Grand Theft Trademark?

E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., --- F.Supp.2d ---, 2006 WL 2258336 (C.D. Cal.). Trademark Blog discussion here.

Plaintiff does business as the Play Pen Gentlemen’s Club, an adult-oriented entertainment business at the eastern edge of downtown Los Angeles. Defendant makes and sells Grand Theft Auto: San Andreas (GTA: San Andreas). One of the locations players can visit in the game is the “Pig Pen,” a strip club, located in at the eastern edge of downtown “Los Santos,” corresponding to Los Angeles. Plaintiff therefore sued for violations of §43(a) and coordinate state law (logo and trade dress infringement and unfair competition). Plaintiff lost.

The parties sniped over whether GTA games are known for “parody” or simply “irreverent humor” (this, I take it, means that shooting people and brutalizing prostitutes in the game is good, point-earning fun). The court, following 9^th Circuit precedent, holds that the presence of parody is a matter of law for the court to decide.

Los Santos mimics the look and feel of actual Los Angeles locations. Neighborhoods are filled with cartoon-style liquor stores, ammunition dealers, casinos, pawn shops, tattoo parlors, bars, and strip clubs, etc. Brand names, business names, and other aspects have been changed to fit the overall Los Santos look-and-feel. The game includes a disclaimer stating that the locations are fictional, but the artists who animated San Andreas used reference photographs of the corresponding areas, and the artists who drew the Pig Pen used pictures of the Play Pen and various other East L.A. locations to design the Pig Pen. The artists made changes because they weren’t seeking to recreate a realistic L.A. but rather a fictional city that “lampooned” the seedy underbelly of L.A. The artists agreed, however, that they didn’t choose “Pig” to parody strip club patrons or because they found pigs funny.

The court set forth a number of differences between the overall look of the clubs and differences in the parties’ markets; concluded that both strip club consumers and video game consumers are relatively sophisticated in that they know what they want; and noted defendant’s consumer survey showing essentially no confusion.

It then rejected the nominative fair use defense. In order to avail itself of this defense, the defendant must in fact be talking about the plaintiff, and the defendant argued that it was depicting and mocking strip clubs in general, rather than the plaintiff. I can see situations where a user ought to be able to pick a particular instance of a general type and then distort that in order to mock the overall category, so I’m not thrilled with this outcome – but see next paragraph.

The court’s nominative fair use analysis is in some tension with the court’s simultaneous conclusion that the game was entitled to extra leeway in the confusion analysis because of First Amendment concerns. The court found that the Pig Pen has artistic relevance to the game’s “twisted, irreverent” image of urban L.A., and thus the borrowing of plaintiff’s trade dress and mark was connected to the artistic design of the game. If the Pig Pen isn’t the Play Pen, I’m not quite sure how the first half of that sentence connects to the second, unless the point is that the borrowed elements were also quite common (the court had found that images of nude women in strip club logos, “totally nude” in strip club ads, awnings, and even the association of strip clubs with “play pens” were all common elements). The court rejected claims that the Play Pen wasn’t recognizable enough to justify commentary and that there could be no commentary because defendants didn’t copy the full trade dress.

Because there was artistic relevance and defendant didn’t make any explicit misrepresentations about the Play Pen, defendant prevailed. The court suggested that, given that the Pig Pen is hidden in the game, deception is less likely than it was in Rogers v. Grimaldi or Mattel v. MCA Records, where titles were involved. Given the extent of product placement in video games these days, I’m not sure that distinction is justified – the court cites false advertising cases noting that a representation on materials hidden in the package can’t affect a purchase decision, but on the trademark side courts have been willing to recognize post-sale confusion and harm to a plaintiff’s goodwill in similar circumstances. That’s not to say the decision was wrong – it’s plainly right – but basically the court overthought the whole thing, as a perusal of the very long opinion will show.