Feature
By David Anderson
More than a game: brand and
trademark use in video games
and virtual worlds
Protecting and enforcing trademark rights in video
games and virtual worlds is becoming increasingly
complex. Publishers and developers must make
reasoned decisions as to what third-party materials
they incorporate, while rights holders work out how
best to protect their marks
Interactive video games continue to evolve and change. Games
consoles and computers are becoming more powerful every year,
allowing developers and publishers to create more and more detailed
worlds and characters. Mobile phone handsets are now handheld
computers with high-definition screens. Games such as Grand
Theft Auto V create fictionalised versions of well-known landmarks
throughout real cities such as Los Angeles. Virtual worlds such as
Second Life have thriving economies of virtual goods, both branded
and unbranded, while Minecraft permits end users to build virtual
goods, buildings and machines using its distinctive blocks – so far,
users have built everything from famous landmarks to scale models
of the Starship Enterprise.
At the same time, mobile, casual and social games have also
emerged. Some are nearly as sophisticated as their traditional
console and PC counterparts, while others are much, much simpler.
Many games now offer users the ability to customise the game
or upload content. Whether it is designing an avatar or building a
virtual home or store, games today have increased users’ ability
to manipulate and alter the game, which in turn has increased the
potential for claims of trademark infringement.
The increased realism and use of user-generated content and
virtual property – as well as the proliferation of social and mobile
games – have created new issues for companies as they navigate
the ever-changing technological and legal landscape. Publishers and
developers must make decisions with respect to what third-party
brands and trademarks they can incorporate into their games, how
to incorporate them and whether they need authorisation to do so.
Rights holders must make decisions about how to best protect their
trademarks and brands in games and virtual worlds.
Clearly, there are some situations where a licence is necessary
and obvious. Games such as the WWE Wrestling games, the Madden
NFL Football games and a Marvel Spider-Man game could not be
produced without a licence from the respective rights holders for
their trademarks and other intellectual property.
On the other hand, in light of current US case law, there are
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some situations where it is less clear whether a licence or other
authorisation is required. For instance, does a realistic military shooter
need a licence to incorporate the names and designs of various
weapons into its gameplay and story? Does a crime drama game need
a licence to have its protagonist drive a BMW or drink Coca-Cola?
With the proliferation of user-generated content being
incorporated into video games and virtual worlds, what steps can
rights holders take to ensure that their brands and trademarks
are not used without authorisation? And what can publishers
and developers do to minimise liability arising from an end user
incorporating third-party brands into its games?
Video games and the First Amendment
For over 20 years creators, publishers, developers and others in the
video game industry argued that their products deserved the same
First Amendment protections as other forms of creative media. The
industry successfully fought attempts to restrict the sale of video
games to children, as well as other laws aimed at controlling their
sale or advertising. In addition, courts hearing copyright, trademark
and other infringement cases generally recognised that video games
should be afforded the same First Amendment protections as other
forms of expressive media.
However, it was not until the landmark case of Brown v
Entertainment Merchants Assn (131 S Ct 2729 (2011)) that the US
Supreme Court definitively extended the full protection of the
First Amendment to video games as expressive speech on a par
with plays, films and literature. Specifically, the court stated: “Like
the protected books, plays and movies that preceded them, 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).”
Even before Brown, courts were examining the intersection
of trademark law and the First Amendment when examining
unauthorised trademark use in video games. In so doing, courts
have consistently applied the so-called Rogers test, “which requires
courts to construe the Lanham Act ‘to apply to artistic works
only where the public interest in avoiding consumer confusion
outweighs the public interest in free expression’” (Walking
Mountain, 353 F 3d at 807 (emphasis in original), quoting Rogers v
Grimaldi, 875 F 2d 994 (2d Cir 1989)).
The Rogers test is a two-prong test first set out in Rogers v
Grimaldi (875 F 2d 994 (2d Cir 1989)). It provides that an artistic
work’s use of a trademark that would otherwise be an infringement
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Feature: Video games and virtual worlds
Grand Theft Auto V creates a fictionalised version of well-known landmarks from real cities such as Los Angeles
is not actionable unless use of the mark “has no artistic relevance to
the underlying work whatsoever, or if, it has some artistic relevance,
unless [it] explicitly misleads as to the source or the content of
the work” (Mattel, Inc v MCA Records, 296 F 3d 894, 902 (9th Cir
2002), quoting Rogers, 875 F 2d at 999). In other words the test asks
first whether the use is artistically relevant and then whether it is
explicitly misleading.
One of the earlier cases to apply the Rogers test to video games
was ESS Entertainment v Rock Star Videos, Inc (547 F 3d 1095 (9th
Cir 2008)). ESS Entertainment 2000, Inc, owner of the Play Pen
Gentlemen’s Club in Los Angeles, claimed that Rockstar’s depiction
of a strip club called the Pig Pen in Los Santos, the fictionalised
version of Los Angeles, infringed its trademark and trade dress.
The Play Pen’s logo consisted of the words “The Play Pen”, “Totally
Nude” and a silhouette of a nude female dancer. The court noted
that there were differences with how the Pig Pen was depicted
in the game, including a different building façade. Applying the
Rogers test, the court found that one of Rockstar’s goals was to
develop a “cartoon-style” parody of East Los Angeles, and that the
inclusion of a strip club similar to the look and feel of the Play Pen
had some “artistic relevance” (ESS Entertainment at 1100). Applying
the second prong, the court noted that “mere use of a trademark
alone cannot suffice to make such use explicitly misleading” (ESS
Entertainment at 1100). The court determined that a “reasonable
consumer” would not think that a company that owned one strip
club in Los Angeles produced a “technologically sophisticated video
game” (ESS Entertainment at 1101).
More recently, and post-Brown, courts have been applying the
Rogers test to permit the use of third-party trademarks in video
games without the rights holder’s express permission.
In Rebellion Developments Limited v Stardock Entertainment (ED
Mich 2013) the district court applied the Rogers test to Stardock’s
use of the term ‘rebellion’ in the title of Stardock’s game, Sins of
a Solar Empire: Rebellion. The court noted that Stardock’s use of
‘rebellion’ in the game title clearly met “the low threshold of the
first prong of the Rogers test”, determining that its use had artistic
68 World Trademark Review February/March 2014
relevance as Stardock’s product was about a rebellion and rebel
forces. Even though it noted that there did appear to be some
consumer confusion, the court agreed with the defendant that the
mere use of a trademarked term as part of a title was insufficient to
prove that the title was explicitly misleading.
Similarly, in Novalogic, Inc v Activision Blizzard (CD Cal 2013) the
District Court for the Central District of California applied the Rogers
test to Activision Blizzard’s use of the DELTA FORCE trademark
in one of its Call of Duty – Modern Warfare games. The plaintiff,
Novalogic, had registered trademarks for the mark DELTA FORCE in
both block letters and a design mark, and alleged that Activision’s
use of the term and a different stylised logo in its game infringed
Novalogic’s rights. The court noted that the game was a “fully
cinematic experience featuring story, dialog, music, effects and all of
the other elements found in a big budget entertainment franchise”.
In addition, the court noted that “the names and logos of actual
combat forces” were used, “such as the U.S. Army Rangers and British
Special Air Service”.
In Novalogic the court reviewed the game and determined
that Call of Duty – Modern Warfare 3 was “an expressive work
entitled to as much First Amendment protection as any motion
picture or any other expressive work”. The court then applied the
Rogers test to the facts at hand – while noting that it is extremely
protective of speech, and that only the use of a trademark with
“no artistic relevance to the underlying work” would fail to
qualify for First Amendment protection – and found that the
particular use in the game gave “users of [the game] a sense of a
particularized reality of being part of an actual elite special forces
operation and serve[d] as a means to increase specific realism
of the game”. Applying the second prong of the Rogers test, the
court said it was “undisputed” that Activision did nothing to
misrepresent or state explicitly that its game was in any way
affiliated with Novalogic. Accordingly, in granting Activision
summary judgment, the court held that its use of the DELTA
FORCE name and logo in its game was protected by the First
Amendment as it passed the Rogers test.
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Games such as the FIFA series could not be produced without a licence from the respective rights holders for their trademarks and other
intellectual property – EA Sports and the Fédération Internationale de Football Association have announced an extension of their existing
licensing agreement until December 31 2022
(Possible) limitations
In reviewing the cases above, in light of Brown and the relatively low
standards necessary to meet the Rogers test, there is an argument
that the use of a third party’s trademark in a video game may be
permissible provided that it is at all relevant to the underlying game
(eg, in the pursuit of added realism), and does not imply or expressly
state that the rights holder has authorised the use or otherwise
mislead consumers as to the source.
However, while not directly trademark related, some interesting
recent litigation related to similar rights does suggest that the First
Amendment protections afforded video games are not absolute, and
that one must examine the root of the claims and rights in order
to determine whether they are trademark claims and rights, or are
perhaps related to other rights.
In a case that was closely watched by the video game industry
and other media, the US Court of Appeals for the Third Circuit held
in a split decision that Electronic Arts’ (EA) NCAA Football video
games did not sufficiently transform the plaintiff Ryan Hart’s
“identity to escape the right of publicity claim” made by Hart. It
thus overturned the district court’s granting of summary judgment
in favour of EA (Hart v Electronic Arts, 3d Cir 2013 [No 11-3750]).
Ryan Hart, a former college football player, originally brought
suit against EA in 2009 for allegedly violating his right of publicity
under New Jersey law by including his likeness and biographical
information (but not his name) in a series of NCAA Football video
games. The district court granted summary judgement in favour of
EA, holding that the use was protected by the First Amendment.
The Third Circuit examined different balancing tests between
First Amendment rights and rights of publicity, including the
predominant use test, the Rogers test and the transformative use
test. It ultimately elected to use the transformative use test, stating
that it “appears to strike the best balance because it provides
courts with a flexible – yet uniformly applicable – analytical
framework”. Applying the test, the majority found that EA’s use
was insufficiently transformative to escape the protections of
Hart’s right of publicity.
In James “Jim” Brown v Electronic Arts (9th Cir 2013) the Ninth
Circuit Court affirmed the district court’s ruling that EA’s use of Jim
Brown’s likeness in its Madden NFL football series of games did not
violate Section 43(a) of the Lanham Act (consumer confusion). Citing
the Rogers test, the court stated that video games are entitled to the
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same First Amendment protection as literature, plays or books, and
held in applying the Rogers test that Brown’s likeness was artistically
relevant to the games and there were no facts to support that EA
explicitly misled consumers about Brown’s involvement. The court
stated that “the public interest in free expression outweighs the
public interest in avoiding consumer confusion”.
However, in a similar case – In Re: NCAA Student-Athlete Name &
Likeness Licensing Litigation (also known as Keller v Electronic Arts,
9th Cir 2013) – the Ninth Circuit held that EA was not entitled to First
Amendment protection with respect to its use of NCAA studentathletes in its NCAA football video game, as it applies to state right of
publicity claims. The court took pains to distinguish between the state
right of publicity claims from the federal Lanham claims in Brown,
holding that with respect to the claims in Keller, the transformative
use test was the correct standard to apply to state right of publicity
claims. Applying this test, the court (citing the Third Circuit’s similar
decision in Hart v Electronic Arts) held that EA’s use of Keller’s likeness
was insufficiently transformative, and that EA was not, as a matter
of law, protected by the First Amendment. The court also refused to
apply the Rogers test to right of publicity claims, as urged by EA.
The right of publicity cases seem to suggest that First
Amendment protections, even for creative works, are not absolute.
Thus, an evaluation of the rights and potential claims is critical
when determining whether the incorporation of a third party’s
intellectual property into a game may result in potential liability
or whether to pursue such a claim. This is especially true where the
use incorporates what is both a trademark and someone’s name or
likeness, such as those of a musical group or performer.
User-generated content issues
All of the cases examined above are games where the publisher/
developer was the party incorporating the alleged infringing material
into the game.
However, in today’s market, it is no longer just the publisher or
developer that controls what content appears in the game. Some
games, such as Deep Silver’s Saints Row games and EA’s sports games,
allow end users to create and customise their in-game characters.
Saints Row allows users to build characters with various skins, outfits,
hair and other attributes. Many of EA’s sports products feature “Game
Face”, which allows users to scan images and use them as the basis on
which to create an avatar. Many of these systems also permit users to
February/March 2014 World Trademark Review 69
Feature: Video games and virtual worlds
A dispute centred on Electronic Arts’ NCAA
Football video games highlights issues
surrounding right of publicity claims
In Novalogic, Inc v Activision Blizzard the District Court for the Central District of
California applied the Rogers test to Activision Blizzard’s use of the DELTA FORCE
trademark in one of its Call of Duty – Modern Warfare games
share these avatars/character designs with other users.
In addition, virtual worlds such as Linden Lab’s Second Life
allow users to customise their avatars, as well as their homes,
businesses and attire. Some virtual worlds also give end users
the ability to create their own business and engage in virtual
marketplace transactions.
Any such system opens the door to potential trademark
infringement claims, as well as to copyright and even right of
publicity claims.
While it would seem that user-generated content could lead to
significant claims of infringement, litigation in this area does not
seem to be as prevalent.
In 2004 Marvel sued publisher NCSoft and developer Cryptic
Studios over the popular multi-player online game City of Heroes,
alleging copyright and trademark infringement, among other things.
Most of the claims stemmed from the avatar creator, which allowed
end users to build and design their own superheroes. Marvel alleged
that end users could essentially make virtual versions of famous
Marvel characters such as Wolverine, Spider-Man and the Incredible
Hulk without authorisation from Marvel. The case was eventually
settled. Although the terms of the settlement were kept confidential,
few changes, if any, were made to the game’s avatar creator.
Likewise, Taser International, filed a lawsuit against Linden Labs
related to the use of Taser guns in Second Life. These claims also
involved a third party’s use of the word ‘Taser’ in describing virtual
goods being used in the virtual world. Taser International ultimately
withdrew its complaint and Linden Labs revised its terms and
conditions to place additional restrictions on end users’ use of thirdparty trademarks, likenesses and other intellectual property.
These cases aside, the relative lack of litigation related to
trademark infringement claims arising from user-generated content
is itself significant, as is the fact that some of the more high-profile
cases have been settled out of court.
One can assume that some of this stems from how publishers
and developers address user-generated content issues.
Nearly all products that permit end users to upload usergenerated content require them to agree to an end-user licence or
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terms of service. These agreements nearly always require end users to
represent and warrant that they own or have the necessary rights and
permissions to use any content that they create and upload. Terms of
service also typically contain language which expressly discourages
the infringement of third-party rights when creating user-generated
content. Lastly, most publishers and developers use a Digital
Millennium Copyright Act-style response to allegations of trademark
infringement from the use of virtual property or characters.
To date, this approach appears to have been relatively effective.
While the Digital Millennium Copyright Act technically applies only
to copyright and alleged infringements of copyright, it appears that
most parties accept the application of its principles to other types of
intellectual property, including trademarks. Thus, game publishers
and developers have been able to limit their exposure to trademark
infringement claims with respect to user-generated content in
their games by structuring their terms of service so as to make it
clear that they do not encourage the infringement of third-party
intellectual property and by promptly responding to takedown
requests from rights holders.
Conclusions
Since Brown v Entertainment Merchants Assn, it appears that most
video games and virtual worlds are creative works entitled to the
same First Amendment protections as other creative media.
However, publishers and developers should still exercise caution
when incorporating third-party trademarks into their games,
while rights holders also need to examine potential infringements.
Although the application of the Rogers test sets a relatively low bar
with respect to the artistic relevance that the third-party mark must
have to the game, this should be only one factor being examined.
First, the nature of the intended use should be examined. Will
the mark be featured prominently throughout the game or on one
particular level of the game? Is it being used to add realism to the
game or for some other purpose, such as parody?
Second, the nature of the rights in question should be examined.
If there is an underlying state or contract right (eg, the right of
publicity or a contractual agreement between the parties), current
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jurisprudence would suggest that the First Amendment may not
always protect such uses and that the use may be actionable.
Third, the nature of the game should be examined. Nearly all
of the cases discussed here involved complex games with intricate
plots, stories and characters. Do simple puzzles or card games share
the same First Amendment protections as their more complex
counterparts? Does incorporating a third-party brand into a video
poker game have artistic relevance? While it is clear that the Rogers
test sets a relatively low standard with respect to artistic relevance, it
is possible that a court may attempt to distinguish between different
uses based on a game’s nature.
Fourth, if the game is going to permit users to upload and
exchange user-generated content, then the terms of use/end-user
agreement should make it clear that the publisher and/or developer
neither wants nor will permit the uploading of material that
infringes third-party rights. Further, the publisher and/or developer
should respond promptly to takedown requests.
Fifth, like their other media counterparts, game publishers and
developers may begin to incorporate clear statements that their
game is a creative work of fiction, and that any resemblance to any
person, living or dead, or similarity to any brands or trademarks is
purely coincidental.
Finally, video games are truly an international form of
entertainment and all of the cases discussed here apply US law
only – the First Amendment and all of the protections that it affords
artistic expression do not extend to other countries. Publishers and
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developers need to examine rights from an international perspective
and understand that what may be permissible in the United States
may not be legal elsewhere. Accordingly, the cost of potentially
defending a suit in a foreign country or making a localised version of
the game should also be examined and weighed.
A rights holder faced with an unauthorised use of its trademark
should also examine the factors set out above and make a
determination as to whether it believes the use is actionable and
whether it makes sense to pursue a claim. It may also want to
monitor virtual worlds actively for potential infringements and
even consider establishing its own authorised virtual stores.
In deciding whether to pursue a licence (if a publisher or
developer) or a claim of infringement, the respective parties may
also calculate the potential risks as well as the potential benefits. In
many cases a licence for a nominal fee may benefit both sides. It
gives the rights holder some control over the use of its mark in the
game (and potentially some revenue), and allows the publisher/
developer not to worry about defending a trademark infringement
claim, even if it believes that its uses are protected. WTR
David Anderson is counsel at Edwards Wildman Palmer LLP. H
Straat Tenney, associate, contributed to the article
DAnderson@edwardswildman.com
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