Archives for June 2011

The First Amendment Extends to Dillinger Tommy Guns

There has been significant activity over the past several years in the courts with regard to the First Amendment and how far it goes to protect the use of trademarks and the likeness of celebrities in video games.  I previously posted about the Madden NFL game and how the defendants were successful in a First Amendment Defense.

The Southern District of Indiana recently dismissed a case involving the use of “Dillinger” as the name of a weapon in the Godfather I and Godfather II video games.

The John Dillinger heirs sued EA under trademark infringement/right of publicity theories for using “Dillinger” and “Modern Dillinger” to refer to the Tommy Gun weapons available in the Godfather I and Godfather II games.  Although there were a number of issues raised in connection with a motion to dismiss/motion for summary judgment, the ultimate issue was whether EA had a First Amendment right to use “Dillinger” to refer to the weapons in the game.

In granting summary judgment for EA, the court applied the Second Circuit’s Rogers test, which requires an analysis of 1) whether the name used has any artistic relevance to the underlying work, and if so, 2) whether it explicitly misleads the public as to the source or content of the work.

In this case, the Godfather games were based on the novel and movie of the same name.  Neither the novel, nor the movie depicted John Dillinger.  However, it was undisputed that John Dillinger and Tommy Guns were closely related as that was Dillinger’s weapon of choice.  Because EA used the name to refer to Tommy Gun weapons in the games and the plaintiff presented no evidence of any confusion as to the source or content of the work, the First Amendment defense applies, the court held.  The court noted that even if it accepted plaintiff’s contention that the relationship between Dillinger and the games is attenuated, the threshold for “artistic relevance to the underlying work” is very low—it just needs to be above zero.

This is a good decision for game developers in that it presents a case where the artistic relevance of the use of the name to the underlying work is not as strong as it has been in other cases.  But the case will likely to be appealed to the Seventh Circuit according to plaintiff’s counsel.

It is important when developing a game to consider the artistic relevance of the use of celebrity names, likeness, and trademarks in video games.  Where there is no relevance, the courts have found that the First Amendment defense does not apply.