Technology Law Alerts

November 2nd, 2017

Shields On: 9th Circuit Strengthens Legal Defense for Video Game Developers

There's good news for game developers who incorporate real-world elements in their games. On October 20, 2017, the Court of Appeals for the Ninth Circuit affirmed a trial court decision which found that Gran Turismo, a Sony video game, was an expressive work entitled to First Amendment protection and, as such, did not infringe the trademark of plaintiff, VIRAG, S.R.L. ("Virag").

Background

Virag, a recognized Italian company in the commercial flooring business, alleged that Sony infringed its trademark by including the Virag business name and logo in its Gran Turismo racing video games (Virag has sponsored race car events in the past.). Sony defended Virag's allegations on First Amendment grounds by arguing that Sony had the right to include the Virag name and marks in its video game because the game designers "captured the race tracks as they found them in the real world", and only included the mark on a virtual bridge within the game, among countless other real world elements.

Expressive Works

The courts agreed with Sony. The first step in the analysis was to determine whether or not Gran Turismo is an expressive work entitled to First Amendment protection. The appeals court held that "(b)ecause the Gran Turismo video games contain expressive elements such as characters, plot, music, and extensive interactions between the players and the games' virtual world, [the games] qualify as expressive works and are entitled to First Amendment protection."

Rogers Test

The courts also applied the so-called "Rogers test" to the dispute. In the 1989 decision, Rogers v. Grimaldi, the Second Circuit explained when certain "expressive works" [recently interpreted to include video games] are entitled to First Amendment protection. The purpose of the two-prong Rogers test is to balance the rights of the trademark owner (or other similar rights) against the First Amendment rights of the owner of the creative work at issue. To that end, under the Rogers test, a court should deny a trademark owner's Lanham Act claim if: (1) within the expressive work, the use of the trademark or other identifying material has no artistic relevance to the underlying work whatsoever; or (2) the trademark has artistic relevance, but is otherwise explicitly misleading as to the source or the content of the work. Here, while the trial court found that use of the Virag trademark had some artistic relevance to Gran Turismo, Virag failed to adequately demonstrate that there was a likelihood of confusion about Virag's affiliation or endorsement of the video game.

Takeaway

The first takeaway for video game publishers is that the inclusion of at least several expressive elements (e.g., characters, plot, character-virtual world interactions, etc.) in a video game increases the likelihood that a court will deem the game to be protected by the First Amendment.
Second, although Virag has its own racing team and has occasionally sponsored certain racing events, Sony's use of the Virag name and logo within the larger context of the video game did not rise to a level that would have allowed Virag to successfully argue that there was a likelihood of confusion. Any integration of "real world" elements and third party marks should be kept to a minimum and solely used for the purpose of fleshing out the virtual world in which the expressive elements unfold. For example, unauthorized third party marks should not be incorporated in packaging, marketing or advertising for the video game.

If you have questions about the Sony v. VIRAG decision, or about any other interactive entertainment compliance matters, please contact Sean F. Kane at (212) 705 4845 or skane@fkks.com, S. Gregory Boyd at (212) 826 5581 or gboyd@fkks.com, or any other member of the Frankfurt Kurnit Interactive Entertainment group.