Client Alert Intellectual Property
Pillsbury Winthrop Shaw Pittman LLP www.pillsburylaw.com 3
defense as a matter of law;” (2) that many courts have analyzed the First Amendment at the motion to
dismiss stage; and (3) another district court ruling that the First Amendment can be an affirmative defense,
which cited to dicta from two previous cases. After stating the applicability of the Rogers test, the district
court applied the test’s two prongs and found that use of the word “Rebellion” as a title to a video game
with a civil war theme easily established artistic relevance. Additionally, the district court held that even if
there was consumer confusion – as was alleged existed by plaintiff – that evidence did not establish the
title was explicitly misleading without further demonstrating an "overt misrepresentation."
Electronic Arts, Inc. v. Textron, Inc., et al.
On January 6, 2012, Electronic Arts filed a declaratory judgment suit against Textron, Inc. and others
seeking a ruling that its depiction of Bell Helicopters in its video game Battlefield 3 is not an infringement.
Textron responded with counterclaims based on infringement of its trademarks, trade dress and false
designation of origin and sponsorship. In moving to dismiss the counterclaims in the suit, Electronic Arts,
Inc. v. Textron, Inc., et al, Case No. 3:2012cv00118 (N.D.Cal. 2012), EA asked the district court to rule that
it has a right under the First Amendment to depict real-life military helicopters in its video games as an
expressive work, without the permission of the aircraft's maker.
Following its application of the Rogers test to use of the Bell Helicopters in Battlefield 3, the district court
denied EA’s motion to dismiss the counterclaims. The court noted that under Rogers the contested
trademark use must have “no artistic relevance to the underlying work whatsoever, or, if it has some
artistic relevance, unless [it] explicitly misleads as to the source or the content of the work.” The district
court found that it is “plausible” that consumers might believe that Textron provided EA with expertise and
knowledge “in order to create its realistic simulation of the actual workings of the Bell-manufactured
helicopters,” thereby failing to meet the second prong of the Rogers test. Thereafter the parties entered
into a confidential settlement agreement and the case dismissed with prejudice on May 20, 2013.
Dillinger, LLC v. Electronic Arts Inc.
In Dillinger, LLC v. Electronic Arts Inc., 795 F.Supp.2d 829, 2011 WL 2446296 (S.D. Ind. June 15, 2011),
the Southern District of Indiana dismissed a case involving the use of “Dillinger” and “Modern Dillinger” as
the name of weapons in the Godfather I and Godfather II video games. The John Dillinger heirs brought
the action against EA alleging trademark infringement, among other claims, for using “Dillinger” to refer to
the Thompson submachine guns (“Tommy guns”) in the games.
In granting summary judgment for EA, the court again applied the Rogers test, and opined that EA's use of
Dillinger's name was protected as use in a "literary work" under the First Amendment. The district court
noted that the Godfather games were based on the well-known novel and films. Moreover, as the Tommy
gun was known to be Dillinger’s weapon of choice, EA’s use of the Dillinger name to refer to the weapons
is artistically relevant to the plotlines of the games and the plaintiff presented no evidence of any consumer
being misled or confused as to the source or content of the video games. Finally, the district court noted
that even if the relationship between Dillinger and the video games is attenuated, as alleged by Dillinger’s
heirs, the “artistic relevance to the underlying work” requirement is very low – it just needs to be above
zero.
E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc.
In E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008), the Ninth
Circuit affirmed a summary judgment in favor of Rock Star finding that inclusion of the mark “Pig Pen” as
the name of a virtual strip club in the video game Grand Theft Auto: San Andreas was protectable speech