CI Games, a video game developer and manufacturer, brought federal trademark infringement and unfair competition claims under the Lanham Act against Destination Films and Sony Pictures Entertainment, among others. Plaintiff alleged defendants’ movie “Sniper: Ghost Shooter” infringed the trademark of its video game “Sniper: Ghost Warrior” and could mislead consumers into thinking that the film was produced by the same creators as the video game because the titles of the works are so similar. CI Games also sought a preliminary injunction, arguing that the continued distribution of the movie will cause irreparable harm to the video game’s brand because consumers could develop negative views about the movie and mistakenly associate those views with the video game.
Defendants moved to dismiss the action and opposed the motion for preliminary injunction, arguing that CI Games failed to state a claim because the movie title is protected by the First Amendment, as outlined by the Second Circuit’s 1989 ruling in Rogers v. Grimaldi, and that CI Games’ claims are precluded by the fair use doctrine. Citing the Ninth Circuit’s 2002 holding in Mattel Inc. v. MCA Records Inc., the district court denied defendants’ motion to dismiss and CI Games’ motion for preliminary injunction, and clarified the applicability of the Rogers test to disputes over the title of a creative work in the Ninth Circuit.
The Rogers test to determine whether claims under the Lanham Act are valid with respect to expressive works balances a trademark holder’s right to exclusive use in its trademark and the public’s interest in avoiding consumer confusion, with the public interest in free expression. The Rogers test weighs these competing interests “by: 1) determining whether the title of the work containing the infringing mark has any artistic relevance to the underlying work whatsoever; and 2) if the title has some artistic relevance, determining whether the title explicitly misleads as to the source or content of the work.”
CI Games argued that a footnote in the original Rogers opinion suggests the two-part test does not apply in cases involving two titles that were confusingly similar. Instead, CI Games urged the district court to apply the “likelihood of confusion” test, which requires a fact-intensive application of factors set forth in the Ninth Circuit’s 1979 ruling in AMF Inc. v. Sleekcraft Boats. The district court disagreed. “Ninth Circuit precedent weighs in favor of applying the Rogers test to all trademark cases in which the alleged infringement occurs in an expressive work, including when an infringing title is allegedly similar to a previous title,” it said.
Plaintiff also argued that, even if the Rogers test applied, threshold barriers to the application of the test existed, such as the requirement that the test only apply to trademarks that have “cultural significance” and that defendants must show that their use of the title has artistic relevance to plaintiff’s mark. Citing Ninth Circuit opinions that discuss the issue of cultural significance, the district court noted: “there is no suggestion that cultural significance is an actual prerequisite for the application of the Rogers test.”
Further, the district court stated that “the title in question must be artistically relevant to the underlying work, not to the trademark,” explaining that the artistic relevance prong of the Rogers test is “meant to ensure that the title in question uses the potential trademark to express or describe its own content rather than merely to attract notoriety using a trademark in its title that is irrelevant to the underlying work.”
Turning to the first prong of the Rogers test, the district court analyzed whether the title “Sniper: Ghost Shooter” had some artistic relevance to the underlying movie. Defendants satisfied this “very low bar” because the title clearly was relevant to the movie, which “is about a team of snipers that is pursued by an enemy sniper that seems to know their location but remains unseen.”
As to the second prong, defendants misunderstood its purpose in the context of confusingly similar titles, according to the district court. A dispute between confusingly similar titles presents “a significantly increased risk of consumer confusion than when a title merely references an obvious trademark or celebrity.” As defendants themselves argued, “consumers expect a title to communicate a message about the book or movie, but they do not expect it to identify the publisher or producer,” the court noted.
The key question in the second prong was whether the title explicitly misleads as to the source of the work. “The correct analysis must be more protective of defendants’ use of the trademark than the mere likelihood of confusion test in order to account for the public interest in defendants’ free expression,” the district court reasoned. The analysis must also account for the increased potential for consumer confusion involved when the titles of two separate expressive works are confusingly similar.
The district court held that intentionally creating a title that could be confused with the title of another expressive work would be “explicitly misleading for the purposes of the Rogers test. It declined to hold that defendants are definitively not entitled to First Amendment protection under the Rogers test, however, concluding that a factual analysis of whether defendants meant to mislead consumers is better conducted at the summary judgment stage.
The court also found that defendants’ fair use argument was premature because CI Games had properly alleged (1) potential customer confusion between the two brands, citing similarities such as titles, overlap in advertising and marketing channels, target customers, and the fact that movies are often based on video games, and (2) that defendant’s knew of plaintiff’s game and sought to profit off the title
The district court denied CI Games’ motion for preliminary injunction because even though the plaintiff’s claims had survived a motion to dismiss, the video game developer had not clearly shown that it was likely to succeed on the merits nor that it was likely to face irreparable harm if the preliminary injunction was not granted, reasoning that “it is unlikely that consumers will mistakenly believe plaintiff is the source of defendants’ movie.”
Summary prepared by Jonathan Zavin and Peter Pottier.