'Grand Theft Auto' Doesn't Infringe Strip Club's Trademark

The popular "Grand Theft Auto" video game's virtual recreation of a Los Angeles nudie bar enjoys First Amendment protection, a federal appeals court has ruled, dismissing trademark infringement claims filed by a real-life strip club.

The appeals court said the use of the real bar's logo and trade dress provided artistic relevance for the game's gritty atmosphere as to fall within the scope of constitutional protection.

In the "Grand Theft Auto: San Andreas" game, created by Rock Star Games Inc., players must complete a series of criminal missions in fictional cities like "Los Santos," "San Fierro" and "Las Venturas."

The game's virtual cities seek to emulate the "seedy underbelly" of real cities with images of tattoo parlors, strip clubs and bars inhabited by gangs, prostitutes and drug pushers.

The artists who created "San Andreas" took pictures of businesses and streets in East Los Angeles to create fictionalized versions, according to the opinion.

One of the recreated businesses is a strip club called the PlayPen Gentlemen's Club, which was named "Pig Pen" in the game, the opinion says.

PlayPen owner E.S.S. Entertainment Inc. sued Rock Star in April 2005 in the U.S. District Court for the Central District of California, alleging trademark infringement, trade dress infringement and unfair competition.

E.S.S. sought damages for Rock Star's use of PlayPen's distinctive logo and trade dress.

Rock Star moved for summary judgment, asserting nominative fair use and freedom of speech under the First Amendment as affirmative defenses.

U.S. District Judge Margaret M. Morrow rejected the fair-use defense but granted summary judgment to Rock Star based on its First Amendment argument.

E.S.S. appealed to the 9th U.S. Circuit Court of Appeals, which affirmed.

The panel said the nominative-fair-use defense applies when a defendant uses a trademarked term to describe the plaintiff's product, rather than its own, for purposes of comparison, criticism or point of reference.

Judge Morrow correctly found that this defense was not applicable since Rock Star's use of "Pig Pen" was not identical to the PlayPen trademark, the court said.

Moreover, the panel noted, one of the game's designers had testified that making a statement or commentary about the PlayPen was not a goal in designing the fictionalized strip club.

Turning to the First Amendment defense, the appeals court cited the test it outlined in Mattel Inc. v. MCA Records Inc., 296 F.3d 894 (9th Cir. 2002), to weigh trademark claims against constitutional principles.

The test says an artistic work's use of a trademark in a way that ordinarily would constitute infringement is not actionable unless the use of the mark has no artistic relevance to the underlying work or, if it does contain some artistic relevance, the use is explicitly misleading as to the work's source or content.

The 9th Circuit rejected E.S.S.' argument that the use of "Pig Pen" had no artistic relevance in "San Andreas."

The threshold for artistic relevance is extremely low in that it simply must be above zero, the panel said.

The game attempts to recreate the look and feel of an urban neighborhood, and including a strip club with a look and feel similar to the PlayPen had some artistic relevance to that effort, it said.

The appeals court also rejected E.S.S.' assertion that the use of "Pig Pen" was explicitly misleading. Nothing in the record indicated that the public reasonably would believe that E.S.S. had produced "San Andreas" or that Rock Star owned a strip club.

The panel also gave no weight to E.S.S.' suggestion that because players can spend as much time as they wish inside the "Pig Pen," it could be considered a significant part of the game, leading to confusion.

Clearly, visiting a strip club is not the focus of "San Andreas," the panel said.

"Fans can spend all nine innings of a baseball game at the hot dog stand [but] that hardly makes the stadium a butcher shop," it said.

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