Stripped-down confusion analysis in videogame case

E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc. (9^th Cir. 2008)

The 9^th Circuit affirmed the district court’s ruling that defendant Rockstar (despite the caption, that’s how the opinion refers to defendant) didn’t violate the Lanham Act when it put the Pig Pen, a strip club that looked kind of like plaintiff Play Pen, into its Grand Theft Auto game. Like the district court, the court of appeals rejected nominative fair use but accepted an independent First Amendment defense based on Rogers v. Grimaldi.

Eric Goldman has some thoughts here. To me, the decision highlights a conceptual weakness in the application of Rogers, and relatedly in the 9^th Circuit version of nominative fair use. Rogers allows artistic use of a trademark in a title (and, as applied here, in an expressive work generally), as long as the use does not “explicitly mislead” about the source or content of the work. But what does it mean to “explicitly mislead”? “The Authorized Biography” could be explicitly misleading if untrue, but once you leave titles behind, what else could count?

One easy answer is: almost nothing. Mention or depiction of a trademark in an expressive work is almost never going to claim explicit sponsorship, unless you’re Stephen Colbert with his Doritos sponsorship—incidentally, I wasn’t sure whether that was a real sponsorship or not for months; I have now read that it is.

Unfortunately, the 9^th Circuit muddied the waters considerably in its analysis. After quoting the “explicitly misleads” standard, it then proceeded to state that this test goes to the purpose of trademark law, protecting consumers against confusion. “The relevant question, therefore, is whether the Game would confuse its players into thinking that the Play Pen is somehow behind the Pig Pen or that it sponsors Rockstar’s product. In answering that question, we keep in mind our observation in MCA Records that the mere use of a trademark alone cannot suffice to make such use explicitly misleading.”

So then the court performed a quick and dirty confusion test. The goods aren’t particularly related. Reasonable consumers wouldn’t think there’s a connection between a smallish strip club and a technologically sophisticated video game. The strip club isn’t a big enough part of the game for consumers to assume source or sponsorship.

All true enough, but what in heck do these things have to do with whether there is any explicitly misleading statement in the game? The implicit theory must be that a sufficiently prominent presence in the game, plus a sufficiently intuitive connection between the business and the game, would somehow count as explicitly misleading despite the lack of, well, explicitness.

As a matter of social meaning, I am not a huge fan of the explicit/implicit line in false advertising law. Sometimes implicit claims can be made as or even more clearly than explicit claims. And certainly some in-game presences are reasonably understood to indicate that the trademark owner actually agreed to or even paid for the ad space—look at the reporting on Obama’s ad buys in videogames. But let’s not pretend that we’re talking about explicit versus implicit any more. The 9^th Circuit simply makes the law worse by pretending that its confusion analysis had anything to do with explicit misleadingness.

I mentioned nominative fair use above, because the panel in Abdul-Jabbar v. GM had the same trouble: the 9^th Circuit test’s third prong is that the defendant must do “nothing else” to suggest source or sponsorship other than using the plaintiff’s mark. GM did nothing else, but the court implicitly held that the very presence of Abdul-Jabbar’s name in a car commercial might be understood by consumers as an endorsement. That’s a reasonable hypothesis about consumer reaction; what it isn’t is a description of “something else” other than the use of the mark.

Rockstar is clearly rightly decided. But there’s something badly off with our theories of source and sponsorship, and the result is doctrinal rot: one simply cannot rely on courts’ statements of the rules, because the rules don’t match judges’ intuitions about consumer confusion. Would Rockstar have won the case if the Pig Pen had been a bigger part of the game? Who can tell?