Finally, has the mark been used as a major selling point for the game? Is it heavily featured in advertising and promotional material, such as trailers or websites asking consumers to buy the game?ENDNOTES  E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1100 (9th Cir. 2008).  Electronic Arts, Inc. v. Textron Inc., No.
For example, inE.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1100 (9th Cir. 2008), the court held that consumer confusion was unlikely based on a video game’s reference to the mark “Play Pen,” referring to a real-world strip club, because: “The San Andreas is not complementary to the Play Pen; video games and strip clubs do not go together …. 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.”
In 2008, the Ninth Circuit extended the applicability of the test to allegedly infringing uses in the body of expressive works. E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1099 (9th Cir. 2008). Here, the Ninth Circuit had to analyze these apparent limitations in the context of Fox’s multiple uses of the “Empire” mark, which extend beyond the title and the content of the TV show.
Under the Rogers test, an artistic work’s use of a trademark that otherwise would violate the Lanham Act is not actionable unless: (1) the use of the mark has no “artistic relevance” to the underlying work whatsoever; or, (2) if it has some artistic relevance, its use must “explicitly mislead” as to the source or the content of the work.E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1099 (9th Cir. 2008). In applying the first prong Rogers test, the court determined the term “Empire” had genuine relevance to Fox’s underlying work because Empire as a series tells the story of characters struggling for literal control over an entertainment company called Empire Enterprises and figurative control over the vast “empire” built by Lucious Lyon, the main antagonist in the series.
Entertainment 2000, Inc. v. Rock Star Videos, Inc. In E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008), the Ninth Circuit affirmed a summary judgment in favor of Rock Star finding that inclusion of the mark “Pig Pen” as the name of a virtual strip club in the video game Grand Theft Auto: San Andreas was protectable speech under the First Amendment. The underlying facts of the case involved allegations of infringement of a real-world strip club’s “Play Pen” trademark and related trade dress.
The Ninth Circuit had previously adopted theRogerstest inMattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), and applied it specifically in the video game context inE.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008). The panel determined that Brown could not maintain his Lanham Act claim.