Info/Law

At the risk of appearing, inaccurately, to be some kind of an expert in video game law, here is my third post on the subject this month.

Earlier, I noted lawsuit threats by the Church of England against the maker of a video game with a gun battle set in Manchester Cathedral. Today, in research for my paper on trademark fair use, I encountered an actual judicial decision grappling with some of the very same issues. What’s more, the losing party has appealed to the Ninth Circuit, where the final briefs were filed just last Wednesday. No word yet on an oral argument date. If nothing else, the case proves that I am right about the needless complexity of this area. (I also posted this month on video games as political advocacy tools).

The case involved the famous (or perhaps infamous) video game Grand Theft Auto:San Andreas and its use of elements from an East Los Angeles strip club called THE PLAY PEN in creation of a seedy strip club in the game’s “East Los Santos” neighborhood called THE PIG PEN. The video game version of the building is very different from the appearance of the real-world club, but in addition to those similar names the two locations also share some resemblances in their logos and awnings.

The district court considers a nominative fair use defense, but ultimately rejects it because it holds that the marks must be “identical” for this defense to apply. (Not sure that is or should be the rule.) It then moves on to find that the First Amendment nevertheless protects the expression inherent in Grand Theft Auto’s “twisted, irreverent image of urban Los Angeles” and so trademark law cannot apply. This comes notwithstanding a survey submitted by the strip club making what might otherwise be a decent showing of likelihood of confusion. The decision also reaches its result by taking the Rogers v. Grimaldi analysis of First Amendment deference applicable to titles of artistic works and extends it to the contents of artistic works, a step the Ninth Circuit has not yet taken. And finally, it’s not clear to me how the court can find both that the video game strip club is so dissimilar that nominative fair use cannot apply but also hold — crucially for the Rogers analysis — that the “defendants’ decision to borrow the Play Pen trade dress and mark was closely connected to the artistic design of Los Santos and the overall theme of the Game.”

On appeal, the Ninth Circuit should consider whether it’s a better route to apply nominative fair use and avoid this free-form constitutional balancing act. Maybe the appellate court can even take this opportunity to decide — reversing its earlier case law — that fair uses may coexist with some confusion in the nominative fair use setting (just as the Supreme Court found for the “classic fair use” defense in KP Permanent).

The district court’s PLAY PEN/PIG PEN decision, for those of you with Lexis/Westlaw access, is E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 444 F. Supp. 2d 1012 (C.D. Cal. 2006). Warning: it is verbose (over 35 pages in the Federal Supplement). Marty Schwimmer talked about the case last summer and posted a copy of the decision here. And Rebecca Tushnet talked about it then, too, and after voicing several good criticisms of the court’s reasoning she reached this eminently sensible conclusion:

That’s not to say the decision was wrong – it’s plainly right – but basically the court overthought the whole thing, as a perusal of the very long opinion will show.

In sum, this case suggests that under U.S. law, one way or another, the Church of England cannot enjoin the alien gun battle in Manchester Cathedral. But we pretty much knew that, didn’t we?

Filed under: Court Decisions, Digital Media, Media, Scholarship, Software, Trademarks, Virtual Worlds