SW Legal studies in Business

First Amendment Protects Artistic Use of Trademarked Name

Appeals court held that the artistic use of a club name in a videogame was protected by First Amendment rights and the owner of the trademarked club name could not sue for infringement.

Topic Intellectual Property
Key Words

Trademarks; Infringement; Fair Use; First Amendment

C A S E   S U M M A R Y

The company Rockstar produces the video games Grand Theft Auto, which includes a game called San Andreas. The setting mimics the Los Angeles area. One setting, in virtual, cartoon-style, shows a strip club named “Pig Pen.” ESS owns a strip club in LA called Pig Pen. The one in the game is based on it, but not identical, as the game uses a cartoon drawing. ESS sued Rockstar for trademark infringement, contending that it causes confusion for its customers who may think ESS endorsed the videogame. The district court held that there was no fair use of the name Pig Pen, but that there was a First Amendment defense, and dismissed the suit. ESS appealed.


Affirmed. The use of the name Pig Pen in the game was protected by the First Amendment from trademark infringement claims. The use of the club in the game had some artistic relevance as it helps create a cartoon-style parody of East Los Angeles. The use in the game did not mislead club customers into thinking there was a relationship between the game and the club. Because of the artistic relevance, there is no cause of action that might otherwise exist. Fair use rules are not applied here. That defense applies to situations where a trademarked term is used to describe another’s product, or for criticism or point of reference.

Citation E.S.S. Entertainment v. Rock Star Videos, 547 F.3d 1095 (9th Cir., 2008)

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