Thursday, September 03, 2015

TM/right of publicity mismatch claims another video game victim

Virag, SRL v. Sony Computer Entertainment America LLC, No. 3:15-cv-01729 (N.D. Cal. Aug. 21, 2015)
In yet another demonstration of the ridiculous mismatch between right of publicity law and trademark law, Sony wins dismissal of trademark claims for its use of a flooring company’s mark on a sign in its racing game, but a claim of a right of publicity violation based on the argument that the mark “personifies” the company’s principal survives, including a claim for punitive damages for that alleged violation.
Virag is a successful Italian company in the commercial flooring business.  Mirco Virag is one of its owners and a professional racing driver with a number of victories on the European Rally Circuit; he’s driven a Virag-sponsored car in the Rally of Monza race in Monza, Italy.   Virag’s mark is displayed on a bridge over the Monza track.  Allegedly, in the international racing world, the Virag mark has become a “personification” of Mirco Virag.
Sony makes race car driving simulation games under the name “Gran Turismo.”  Gran Turismo 5 and 6 included a simulated version of the Monza track, including the Virag mark on the bridge.  The games have sold over 13 million copies.  Virag and Mirco Virag allegedly received negative feedback from Virag customers about the appearance of the Virag mark in the games.
Sony allegedly excluded some other marks that appear at the Monza Track from the game, but allegedly intentionally incorporated Virag’s mark to create a false impression of sponsorship.  (Sigh.)  Sony also got licenses or authorization from other mark owners to use their marks, but not from Virag.  This appropriation allegedly generated millions of dollars in revenue.  (Note that false advertising plaintiffs get kicked out on the pleadings for making such ridiculous claims of damages.)
The Virag company’s right of publicity claim: A corporation lacks a right of publicity.  No case allows it, though groups of people may have rights of publicity they collectively assign to a corporation.  Use of a mark may implicate a real human being’s right of publicity if the mark identifies that human being, but that doesn’t give the corporate markholder a right of publicity in itself.
Mirco Virag’s right of publicity did survive, though the court acknowledged that the facts alleged didn’t match previous right of publicity cases.  Virag didn’t allege that Mirco Virag’s name etc. appeared in the game; plaintiffs alleged that Virag the mark identified flooring.  But White says that the issue is whether an individual’s “identity” has been misappropriated, and plaintiffs alleged that, in international racing, Virag the mark “personifies” Mirco Virag.  Virag has allegedly been using Mirco Virag’s success at racing to promote itself as a flooring company for years.  And that’s enough to state a claim, at least for purposes of a motion to dismiss.

A number of thoughts apart from the overall cry of agony: (1) Marketing and linguistic research indicates that conceptual links are not necessarily bidirectional. The alleged facts may well support the claim that Mirco Virag stands for Virag the mark, but that doesn’t mean that Virag the mark stands for Mirco Virag. (Before you say Motsenbacher, take a look at the actual Motsenbacher ad.)  (2)  If ever there were a case for incidental use, this would have to be it.  (3) Because this claim is identity-based, it does not depend on Virag the mark being the same, orthographically, as Mirco Virag’s last name.  On this theory, the use of “Microsoft” implicates Bill Gates’ right of publicity; “Apple,” Steve Jobs; “Virgin,” Richard Branson, etc.  (4) I can’t wait for the next Donald Trump right of publicity case based on this theory.
  (5) Good luck applying this theory on summary judgment!  How will we distinguish evoking Virag-the-mark from evoking Virag-the-person?  What evidence will be relevant?  This is especially important because …
Virag’s trademark infringement/false designation of origin claims were barred by the First Amendment.  Continuing from previous paragraph: given that the First Amendment absolutely protects references to Virag-the-mark, there are several significant sub-issues.  Among them: Should there be a heightened standard of proof to find that the reference is to Virag-the-person, because if the reference is only to Virag-the-mark and the factfinder is wrong, First Amendment-protected noncommercial speech is being suppressed?  Independently, suppose a factfinder determines that, because Mirco Virag personifies Virag, there is no way to make the First Amendment-protected reference to Virag without also making a reference to Mirco Virag.  (That is, after all, the logical consequence of the “personification” theory—any means of evoking Virag would invoke Mirco Virag as well.)  If there is a First Amendment right to make the trademark reference, shouldn’t that override the right of publicity here?  (Of course, it always should do so, but we need a case to say that.  This might actually be a good vehicle because the TM/ROP doctrinal divide reaches peak ridiculousness here, which is not the judge’s fault in this case.)

Anyhow, Rogers v. Grimaldi controls.  Virag argued that the games  had “no plot, no characters, no dialog, and no meaningful interaction between the game player and the virtual world,” but were just driving simulators.  Nope.  They have “characters (the race car drivers), plot (the drama of the races), and music. And there certainly is meaningful interaction between the game player and the virtual world: how else would a game player play the games? By not interacting with them?”  Brown v. Electronic Arts found that realistic simulations of American football [nice one, judge!] were protected expressive works; so too here.
smo 6. They all are expressive works that qualify for First Amendment protection.
Virag argued that Rogers didn’t apply because the Virag mark didn’t have enough cultural significance to be an integral part of our vocabulary, like Barbie.  That’s not a threshold for the Rogers test, as E.S.S. demonstrated when it applied Rogers to the Play Pen strip clup in L.A. despite the fact that the mark had “little cultural significance.”  Rogers can also be applied on a motion to dismiss because the standard for artistic relevance is so low—it’s an on/off test—and because the only limit is on explicit misleadingness, which can be judged on the face of the work.
“[G]iven the central role of realism to Gran Turismo 5 and Gran Turismo 6, the defendants’ use of the VIRAG® mark has at least some (i.e., more than zero) artistic relevance to the games.”  The fact that Sony allegedly used the mark for commercial gain was irrelevant as long as there was artistic relevance. There were no plausible allegations of explicit misleadingness.  It was insufficient that, given their involvement in the European racing scene, consumers could allegedly think that Virag provided expertise and knowledge for the games or sponsored them. “The mere use of a mark is not explicitly misleading, even if combined with consumer confusion.”  Electronic Arts, Inc. v. Textron Inc., No. C 12-00118 WHA, 2012 WL 3042668 (N.D. Cal. July 25, 2012), was not to the contrary.  Textron refused to dismiss a claim brought by Bell Helicopter about a helicopter focused game; it preceded Brown v. EA, where the Ninth Circuit “drove home the point that a defendant must give an ‘explicit indication’ or make an ‘overt claim’ or ‘explicit misstatement’ that causes consumer confusion.”  Plus, in that case, the helicopters were allegedly a main selling point for the game (which shouldn’t matter, given Brown), whereas here the games are racing games, not flooring games, and the Virag mark was “on a bridge over a track and not on a car,” which “comes nowhere close to an explicit misstatement as to source or content.”
However, Virag’s request for punitive damages for the right of publicity violation survived.  Punitive damages are available against a tortfeasor who has acted with “oppression, fraud, or malice.” Malice is “conduct which is intended by the defendant to cause injury to the plaintiff or despicable conduct which is carried on by the defendant with a willful and conscious disregard of the rights or safety of others.” In federal court, a plaintiff need not allege facts supporting the punitive damages claim with particularity.
The allegations of the complaint that Sony “intentionally and without authorization chose to incorporate the VIRAG® mark to create a false impression of sponsorship or authorization” and that Sony obtained licenses or authorization from other trademark holders to use their marks were enough to fall within the definition of malice—conduct intended to cause injury to the plaintiff.  But (1) those allegations go to the trademark claims, not the right of publicity claims, and the trademark claims are barred by the First Amendment; (2) relatedly, how could there be malice as to the ROP given the First Amendment protection for use of the mark to identify the mark owner?

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