Sony Leaves Virag's Trademark Suit over Gran Turismo in the Dust
Headline: On August 21, 2015, the Northern District of California dismissed trademark claims brought by VIRAG, S.R.L. against Sony Computer Entertainment, Inc. over the depiction of VIRAG’s logo in Sony’s Gran Turismo racing games. The Ninth Circuit affirmed the decision without oral argument on October 18, 2017.
Background: VIRAG is an Italian carpet and flooring company. Sony’s Gran Turismo racing video games included realistic depictions of cars and racetracks. Once such racetrack, the Autodromo Nazionale di Monza, was replicated in detail, including the VIGRAG trademark on the bridge over the racetrack:
(Photo of Virag mark at the Monza track, from the Complaint)
(Depiction of Virag mark in Gran Turismo, from Complain)
Sony asserted that the First Amendment barred liability for depicting the logo, which it argued was artistically relevant to the developers’ goal of realism and did not explicitly mislead consumers.
Holding: The Court agreed with Sony, holding that the trademark claims failed because Sony’s use of the VIRAG marks were protected under the First Amendment using the Rogers test (Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989); adopted by the Ninth Circuit in Mattel, Inc. v. MCA Records, 296 F.3d 894 (9th Cir. 2002)):
First, the Court found that Sony’s use of the VIRAG mark had artistic relevance because realism played a central role in the Gran Turismo games. The court rejected the argument that more discovery was needed to determine whether Sony also had a commercial goal because using a mark for a commercial goal in addition to an artistic one was not relevant.
Second, the Court found that the use of the VIRAG mark was not explicitly misleading. The Court noted that this standard requires an explicit indication, overt claim, or explicit misstatement that causes consumer confusion—mere use of a trademark alone is not enough. Under this standard, there was no support for the assertion that Sony was explicitly misleading.
The Ninth Circuit affirmed the District Court’s order in an unpublished decision because (1) “Sony's use of the VIRAG trademark furthers its goal of realism, a legitimate artistic goal,” and (2) “VIRAG does not allege any ‘explicit indication, overt claim, or explicit misstatement’ that would cause consumer confusion.”
Practical Takeaways: This case affirms, as others have, that striving for realism in a video game by including real-life logos has artistic relevance. It also provides an example of a Court rejecting the argument that a commercial motive for including a trademark in a game necessarily precludes a finding of artistic relevance.
A copy of the order in Virag, S.R.L. v. Sony Comput. Entm't Am. LLC, Case No. 3:15-cv-01729-LB (N.D. Cal.) is located here.
By Sean Apple, the “Syborg”