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LICENSING LAW

Unlicensed Use of Trademark Brands in Video Games

  • EA shows Bell Helicopters in its Battlefield 3 video game
  • Activision depicts the “Delta Force” logo in Call of Duty: Modern Warfare 3
  • In Sony’s Gran Turismo 6, race cars pass under a bridge displaying the Virag® trademark

Video games look and feel more realistic when they depict brands from real-life. But using a trademark brand without a license can also result in liability for infringement.  The good news for game designers and bad news for trademark owners is that the First Amendment allows for unlicensed use of trademarks in video games. But limits apply. Here’s a rundown of the rules.

For a detailed look at how each of these rules are applied, click here for a chart summarizing each case.

Rule 1: Video Games Are “Expressive Works” Protected by First Amendment

In a 2011 case called Brown v. Entertainment Merchants Assn., the U.S. Supreme Court settled a decades-old controversy by ruling that First Amendment protections for “expressive works” like books, films and plays also apply to video games. Such protections include using a third party’s trademark without infringement. Like other protected works, video games use character, plot, dialog, music and “other familiar literary devices” to communicate ideas, the Court reasoned.

Rule 2: Unlicensed Use of Mark Can’t Cause Consumer Confusion

Showing that a particular video game is a creative work is the start, not the end of the analysis. That’s because the First Amendment protection is not absolute. Unlicensed use of a trademark for a video game is not protected if it does more to cause consumer confusion than to promote free expression.

Rule 3: Use Must Pass “Rogers Test”

How do courts determine whether particular uses are protected? Answer: By applying a test first set out in a 1989 case called Rogers v. Grimaldi. The Rogers test has 2 prongs:

  1. Use Must Be ‘Artistically Relevant’: First, the game producer must prove that its use of the mark is “artistically relevant” to the work. This is easy. “The threshold for artistic relevance is anything more than zero,” according to one court. Just making a game more realistic is enough to meet the burden.
  2. Use Can’t Be ‘Explicitly Misleading’: Once relevance is established, the burden shifts to the trademark owner to show that the use was “explicitly misleading as to the source or content of the work.” This is an extremely difficult burden to meet. Essentially, the owner must show that the use was meant to deceive consumers into thinking the owner approved or endorsed the use.

The Rules in Real-Life

In practice, the First Amendment protection for unlicensed use of trademarks in video games has proven to be very robust. Thus, of the 6 major video game trademark infringement lawsuits filed since Brown, 5 have been decided in favor of game producers; the other case was settled without a final ruling. Click here for a chart summarizing each case.

Practical Pointers

Trademark owners need to be aware that suing a video game for an infringing use is a steep hill to climb. As for game producers, they should recognize that while they do have the First Amendment on their side, just being sued for infringement can be costly. Accordingly, producers need to exercise caution before using other company’s marks in their games without a license and not simply rely on the First Amendment as a shield.

Caveat: Much Riskier to Use Celebrities without a License

Game producers also need to be aware that the First Amendment protection that applies to unlicensed use of a trademark is much weaker when the use involves the name, image or likeness of a person. Exhibit B: The recent spate of lawsuits by pro and college athletes against EA. Click here to find out about the laws governing unlicensed use of an individual’s so called “right of publicity.”

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