__ F.3d __ (9th Cir. 2008)
(by Shawn Gorman)
The (in)famous Grand Theft Auto series, produced by Rock Star Games, has become synonymous with legal entanglement. As noted by the appeals court, the series “is known for an irreverent and sometimes crass brand of humor, gratuitous violence and sex, and overall seediness.” The latest installment of the Series, San Andreas, is centered in East Los Santos, a fictional urban environment that depicts Los Angeles, California. The environment is populated with “virtual liquor stores, ammunition dealers, casinos, pawn shops, tattoo parlors, bars, and strip clubs. The brand names, business names, and other aspects of the locations [were] changed to fit the irreverent ‘Los Santos’ tone.” One such virtual business was a strip club named “Pig Pen,” in which players could interact with strippers. ESS operates a real-life strip club in East Los Angeles under the name Play Pen Gentlemen’s Club. ESS claimed that San Andreas’ Pig Pen infringed its trademark and trade dress associated with the Play Pen. Rock Star denied infringement and further argued that any infringement would be protected under the First Amendment. The lower court granted summary judgment in favor of Rock Star based upon the First Amendment. The appeals court affirmed the lower courts ruling. While the ruling was based upon the First Amendment defense, the opinion seemed to focus on whether infringement existed. Setting a humorous tone, the opinion noted that “besides this general similarity, they have nothing in common. The San Andreas Game is not complementary to the Play Pen; video games and strip clubs do not go together like a horse and carriage or, perish the thought, love and marriage. 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.” ESS argued that because San Andreas players could spend as much time as they wanted at the Pig Pen virtual strip club, it could be considered a significant part of the Game, thereby leading to confusion. The court rejected the argument with the observation that: fans can spend all nine innings of a baseball game at the hot dog stand; that hardly makes Dodger Stadium a butcher’s shop. In other words, the chance to attend a virtual strip club is unambiguously not the main selling point of the Game. It is interesting to note that the test for determining whether the trademark or trade dress rights were trumped by First Amendment considerations has been traditionally applied by the court in instances where trademarks were used in the titles of artistic works, not to alleged use of a trademark in the body of the work. Nonetheless, the court thought that such an application logically followed and the parties did not dispute it.