Court Allows Use Of Trademark In Sony Video Game
September 14, 2015
by Jerry Glover
A California federal district court in California recently allowed Sony to use a trademark owned by Virag, S.R.L. in a car racing video game despite the trademark owner’s objection. Virag, S.R.L. v. Sony Computer Entertainment America LLC, 2015 WL 5000102 (N.D. Cal. August 21, 2015). This court decision seems to follow a trend in the courts to find First Amendment protection in what are known as “expressive works” for the use of intellectual property owned by others. See, e.g., E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) (use of Los Angeles plaintiff’s strip club trademark in video game that simulated Los Angeles) and Electronic Arts, Inc. v. Textron Inc., 2015 WL 3042668 (N.D. Cal. July 25, 2015) (use of Textron trademark in military combat video game).
In Virag, the plaintiff was a manufacturer of commercial flooring. One of the company’s owners often drove a Virag-sponsored car in the Rally of Monza race. Sony incorporated the VIRAG mark on a bridge over the Rally of Monza track in two video games, Gran Turismo 5 and Gran Turismo 6. It did not include other trademarks displayed at the actual Monza rally. Sony did not seek permission from Virag for use of its mark.
As a sponsor of the Monza rally Virag’s corporate name and trademark were displayed on a bridge over the race track course. The company owner had won several other races on the European Rally Circuit. The corporate plaintiff alleged a violation of its California common law publicity rights and its trademark rights. The owner, Mirco Virag, also sued for violation of his California common law right of publicity.
Sony moved to dismiss plaintiff’s complaint.
Corporate Right of Publicity Claim
Sony argued that a corporation does not have a right of publicity under California law. The right of publicity allows a person to control the use of his/her name, likeness, image, etc. in commercial situations. An infringement of that right inhibits a person from exploiting the commercial value of his/her identity. The court noted that no court had ever recognized a corporate right of publicity adding that several courts had explicitly rejected the idea. See, e.g, Eagle’s Eye, Inc. v. Ambler Fashion Shop, 627 F. sup 856 (E.D. Pa. 1985). The court also cited a recognized trademark law treatise for the same proposition. J. Thomas McCarthy, 5 McCarthy on Trademarks and Unfair Competition Sec. 28:10 (4th ed. 2015).
Virag argued that courts have recognized that groups of people had a right of publicity but the courts noted that these same cases had never implied that corporations had the same right. The plaintiff argued that these “group” cases were brought by corporations not by the individuals in the effected group. But the Virag court noted that in each case the corporate plaintiff had been assigned the individual’s right of publicity so that the corporation had a right to bring the actions. See, e.g., No Doubt v. Activision Publishing, Inc., 702 F. Supp.2d 1139 (C.D. Cal. 2010) (the musical group “No Doubt”).
Virag tried another argument: the trademark, VIRAG, identifies not only a corporation but also a person, Mirco Virag. The court noted that a trademark could identify a real person and in that case the human’s right of publicity may be implicated. The court concluded, however, that the ability of a trademark to identify a person could not be extended to a corporate trademark. In this case, the VIRAG mark could not be extended to Mirco.
Mirco’s Right of Publicity
In order for a person to assert a California right of publicity claim, that person must allege (i) the defendant’s use of the plaintiff’s identity; (ii) the appropriation of plaintiff’s name or likeness to defendant’s advance, commercially or otherwise; (iii) lack of consent; and (4) resulting injury. The court noted an individual’s right of publicity could be infringed even if that person’s name or likeness is not used without consent. In those situation, defendant’s use something that is part of the plaintiff’s “persona” such as a race car that is associated with a well-known race car driver.
Here, Sony had not used Mirco’s name. Sony had not used an illustration of Mirco’s car in the video game. In addition, Sony argued that Mirco had not used the VIRAG corporate trademark to identify himself noting that the trademark was associated with a flooring business and not the racing industry. But the court noted that Mirco had been racing since 2001 and a part of the company’s marketing plan including sending event invitations using the VIRAG mark to clients which capitalized on Mirco and his racing successes and had published a limited edition racing book distributed to select clients which touted Mirco’s management of the company and his participation in races. Thus, Mirco alleged that the VIRAG mark had become a personification of Mirco himself.
The court concluded that these personification allegations were enough to defeat Sony’s motion to dismiss since, at this stage of the litigation, the court was required to accepted plaintiff’s allegations as true.
Corporate Trademark Claims
The corporate defendant alleged that Sony had infringed its VIRAG trademark by using it in the video game and, by using the mark, had also violated Section 43(a) of the federal trademark act, the Lanham Act, because, the corporate argued, the use of the VIRAG mark in the video game would lead consumers to believe that the company falsely designated the origin of the game. Sony argued that these claims failed because its use of the trademark was protected by the First Amendment.
The court noted that video games are expressive works protected by the First Amendment. For that reason, the court looked to a decision of the U.S. Court of Appeals for the Second Circuit which had been adopted by the Ninth Circuit, Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). In Rogers, the film star, Ginger Rogers, sued because a film had, in her view, used her name in its title, “Fred and Ginger”, without her permission. The film concerned a fictional Italian vaudeville couple who had become famous for imitating the famous dance duo, Fred Astaire and Ginger Rogers. The Second Circuit held that trademark rights could not be applied to expressive works unless (i) the use of the mark has no artistic relevance to the underlying work whatsoever or (ii) if the mark has some artistic relevance unless the mark’s use misleads the public as to the course or content of the work.
In this case, the court noted that the first factor, whether the mark has artistic relevance to the video game, only requires the court to find that the level of relevance is more than zero. The court explained that this rule allows a court to avoid engaging in artistic analysis, something a court is generally not well equipped to handle. The district court noted that the Sony game attempted to create a realistic simulation of European car racing by recreating actual racing tracks. The use of the VIRAG mark added to that realism.
Going on to the second fact, does the use of the mark explicitly mislead consumers as to the source or content of the video game, the court noted that this factor speaks to the purpose of trademark law—avoiding consumer confusion by allowing a trademark owner to prevent others from duping customers into buying a product they mistakenly believe is sponsored by the trademark owner. The court explained that it had to determine whether consumers would believe Virag sponsored the video game and whether there was an explicit indication, overt claim or explicit misstatement that caused that consumer confusion. Here, there was no such explicit claim by Sony that Virag was in any way connected to the game.
Even though Virag argued that consumers knew it was involved in car racing and would, therefore, believe it sponsored the Sony game. But the court said, even if Virag’s argument was true, that was not enough to meet the explicit misleading test adding that mere use of a trademark was not an explicit claim or misstatement about Virag’s involvement. The court concluded that since Sony had not used the VIRAG mark on a race car and no VIRAG product was included in the video game, Sony had not violated the Lanham Act.
[NOTE: The U.S. Court of Appeals for the Seventh Circuit, which includes Illinois within its jurisdiction, has not adopted the Rogers test. It hasn’t explicitly rejected it either. In Eastland Music Group, LLC v. Lionsgate Entertainment, Inc., 707 F.3d 869 (7th Cir. 2013), Lionsgate distributed a feature length motion picture entitled “50/50.” The plaintiff was a rap duo by the name Phifty-50. Plaintiff owned a federal trademark registration for that name. Plaintiff alleged the title of the film infringed its mark. The Seventh Circuit found for Lionsgate because of lack of consumer confusion but along the way noted that it did not have to decide whether to accept the reasoning of Rogers because the 50/50 case could be decided solely under the provisions of the Lanham Act and constitutional (i.e., First Amendment) issues should be avoided where possible.]