Trademark Protection of Architectural Works in the Digital Era. The U.S. Approach
by Andrea Moriggi
Introduction. – 1. Trademarks and the evolution of architectural works protection in the digital age. – 2. Architectural works trademark in videogames: the E.S.S. Entertainment 2000 v. RockStar Games case. – Conclusion.
Videogames are a multi-billion-dollar industry in the global market, taking the largest profit-share of the whole entertainment industry in the United States. Gaming companies have been constantly growing for more than 20 years, and the business is expected to reach a value of up to 90 billion dollars by 2020, potentially marking a 100% increase within a 10-year period. Once thought of as a mere distraction, videogames have become more interactive, and today their potential is also increased with the implementation of virtual reality technologies. Along with the industry’s constant growth, controversies related to IP rights have increased due to the complexity of the rights involved and the rise in the number of products placed. Imagine a soccer videogame where you could choose between ‘Vecchie Glorie Busto Arsizio’ and ‘Oratorio Termoli’ team players instead of those playing in clubs like Real Madrid or Barcelona F.C., or a movie where James Bond drove a Fiat Multipla instead of an Aston Martin. Brand names are important. Although it is not up for debate that their value should be always protected against confusion and dilution, some authors have argued that the current protection parameters lead to a doctrinal imbalance that both overprotect and underprotect.
The first part of this paper will discuss the principles of trademark law that apply in the United States when trademarks are depicted in entertainment works. The second part will focus on a recent case held before the Ninth Circuit where the judge used the Rogers test in order to determine whether architectural work representation in games could infringe upon a real-world counterpart trademark. In this case, the Court concluded that the virtual building created by developers did not infringe upon the trademark of the real-world owner, resulting in allowing game developers’ freedom to utilize recognizable architectural work in their videogames.
1. Trademarks and the Evolution of Architectural Works Protection in the Digital Age.
The purpose of Trademark law is to “enable the public to identify easily a particular product from a particular source” and “to prevent free-riding on a rival’s mark”. In order to be actionable, a mark doesn’t need to be registered; it is sufficient that the plaintiff successfully shows:
- ownership of a valid mark;
- that the alleged infringer’s use of the mark is “likely to cause confusion, or to cause mistake, or to deceive” consumers.
The Ninth Circuit court defines a trademark as “a word, phrase or symbol that is used to identify a manufacturer or sponsor of a good or the provider of a service”. Therefore, it is not only the physical mark that a company uses to identify their goods to be protected, but also any recognizable aspect of the good that consumers could associate with such company.
Traditionally, trademarks are divided into the following four categories:
- Arbitrary and fanciful. Arbitrary marks may have other meanings but they are generally associated with the goods bearing the mark (i.e. “Green Leaf” for insurance products or “Sun computer” as a mark of software); fanciful marks have no meaning other than their trademark meaning (i.e., Exxon, Nikon, Sony);
- suggestive, that indirectly describe the product or service they identify, requiring a logical leap to get to the goods they identify (i.e. “Coppertone Sun Oil” or “Chicken of the Sea tuna”);
- descriptive, that appear to describe the product or service, or its geographical location (i.e. “Oatnut” for bread of “Philadelphia card” for a credit card depicting Philadelphia and targeting consumers in Philadelphia);
- generic, that are common terms and cannot acquire trademark protection (i.e. “Computer Learning Center”, “Baked Oven Pizza”, etc).
With videogames becoming progressively more immersive thanks to the implementation of real-life mirroring environments, trademark and copyright issues have arisen. Sometimes, in fact, developers utilize architecture and buildings taken from actual cities to create a more immersive world for the player, but that could risk infringing upon a copyright or a trademark of the real-world counterpart. Considering that trademark law covers nearly anything capable of influencing a purchaser of goods and services, including the “three-dimensional configuration of a building … if it is used in such way that it is or could be perceived as a mark”, this aspect has to be carefully analyzed by companies when evaluating litigation risks of placing a trademark in their products.
Moreover, protection is available for the recognizable use of both the exterior or the interior of a building, as confirmed by some important recent decisions. The trademark has protection regardless of the ownership of the building or the architecture associated with goods or services. The fact that this protection somehow stands in a legal ‘grey area’, however, has created uncertainty within developers that today are less inclined to represent real buildings to avoid possible litigation.
In order to prevail on a claim of trademark infringement, the plaintiff must show that there is a likelihood that a customer will be misled because of the use of the building in the product that leads them “to believe that the defendant’s goods are produced or sponsored by the plaintiff”.
Nevertheless, trademarks in the digital age are leading to a new set of challenges compared to the ones with which courts usually dealt in daily real-world cases. In a recent famous dispute in the entertainment industry, the owners of three Times Square buildings sued the producer of the film Spider Man for depicting digitally altered billboard advertisements upon the owner’s buildings in the movie. The building owners alleged violation of § 43(a) of the Lanham Act, which provides a private cause of action against any person who “in connection with any goods … or any container for goods, uses in commerce any word, term, name, symbol or device, or any combination thereof, which … is likely to cause confusion, or to cause mistake, or to deceive … as to the origin, sponsorship, or approval of his or her goods … by another person”. The Second Circuit court dismissed the claims, stating that there was no consumer confusion as the alteration did not affect purchasing decisions; moreover, it affirmed that the trade dress infringement had no ground because the advertising dress of the building changes constantly.
2. Architectural Works trademark in Videogames:
The E.S.S Entertainment 2000 V. Rockstar Games case
Trademark aspects of architecture in videogames have recently been scrutinized by a Ninth Circuit case.
Rockstar Games Inc., manufactures the famous GTA series of videogames. Each series – known for an irreverent crass brand of humor and gratuitous violence – takes place in one dystopic, cartoonish cities modeled after actual American urban environments. The “Grand Theft Auto: San Andreas” edition mimics the look of the actual Los Angeles area, although the city has been named “Los Santos” and the neighborhoods names have been changed in Vinewood, Verona Beach and Ganton, whereas, in real life, these are respectively Hollywood, Compton and Venice Beach. Such areas include virtual gun stores, tattoo parlors, car body repair shops and strip clubs. The brand and businesses names have been changed to fit the irreverent Los Santos tone.
The East Los Santos neighborhood – the game’s version of East Los Angeles – contains a cartoon-style variation of the “Play Pen” strip club, an actual night club for men which – in the game – has been named the “Pig Pen”, along with many other substantial differences (i.e., the “Pig Pen” lacks certain characteristics of the “Play Pen” such as a stone façade, a valet stand, large plants and gold columns around the entrance, and a six-foot black iron fence around the parking lot. The “Play Pen” also has a red, white and blue pole sign near the premises, which includes a trio of nude silhouettes above the logo and a separate “Totally nude” sign below while the “Pig Pen” does not).
E.S.S. Entertainment – the company which operates the “Play Pen” strip club – filed suit against Rockstar Games claiming that the latter had used the Play Pen’s distinctive logo and trade dress without authorization and created a likelihood of confusion among consumers as to whether E.S.S. has endorsed, or is associated with, the video depiction.
Rockstar Games argued that the affirmative defense of fair use and First Amendment protected it against liability. The court dismissed the nominative fair use defense because it requires the defendant to use the mark to clearly identify and intentionally refer to the plaintiff’s product or service. Apparently, in fact, Rockstar Games did not seek to “re-creat[e] a realistic depiction of Los Angeles; rather, [the aim was to depict] ‘Los Santos’, a fictional city that lampooned the seedy underbelly of Los Angeles and the people, business and places [that] comprise it”. On the First Amendment defense the court found that trademark protection is not meant to “quash an unauthorized use of the mark by another who is communicating ideas or expressing points of view” and used the Rogers test to determine whether the developer can use the real world building in the virtual representation of the videogame, without infringing the Play Pen trademark. The test deems a trademark use worthy of First Amendment consideration if the use is artistically relevant and not explicitly misleading. In order to determine whether the First Amendment apply the court must perform a traditional likelihood of confusion analysis and then balance the likelihood of confusion against the public interest in freedom of expression. The Rockstar Games’s use of the Play Pen trademark passed the test, and the Ninth Circuit found that its design had artistic relevance, because even if “it is … true that Play Pen has little cultural significance … the same could be said about most of the individual establishments in East Los Angeles. Like most urban neighborhoods, its distinctiveness lies in its ‘look and feel’, not in particular destinations as in a downtown or tourist district. And that neighborhood, with all that characterizes it, is relevant to Rockstar’s artistic goal”. Moreover since “nothing indicates that the buying public would reasonably have believed that E.S.S. produced the videogame or, for that matter, that Rockstar operated a strip club”, the Ninth Circuit found the likelihood of the trademarks too low to mislead customers.
After the E.S.S. Entertainment v. Rockstar Games case, authors seem more incline to believe that the game developer’s use of architecture does not generally lead to consumer confusion over the sponsorship of the game. This is true, unless a developer actively attempts to evoke the sponsorship, creating – for instance – a “home base” with a specific trademark that contains a prominent mission or repeated interactions that might lead to consumer confusion.
Quite unlike copyright law, trademark law does not protect constructions innovation or creativity. Rather, it aims to protect the integrity of the marketplace by prohibiting the use of marks associated with producers or dealers in ways that would cause confusion as to the sources of the goods or services.
Big companies in the U.S., seem now to be more willing to conclude mutual agreements for depicting trademark in third-parts videogames, rather than litigating it. Current trends show that companies are enjoying the mutual beneficial relationship of this practice, and are even increasing their advertising in this area. Pepsi, Burger King, Chupa-Chups, Ubisoft, 7-UP and others all have sponsored the creation of games based on their brands, and many others, such as Coca-Cola, Discovery Channel and Fanta have sponsored downloadable add-ons with their ads. In 2007, a new Sony videogame called “Resistance: Fall of Man”, involving fights between a firefighter and alien invaders, was released. The fights took place inside the Manchester Cathedral, causing outrage and controversy with the Church leaders and worshippers of England. The polemic and a consequent back and forth of press releases between Sony and the Church, almost led to a copyright infringement lawsuit. However, a significant increase of visitors (especially among young players), eventually made the Church ‘forgive’ Sony for using the architecture in their game.
When a trademark is used in a way that is likely to weaken (or dilute) the source-identity function of a famous mark, that use is likely to harm both customers and mark owners. However, the only scope of representing real-life buildings (and their associated trademarks) in videogames is to make gaming a true, immersive and interactive experience, and not to weaken their identity.
Although the current parameters should be still clarified and adjusted in order to avoid a dangerous doctrinal imbalance, the use of the Rogers test has shown a strong efficacy in protecting developers against trademark infringement claims if a building is “artistically relevant”. However, this is yet not enough. The test is, in fact, just a tool used in courts of law, when litigation has already taken place, and – also – it requires a case-by-case analysis without easily predictable outcomes.
Today, companies should be made able to ensure the realization of an immersive world without fear of costly litigation, similarly to what happens in copyright law with the fair use or freedom of panorama exceptions. Given that courts precedents are sufficient to establish a clear exceptions-framework for trademarks, a call for a clearer legislative action (i.e., on the copyright-law model) may be advisable, if we do not want to see the developing of innovative games based on virtual reality technologies – and the whole U.S. gaming market – blocked or penalized.
 K. Anderton, The Business Of Videogames: A Multi Billion Dollar Industry, Forbes, available at https://perma.cc/F4HY-F64T
 R. Foote, Who rules entertainment industry? Videogames vs. film & music, 12KFVS, available at http://www.kfvs12.com/story/31140647/who-rules-the-entertainment-industry
 Price Waterhouse Coopers, Global entertainment and media outlook 2017-2021, available at http://www.pwc.com/us/outlook.
 L. Parker, Virtual Reality Is a Disappointment? Not in the World of Videogames, New York Times, 22 June 2017, available at https://perma.cc/P9S4-HP6H
 See, S. Mejia, Game On: Building an Analytic Framework For Addressing Copyright and Trademark Issues in Mobile Gaming, Florida A&M University Law Review, 2013. See also, D.L. Burk, Copyright and Paratext in Computer Gaming, in C. Wankel, S. Malleck, Emerging Ethical Issues of Life in Virtual Worlds, Information Age Publishing, 2010
 See W.M. Landes – R.A. Posner, Trademark Law: An Economic Perspective, 30 J.L. & Econ., 265, 268-270, 1987
 Overprotection under current law results partially from the traditional “likelihood of confusion” analysis, which assesses whether consumers are likely to be misled into believing that a markholder has sponsored or approved a particular mark use. In making this assessment, courts examine a number of factors: (1) the strength of the allegedly infringed mark; (2) the proximity (i.e. competitive similarity) of the goods represented by the mark; (3) the similarity of the marks; (4) evidence of actual confusion, including survey evidence; (5) overlap in marketing channels used by the goods; (6) the type of goods and the degree of care likely to be exercised by the purchaser; (7) the alleged infringer’s intent in selecting the mark; and (8) the likelihood that the product lines will expand to compete with each other, in E.R. Rosenblatt, Rethinking the Parameters of Trademark Use in Entertainment, Florida Law Review, 2009
 M.P. McKenna, The Normative Foundations of Trademark Law, Notre Dame Law Review, 2007.
 New Kids on the Block v. News America Pub., Inc., 971 F.2d 302, 305 (9th Cir. 1992).
 15 U.S. Code § 1125, “(1) Any person who, on or in connection with any goods or services … uses in commerce any word, term, name, symbol, or device … false or misleading description of fact … which is likely to cause confusion, or … mistake… or misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
 Mattel Inc. v. MCA Records Inc., 296 F.3d, 894, 900 (9th Cir. 2002).
 D.K. Stark, Grand Theft Architecture: Architectural Works in Videogames After E.S.S. Entertainment v. Rockstar Games, Berkeley Technology Law Journal, 2010.
 See, M. Barrett, Intellectual Property, Aspen Publishers, 2008.
 Game developers often travel to the cities that they hope to represent in order to take the best pictures and ensure that their virtual representation accurately emulates the real world, Id.
 Trademark Manual of Examining Procedure, ed., October 2017, available at https://www.uspto.gov/trademark/guides-and-manuals/tmep-archives
 See, E.G. Smith, Apple trademarks design of its retail stores, Reuters, 13th January 2013, available at https://perma.cc/5BRZ-WT7G
 This strategy hurts both the game developers’ creative freedom and the user experience, Id.
 See, Rock and Roll Hall of Fame Museum Inc. v. Gentile Products, 134, F.3d 749-754 (6th Cir. 1998).
 See, one of the earliest trademark in architecture cases, Weinstock Lubin & Co. v. Marks, 109 Cal. 529, 1895; see also, Two Pesos Inc. v. Taco Cabana Inc., 505 U.S. 763 (1992).
 Sherwood 48 Associates v. Sony Corp. of America, 76 F. Appx 389 (2nd Cir. 2003)
 15 U.S. Code § 1125(a)
 E.S.S. Entertainment 2000 Inc. v. Rock Star Videos, No. CV05-2966, 2005 WL 3879981 (C.D. Cal. Apr. 22, 2005)
 D.K. Stark, see supra note 11
 According to Nicholas Taylor (Lead Map Artist for Los Santos) and other artists court testimony
 Rogers v. Grimaldi, 875 F.2d 994 (2nd Cir. 1998); this case concerned the film Ginger and Fred, directed by Federico Fellini. The film was about two Italian dancers named after the famous duo of Ginger Rogers and Fred Astaire.
 E.R. Rosenblatt, see supra note 7
 Imagine, for instance, a “Ferrari home base” or other similar factory that contains a prominent mission.
 D.K. Stark, see supra note 12
 P. Menell, S. Scotchmer, Intellectual Property, Berkeley Technology Law Journal, 2005
 See W. Freeman, Six of the best products placements in video games, The Guardian, available at https://perma.cc/ZSW3-XXEX; see also Advergaming, the advertising value video games can offer, available at http://perma.cc/R543-CQU8
 See D. Burg, New GoW maps coming Wednesday, available at https://perma.cc/J9LC-U25L
 See Cathedral row over video war game, BBC News, 9 June 2007, available at https://perma.cc/F92K-YYPE
 See B. Richardsons, Resistance fracas a blessing for Church, Gaming Tech Radar, 2008. The Church claimed the depiction to be desecration and copyright infringement.
 One of the argument used to litigate trademarks in videogames, it that consumers are increasingly aware of product placement in videogames with the result of an increased likelihood of confusion. This consequently forces developers to choose between licensing marks or avoiding them altogether.
 E.R. Rosenblatt, v. supra note 7
 The Ninth Circuit made clear that “only the use of a trademark with no artistic relevance to the underlying work whatsoever does not merit First Amendment protection. … In other words, the level of relevance merely must be above zero.”. E.S.S. Entertainment v. Rockstar Games, see supra note 23
 17 U.S. Code § 120(a)