E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc.
547 F.3d 1095, 88 U.S.P.Q. 2d (BNA) 1691, 2008 U.S. App. LEXIS 23294 (2008)
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Rule of Law:
The use of a trademark in an artistic work is protected by the First Amendment and does not constitute infringement unless the use has no artistic relevance to the underlying work, or, if it has some relevance, it explicitly misleads as to the source or content of the work.
Facts:
- Rockstar Games, Inc. produces the 'Grand Theft Auto' video game series, including 'Grand Theft Auto: San Andreas'.
- The game is set in 'Los Santos,' a fictional, satirical city modeled after Los Angeles.
- Rockstar's artists took reference photographs of real Los Angeles locations, including the Play Pen Gentlemen's Club, to create the 'look and feel' of Los Santos.
- ESS Entertainment 2000, Inc. operates the Play Pen Gentlemen's Club, a strip club in Los Angeles with a distinct logo and trade dress.
- The game features a virtual strip club in its 'East Los Santos' neighborhood called the 'Pig Pen,' which was inspired by, but not identical to, the real Play Pen.
- Rockstar's stated artistic goal was to create a cartoon-style parody of East Los Angeles, not to comment on the Play Pen specifically.
Procedural Posture:
- ESS Entertainment 2000, Inc. sued Rockstar Games, Inc. in federal district court.
- ESS asserted claims for trade dress infringement and unfair competition under the federal Lanham Act and California state law.
- Rockstar moved for summary judgment, arguing it was protected by the First Amendment.
- The district court granted summary judgment in favor of Rockstar, finding its use of the trade dress was protected by the First Amendment.
- ESS, the plaintiff-appellant, appealed the district court's decision to the U.S. Court of Appeals for the Ninth Circuit.
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Issue:
Does the First Amendment provide a defense against a trademark infringement claim for a video game producer who uses a modified version of a real-world business's trade dress in an expressive, artistic work?
Opinions:
Majority - O'Scannlain, J.
Yes. The First Amendment protects Rockstar's use of a modified version of ESS's trade dress because the use passes the two-prong Rogers test. First, the inclusion of the 'Pig Pen' strip club has artistic relevance to the underlying work, as it is part of Rockstar's broader goal to create a satirical parody of the 'look and feel' of East Los Angeles. The court emphasized that the level of relevance required is low—merely 'above zero.' Second, the use of the 'Pig Pen' does not explicitly mislead consumers as to the source of the game. A reasonable consumer would not believe that a single strip club (ESS) produced a technologically sophisticated video game, nor that the game developer (Rockstar) was affiliated with the club. The mere use of a similar mark is insufficient to be explicitly misleading.
Analysis:
This case is significant for extending the First Amendment 'Rogers test,' traditionally applied to the titles of artistic works, to the content within the body of an artistic work, specifically a video game. It solidifies the principle that video games are expressive works entitled to strong First Amendment protection. The decision provides substantial creative freedom to game developers and other artists, allowing them to incorporate and parody elements of the real world so long as the use has minimal artistic relevance and does not explicitly trick consumers about sponsorship or origin.
