Gaming the Name: Federal Court Dismisses Trademark Claim in Video Game Case on First Amendment Grounds

In a case that could make it more difficult for trademark owners to enforce their rights, a federal district court in May concluded that the First Amendment protects a video game developer from potential liability for trademark infringement.

The dispute stems from a computer game called Sins of a Solar Empire: Rebellion. Rebellion Developments Limited, a British computer game company, sued the developers of Rebellion alleging that the game’s title infringed the trademarked name of their company. In response, the game’s developers, Stardock Entertainment and Ironclad Games Corporation, argued that the title of their video game was protected expressive speech, and therefore that the lawsuit should be dismissed.

The Court agreed with the defendants and dismissed the case.

While conceding that there was “some evidence of consumer confusion,” the Court concluded that video games are indeed expressive works and therefore the game’s title is subject to greater protection than would otherwise be the case. In such instances, the trademark owner must show that the allegedly infringing use either has no artistic relevance or that the title explicitly misleads as to the source or the content of the work.

According to the Court, the plaintiffs could not meet this more exacting standard. Artistic relevance, the Court noted, is a low threshold, and a defendant need only show that the relevance is “above zero.” As to the second issue, the Court said that only “overt misrepresentation” will be found to “explicitly mislead” consumers about the source or content of an expressive work and that the naming here does not rise to that level.

Also significant was the Court’s decision to dismiss the case on First Amendment grounds at such an early stage of the litigation. The Court acknowledged that there are no other cases directly addressing the issue of dismissing a trademark claim on First Amendment grounds, but the Court found sufficient support in other contexts for the idea that the First Amendment could provide the basis for dismissal.