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September 15, 2013 Vol. 68 No. 17 Back to Bulletin Main Page

Litigating the First Amendment Defense in the Video Game Context


In an effort to make video games more and more “lifelike,” developers are including every type of reality component possible, from the images of famous people to the use of brand owners’ trademarks and trade dress. While some of the use is the product of negotiated licenses, product placement and in-game advertising arrangements, some is not. The results—trademark infringement and right-of-publicity lawsuits—are making their way through U.S. courts. The defense to such claims? The First Amendment to the U.S. Constitution, which protects the freedom of speech.

Developers are quick to assert that the First Amendment protects their use of others’ marks and to invoke the two-part test first articulated by the U.S. Court of Appeals for the Second Circuit in Rogers v. Grimaldi (875 F.2d 994 (2d Cir. 1989)). But the Rogers test has not been adopted by all courts. Indeed, recently, in Hart v. Electronic Arts, Inc., 717 F.3d 141 (3d Cir. 2013), the U.S. Court of Appeals for the Third Circuit rejected the Rogers test in favor of the “transformative use” test. The court in Hart found that while the Rogers test might be appropriate in the trademark context, it was not appropriate for cases involving rights of publicity.

These cases continue to make their way through the courts. What is clear is that the type of intellectual property right claimed might determine the outcome of the litigation Moreover, while courts employing the Rogers test in the video game context have arrived at varying results over the years, several commonalities in courts’ application of this fact-intensive inquiry have emerged that provide guidance to litigants in these disputes.

The Rogers First Amendment Balancing Test

In Rogers v. Grimaldi, famed actress Ginger Rogers sued the producers of the film Ginger and Fred for various Lanham Act and state law violations, alleging that the title of the film was likely to confuse moviegoers into believing that Rogers sponsored, endorsed or was otherwise affiliated with the film. In reality, the film concerned two fictional Italian cabaret performers, nicknamed “Ginger” and “Fred” after the famous dancing duo, Rogers and Fred Astaire.

In evaluating the defendants’ First Amendment defense to Rogers’ Lanham Act claim, the court adopted a balancing test, determining that “the Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” Rogers, 875 F.2d at 999. Thus, at least in the context of allegedly misleading titles using a celebrity’s name, the Second Circuit held that a Lanham Act claim will be barred by the First Amendment unless the potentially confusing title (1) has no artistic relevance to the underlying work whatsoever or (2) explicitly misleads as to the source or content of the work. Id.

Applying this test to the facts before it, the court found that the title “Ginger and Fred” was artistically relevant to the work and did not contain any explicit indication that Rogers endorsed the film or had a role in producing it. Accordingly, the Second Circuit granted summary judgment dismissing Rogers’ claim.

Applying the Rogers Test in the Video Game Context
Since Rogers, courts in a number of jurisdictions around the United States have adopted the Second Circuit’s two-part test to assess whether the First Amendment will bar a plaintiff from pursuing a Lanham Act claim against use of its trademark or trade dress in the body—not just the title—of an expressive work. Specifically, the Fifth, Sixth, Ninth and Eleventh Circuits, along with district courts in the Seventh Circuit, have adopted the Rogers test to evaluate First Amendment defenses to claims of infringement asserted against expressive works.

As it is now well accepted that video games qualify as expressive works entitled to First Amendment protection, video game developers defending against infringement claims routinely invoke a First Amendment defense. Although evaluating whether use of a mark (1) bears some artistic relevance to the underlying work and (2) explicitly misleads as to source or content of the work requires a case-by-case approach, similarities in the ways federal courts have applied the Rogers test, including in the video game context, provide some insight as to how to effectively litigate a First Amendment defense.

Other courts, such as in Hart, have found that the Rogers two-part test is too restrictive, at least when rights of publicity are at issue. The rationale is that the Rogers test looks at the relationship between the image and the work as a whole, and while the First Amendment does balance rights of free expression and intellectual property, publicity rights are not constrained by proof of likelihood of confusion, so a broader interpretation of the individual’s property rights is appropriate. Accordingly, the question is whether the identity is sufficiently transformed in the video game so as to become a separately protected expression. In Hart, the court found that it had not because Hart was a football player both in real life and in the game.

Whether Use of the Mark Has Any Artistic Relevance
As a general matter, showing that use of a mark has more than “no artistic relevance to the underlying work whatsoever” is a fairly low standard, and most defendants easily are able to satisfy this first part of the Rogers test.

Courts have made clear that, to establish artistic relevance, the work need not be “about” the product or service signified by the mark; it is enough that that “the level of relevance merely … be above zero.” E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1100 (9th Cir. 2008). In that case, the U.S. Court of Appeals for the Ninth Circuit held that an alleged depiction of the plaintiff’s Los Angeles strip club as one element in a video game styled after various American cities had “some artistic relevance” to the underlying game, which sought to capture the “look and feel” of East Los Angeles.

Another court found that in the “Godfather” series of video games, reference to “Dillinger Tommy Gun” had “above-zero relevance to a game whose premise enables players to act like members of the mafia and spray Tommy Guns,” and that even a “superficial and attenuated” link between the use of the mark and the video game would have sufficed. Dillinger, LLC v. Electronic Arts Inc., 101 U.S.P.Q.2d 1612, 1616 (S.D. Ind. 2011).

Notwithstanding the above, at least one district court addressing the First Amendment defense outside of the video game context has interpreted the first part of the Rogers test as requiring that the work bear some relevance to the meaning of the plaintiff’s mark—that is, that the work invoke the mark to refer to the plaintiff’s product or service and that the reference relate to the underlying work. Rebelution, LLC v. Perez, 732 F. Supp. 2d 883 (N.D. Cal. 2010). In Rebelution, the U.S. District Court for the Northern District of California held that rapper Pit Bull’s use of the album title “Rebelution” was not entitled to First Amendment protection against the band Rebelution’s claim of infringement because, inter alia, the album title was not intended to refer in any way to the plaintiff’s band. Id. at 888-89. While other courts have yet to impose this more stringent interpretation, applying the Rogers test in this way may present challenges for the game developer defendant accused of using a protected mark in a way not intended to reference the plaintiff’s product or service.

Whether Use of the Mark Is Explicitly Misleading
Assuming a defendant’s use of a mark has even minimal artistic relevance to the underlying expressive work, courts applying the Rogers test next consider whether use of the mark “explicitly misleads” as to the source or content of the work. Courts have made clear that use of the mark alone does not explicitly mislead. Rather, there must be some evidence, such as relatedness of the parties’ respective businesses or express statement of endorsement, that would lead consumers to believe the plaintiff endorsed or otherwise was affiliated with the defendant’s work. See, e.g., E.S.S., 547 F.3d at 1100 (holding that defendant’s use of mark was not explicitly misleading where parties ran unrelated strip club and video game businesses); Dillinger, 101 U.S.P.Q.2d at 1619 (“To be ‘explicitly misleading,’ the defendant’s work must make some affirmative statement of the plaintiff’s sponsorship or endorsement.”).

To determine whether use of a mark within a video game is explicitly misleading, courts have considered evidence of actual confusion, which tends to show such a misleading use. Prominent use of a third party’s mark—including in marketing and advertising—also weighs in favor of finding that the use was explicitly misleading. Electronic Arts Inc. v. Textron Innovations Inc., No. C 12-00118 WHA, 2012 U.S. Dist. LEXIS 103914 (N.D. Cal. July 25, 2012) (determining that allegation that Bell helicopters were “given particular prominence” in defendant’s war-themed video game and in related advertising and marketing efforts supported inference that game explicitly led consumers to believe that plaintiff was “somehow behind” or “sponsor[ed]” game).

In contrast, use of a plaintiff’s mark as one of many features in a video game weighs against a finding that a defendant’s use explicitly misleads. Dillinger, 101 U.S.P.Q.2d at 1619 (finding use of “Dillinger” gun in game did not explicitly mislead, despite the fact that gun was one of more powerful weapons available to players and mentioned in press release, as mention of “Dillinger” mark consisted of “a single text-line used to identify one of many weapons within a visually complex video game comprised of countless artistic elements”). Finally, at least one court has commented that although a defendant’s use of a disclaimer denying endorsement by the plaintiff may weigh against a finding that use of the mark is explicitly misleading, employing such disclaimers is not dispositive. Textron, 2012 U.S. Dist. LEXIS 103914.

Whether the Rogers Test Applies Only to Certain Marks
Within the Ninth Circuit, two views appear to have emerged as to whether the Rogers test should apply in considering whether use of a mark in an expressive work constitutes actionable infringement.

On the one hand, some district courts have held that Rogers applies only to marks that are “of such cultural significance that [they have] become an integral part of the public’s vocabulary.” Rebelution, 732 F. Supp. 2d at 887 (holding that no First Amendment rights were implicated and Rogers test should not apply where word “Rebelution,” used in defendant’s album title, lacked larger “cultural significance”).

On the other hand, the Ninth Circuit applied Rogers to determine whether use of a non-famous mark in a video game was protected by the First Amendment. E.S.S., 547 F.3d at 1099-1100 (applying Rogers test to claim that defendants infringed “Play Pen” strip club’s mark, but noting that plaintiff conceded that Rogers governs); see also Stewart Surfboards, Inc. v. Disney Book Group, LLC, No. 10-cv-2982 GAF (SSx), 2011 U.S. Dist. LEXIS 155444 (C.D. Cal. May 11, 2011) (rejecting restriction of Rogers test to “culturally significan[t]” marks, noting “test should apply equally to all marks”). Finally, if rights of publicity are at issue, it is possible Rogers will not apply.

Strategies for Litigating the First Amendment Defense in Video Game Cases

In light of the above, litigants asserting or disputing that use of a mark within a video game is entitled to First Amendment protection should be guided by the following considerations:

  • Does use of the mark have at least minimal artistic relevance to the video game? Specifically, litigants should consider: (a) the role that the mark plays in the game; and (b) whether the mark is used to refer to the mark owner’s brand, thereby providing a stronger case of relevance for some courts.
  • Is use of the mark explicitly misleading? Specifically, litigants should consider: (a) whether use of the mark in the game itself and/or in promotional materials is prominent (suggesting that the use explicitly misleads) or incidental (suggesting that the use does not explicitly mislead); (b) whether the parties are involved in related businesses, such that use of the mark is more likely to mislead consumers; (c) whether there is evidence of actual confusion, again tending to show that use of the mark explicitly misleads; and (d) whether the defendant has used a disclaimer, which may weigh against a finding that use of the mark is explicitly misleading.
  • Are rights of publicity at issue? If so, litigants need to consider whether the work as a whole, including the images at issue, has been sufficiently transformed.

Additionally, it is important to note that because application of the First Amendment defense in the video game context is an evolving issue, careful and ongoing review of the trends in different jurisdictions around the United States is critical for both plaintiffs and defendants litigating in this area.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2013 International Trademark Association