The video game industry has grown exponentially over the last two decades and was further supercharged by the COVID-19 pandemic. As developers seek to build more realistic virtual worlds in their products, including both video games and the metaverse, they increasingly include trademarks, trade names and trade dress in these virtual worlds. One important issue that confronts game developers is the extent to which the First Amendment protects a video game developer or publisher in using another party's trademark in a video game.
The Second Circuit issued the leading case on this issue in Rogers v. Grimaldi, which grappled with the competing public interests protected by trademark law and the First Amendment. Setting forth the foundational test that courts across the country would later apply, the Rogers court established a two-prong test: use of a trademark in an expressive work will not constitute trademark infringement unless "[1] the [use of the mark] has no artistic relevance to the underlying work whatsoever, or, [2] if it has some artistic relevance, unless the [use of the mark] explicitly misleads as to the source or the content of the work." The Ninth Circuit adopted the Rogers test in Mattel, Inc. v. MCA Records, Inc. and later applied the test to video games in E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc.
The "artistic relevance" prong of the Rogers test is a notably low bar, and "the level of relevance merely must be above zero." For example, use of a trademark to parody a real place or object can be sufficient to satisfy the artistic relevance prong, as demonstrated in E.S.S. Entm't. That case involved the video game Grand Theft Auto: San Andreas, set in the dystopic and fictional city of Los Santos modeled after Los Angeles. The game allowed players to complete various missions throughout Los Santos and "experience a version of West Coast 'gangster' culture." The game's creators built the virtual Los Santos in a manner that "mimic[ed] the look and feel of actual Los Angeles neighborhoods" while changing certain aspects, such as businesses and architecture, "to fit the irreverent 'Los Santos' tone."
At issue in E.S.S. Entm't was the game's virtual strip club named the Pig Pen, which allegedly used the logo and trade dress of the real-world Play Pen Gentlemen's Club located in Los Angeles. The club sued for trademark and trade dress infringement. In holding that the First Amendment barred the club's claims, the Ninth Circuit explained the game's use of a look and feel like that of the club's real establishment was artistically relevant to the game's goal of parodying Los Angeles.
Taking this conclusion just a short step further, the court in Brown v. Elec. Arts, Inc. held that artistic relevance can arise when a video game uses a trademark to enhance the "realism" of the game. In Brown, a famous Cleveland Browns football player asserted Lanham Act claims against Electronic Arts, Inc. for its depiction of him in Madden NFL video games. The Ninth Circuit held the First Amendment barred the plaintiff's claims, explaining in part that depicting the famous football player was artistically relevant to the central element of Electronic Arts' expressive goal: realism. The Ninth Circuit has since reached a similar conclusion in the context of trademarks used on video game racetrack signage and several district courts have similarly held that "realism" can make use of a trademark artistically relevant to the underlying video game.
But note even if a video game company can show its use of another party's trademark is artistically relevant to its game, under the second prong of the Rogers test it still may not use the mark in a manner that "explicitly misleads [consumers] as to the source or the content of the work." Indeed, the U.S. Supreme Court held last year in Jack Daniel's Properties v. VIP Products the Rogers test does not apply "when the accused infringer has used a trademark to designate the source of its own goods — in other words, has used a trademark as a trademark."
While the Jack Daniel's decision narrowed the applicability of Rogers, it did not abrogate the Rogers test. As the Ninth Circuit recently explained in Punchbowl, Inc. v. AJ Press, LLC, "[t]he Court in Jack Daniel's was careful to note that it was not opining on the broader validity of the Rogers test ... however, because the Supreme Court's decision in Jack Daniel's was confined to ... when a mark is used as a mark, preexisting Ninth Circuit precedent adopting and applying Rogers otherwise remains intact and binding[.]" Thus, the video game cases discussed in this article continue to be viable because the defendants in those cases used other parties' trademarks as small elements in larger works to enhance realism; not to designate the source of their goods.
The lesson to be gleaned is that while video game developers may still use Rogers as a shield against trademark infringement claims, they should be cautious not to use another's trademark in a way that designates the source of the video game.
Originally published in Puget Sound Business Journal
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