Can you use other companies’ trademarks in your video game?

As technology improves and video games become more realistic, the issue of third-party trademark use in the games industry is becoming increasingly relevant.

Already, there have been a few important cases which bring the tests and case law from other media into video game industry trademark disputes.

This post is adapted from a piece of Continuing Legal Education material that I wrote, so it may be a bit more “lawyerish” that my usual posts. Stick with it, though – it’s important!

Video games and the First Amendment:

In the recent case of Electronic Arts v. Textron, EA sought a judgment from the court regarding their use of Textron’s protected IP (known as “trade dress“) in various military hardware. EA argued that their game, Battlefield 3, was an expressive work protected by the First Amendment. Given that, they were entitled to the same fair use protections that other media is entitled to.

Are video games considered expressive speech under the First Amendment, though?Are video games considered expressive speech under the First Amendment, though? The Supreme Court says that they are. In the 2011 Brown case, the Court stated that “ike the protected books, plays, and movies that preceded them, video games communicate ideas—and even social messages—through many familiar literary devices (such as characters, dialogue, plot and music) and through features distinctive to the medium (such as the player’s interaction with the virtual world). That suffices to confer First Amendment protection.”

Therefore, it follows, video games should be held to the same standard as other media insofar as the use of other parties’ trademarks goes.

The test for First Amendment use of third-party trademarks:

What is that standard? The test used by multiple circuits (originally in the 2nd Circuit, but later adopted by courts in the 7th, 9th and 11th Circuits) is known as the Rogers test, after Rogers v. Grimaldi. This test is an attempt to balance the trademark protections of the Lanham Act with the constitutional free speech protections of the First Amendment. There are two prongs to the Rogers test:

  1. whether the use of the third-party trademark has artistic relevance; and
  2. if so, is it deliberately misleading as to the source or content of the work.

In Rogers, the trademark use at issue was merely used in the title of the allegedly-infringing work. Further cases have expanded this First Amendment protection, however, to the body of the work itself.

Examples of the Rogers test in video game-related litigation:

There are three major cases that illustrate the application of the Rogers test to video game trademark disputes.

The first is E.S.S. Entertainment 2000 v. Rock Star. Rock Star created the video game Grand Theft Auto: San Andreas. In the game, which itself is set in a parody of the Los Angeles area, there is a strip club called the “Pig Pen Gentlemen’s Club” in an area that resembles East Los Angeles. E.S.S. operates a real-world strip club called the “Play Pen.” The styling of the building and logo is very similar for both, and the facts indicate that Rock Star’s artists traveled to the area and photographed locations for reference.

However, the 9th Circuit found that the threshold for artistic relevance is anything more than zero, which the creation of the Los Angeles atmosphere met. They also found that a consumer would most likely not believe that the owners of the Play Pen would also be behind the creation of this video game, therefore finding no misleading behavior on Rock Star’s part.

Next is Dillinger, LLC v. Electronic Arts Inc., a lawsuit brought by the heirs of famed criminal John Dillinger for infringement by EA in their video games based on the Godfather movies. In the games, “Dillinger” is used to refer to the firearms (so-called “Tommy guns”) used by the player.

The court found, in applying the Rogers test, that there was artistic relevance in referring to the gun as a Dillinger, as that was the real person’s firearm of choice. No evidence was presented of any misleading actions on the part of EA, either, so both prongs of the test were met and EA was granted summary judgment.

The last case is one that was mentioned earlier, Electronic Arts, Inc. v. Textron, Inc. EA’s use of various Bell helicopters owned by Textron was initially under a licensing agreement between the two companies. EA then announced that it would no longer pay these license fees and sought the declaratory judgment. Textron filed various trademark infringement counterclaims, which EA attempted to dismiss.

The district court, however, distinguished this case from the earlier E.S.S. case in the same circuit. Where the Pig Pen strip club was merely part of the background in the Grand Theft Auto game, the helicopters in Battlefield 3 were more prominent in both the game and its advertisements. In rejecting the motion to dismiss, the court held that it was plausible that a consumer could believe that Textron had supported the game or authorized the use of its marks. Even a disclaimer, the court said, was not enough to overcome this possibility. The two companies later settled the dispute out of court on confidential terms.

The case law on this issue is always evolving, but it seems that a game developer’s First Amendment protections are pretty strong here. We’re always waiting, however, for a case that puts a limit on these protections. This could have been the EA v. Textron case, but we never got a final decision there.

Further resources:
Wesley W. Wintermyer: Who Framed Rogers v. Grimaldi? What Protects Trademark Holders Against First Amendment Immunity For Video Games?
Arnold Porter: Nominative Fair Use:Legitimate Advertising or Trademark Infringement?
Pillsbury Law: Evolving Case Law on the Fair Use of Famous Trademarks in Video Games

photo credit: B Tal via photopin cc

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