First Amendment Protects Spoof Strip Club in Video Game from Trademark Claim–ESS Entertainment v. Rock Star Videos

By Eric Goldman

E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., No. 06-56237 (9th Cir. Nov. 5, 2008)

This case reinforces how trademark law has gone so far astray that easy cases have become hard ones. This lawsuit was brought by the Play Pen, a strip club in downtown Los Angeles. The Grand Theft Auto: San Andreas video game depicts stylized but grittily realistic scenes inspired by a few major metropolitan areas, including Los Angeles. At issue is a virtual strip club in the East LA-inspired area titled “Pig Pen” that resembles the actual Play Pen’s trade dress and logo. The Play Pen argues that consumers will assume that it endorsed or is otherwise associated with the video game and therefore the depiction constitutes trademark infringement and unfair competition.

On the one hand, I can almost see Play Pen’s point. Due to overexpansive merchandising rights, consumers nowadays have no idea when an acknowledgement or homage in an entertainment product is a paid placement or otherwise a licensed use by the IP owner. But on the other hand, come on! First, if users can actually recognize the homage to Play Pen, inclusion in the video game only seems likely to stimulate consumer interest in the brand. Second, even if users make the recognition, the risk that consumers will be confused about the source of goods in the marketplace is ZERO. What a complete waste of time and money to push such a meritless “problem” to the Ninth Circuit.

So from my perspective, it’s absolutely clear that the plaintiff should lose. However, as we’ve seen with other commercial referential trademark uses, trademark law doesn’t have a single apropos doctrinal tool to kill this lawsuit. (See Bill McGeveran’s paper for a preliminary cut at this problem).

I personally think that the plaintiff’s case fails because the defendant didn’t make a use in commerce of the trademark, just like the depiction of a fictional character going into a Wells Fargo bank as a movie’s plot point does not qualify as a trademark use in commerce. If courts can ever embrace my commercial referential trademark use argument, it will make it much easier to dismiss these referential cases and substantially clean up the doctrinal contortions courts are using in desperation.

The defense here argued nominative fair use, which both the district and appellate court rejected because the fictionalized variation of Play Pen did not actually refer to Play Pen. I can’t really dispute that, but it only further reinforces that the nominative use defense is fairly narrow and not robust enough to solve many problems.

Another “defense” would be the lack of consumer confusion about product source. (I put that in quotes because it’s actually the burden of the plaintiff to establish as part of the plaintiff’s prima facie case). This seems like an easy out for the court, and the Ninth Circuit waxes philosophic on the topic by making its own implicit findings of fact without any support, but nevertheless both the district court and appellate court decided to rely instead on a First Amendment defense. This is noteworthy for at least three reasons. First, there is no automatic First Amendment defense to trademark law, so it’s hardly a well-accepted option for courts. Second, courts usually prefer to avoid constitutional issues if they can, and here the courts bypassed the consumer confusion doctrine to reach for constitutional grounds. Odd. Third, the Rogers v. Grimaldi/Mattel v. MCA rulings–the precedents cited by the court–both involved the defendant referencing the plaintiff’s trademarks in media titles, a very specialized fact pattern for trademark law, and here the court treats the First Amendment defense as a broad salve for a parody/spoof. This is a pretty big jump for the Ninth Circuit, and one I suspect other panels will follow reluctantly at best.

UPDATE: See the comparison photos yourself here.

UPDATE 2: Rebecca does a better job explaining the doctrinal messiness than I did.