In August 2020, an ambitious computer programmer publicly tweeted Elon Musk for permission to use his name and the SpaceX logos in a video game about colonizing Mars. The programmer planned on reposting the tweet every day for a year until he got an answer. After 154 days he finally got a response from Mr. Musk: “You can steal our name/logos & we probably won’t sue you.” This certainly is not the clear Yes or No answer the programmer was hoping for but it does raise the question of when you can use a company trademark or a person’s name or likeness in a video game – even without approval.
In 2011 the U.S. Supreme Court held that video games are expressive works that are subject to the protection of the First Amendment.  That case addressed restrictions on selling violent video games to children, but the decision applies across the board. As a result, IP rights, such as trademark rights and a person’s right of publicity, are balanced by courts against a game company’s rights under the First Amendment.
For trademarks, the balancing is typically done using the “Rogers test”, a test that flows from a lawsuit brought by Ginger Rogers asserting that the Fellini film titled Ginger and Fred violated her trademark rights and right of publicity. Under the Rogers test, use of a third-party trademark in creative work is infringing if (1) the use of the mark has “no artistic relevance to the underlying work whatsoever,” or (2) it has some artistic relevance, but “explicitly misleads as to the source or the content of the work.”
In the video game context, trademark or trade dress issues come up frequently in games that depict a realistic environment. In one well-known case the owner of the “Play Pen Gentlemen’s club” sued Rockstar Games arguing that the “Pig Pen” strip club depicted in the Los Angeles of Grand Theft Auto infringed their trademark rights. The court concluded that while the Pig Pen club in the video game had a similar building styling and logo and was clearly based on the plaintiff’s building, there was least minimal artistic relevance in including the Pig Pen club as part of a cartoon-style recreation of East L.A. and it was unlikely a consumer would think that Play Pen created or sponsored the game. The court also specifically noted that “the chance to attend a virtual strip club is unambiguously not the main selling point of the game.”
More recently, AMG sued Activision claiming that Call of Duty video games infringed AMG’s trademark and trade dress rights in the Humvee tactical vehicle. The Call of Duty game at issue featured Humvees at various points in the game. In its analysis the court found that featuring actual vehicles used by real-world militaries “evoked a sense of realism”, that presence of Humvees in the game has “above zero” artistic value, and the use was not misleading as to sponsorship. In contrast, in a dispute involving the Battlefield 3 military simulation game, Electronic Arts (EA) was sued by Textron over its use of the Bell helicopter names and trade dress in the game. The use of the Bell helicopter was prominent throughout the game and in-game advertisements. In response to an early motion to dismiss the case on First Amendment grounds, the court concluded that it was at least plausible for a user to believe that Textron had supported or sponsored the game, authorized the use of the marks, or at least provided technical information to create realistic simulations of the actual helicopters. The court denied the motion to dismiss and allowed the case to move forward. (The parties later settled.)
When game characters are based on real people similar balancing tests are used. Rights of Publicity are governed by state laws and so the specific tests used to balance these rights against the First Amendment vary, with some states more permissive than others. One common test considers how the character is used within the game and whether the use of the character is “transformative” relative to the actual person.
Where a game character is inspired by a real person but the character is placed in different environments and doing different things than the person is known for, the use can be considered transformative and permitted. A recent dispute involves the popular game Fortnite Battle Royal, a last-man-standing battle game. The game is free to play but players pay for “emotes” to customize their character so it can perform dances or movements, many of which are copied from popular media sources. The “Phone It In” emote, for example, has a dance sequence identical to the signature move of musician Leo Pellegrino as shown in a 2017 Google phone commercial.
Pellegrino sued Epic Games on a variety of claims, including violation of his right of publicity. In response, Epic sought to have the complaint dismissed, arguing for this claim that the game avatars can be customized in many ways, that avatars with the “Phone it In” emote do not look like Pellegrino, and that Pellegrino is a performer who does his signature move at musical performances while Fortnite avatars execute emotes while battling to eliminate competitors. The Pennsylvania District Court held that the use was sufficiently transformative for Epic’s First Amendment rights to outweigh Pellegrino’s interests in his likeness and so dismissed the right of publicity and other similar claims. (In fact, all of Pellegrino’s claims were dismissed except a claim that the use of his signature move falsely suggested that he had endorsed Fortnite. Pellegrino dismissed the remaining claim a month after the decision.)
In contrast to this are games that depict recognizable people doing what they known for. One obvious area where this is done is sports video games with realistic characters that look, act, and behave the same as real players. Even if a player’s name is not used, the likenesses are so close that they can violate a right of publicity of the modeled players. Indeed, this is what happened with the initial NCAA Football series of video games. Electronic Arts stopped releasing NCAA Football in 2014 after a number of court decisions finding that the college athletes’ rights of publicity were violated. (Just this week EA announced it is bringing NCAA Football back, using licensed logos, mascots, stadiums, etc., from the colleges but not the names, images or other likenesses of real players. The issues in college sports are further complicated by NCAA rules which currently prohibit student-athletes from profiting from the use of their names or images.)
So where does this leave a game designer that wants to use real trademarks or recognizable characters? Obviously, a lot depends on the specific details and the light in which things are depicted. In view of the above examples, at a low-risk end of the trademark scale is a game with a realistic virtual environment and where the trademark usage is merely one aspect adding to the realism, such as background vehicles or storefronts. A much riskier situation is if a large aspect of the game centers on the goods or services associated with the trademark – such as the game taking place within a depiction of an actual store or designed to be a simulation of a specific vehicle. For in-game characters, including some attributes associated with a real person, such as a signature move or catchphrase, may be acceptable if the game character appears in a manner far from real life. Is the game character merely a copy or imitation of the real person’s identity, doing what they do, such as playing sports or performing music? Or is the character transformed with some additional expression so it is no longer just the original person, for example by using a caricature that has some common features but appears in an entirely different environment? In addition to trademark and state rights of publicity, various other rights – copyright for example – may also be relevant. The safest option, of course, is getting permission from the rights owner. If this is not feasible and there are no alternatives the use should be reviewed by an attorney to minimize infringement risks.
 Brown v. Entertainment Merchants Ass’n, 131 S.Ct. 2729 (2011).
 Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).
 E.S.S. Entertainment 2000 Inc. v. Rock Star Videos Inc., 547 F.3d 1095 (9th Cir. 2008)
 AM Gen. LLC v. Activision Blizzard, Inc., 450 F. Supp. 3d 467 (S.D.N.Y 2020)
 Electronic Arts, Inc. v. Textron, Inc., 2012 U.S. Dist. LEXIS 103914 (N.D.Ca. 2012)
 Pellegrino v. Epic Games, Inc., 451 F. Supp. 3d 373 (E.D. Pa 2020)
 E.g., Hart v. Electronic Arts, 717 F.3d 141 (3rd Cir. 2013)