Courts to construe the Lanham Act to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. An artistic work's use of a trademark that otherwise would violate the Lanham Act is not actionable unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work.
Plaintiff ESS Entertainment 2000, Inc. ("ESS"), operates a strip club, which features females dancing nude, called Play Pen. ESS claims that defendant Rockstar Games Inc., manufacturer and distributor of the Grand Theft Auto series of video games, has a game which used Play Pen's distinctive logo and trade dress without its authorization and has created a likelihood of confusion among consumers as to whether ESS has endorsed, or is associated with, the video depiction.The district court granted summary judgment in favor of defendant video game manufacturer, holding that a video game's depiction of an animated strip club called the "Pig Pen" did not infringe upon the trade mark or the trade dress of the operator's club. On appeal, the court affirmed the grant of summary judgment.
Did the district court err in granting summary judgment in favor of defendant on the ground that the First Amendment protected defendant against a liability doe trademark infringement?
The modification of club operator's trademark was not explicitly misleading, and was thus protected by the First Amendment, which applied to defeat all the claims. Although this test traditionally applies to uses of a trademark in the title of an artistic work, there is no principled reason why it ought not also apply to the use of a trademark in the body of the work. The parties do not dispute such an extension of the doctrine.