Court Decides Against Strip Club in Trademark Infringement Claim

Slav Kandyba
SAN FRANCISCO — The First Amendment protects the maker of "Grant Theft Auto" video game from a trademark infringement claim brought by a Los Angeles strip club, the 9th U.S. Circuit Court of Appeals decided.

Grand Theft Auto, a popular game known for its realistic depiction of urban settings, is made by Rockstar Games Inc., a subsidiary of Take-Two Interactive Software Inc. E.S.S. Entertainment 2000 Inc., the owner and operator of Play Pen strip club near downtown Los Angeles, sued the company over the club’s likeness appearing in "Grand Theft Auto: San Andreas."

Following a summary judgment denial of its lawsuit in U.S. District Court in Pasadena, Rockstar turned to 9th Circuit, which affirmed the decision on Nov. 5. The court ruled that Rockstar’s modification of the strip club’s trademark was not “explicitly misleading” and therefore protected by the First Amendment.

ESS’ claim centered on a fictitious strip club in the video game called the Pig Pen. Besides the name, few similarities existed between the Play Pen and the Pig Pen, although Grand Theft Auto’s designers visited Los Angeles from Scotland to capture the area’s feel.

ESS unsuccessfully argued Rockstar used Play Pen’s distinctive logo and trade dress without its authorization that created a likelihood of confusion among consumers.

In its published opinion, 9th Circuit’s Judge O’Scannlain explained the decision in painstakingly detailed, opinionated language:

“Both San Andreas and the Play Pen offer a form of lowbrow entertainment,” O’Scannlain wrote. “Besides this general similarity, they have nothing in common. The San Andreas game is not complementary to the Play Pen; video games and strip clubs do not go together like a horse or carriage or, perish the thought, love and marriage.

In rebutting ESS’ argument that "Grand Theft Auto" players are free to ignore the storyline and spend time in the virtual Pig Pen as much as they’d like, the judge drew another comparison.

“Fans can spend all nine innings of a baseball game at the hot dog stand; that hardly makes Dodger Stadium a butcher’s shop,” O’Scannlain wrote.