The Volokh Conspiracy
Mostly law professors | Sometimes contrarian | Often libertarian | Always independent
Sony's Gran Turismo game depicts various famous racetracks, including the Rally of Monza track—and that includes (on a bridge over the track) a banner for VIRAG, a sponsor of one of the cars. VIRAG sued for trademark infringement, but Friday, the 9th Circuit rejected VIRAG's trademark claim:
Because the Gran Turismo video games contain expressive elements such as characters, plot, music, and extensive interactions between players and the games' virtual world, they qualify as expressive works and are entitled to First Amendment protection. See Brown v. Entm't Merchants Ass'n (2011) … [The games cannot be dismissed as "commercial speech," which is less protected by the First Amendment,] because the games do not merely "propose a commercial transaction."
The test set forth in Rogers v. Grimaldi (2d Cir. 1989), see Mattel, Inc. v. MCA Records, Inc. (9th Cir. 2003), applies regardless whether the VIRAG trademark has independent cultural significance, see E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc. (9th Cir. 2008), or Sony's use of the trademark within the video game serves to communicate a message other than the source of the trademark.
Applying the Rogers test, we conclude that the First Amendment bars VIRAG's Lanham Act claims. Sony's use of the VIRAG trademark furthers its goal of realism, a legitimate artistic goal, and therefore satisfies the requirement that Sony's use of the trademark have "above zero" artistic relevance to the Gran Turismo games. Moreover, Sony's use of the VIRAG trademark meets the second requirement of Rogers, because VIRAG does not allege any "explicit indication, overt claim, or explicit misstatement" that would cause consumer confusion.
Sounds right to me.