Use of DILLINGER for Virtual Weapons in Video Games Protected by First Amendment

Use of DILLINGER for Virtual Weapons in Video Games Protected by First Amendment

Although 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, including:

  • JOHN DILLINGER for licensing the right to use the name, image and likeness of John Dillinger (Reg. No. 2809305);
  • JOHN DILLINGER for photos, plastic check-book covers, key chains and clothing (Reg. No. 2944205);
  • DILLINGER'S for restaurants (Reg. No. 3483359); and
  • DILLINGER 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 infringement.

(citations omitted)

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