Take-Two Interactive Software, Inc. v. Pinkerton Consulting & Investigations, Inc.
United States District Court for the Southern District of New York
Filed January 11, 2019, NYSD-1-19-cv-00338

On January 11, 2019, Take-Two Interactive filed a declaratory judgment action asking the Southern District of New York to declare the video game company has not infringed the trademarks of Pinkerton Consulting & Investigations, Inc. Take-Two is filing this action in response to a cease-and-desist letter it received from the consulting agency. The letter claimed the video game Red Dead Redemption 2 (Red Dead 2) infringes the Pinkerton’s trademarks by depicting characters as Pinkerton agents. Instead of waiting for Pinkerton to sue, Take-Two filed the declaratory judgment action.

Take-Two’s first argument is it has a first amendment right to portray the Pinkerton Agency in historical context. The first amendment defense is a two-prong test: the trademark use has to have some artistic relevance to the underlying work, and the use cannot explicitly mislead as to the source of the content. See Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002). Take-Two argues the Pinkerton Agency did pursue outlaws and bandits on behalf of the U.S. government during the Wild West era. As a result of those historical facts, Pinkerton agents would be relevant to a video game attempting to create a semi-accurate depiction of outlaw life in the 1900s. The video game publisher further argues a reasonable person would probably not believe the current Pinkerton Agency is the producer of Red Dead 2 or there was any form of endorsement because the game has historical Pinkerton agents.

Red Dead 2’s developer, Rockstar, has used First Amendment defense before. In E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., the strip club “Play Pen” sued Rockstar for trademark infringement because Grand Theft Auto: San Andreas had a virtual strip club called “Pig Pen”. The Ninth Circuit found the strip club was artistically relevant to the game’s parody portrayal of Los Angeles. Also, a reasonable consumer would not be confused as to source of the video game or who owned the club. “Nothing indicates that the buying public would reasonably have believed that ESS produced the video game or, for that matter, that Rockstar operated a strip club.” E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.2d 1095, 1100 (9th Cir. 2008).

In the alternative, Take-Two asserts a nominative fair use defense. Nominative fair use is an affirmative defense which allows a defendant to use a plaintiff’s trademark to describe the plaintiff’s product. To establish a nominative fair use defense, the defendant must show 1) the product or service cannot be readily identified without using the trademark, 2) the user only used as much of the mark as necessary, and 3) the user does nothing to suggest sponsorship by the trademark holder. See New Kids on the Block v. News America Pub., Inc., 971 F.2d 302, 308 (9th Cir. 1992). A common nominative fair use example is a car mechanic being able to advertise he fixes Volkswagen cars. See, e.g., Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1969).

The 9th Circuit rejected the nominative fair use defense in E.S.S. Entertainment 2000 because GTA San Andreas used a parody name to refer to the club. 547 F.3d at 1099. In Red Dead 2, the Pinkerton agency is referred to by name, and the game replicates the historic Pinkerton badge. Take-Two argues their use constitutes a nominative fair use because it is difficult to describe the historical Pinkerton Agency without using the Pinkerton name.

Finally, Take-Two argues that there is no likelihood of confusion because the two companies’ products and services are unrelated. Take-Two is a video game producer and publisher while the modern Pinkerton Agency provides corporate risk management. It is highly unlikely Pinkerton Consulting will start to produce video games or that Take-Two will start to provide other corporations with a risk assessment. Take-Two therefore contends their use of “Pinkerton” in Red Dead 2 is unlikely to cause customer confusion because there is such a big distinction between the services provided by the two companies.

This case has just started and it will be interesting to see how it plays out. However, many similar trademark cases settle without significant on-record activity. We will provide updates when available.