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E.S.S. Entm't 2000, Inc., v. Rock Star Videos, Inc.: Court Declares “Grand Theft” Crime Free

Commentary First Amendment Trademark

E.S.S. Entertainment 2000, Inc., v. Rock Star Videos, Inc., November 5 2008, No. 06-56237

Slip Opinion

On November 5, 2008 the Ninth Circuit Court of Appeals upheld a Central California District Court summary judgment ruling to dismiss the case brought by the operators of a Los Angeles strip club (“E.S.S.”) against Rock Star Videos (“Rockstar”), the manufacturer of the Grand Theft Auto video games, for trademark infringement and unfair competition under the Lanham Act, California Business and Professions Code § 14320 and § 17200 and California common law.

E.E.S. had argued that Rockstar’s imitation of the strip club’s logo within the virtual world of Grand Theft Auto: San Andreas had no artistic relevance and would mislead consumers, confusing them as to whether EES had endorsed or associated itself with the digital rendition. In resolving this claim, the court applied a balancing test to weigh Trademark interests against First Amendment rights, stating that the Lanham Act applies to artistic works “only where the public interest in avoiding consumer confusion outweighs the public interest in free expression” Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989) (emphasis in the original).

The ruling affirming summary judgment in favor of the popular game has drawn attention from a number of commentators. The authors at applaud the decision. Coverage is also offered by, and summarize the case. lists other legal challenges Grand Theft Auto has faced in the past six years.

Artists for Rockstar took pictures of Los Angeles locations to recreate realistic yet fictitious vistas for the notoriously explicit Grand Theft Auto video games. Photographs of E.S.S.’ “The Play Pen” strip club informed the appearance of the virtual “Pig Pen” strip club. The Pig Pen logo utilizes the same publically available font as the Play Pen signage, and both logos feature the silhouette of a nude woman within the stem of the initial “P.”

Under the Rogers balancing test, an artistic work may only be held to infringe if there is 1) “no artistic relevance to the underlying work whatsoever” or, if it has some artistic relevance, 2) the work is explicitly misleading as to the referent’s source or content. Under the first prong of the Rogers test, the court determined that the Play Pen logo had the requisite artistic relevance to the underlying work.

The court applied the Rogers test as it had done in Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002) where it relieved the pop group Aqua from liability for using the Barbie trademark and imagery in its song “Barbie Girl.” Because the song’s content was “clearly relevant to the underlying work,” the court held that the defendant’s First Amendment defense was viable. Although Grand Theft Auto does not focus centrally on the Play Pen in the same way that “Barbie Girl” focused on the popular doll, the court determined that “the level of relevance merely must be above zero” to avoid the first prong.

The court also found that the imitation caused insufficient consumer confusion under the second prong of the Rogers test. The court observed inadequate evidence that consumers would misconstrue the relationship between the video game company and the entertainment venue as one of ownership, support, or endorsement. The strip-club, is a discrete feature in the context of the game, and a reasonable consumer is unlikely to assume that the same company that owns a single strip club could also be responsible for a “technologically sophisticated” video game. As Judge O’Scannlain noted in the opinion, “video games and strip clubs do not go together like a horse and carriage or, perish the thought, love and marriage.” If the simple evocation of a trademarked element were sufficient to satisfy the “association” element of the Rogers test, the court noted, “it would render Rogers a nullity.”

For further background on the unfolding legal debate over intellectual property and game design, take a look at the following recent articles in published in the Harvard Journal of Law and Technology:

Christina J. Hayes, Note, Changing the Rules of the Game: How Video Game Publishers Are Embracing User-Generated Derivative Works, 21 Harv. J.L. & Tech. 567 (2008).

Matthew G. Massari, Note, When Fantasy Meets Reality: The Clash Between On-Line Fantasy Sports Providers and Intellectual Property Rights, 19 Harv. J.L. & Tech. 443 (2006).