## Facts

- E.S.S. Entertainment 2000, Inc. operated a Los Angeles strip club known as the “Play Pen” and claimed trademark and trade dress rights in its name and logo.
- Rock Star Videos, Inc. and Take–Two Interactive Software, Inc. produced and distributed *Grand Theft Auto: San Andreas*, an expressive video game set in the fictional city of “Los Santos,” modeled on Los Angeles with altered, fictionalized place and business names.
- To design Los Santos, Rockstar artists photographed Los Angeles locations, including the Play Pen club.
- The game included a virtual strip club called the “Pig Pen,” with a logo using a similar font to the Play Pen signage and a silhouette of a nude woman placed within the stem of the initial “P.”
- E.S.S. alleged consumers would believe the Play Pen club endorsed, sponsored, or was affiliated with the game due to the Pig Pen’s look and logo.
- E.S.S. sued in federal district court for Lanham Act infringement and unfair competition, plus related state-law claims.
- The district court granted summary judgment for defendants on First Amendment grounds, and E.S.S. appealed.

## Issues

1. Whether use of a Play Pen–inspired strip club name/logo within an expressive video game is protected by the First Amendment under the *Rogers v. Grimaldi* test, limiting Lanham Act liability.
2. Whether the in-game depiction is explicitly misleading as to source, sponsorship, endorsement, or affiliation so as to overcome First Amendment protection.

## Decision

- The Ninth Circuit affirmed summary judgment for Rockstar and Take–Two.
- The court treated the video game as an expressive work and applied the *Rogers* framework to the trademark claims.
- The Pig Pen depiction had artistic relevance to the game’s attempt to create a satirical, fictional Los Angeles–like setting.
- The depiction was not explicitly misleading about sponsorship or endorsement because the game made no overt claim that E.S.S. or the Play Pen was affiliated with the game.
- Because the First Amendment defense was dispositive, the court did not rely on nominative fair use.
- The related state-law claims failed for the same reason as the Lanham Act claims.

## Legal Principles

- For expressive works, the Lanham Act applies only when avoiding consumer confusion outweighs First Amendment interests in free expression.
- Under *Rogers v. Grimaldi*, use of a mark in an expressive work is actionable only if (1) it has no artistic relevance to the work, or (2) it is explicitly misleading as to source or content.
- The “artistic relevance” requirement sets a low threshold; relevance to the work’s setting, style, or message is sufficient.
- “Explicitly misleading” requires more than ordinary likelihood-of-confusion arguments; mere use of a similar mark or trade dress, without an overt claim of endorsement, generally does not satisfy the standard.
- Context matters: fictionalized, satirical, or heavily stylized settings can reduce the possibility that consumers will infer real-world sponsorship.

## Conclusion

The Ninth Circuit held that the game’s Pig Pen depiction was artistically relevant to the work and not explicitly misleading about endorsement, so the First Amendment barred E.S.S.’s Lanham Act and parallel state-law claims.


E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008)