of marks within the body of such works.



Plaintiff E.S.S. Entertainment 2000, Inc. (“ESS”) operates a Los Angeles strip club called the Play Pen Gentlemen’s Club (“PLAY PEN”).  Defendant Rock Star Videos, Inc. (“Rock Star”) manufactures and distributes the popular “Grand Theft Auto” video game series.  Each game in the series takes place in a cartoonish city modeled after actual U.S. cities, although each game includes a disclaimer stating that the locations depicted are fictional.  Rock Star’s “San Andreas” game allows a player to experience the “gangster” culture in fictional California towns, including “Los Santos,” which is based on Los Angeles.  The fictional towns are populated with virtual liquor stores, gun shops, tattoo parlors, bars, and strip clubs, many of which were created based on photos from actual neighborhoods, but the brand names, business names, and other aspects of the locations have been changed.  One such virtual strip club in the San Andreas game is the PIG PEN, which Rock Star loosely based on ESS’s PLAY PEN club.

ESS sued Rock Star, alleging that Rock Star’s imitation of the PLAY PEN word mark and logo within the video game would cause consumers to believe that ESS had endorsed, or was associated with, the video game.  The district court did not address the merits of the trademark claim, but granted summary judgment to Rock Star, finding that the First Amendment protected it from liability.  ESS appealed.


Rock Star first argued that its use of the marks was a nominative fair use.  The court rejected this argument, finding the nominative fair use defense inapplicable, since Rock Star did not use the actual mark or logo to identify ESS’s strip club, but instead used a variation of both marks as a source identifier for a fictional club.

Turning to Rock Star’s First Amendment defense, the court noted that in the context of creative works, the Ninth Circuit had previously adopted the Second Circuit’s approach in Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989).  This test requires courts to construe the Lanham Act narrowly to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.  The two-part test finds infringement only where the alleged use has no artistic relevance to the underlying work whatsoever, or if there is artistic relevance, only where the use explicitly misleads consumers regarding the source of the work.  In extending the Rogers test beyond titles of creative works, the court held that “there is no principled reason why it ought not also apply to the use of a trademark in the body of the work.”

Within this framework, the court dismissed ESS’s arguments that the incorporation of the PIG PEN mark into the game had no artistic relevance because the game was not “about” the strip club, stressing that only use of trademarks with absolutely no artistic relevance to the underlying work whatsoever would not merit First Amendment protection.  “In other words,” the court stated, “the level of relevance merely must be above zero.”  Because Rock Star’s artistic goal was to develop a cartoon-style parody of East Los Angeles, it was reasonable for Rock Star to re-create a critical mass of the businesses and buildings that constitute the city.

The court then considered whether Rock Star’s use of the mark PIG PEN explicitly misled as to the source or content of the work.  The relevant question here was “whether the game would confuse its players into thinking that the Play Pen is somehow behind the Pig Pen or that it sponsors the video game.”  The court noted that mere use of the trademark did not render such use explicitly misleading.  Noting that the real strip club and the video game had nothing in common other than that both were “a form of low brow entertainment,” the court found that there was nothing to indicate that the public would reasonably believe that ESS produced the video game, or that Rock Star operated a strip club.  And even though, as ESS urged, a player could ignore the game’s overarching story line and choose to spend all his or her playing time at the PIG PEN, the court did not believe that the PIG PEN was a significant component of the game.  Consequently, the court found that use of the PIG PEN mark was not explicitly misleading and was thus, under Rogers, protected by the First Amendment.


The Ninth Circuit explicitly held what had only been implied before—that in the context of creative works, the First Amendment balancing test set forth in Rogers extends beyond use of a mark in the title of a creative work to apply also to use within a work’s content.  In doing so, the court indicated that the first prong of the test, whether a mark is artistically relevant to the work, could be satisfied so long as the relevance was “above zero,” providing a very low threshold for creators to meet.