the First Amendment does not play a role in the majority of trademark
infringement cases, video games are considered to be a form of artistic
expression. Thus, a defendant was able to argue successfully that the First
Amendment allows it to use plaintiff's DILLINGER trademark for virtual weapons
in its video games. In this Analysis, Anne Gilson LaLonde, author of Gilson on
Trademarks, discusses the implications of the ruling in Dillinger, LLC v. Elec. Arts, Inc., 2011 U.S. Dist. LEXIS 64006
(S.D. Ind. June 16, 2011) [enhanced version available to lexis.com subscribers]. She writes:
The Facts and
Procedural History of Dillinger
John Dillinger, a notorious gangster who
lived in the early 1900s, favored submachine guns known as Tommy Guns.
Plaintiff Dillinger, LLC owns several federal trademark registrations,
DILLINGER for licensing the right to use the name, image and likeness of John
Dillinger (Reg. No. 2809305);
DILLINGER for photos, plastic check-book covers, key chains and clothing (Reg.
for restaurants (Reg. No. 3483359); and
DAYS for historical festivals (Reg. No. 3883232).
The company also has an application
pending with the USPTO for JOHN DILLINGER for guns (Ser. No. 77250730) that
awaits a statement of use from the applicant.
Jeffrey Scalf, the managing member of
plaintiff Dillinger, LLC, is the great-nephew of the gangster. He received
assignments amounting to 75% of Dillinger's personality rights from his
relatives, and assigned these interests to Dillinger, LLC. Response to Office
Action in U.S. Ser. No. 77250730, Jan. 26, 2008. Thus, plaintiff also claimed
to own Dillinger's state right of publicity for commercial purposes, including
his name, voice, and image, by assignment from the gangster's heirs.
Defendant video game developer Electronic
Arts, Inc. (EA) has a series of games based on The Godfather novel and
subsequent movie series. The games allow users to opt for the "Level Three
Dillinger Tommy Gun" or the "Modern Dillinger Tommy Gun" from
among several firearms as their weapon of choice. Plaintiff sued to stop these
uses of DILLINGER, which it did not authorize.
In its complaint, plaintiff alleged that
EA violated Indiana's 1994 right of publicity statute (Ind. Code § 32-36-1-8(a)) and that EA committed trademark
infringement. In an earlier opinion, the district court granted judgment on the
pleadings for EA on Dillinger, LLC's right of publicity claim, ruling that the
Indiana statute does not apply to people like John Dillinger who died before its
enactment. In addition, the court found that defendants' video games constitute
"literary works" under an exception in the right of publicity statute
and thus could not form the basis for a lawsuit. As to the trademark claim, the
court also rejected EA's argument that it could not be liable for infringement
because it did not use DILLINGER as a trademark.
The parties filed cross-motions for
summary judgment on the issue of whether or not EA's use of DILLINGER was
protected under the First Amendment.
The First Amendment
and Trademark Law
Defenses based on the First Amendment are
rarely successful in trademark infringement cases. The right to free speech
does not encompass a right to use a trademark that will confuse consumers as to
the origin of a product. Protection given to commercial speech - speech
"proposing a commercial transaction - is limited. Thus, if the defendant
in this case were running a DILLINGER restaurant and consumers were likely to
believe that it was also the source of the plaintiff's DILLINGER'S restaurants,
the defendant would not have a First Amendment defense to a claim of trademark
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