Ninth Circuit to Plaintiff: Game Over! Virtual 'Pig Pen' Protected By First Amendment; 'Barbie Girl' Case Extended to Non-titular Expressive Works

Jane Shay Wald is a partner with Irell & Manella LLP in the Los Angeles office and chairs the firm's Trademark Practice Group. She can be reached at 310-277-1010 and [email protected].

The defendants, producers of the irreverent and popular “Grand Theft Auto” video game series, came out with “Grand Theft Auto: San Andreas.” Players enter the gangster culture of the West Coast in the virtual city of Los Santos, dodging drug pushers and prostitutes in a neighborhood replete with virtual liquor stores, ammo dealers, casinos, pawn shops, tattoo parlors, bars, and strip clubs, while enjoying the sound of random gunfire, in a setting lampooning “the seedy underbelly of LA,” according to its artists. The video game, of course, was a big hit. The game includes, among countless other low-end virtual elements, a strip club named “Pig Pen.”

The plaintiff operates an actual strip club, Play Pen Gentlemen's Club, and brought suit claiming that Pig Pen infringed its mark “Play Pen” and the trade dress associated with it. That allegedly distinctive trade dress included, inter alia, a logo version of the phrase “Totally Nude,” combined with the silhouette of a naked female.

In the intersection between trademark rights and the First Amendment, the Ninth Circuit, relying on Rogers and MCA, upheld the District Court's grant of summary judgment finding that the First Amendment protected the look of the video game's virtual strip joint, as well as the use of the Pig Pen name. E.S.S. Entertainment 2000, Inc. d/b/a Playpen v. Rock Star Videos, Inc. , 547 F.3d 1095 (9th Cir. 2008). The Ninth Circuit agreed that there was no trademark infringement of the name of plaintiff's actual strip club, Play Pen, or the “trade dress” in plaintiff's strip club, because the First Amendment allowed the defendants' use.

An Important Step Forward

E.S.S. Entertainment is an important step forward for the entertainment/video game industry. In affirming the District Court, the Ninth Circuit extended the
application of the Rogers v. Grimaldi , 875 F.2d 994, 999 (2d Cir. 1989) and
Mattel, Inc. v. MCA Records, Inc. , 296 F.3d 894, 902 (9th Cir. 2002) doctrine to “non-titular” trade dress in artistic works, and not just to titles of artistic works. The two-pronged test in Rogers and its progeny concerned only the First Amendment rights in titles of expressive works, where the title bore at least a minimal relationship to the artistic work, and did not expressly mislead. Rogers concerned the movie title, “Frederico Fellini's Ginger and Fred,“ and MCA concerned a song title, “Aqua's Barbie Girl.” In both of those doctrinal cases, the First Amendment prevailed in fact patterns where the titles of the movie and song were in dispute.

The title of the defendants' game is, of course, “Grand Theft Auto: San Andreas,” and not “Pig Pen.” (Moreover, the trade dress and logo, and not just the Pig Pen name, were also asserted by the plaintiff to infringe). In E.S.S. Entertainment, the Ninth Circuit discussed the application of Rogers and MCA to the Pig Pen facts and said: “Although this test traditionally applies to uses of a trademark in the title of an artistic work, there is no principled reason why it ought not also apply to the use of a trademark in the body of the work.” 547 F.3d at 1099. This decision elevated the non-titular application of the doctrine from footnote dictum in Mattel Inc. v. Walking Mountain Prods. , 353 F.3d 792, 809 n. 17, and incorporated it fully into the Rogers doctrine ' a doctrine itself adopted by the Ninth Circuit in the “Barbie Girl” song case of Mattel, Inc. v. MCA.

That doctrine protects an artistic work's use of a trademark that otherwise would violate the Lanham Act, as determined by a two-prong test. The use is not actionable: 1) unless the use has no artistic relevance to the work whatsoever, or 2) if it has some artistic relevance, unless it explicitly misleads as to the source or content of the work.

The plaintiff argued that defendants failed the test on both prongs, objecting that incorporation of Pig Pen into the game had no artistic relevance and was explicitly misleading. It sought to distinguish the MCA Records, “Barbie Girl” song case, arguing that the video game is not “'about' [plaintiff's] Play Pen club the way that 'Barbie Girl' was 'about' the Barbie doll in MCA Records” and also that Barbie was a cultural icon, while Play Pen is not. These objections miss the point, said the court. MCA Records and the cases that followed it require that the level of artistic relevance “merely must be above zero.” E.S.S. Entertainment, 547 F.3d at 1100.

In a step forward in First Amendment protection of expressive works, the court, examining the first prong, found the requisite “artistic relevance.” It found that Defendants' use of the Pig Pen virtual strip club was important to the game's “artistic goal to develop a cartoon-style parody of East Los Angeles.” Id. The court stated that, “[p]ossibly the only way, and certainly a reasonable way, to do that is to create a critical mass of the businesses and buildings that constitute it. 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.'” Id.

A Positive First Amendment Development

It is a significant and positive First Amendment development that the Ninth Circuit did not require that Pig Pen directly parody the plaintiff's strip joint or the plaintiff's Play Pen mark, or serve as commentary about the plaintiff or otherwise directly spoof the plaintiff's strip club. The use of the Pig Pen term and “look and feel” of the virtual strip club to parody an entire neighborhood were proper.

As to Plaintiff's “second prong” argument that Pig Pen “explicitly misleads,” the district court instructed that this prong goes to the purpose of trademark law, which is to avoid confusion in the marketplace. The court identified the relevant question as whether Defendants' game “would confuse its players into thinking that the Play Pen is somehow behind the Pig Pen or that it sponsors [Defendants'] 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.” The court found that there could be no likelihood of confusion for a number of reasons. Besides being “low-brow entertainment,” the parties' offerings have nothing in common. The video game is not “complementary” to the strip club. “[V]ideo games and strip clubs do not go together like a horse and carriage ' ” E.S.S. Entertainment, 547 F.3d at 1100. A player could enter into the Pig Pen, but the court found Plaintiff had provided no evidence that the virtual strip club was anything but generic.

The court also found it far-fetched that someone playing the video game would think Plaintiff had provided whatever “unique strip-club knowledge it possesses to the production of the game. After all, the Game does not revolve around running or patronizing a strip club. Whatever one can do at the Pig Pen seems quite incidental to the overall story ' ” Id. at 1100.

Plaintiff protested that players can ignore the story line and just hang out at the Pig Pen, thus rendering the Pig Pen “a significant part of the game, leading to confusion.” Id. at 1101. The court, finding that the defendants' modification of the plaintiff's mark was not explicitly misleading, was not impressed, countering: “But fans can spend all nine innings of a baseball game at the hot dog stand; that hardly makes Dodger Stadium a butcher's shop.” Id.

While the defendant prevailed in its bid for summary judgment entirely on First Amendment grounds, it had asserted a “nominative fair use” defense as well. The District Court had rejected this defense, and the Ninth Circuit affirmed the District Court on this finding too.

Unlike traditional fair use, nominative fair use occurs where the defendant uses the trademarked term primarily to describe not its own product, but the plaintiff's, even though the defendant may also inevitably be described by such use. Citing Playboy Enters., Inc. v. Welles , 279 F. 3d 796, 801 (9th Cir. 2002), in which a former Playboy Playmate was allowed to describe herself as such, in those words, on her commercial Web site, without interference by Playboy. While the nominative fair use doctrine protects a defendant who uses the plaintiff's trademark for comparison, criticism, or point of reference, that is not what happened here. Pig Pen is not identical to Play Pen. This is inconsistent with the purpose of nominative fair use. Moreover, Pig Pen is not intended to comment on the plaintiff's Play Pen mark. Ironically, if defendants had called their virtual strip club “Play Pen” and had intended to refer to and comment upon the plaintiff's club, they would likely have fallen within the protection of the nominative fair use doctrine. By avoiding such copying, they did not meet the test for that defense. Nor, given the First Amendment result, did they need to.

Jane Shay Wald is a partner with Irell & Manella LLP in the Los Angeles office and chairs the firm's Trademark Practice Group. She can be reached at 310-277-1010 and [email protected].