On May 12, 2016, Tim Lince writes an article in the World Trademark Review discussing the issue of trademarks, infringement, and enforcement in virtual reality. While I do agree the use of trademarks in virtual reality will occur, I also believe that courts have already provided some guidance on balancing the rights of trademark owners and First Amendment rights in expressive works.
Specifically, Virag, S.R.L. v. Sony Computer Entm’t Am. LLC, 2015 U.S. Dist LEXIS 111211 (N.D. Cal. Aug 21, 2015) dismissed Lanham Act claims for use of trademarks in two particular video games, Gran Turismo 5 and 6. In so doing, it cites the two-pronged test from the Second Circuit articulated in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). The Rogers test, “which is a method for balancing the trademark and similar rights against First Amendment rights, requires courts to:
construe the Lanham Act to apply to expressive works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. To that end, under the Rogers test, the Lanham Act should not be applied to expressive works (1) unless the use of the trademark or other identifying material has no artistic relevance to the underlying work whatsoever, or, (2) if it has some artistic relevance, unless the trademark or other identifying material explicitly misleads as to the source or the content of the work.
Virag, S.R.L., 2015 U.S. Dist LEXIS 111211, *27-28 (internal citations omitted).
In the ensuing analysis, Virag held that the Lanham Act did not apply to the use of certain trademarks in Gran Turismo 5 and 6 and dismissed the defendants’ Lanham Act claims.
In so doing, Virag provides some guidance that suggests trademark owners be cautious about litigation on Lanham Act claims and consider alternative benefits (if any) of the use of the trademark in virtual reality worlds.