The video game industry has grown exponentially over the last two decades and was supercharged by the COVID-19 pandemic. As developers seek to build more realistic virtual worlds in their products, including both video games and the metaverse, they increasingly include trademarks, trade names and trade dress in these virtual worlds. One important issue that confronts game developers is the extent to which the First Amendment protects a video game developer or publisher in using another party’s trademark in a video game.
The U.S. Court of Appeals for the Second Circuit issued the leading case on this issue in Rogers v. Grimaldi, which grappled with the competing public interests protected by trademark law and the First Amendment. Setting forth the foundational test that courts across the country would later apply, the Rogers court established a two-prong test: use of a trademark in an expressive work will not constitute trademark infringement unless “ the [use of the mark] has no artistic relevance to the underlying work whatsoever, or,  if it has some artistic relevance, unless the [use of the mark] explicitly misleads as to the source or the content of the work.” The Ninth Circuit adopted the Rogers test in Mattel, Inc. v. MCA Records, Inc. and later applied the test to video games in E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc.
The “artistic relevance” prong of the Rogers test is a notably low bar, and “the level of relevance merely must be above zero.” For example, use of a trademark to parody a real place or object can be sufficient to satisfy the artistic relevance prong, as demonstrated in E.S.S. Entm’t. That case involved the video game “Grand Theft Auto: San Andreas” set in the dystopic and fictional city of “Los Santos” modeled after Los Angeles. The game allowed players to complete various missions throughout Los Santos and “experience a version of West Coast ‘gangster’ culture.” The game’s creators built the virtual Los Santos in a manner that “mimic[ed] the look and feel of actual Los Angeles neighborhoods” while changing certain aspects, such as businesses and architecture, “to fit the irreverent ‘Los Santos’ tone.”
At issue in E.S.S. Entm’t was the game’s virtual strip club named the “Pig Pen” which allegedly used the logo and trade dress of the real-world “Play Pen Gentlemen’s Club” located in Los Angeles. The Club sued for trademark and trade dress infringement. In holding that the First Amendment barred the Club’s claims, the Ninth Circuit explained that the game’s use of a look and feel similar to that of the Club’s real establishment was artistically relevant to the game’s goal of parodying Los Angeles.
Taking this conclusion just a short step further, the court in Brown v. Elec. Arts, Inc. held that artistic relevance can arise when a video game uses a trademark to enhance the “realism” of the game. In Brown, a famous Cleveland Browns football player asserted Lanham Act claims against Electronic Arts, Inc. for its depiction of him in “Madden NFL” video games. The Ninth Circuit held that the First Amendment barred the plaintiff’s claims, explaining in part that depicting the famous football player was artistically relevant to the central element of Electronic Arts’ expressive goal: realism. The Ninth Circuit has since reached a similar conclusion in the context of trademarks used on video game racetrack signage, and several district courts have similarly held that “realism” can make use of a trademark artistically relevant to the underlying video game.
But note: even if a video game company can show that its use of another party’s trademark is artistically relevant to its game, it still may not use the mark in a manner that “explicitly misleads [consumers] as to the source or the content of the work.” This second prong of the Rogers test will be discussed in part two of this post.
 The U.S. Supreme Court held in Brown v. Entm’t Merchs. Ass’n, 564 U.S. 786, 790 (2011) that video games, like other forms of expression such as books and movies, are protected under the First Amendment. The court explained that “video games communicate ideas–and even social messages–through many familiar literary devices (such as characters, dialogue, plot, and music) and through features distinctive to the medium (such as the player’s interaction with the virtual world).”
 Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). On the one hand, trademark law seeks to prevent consumers from being confused as to the source or sponsorship of goods and services. Conversely, the First Amendment protects the public interest in freedom of expression. The Rogers court held that “the [Lanham] Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” Id. at 999.
 Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 902 (9th Cir. 2002).
 E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1099 (9th Cir. 2008).
 Id. at 1100.
 Id. at 1097.
 Id. at 1100.
 Brown v. Elec. Arts, Inc., 724 F.3d 1235, 1240 (9th Cir. 2013).
 The Lanham Act governs federal claims of trademark infringement, as well as false endorsement claims. See id. at 1239 n.1.
 Brown, 724 F.3d at 1243 (“[I]t is axiomatic the ’65 Cleveland Browns simply, by definition, cannot be the ’65 Cleveland Browns without the players who played for the ’65 Cleveland Browns”).
 VIRAG, S.R.L. v. Sony Comput. Entm’t Am. LLC, 699 F. App’x 667, 668 (9th Cir. 2017) (“Sony’s use of the VIRAG trademark furthers its goal of realism, a legitimate artistic goal”); VIRAG, S.R.L. v. Sony Comput. Entm’t Am. LLC, Case No. 3:15-cv-01729-LB, 2015 U.S. Dist. LEXIS 111211, at *35 (N.D. Cal. Aug. 21, 2015) (signage incorporating trademark at issue supported the Gran Turismo game’s real-world racetrack setting).
 See, e.g., Miller v. Easy Day Studios Pty. Ltd., No. 20cv02187-LAB-DEB, 2021 U.S. Dist. LEXIS 176582, at *19 (S.D. Cal. Sept. 16, 2021); AM General LLC v. Activision Blizzard, Inc., 450 F. Supp. 3d 467, 479-80 (S.D.N.Y. 2020); Mil-Spec Monkey, Inc. v. Activision Blizzard, Inc., 74 F. Supp. 3d 1134, 1142 (N.D. Cal. 2014); Novalogic, Inc. v. Activision Blizzard, 41 F. Supp. 3d 885, 900 (C.D. Cal. 2013).
Chris is experienced in a wide array of civil litigation, from intellectual property disputes to real estate actions. He has a passion for advising innovative companies, and for developing an in-depth understanding of his clients’ concerns to provide them the most practical solutions. Chris believes that anticipating an opponent’s next move and adapting litigation strategy as a case evolves are essential to obtaining successful results.