9th Circuit Finds that Video Game did not Infringe Strip Club’s Trademarks under First Amendment Defense
E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., No. 06-56237, 2008 U.S. App. LEXIS 23294 (9th Cir. Nov. 5, 2008)
Grand Theft Auto (“GTA”) is a series of video games known for their irreverent humor, violence and seedy characters. Players have to complete missions while driving around virtual cities, interacting with (and on occasion shooting at) gang members and prostitutes. The latest in the series, GTA: San Andreas takes place in the fictional city of Los Santos, a lampoon of Los Angeles. The game features a virtual strip club called “Pig Pen” that resembles the L.A. “gentlemen club” PLAY PEN (including a similar awning and font, use of the silhouette of a woman in the stem of the first letter “P” and the words “Totally Nude”).
Play Pen sued the game developers for trademark, infringement, trade dress infringement and unfair competition.
The 9th Circuit dismissed the case, holding that the use was protected by the First Amendment and the modification of the trademark was not explicitly misleading. The First Amendment defense applies to artistic works’ use of a trademark, unless the use has no artistic relevance whatsoever (i.e., the “level of relevance merely must be above zero”); or unless it explicitly misleads as to the source or content of the work (citing the “Barbie Girl” case, Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002)). The Court found that, while both the game and plaintiff’s club offer “low brow entertainment,” they have nothing in common. The public is simply not likely to believe that the game was produced by Play Pen.
The court, however, rejected defendants’ nominative fair use defense because nominative fair use occurs “when the defendant… use[s] the trademarked term to describe not its own product, but the plaintiff’s.” Here, the video game did not use the logo to describe Play Pen so nominative fair use did not apply.
Final Note: While the result of this case is not all that surprising, the opinion provides a good overview of the 9th Circuit First Amendment defense. It is also worth reading, if only for nuggets such as these:
[V]ideo games and strip clubs do not go together like horse and carriage or, perish the thought, love and marriage.
Or this one:
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.