Rockstar Games, Inc. is the maker of the highly successful series of Grand Theft Auto video games known for their adult nature and violent themes.  One incarnation of the series, Grand Theft Auto: San Andreas, released in 2004, includes a city modeled after Los Angeles known as “Los Santos.”  Los Santos was created by the video game artists by taking reference photographs of Los Angeles to create variations on the actual businesses and architecture for their fictional city.  One neighborhood in the fictional city contains a virtual strip club called the “Pig Pen.”  ESS Entertainment 2000, Inc., the owner and operator of an East L.A. strip club called the “Play Pen,” took offense and sued Rockstar for federal and state trademark infringement, claiming that Rockstar is confusing consumers into thinking that the Play Pen has endorsed, or is otherwise associated with, the game.  Rockstar asserted two defenses: nominative fair use and First Amendment protection.

Under a nominative fair use defense, the defendant essentially claims that its use of the plaintiff’s mark is not a trademark use at all; that is, the defendant is not using the mark to designate source or sponsorship but merely for purposes of comparison, criticism, or point of reference.  The court held that the nominative fair use defense did not apply in this case because Rockstar did not use the actual mark “Play Pen” and Rockstar’s aim was not to comment on the Play Pen per se.

The court did find for Rockstar, however, on its First Amendment defense.  Under a First Amendment defense, with respect to artistic works the court considers trademark infringement claims only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.  An artistic work’s use of a trademark that otherwise would violate 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 relevance, unless it explicitly misleads as to the source of the content of the work.

In the case of San Andreas, Rockstar’s artistic goal was to develop a cartoon-style parody of East L.A.  Since the Play Pen is part of that East L.A. neighborhood, including the strip club in the video game has at least some artistic relevance.  Moreover, the court concluded that there is no commonality between video games and strip clubs such that consumers would believe that ESS and Rockstar are affiliated in anyway.  As the court put it, “A reasonable consumer would not think a company that owns one strip club in East Los Angeles, which is not well known to the public at large, also produces a technologically sophisticated video game like San Andreas.”  Since Rockstar’s modification of the Play Pen mark was artistic and not explicitly misleading, Rockstar is protected by the First Amendment.

–Matt