Realistic Games, Trademark, and Grand Theft Auto

Grand Theft Auto, arguably the greatest Metaverse so far with an environment that recreates entire cities for your avatar to wander, has some of the strongest appeal of any game as far as a realistic environment: I remember finding my apartment and several of my favorite NYC hangouts in Liberty City. The realism of this franchise was a bit of a legal liability, however, and doing subtle changes like changing a “Porsche” to a “Pork” the way they did in the original Grand Theft Auto just couldn’t keep them safe from allegations of trademark infringement forever.

In this article, I’ll be examining trademark in realistic gaming through the lens of the 9th Circuit case citing to Second Circuit precedent, Entertainment 2000 Inc. v. Rock Star Videos, Inc., where Rockstar Games had to defend itself in court from a strip club owner over claims of trademark infringement.

Disclaimer: Please keep in mind this is not legal advice and reading this does not create any attorney-client relationship.

The Pig Pen, GTA’s version of the Play Pen, became the subject of a lawsuit and important precedent for realistic games and trademark

Background

The court began by outlining the realism of the game, discussing how “Hollywood” became “Vinewood,” “Santa Monica” became “Santa Maria” and “Venice Beach” became “Verona Beach,” taking an air of realism despite an explicit disclaimer that the locations depicted are fictional. The court took note of the style of the gameplay and stories, and that within these fictional cities are missions involving interactions with ammunition dealers, casinos, pawn shops, drug dealers, tattoo parlors, bars, and, most relevantly to the case at hand, strip clubs.

To generate their version of Los Santos, the stand-in for Los Angeles, the artists traveled from Scotland to LA to take photographs for reference, taking pictures of streets, businesses, and landmarks that would allow them to recreate the look and feel of the city before returning to their country to develop the game. Nikolas Taylor, the Lead Map Artist for Los Santos, claimed that they were not recreating a realistic depiction of LA, rather, a fictional city as a parody of the seedy underbelly of LA and its businesses, people, and landmarks.

Much like the names of cities and in keeping with the irreverent tone of the game in general, businesses had their names changed in often seedily-humorous ways, such as changing the name of an East Los Angeles strip club from the the “Play Pen” to the cartoonish East Los Santos strip club, the “Pig Pen.” ESS Entertainment 2000, the company which operates the strip club, sued, claiming that the Pig Pen infringed on its trademark and trade dress associated with the Play Pen.

While this case is the sort that 1Ls may giggle over, the way in which the court applies a 1st Amendment defense to trademark infringement in realistic gaming is vital for attorneys who will be representing gaming developers recreating the real world and incredibly relevant for what a Metaverse may look like: it shows the broad leeway that is allowable and outlines the boundaries of trademark infringement claims in the genre by applying a standard that is applicable to California built upon precedent that is binding in New York, two major hubs of game development.

Trademark and Trade Dress Infringement Claims

While there were nuances to the allegations, they essentially boiled down to a claim of trademark and trade dress infringement.

Rockstar’s argument in defense to trademark infringement under the Lanham Act was nominative fair use as well as the First Amendment, and that its use of the trademark did not infringe by creating a likelihood of confusion. Nominative fair use is a defense asserted when a defendant uses a trademarked term to describe a product that is not its own, rather, is that of the plaintiff. This doctrine protects defendants who have deliberately used the trademark or trade dress of a plaintiff for the purposes of comparison, criticism, or point of reference.

Nominative Fair Use Defense

Here the court drew a distinction: the use of the Pig Pen was not identical to that of the Play Pen. There were several important differences as the photographs of other East Los Angeles locations were used to design the Pig Pen. Some of these differences the court highlighted were “…a stone facade, a valet stand, large plants and gold columns around the entrance, and a six-foot black iron fence around the parking lot. The Play Pen also has a red, white, and blue pole sign near the premises, which includes a trio of nude silhouettes above the logo and a separate ‘Totally Nude’ sign below. The Pig Pen does not.”

Rockstar’s Lead Map Artist testified that the goal of designing the Pig Pen was not to comment on the Play Pen, thus Rockstar did not use the trademarked logo to describe the Plaintiff’s strip club. Because the use of the Play Pen’s trademarked logo was not to describe the Play Pen, the court found that nominative fair use did not apply.

First Amendment

The court then moved on to the intersection of trademark law and the First Amendment, elaborating that they have adopted the Second Circuit’s approach from Rogers v. Grimaldi. This case “requires courts to construe the Lanham act ‘to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.’” Mattel Inc. v. Walking Mountain Prods, quoting Rogers v. Grimaldi.

This argument has a two-pronged test that the ESS Entertainment 2000 court laid out (quoting Mattel, Inc. v. MCA Records, Inc [the Barbie Girl song case], which quotes Rogers v. Grimaldi): “An artistic work's use of a trademark that otherwise would violate the Lanham Act is not actionable ‘ “unless the [use of the mark] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless [it] explicitly misleads as to the source or the content of the work.” ’ ”

This test is not a particularly generous one to a plaintiff. The court, quoting the aforementioned Mattel Barbie Girl case, continued that “Under MCA Records and the cases that followed it, only the use of a trademark with ‘ “no artistic relevance to the underlying work whatsoever” ’ does not merit First Amendment protection. Id. (emphasis added) (quoting Rogers, 875 F.2d at 999). In other words, the level of relevance merely must be above zero… in this context, we conclude that to include a strip club that is similar in look and feel to the Play Pen does indeed have at least ‘some artistic relevance.’ See id.”

The plaintiff then argued that the use of the Pig Pen misleads as to the source and content of the work that constitutes the second prong of the test. The court then opined that “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 a fairly judgy part of the judgement, the court elaborated that “Both San Andreas and the Play Pen offer a form of low-brow entertainment; besides this general similarity, they have nothing in common. The San Andreas Game is not complementary to the Play Pen; video games and strip clubs do not go together like a horse and carriage or, perish the thought, love and marriage.” Bonus points for quoting the theme song to Married with Children, achievement unlocked (though the funniest opinion in intellectual property, IMHO, is still DC Comics v. Towle).

While the plaintiff made several additional arguments about how players could ignore the rest of the game and spend time in the Pig Pen, the court found that it was not a significant part of the game, and would not lead to the sort of confusion that trademark law is designed to prevent; the court compared it to a baseball fan spending all nine innings of a baseball game at the hot dog stand not making Dodger Stadium a butcher’s shop.

The Takeaway

This 9th Circuit case, which relies upon a two-pronged test established from the logic of a Second Circuit case, provides fairly strong protection for realistic games regarding trademark infringement: essentially you need to either use a trademark in your game as a complete gratuity that is in no way related to the artistic endeavor of recreating a city, or you need to have a situation where your game explicitly misleads a gamer to as to the source of the work.