E.S.S. Entertainment v. Rock Star Videos
| Decision Date | 28 July 2006 |
| Docket Number | No. CV 05-02966 MMM (JTLx).,CV 05-02966 MMM (JTLx). |
| Parties | E.S.S. ENTERTAINMENT 2000, INC. dba the Playpen Plaintiff, v. ROCK STAR VIDEOS, INC.; Take-Two Interactive Software, Inc., Sony Computer Entertainment of America, Inc; Sony Computer Entertainment, Inc. Defendants. |
| Court | U.S. District Court — Central District of California |
Mark D. Litvack, Karin G. Pagnanelli, and Eric J. German of Mitchell Silberberg and Knupp LLP, Los Angeles, for Defendants' counsel.
Ernest J. Franceschi, Jr., a law corporation, and Robert F. Helfing, Sedwich, Detert, Moran & Arnold LLP, Los Angeles, for Plaintiffs' counsel.
ORDER GRANTING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT
On April 22, 2005, plaintiff E.S.S. Entertainment 2000, Inc. filed this action against defendants Rockstar Games, Inc.1 and Take-Two Interactive Software, Inc.2 Plaintiff, which does business as the Play Pen Gentlemen's Club (the "Play Pen"), operates a club in Los Angeles that provides adult-oriented entertainment. Rockstar Games, which is a wholly-owned subsidiary of Take-Two Interactive, manufactures and distributes a video game known as "Grand Theft Auto: San Andreas." Plaintiff alleges that defendants have used the Play Pen's distinctive logo and trade dress in Grand Theft Auto: San Andreas without its authorization, and created a likelihood of confusion among consumers as to whether plaintiff has endorsed, or is associated with, the video game. Plaintiff asserts four claims: (1) trade dress infringement and unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (2) trademark infringement under California Business and Professions Code § 14320; (3) unfair competition under Business and Professions Code §§ 17200 et. seq.; and (4) unfair competition under California common law.3
Defendants have moved for summary judgment on all claims.
The Play Pen is a strip club located on the eastern edge of downtown Los Angeles at 1109 S. Santa Fe Avenue.4 The Play Pen's "logo" consists of the words "the Play Pen" (and the lower- and upper-case letters forming those words) and the words "Totally Nude" displayed in publicly available font, with a silhouette of a nude female dancer inside the stem of the first cp',5
Rockstar Games is the publisher of the Grand Theft Auto series of video games (the "Series"), including Grand Theft Auto: San Andreas ("San Andreas" or the "Game").6 The Series is known for its signature brand of humor,7 and consumers expect new games in the Series to contain the same type of irreverent humor as earlier games.8
Each game in the Series is typically set in a cartoon-style city modeled after a real-world urban center such as New York and Miami.9 To play San Andreas, or one of the other games in the Series, players manipulate the story's protagonist and attempt to have him accomplish a series of "missions."10 Players must complete the missions to advance the plot and ultimately win the game11 While plaintiff does not dispute that a player must complete set missions to "win," it contends that games in the Series can be played without undertaking the missions12
San Andreas is similar to the rest of the Series in style, game play, and tone13 By playing San Andreas, a player can experience the Game's version of West Coast "gangster" culture14 The Game features three virtual cities, "Los Santos," "San Fierro," and "Las Venturas."15 These locations are based on Los Angeles, San Francisco, and Las Vegas.16 The "Los Santos" section of San Andreas is the Game's version of Los Angeles.17 Gangs control the Los Santos streets, random gunfire frequently erupts, and drug dealers and prostitutes are common.18 Los Santos police officers are corrupt.19
San Andreas was released to the public in the PlayStation 2 format in October 2004, and in the Xbox and PC formats in June 2005.20 San Andreas was released to the public prior to the date of plaintiff's March 2005 California service mark registration.21 Millions of copies of San Andreas have been sold.22
Los Santos mimics the look and feel of actual Los Angeles locations.23 Like Los Angeles, Los Santos is a hodgepodge of distinct areas, each with its own unique characteristics.24 Instead of "Hollywood," "Santa Monica," "Venice Beach," and "Compton," Los Santos contains "Vinewood," "Santa Maria," "Verona Beach," and "Ganton."25 The neighborhoods are populated with cartoon-style liquor stores, ammunition dealers, casinos, pawn shops, tattoo parlors, bars, and strip clubs, among other things.26 The brand names, business names, and other aspects of the locations have been changed to fit the overall "Los Santos" theme and the Series' irreverent tone.27
The neighborhood of "East Los Santos" is the Game's version of East Los Angeles, or more specifically, the eastern edge of downtown Los Angeles.28 Strip clubs, taco stands, and warehouse-type architecture are found in this area of downtown Los Angeles.29 East Los Santos mimics the look and feel of actual Los Angeles locations.30 One of the businesses located in East Los Santos31 is a virtual, cartoon-style strip club known as the "Pig Pen."32
Cartoon-style, animated graphics give San Andreas its particular look.33 Thousands of virtual, cartoon-style locations are depicted in the game,34 and it includes a disclaimer stating that the locations depicted are fictional.35
A team of artists in Scotland animated San Andreas.36 Some of the artists who drew Los Santos visited Los Angeles to take reference photographs for use as inspiration in creating the Game's animated neighborhoods.37 The artists took photographs of various Los Angeles businesses, streets, and other locations that appeared to fit the San Andreas theme.38 The artists who drew the Pig Pen took photographs of the Play Pen.39 The artists used the photographs of the Pig Pen and various other East Los Angeles locations to design aspects of the Pig Pen.40
When drawing Los Santos, the artists changed the names, building designs, and overall look and feel of the locations and businesses they referenced to make them fit the virtual, cartoon-style world of San Andreas and the Series' irreverent tone.41 According to Nikolas Taylor, the Lead Map Artist for the Los Santos section of San Andreas, he and other artists purposely made these alterations because they did not seek to "re-creat[e] a realistic depiction of Los Angeles; rather, [they] were creating Los Santos,' a fictional city that lampooned the seedy underbelly of Los Angeles and the people, businesses and places [that] comprise it."42 Taylor agreed, however, that he did not choose the word "Pig" because he wanted to parody strip club patrons, or because he found anything humorous about pigs.43
The Pig Pen building is a totally different size, color, shape, and structure than the Play Pen building.44 Furthermore, unlike the Play Pen, the Pig Pen does not have a stone facade, a valet stand, large plants and gold columns around the entrance, or a six foot black iron fence surrounding the parking lot.45 Although the Pig Pen and the Play Pen both have pole signs, the signs have different color schemes. Moreover, unlike the Play Pen's pole sign, the Pig Pen's sign has no trio of nude silhouettes above the logo, and no separate "totally nude" sign below.46 Pointing to these differences, defendants contend that the Pig Pen building was not modeled after the Play Pen building, but rather after another structure in the same neighborhood as the Play Pen.47 While plaintiff does not dispute that the Pig Pen building differs from that of the Play Pen in certain respects, it contends that the two clubs have similar awnings and logos.48
The logo on the pole sign in a corner of the Play Pen parking lot is different from the logo that appears on the awning above the Play Pen door in certain respects.49 This is because there is no physical master or precise template for the Play Pen logo.50 How to draw the silhouette of the nude female dancer in the Play Pen logo is left to each artist who draws it, although the final drawing must be acceptable to the Play Pen's owners.51 There are several different versions of the silhouette used in the Play Pen logo.52 In fact, some advertisements and signs for the Play Pen do not contain the silhouettes of the nude females.53
The Play Pen logo is written in a publicly available font.54 Defendants contend that some of the letters of the Pig Pen logo are in a different font than they are in the Play Pen logo.55 Plaintiff disputes this, and contends that the two logos use the same font.56
Strip clubs other than the Play Pen have round awnings57 because awnings provide shelter from the weather.58 Many strip clubs also have parking lots.59 Many businesses are located on the southwest corner of an intersection,60 and placing a pole sign in the corner of a strip club parking lot closest to the intersection is not unique.61
Many strip clubs display silhouettes of nude female dancers on the exterior of the building or in their logo.62 Displaying silhouettes of nude female dancers outside a strip club lets customers know what to expect inside the club.63 Many strip clubs also use the phrase "totally nude" outside the club or in their logo64 to tell customers that their dancers are totally nude.65
Defendants' expert conducted an Internet search and found websites for at least six other strip clubs and sex-themed establishments in the United States that use the term "Play Pen" or "Playpen."66 The Internet also contains information about "Playpen" suites in a high-end Las Vegas hotel; each suite contains an in-room "stripper's pole."67 In addition, there is information on the Internet regarding a theme night at a Hollywood nightclub known as the "Playpen," which featured performances...
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