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    The video game industry has grown to become one of the, if not the,largest entertainment industries in the United States.' Part of this growth canbe attributed to advances in the technology that powers the games industry,which aHows games to become increasingly reaHstic and immersive. In theroughly three decades since the start of the mainstream games industry, thevirtual worlds that users can explore and interact with have evolved fromsimple two-dim ensional experiences to massive three-dimensional w orlds.

    This increased reaHsm aHows game developers to create immersiveworlds that sometimes mirror their real Hfe counterparts.^ One of the waysthat game developers can create a more engrossing world is to utiHzerepresentations of actual budings to evoke the feel of the cities andenvironments represented in their games.^ This technique, however, bearsthe risk of infringing a copyright or trademark of the real world counterpart."*The Ninth Circuit addressed this situation in E.S.S. Entertainment v. RjackstarGamei' and concluded that the virtual buding created by the game

    2010 David K. Stark.1. Ryan Kim, Video game announces record revenue, S.V. C H R O N . , Jan. 16, 2009, at C l; Seealso Posting of David Hinkle to Joystiq, Gaming industry worth $22 billion in 2008,http://ww /2009 /01 /28/gaming-industry-worth-22-billion-in-2008/ Qan. 28,2009 at 9:00 PM) (stating that the video game industry made |22 billion in revenue in 2008including a 22.9% increase in software sales over the previous year).2. See, e.g., Seth Schiesel, Grand Thefr Auto Takes On New York, N.Y. TIMES, Apr. 28,2008, at E l (describing the similarities between Grand Thefr Auto IV ana New York City);Mike Musgrove, Washington's Role in Fallout 3 - Radioactive, WASH. POST, Oct. 26, 2008, the similarities and differences between the world of Fallout 3 and WashingtonD. C) .

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    developers did not infringe the trademark of the real world counterpart. '^Rx)ckstar Games dealt only with the issue of trademarks in budings;^ however,protections for budings exist under both trademark and copyright law.^Uncertainty with whether a developer can use a buding in a virtualworld could cause them to avoid accurate representations of budings inrecognizable areas to avoid Utigation.^ This tactic hurts both the gamedeveloper's creative freedom and, as a result of decreased immersion, theuser experience. This Note wiU argue that developers can utiUze architecturalworks in games free from the risk of copyright or trademark infringement. ItwiU start with an exploration of trademark and copyright law and casesdealing with protecting architectural works. The Note wl then exploreRockstar Games and the impact that decision wl have on game developers'freedom to utuize easy recognizable architectural works in their games. TheNinth Circuit's decision should aUow game developers to freely utiUzearchitecture without fear of resulting UabiUty. The Note further argues thatthe test for trademark infringement shoid aUow developers to use the actualtrademarks of the businesses associated with the budings in addition to thearchitecture. The legal protection of budings must be explained completelyto empower game developers to fuUy utiUze recognizable locations,enhancing the immersion of their users, without fear of Uabuity.I . B A C K G R O U N D

    The use of budings in virtual worlds impUcates both copyright andtrademark law. This Part wl provide the relevant background to address theissue completely.A . V I D E O G A M E S

    A video game consists of many distinct pieces that come together tocreate the overaU user experience. Video games rely on a hardwarecomponent (either a computer or its equivalent) to run the softwarecomponent, the actual game. The Ninth Circuit described the majorcomponents of a video game in Micro Star v. FormGen , Inc}^ involving thegame Duke Nukem 3D. T he court stated that

    6. Id . at 1101. For more informadon about this case and the reasoning, see discussioninfra Part II.

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    [t]he game consists of three separate components: the game engine,the source art library and the [Duke Nukem game level layoutsknown as MAP] files. The game engine is the heart of thecomputer program; in some sense, it is the program. It tells thecomputer when to read data, save and load games, play sounds andproject images onto the screen. In order to create the audiovisualdisplay for a particular level, the game engine invokes the MAP filethat corresponds to that level. Each MAP file contains a series ofinstructions that tell the game engine (and, through it, thecomputer) what to put where. . . . The MAP file describes the levelin painstaking detail, but it does not actually contain any of thecopyrighted art itself; everything that appears on the screen actuallycomes from the art librar)'."Although not all games share this architecture, this generally describes

    the different parts of a game.'^ A video game may break a building intodifferent parts that only come together when displayed on the screen. Forexample, these elements might include a map file (describing the layout ofthe world), a model for the building (describing the three-dimensionalarchitecture of the building), and textures (essentially miniature picturespasted o n the mo del) that represe nt what the building looks like.' '' W he n thegame engine detects the building on the screen, it uses these aspects torecreate the building based on the user's perspective.' ' ' The game thenprojects a two-dimensional representation of this building on the screen.Rapid updates of this image simulate real-Ufe interactions with a true, virtualworld.'^

    Sometimes, video games use buildings to help the player associate withthe environment.'^ A game may utilize architecture and buildings taken froma city to create a more immersive world for the player.'^ Previous generationvideo games often utilized crude representations of architecture or previously

    11. /. at 1110 (emphasis in otiginal).12. For more background on how video games work, see generally ]ake Simpson, GameEngine Anatomy 101, E X T R E M E T E C H , Apr. 12, 2002,,3973,594,00.asp.13. Id14. Id15. This is similar to how traditional animation works. Cf. Kerrie Murphy, AnimatedArguments, AUSTRALIAN, Dec. 12, 2007, 11 11 15186033.16. Cf Setin Schiesel, Grand Theft Auto Takes On New York, N.Y. TIMES, Apr. 28, 2008,

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    captured images to evoke this feel.'^ Modern games, however, with morepowerful hardware and larger storage mediums, can effecdvely recreate largeparts of a city or fu cides." Game developers often travel to the cides thatthey hope to represent in order to take test pictures and ensure that theirvirtual representadon accurately emulates the real world.^ 7\lthough gamedevelopers might not reproduce endre cides due to dme constraints orardsdc choices, they may sufficiendy recreate the architecture of a city tocreate a reaHsdc feel. 'B. TRADEMARK

    Trademark protecdon for budings and architectural works foows thetradidonal jusdficadons for trademark law: protecdng consumers from beingmislead or purchasing false products.^^ This Secdon wl highHght the law andsome relevant cases deaHng with trademarks in architecture, focusing on howthe consumer protecdve nature of trademark law appHes to trademarks onbudings./ . The Underpinnings of Trademark Law

    Consumer protecdon is the basis of trademark law.^'' UtiHzing andprotecdng known consumer marks serves the dual purpose of safeguarding

    18. For example, the game Duke Nukem 3D, which was also set in Los Angeles,featured fairly generic buildings and not easily recognizable buildings. For more informadonon,the game, Cf The Duke's Back and He's Bloody, S. FLA. SUN-SENTINEL, Aug. 11, 1996, 6E ;19. See, e.g., supra note 2., 20. See Rockstar Games, 547 F.3d at 1097 ("To generate their vision for [the parody oEast Los Angeles], some of the ardsts who drew it visited Los Angeles to take reference

    photographs").21 . See, e.g., Musgrove, supra note 2:The problem [with completely recreadng a city] is, when you get into agame, when you're actually playing and walking around, the scale doesn'twork. It doesn't feel right. So we would go down [to Washington] andwalk around and see how it felt and translate that to an appropriate scalein the game. So it has a simuar feeling but it's dramadcally compressed insome places, and some places are opened up a bit.22. J THOMAS MCCAR THY, MCCA RTHY ON TRADEMARKS AND UNFAIR COMPE TITION 7:100 (database ed. 2009) [hereinafter, MCCARTHY ON TRADEMARKS].

    , 23. "[The purpo se of trademark law is to] avoid confusion in the marketplace byallowing a trademark owner to prevent others from duping customers into buying a productthey mistakenly believe is sponsored by the trademark owner." Rockstar Games. 547 F.3d at

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    the consumer from inferior products and being misled into purchasing anitem that they did not intend to purchase.^"* The Nintii Circuit defmes atrademark as "a word, phrase or symbol that is used to identify amanufacturer or sponsor of a good or tiie provider of a service."^^Trademark protection extends to both the physical mark a company uses toidentify their goods and services and any recognizable aspects of the goodconsumers could associate with a specific company. The Ninth Circuit statedthat the recognizable aspectsalso known as trade dressincorporate the"total image of a product" and could include "size, shape, color, colorcombinations, texture, or graphics."^^ Trade dress protection can only befound in tangible aspects of tiie product or business; it does not protect"[i]neffable and vague aspects such as a product's marketing tiieme, tiie 'aura'of a product or the 'cachet that ownership or display of it creates'. . . ."Further, functional aspects of the trade dress are unprotectable for tworeasons: to ensure (1) that these types of protections remain in the domain ofpatent law, and (2) tiiat competitors can copy aspects of the product thatthey W1 need to create competitive alternatives.Trademark law, witii its background in consumer protection, coversnearly anything capable of influencing a purchaser of goods and services.^ Inaddition to a "word, phrase or symbol," trademark law protects budingsused as a designation of origin for goods and services.^" Protection ishaving the fruit of his labor misappropriated should not be disregarded." (quoting ZippoMfg. Co. V. Rogers Imports, Inc., 216 F. Supp. 670, 694 (S.D.N.Y. 1963))).24. M C C A R TH Y O N TR A D E M A R K S 2:4 ("[T]rademarks create an incentive to keep upa good reputation for a predictable quality of goods. An important purpose underlyingtrademark law is the protection of the trademark owner's investment in the quality of themark and the quality of the goods or services the mark identifies.").25. Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900 (9th Cir. 2002). See alsoM C CA R T H Y O N TR A D E M A R K S 2:7 ("The emphasis and thrust of trademark protection andregistration is in the direction of deciding whether an alleged symbol in fact functions toidentify and distinguish the goods or services of one seller.").26 . Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 613 (9th Cir. 1989) (internalquotation marks omitted); See also MCCARTHY ON TRADEMARKS 8:4 (Modern trade dress"includes the total look of a product and its packaging and even includes the design andshape of the product itself. . . . [T]he Eleventii Circuit has stated that: 'Trade dress involvesthe total image of a product and may include features such as size, shape, color or colorcombinations, texture, graphics, or even particular sales techniques.'" (quoting John H.Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 219 U.S.P.Q. 515 (l lt ii Cir. 1983))).27. M C C A R T H Y ON T R A D E M A R K S 8:4 (citing Abercrombie & Fitch Stores, Inc. V.

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    avaable for die recognizable use of the exterior or interior of a buding.The defining characterisfic is whether the buding is used on goods andservices.^^ For example, using an image of the Sears Tower, a famous andeasy recognizable buding, on goods might not cause consumers to thinkthat the Sears Corporafion created or distributed them. However, the use ofthe Cinderea Castie, one of a few variants of the main castie at the center ofmany Disneyland tiieme parks, would be more Hkely to cause consumerconfusion. A representation of the structure is used as the introduction tomany Disney fms and on other goods sold by die company. The use of thesame or a simar structure would have a higher HkeHhood of consumerconfusion tiian tiie use of tiie Sears Tow er; trademark law would p rotect thisuse in order to prevent confusion.

    Trademark protection in budings hinges on the use of that building orarchitecture in relation to goods and services; ownership of the building usedis not a prerequisite for protection.^^ Confusingly, this aHows a trademark todevelop on a use of a buding that the trademark owner does not own. Aslong as the building is used to identify their goods, trademark protection canbe acquired. Although this type of use would normay apply to buildingswhere tiiere is no vaHd copyright or trademark right, such as a pubHc budingor a buding whose rights have already expired, the trademark protectiononly focuses on whetiier the buding is associated with some goods orservices. "* HistoricaHy, protection for tradem ark and trade dress in buildingsdiree-dimensional configuration of a building is registrable as a service m ark only if it is usedin such a way that it is or could be perceived as a mark. Evidence of use might includemenus or letterhead that show promotion of the building's design, or configuration, as amark.").

    31. M CCA RTH Y ON TRADEMARKS 7:100.32. In emphasizing die consumer protective nature of trademarks, the Sixth Circuitstated that "[i]t is well established that '[t]here is no such thing as property in a trademarkexcept as a right appurtenant to an established business or trade in connection with whichthe mark is employed."' The court further stated that when alleging infringement, "a plaintiffmust show that it has actually used the designation at issue as a trademark, and that thedefendant has also used the same or a similar designation as a trademark" Rock and Roll Hallof Fame and Museum, Inc. v. Gentile Productions, 134 F.3d 749, 753 (6th Cir. 1998)(quoting United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90, 97 (1918)) (emphasis inoriginal).33. MCCARTHY ON TRADEMARKS 7:100 ("To possess valid trademark rights in a

    picture of a structure or building, it is not essential that the trademark owner own the actualreal or personal p roperty that is pictured.").34. Id % 7:100 n.2 (citing Pebble Beach Co. v. Tour 18 I, Ltd., 942 F. Supp. 151 3, 1541

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    focused on consumer confusion caused by confusingly simuar designs.^^ Tworecent cases have dealt with trademark pro tection for budings when moderntechnology is considered: the Sixth Circuit dealt with the issue ofreproduction of trademarked budings in posters,^^ and the Soutiiern Districtof New York dealt with trademark aspects in fm. ^

    There are four major categories of trademarks: arbitrary/fanciful,suggestive, descriptive, and generic.^* Fanciful marks exist only for thepurpose of being a mark.^' Arbitrary marks may have other m eanings but arenot normaUy associated with the goods bearing the mark.'*" Suggestive marksrequire a logical leap to get to the goods that bear their marks.'" Descriptivemarks simply describe the products that bear tiie mark.''^ Generic marks arecommon terms that cannot acquire trademark protection.''^ Generic marksalso include previously fanciful ternis that have become generic throughcommon use and consumer association with a general class of products asopposed to a specific product or producer.''" Trademark protection requiresthat a protected mark, at a minimum , meet a low threshold of distinctiveness;tiie mark must be eitiier arbitrary, fanciful, suggestive, or descriptive."^ This

    object pictured does not own intellectual property rights in the object under trademark orcopyright law . . . [because it could] use those intellectual property rights . . . to preventinfringement." Id .35. See id 7:100; see a/so infra Secdon LB.2.36 . See Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Producdons, 134 F.3d749 (6th Cir. 1998); see a/so discussion infra Secdon I.B.2.37. See Sherwood 48 Associates v. Sony Corp. of America, 213 F. Supp. 2d 376(S.D.N.Y. 2002); see a/so discussion infra Secdon I.B.2.38. See MCCARTHY ON TRADEMARKS 11:1. Aldiough arbitrary and fanciful marks aretechnically two separate categories, they are typically viewed as the same level or strength.39. Examples of fanciful marks: Exxon, Kodak, Polaroid./. 11:8.40. Examples of arbitrary marks: Omega watches. Sun computer, and Amazon onlinebookstore. / . 11:13.41 . "[A] mark which merely suggested some quality or ingredient of goods was labeledas 'suggesdve... . '" Id 11:62. Examples of suggesdve marks: Chicken of die Sea tuna,Coppertone sun tan oil, Q-Tips, and 7-Eleven. Id. 11:72.42. "A 'descripdve' term is one that direcdy and immediately conveys some knowledgeof the characterisdcs of a product or service." Id 11:16. Examples of descripdve m arks:Philadelphia Card to descdbe a credit card depicdng Philadelphia and targedng consumers inPhiladelphia, Oamut for bread. Id. Foreign words that describe the shop o r items available at

    the shop can also be considered descripdve, i.e.. Le Croissant Shop for a baked goods store.Id. For a larger list of descripdve marks, see id. 11:24.

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    requirement also protects consumers by refusing to grant one producercontrol of a term that is, or has become, indistinct.''^ Arbitrary/fanciful andsuggestive marks are considered inherendy distinctive."^ Descriptive marks,however, must show a secondary meaning, or a consumer association withthe specified goods."^ This requirement protects those marks that might notbe unique enough to have consumer associations on their own but have builtup a reputation through their use."'

    When a trademark holder believes that another has made anunauthorized use of their mark causing consumer confusion, trademark lawallows tiiem to bring an infringement action.^" The federal test forinfringement highlights the consumer-protective nature of trademark law:"whether the defendant's use is 'likely to cause confusion, or to causemistake, or to deceive.'"" To prevail on a claim of trademark infringement,the plaintiff must show that tiie defendant used: "(1) a 'reproduction,counterfeit, copy or colorable imitation' of plaintiffs mark; (2) witiioutcohsent of the plaintiff; (3) in interstate commerce; (4) in connection with the'sale, offering for sale, d istribution or advertising' of goods or services; and(5) 'where such use is likely to cause confusion.'"^^ In cases of trademarks inbuildings and architecture, there must be a Hkelihood that a customer will bemisled because of the use of the building in the product." This analysis isdone on a case-by-case basis.^"

    designation does not have the legal status of a 'trademark' or 'service mark.' Nodistinctivenessno mark." Id . 11:2.

    46. "To grant an exclusive right to one firm of use of the generic name of a productwould be equivalent to creating a monopoly in that particular product, something that thetrademark laws were never intended to accomplish." Id . 12:2.47 . /11:2.

    48 . 15U.S.C. 1052(f)(2006).49. Cf MCCARTHY ON TRADEMARKS 11:25.50. Id. 2:7 ("In trademark infringement litigation [one must] compare what has been

    determined to be a mark with that usage by another which is alleged to cause a likelihood ofconfusion. In trademark law, therefore, it is only tiie exclusive symbol characterized as a'trademark' that is juxtaposed against another's usage to determine whether or not the twouses by two sellers are likely to confuse customers"); Id 2:33 ("Confusion of tiie public isthe essence of both trademark infringement and unfair competition" (citing Dart DrugCorp. V. Schering Corp., 320 F.2d 745 (D.C. Cir. 1963))).

    ' 51. Id 23:1 (citing Lanham Act 32; 15 U.S.C. 1114(1) (2006)).52. Tkinette Lesieutre H on an, The Skyscraping Reach of the Lanham Act: How FarShould the

    Protection ofFamous Building Design T rademarks Be Extended?, 94 Nw. U. L. REV. 1509, 1514(2000) (citing Boston Profl Hockey Ass'n, Inc. v. Dallas Cap & Emblem, Mfg. Inc 510

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    In addidon to the use of a mark on goods and services, nadonay famousmarks demand addidonal protecdons.^^ To protect a famous mark's nadonalreputadon, trademark law protects addidonal uses of the mark even whenthere is no intent to cause customer confusion: dudon by blurring anddudon by tarnishment.^^ Dudon by blurring occurs when a famous mark isused on an unrelated good.^^ In these cases, even though the defendant is notnecessary trying to feed off die goodwl of die famous mark, die use mightcause harm to the famous mark's disdncdveness.^^ Some hypothedcalexamples of this type of dudon include, "Dupont shoes, Buick aspirin.Schtz varnish, Kodak pianos and Bulova gowns."^' Dudon by tarnishmentcauses harm to the reputadon of a famous mark." " The First Circuit describedthis type of dudon as an instance when "the goodwi and reputadon of aplaindffs trademark is Hnked to products which are of shoddy quaHty orwhich conjure associadons that clash with the associadons generated by theowner's lawful use of the mark."^'

    Use of another's mark wl not always lead to a finding of infringement.There are two categories of fair use avaable for users of another's registeredtrademark: classic and nominadve.'^^ The classic fair use scenario occurs whena mark that has a descripdve as we as trademarked meaning is used in thedescripdve sense." This defense appHes "ory to marks diat possess bodi amistakenly led to believe diat the defendant's goods are produced or sponsored by theplaindff.").

    54. Rash ida Y.V. M acM ur ray , Trademarks or Copyrights: Which Intellectual Property RightAffords Its Ow ner the Grea test Protection of Architectural Ingenu ity?, 3 N W . J. OF TECH. & INTELL.P R O P . I l l , T[ 45 (2005),

    55. The definidon of a famous mark is provided at 15 U.S.C. 1125(c)(2)(A) (2006)stadng that "a mark is famous if it is widely recognized by the general consuming public ofthe United States as a designadon of source of die goods or services of die mark's owner."The statute also gives other relevant factors for determining whether a mark is famous. See

    56. 57. MCCARTHY ON TRADEMARKS 24:69.58 . "The theory [of diludon by blurring] says diat if customers or prospecdve

    customers see the plaindffs famous mark used by odier persons to idendfy odier sources formany different goods and services, dien die ability of die famous mark to clearly idendfy anddisdnguish only one source might be 'diluted' or weakened." Id.

    59 . Id60 . 7 24:89.61 . Id.McCarthy lists instances of tarnishment in cases where a mark has been used foradult-oriented entertainment and drug references. Id.62 .

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    primary meaning and a secondary meaningand only when the mark is usedin its primary descriptive sense rather than its secondary trademark sense. '"^' 'For classic fair use, tiie registered mark must not be used in a trademarksense and must be used in good faith and only to describe the goods." TheNinth Circuit does not aow classic fair use if there is a kehood ofcon fusio n for the origin of a product.'''^ ; .

    ' The nominative fair use defense is avaable where the defendant has"used tiie plaintiffs mark to describe tiie plaintiffs product , even if thedefendant's ultimate goal is to describe his own product."^'^ T h e m a i n p u r p o s e o fnominative fair use is for tiie "purposes of comparison, criticism [or] point ofreference.'"^^ A defendant seeking to prove nominative fair use must satisfythree requiremen ts: '

    (1) the plaintiffs product or service in question must be one not' readily identifiable without use of the trademark; (2) only so muchof the mark or marks may be used as is reasonably necessary toidentify the plaintiffs product or service; and (3) the user must doi noth ing that would, in conjunction with the mark, suggestsponsorship or endorsement by the trademark holder.'''In addition to the fair use defenses, the First Amendment permitsunauthorized trademark use where there is an artistic element to the use and

    the kehood of consumer confusion is very low.^ This principle aowsanyone to use a famous mark to "make fun of or to criticize the products orpocies of the mark owner."^' This exception prevents a corpo rate trademarkowner from sencing any non-commercial, negative, or offensive use of themark.^^ The dominant First Amendment trademark test is from Rogers v.classic fair use arises where tiie defendant "has used the [trademark owner's] mark only todescribe his own product , and not at all to describe the [trademark owner's] product." (quotingCairns v. Franklin Mint, 292 F.3d 1139,1151 (9th Cir. 2002) (emphasis in original)).64. Brothers Records, Inc. v. Jardine, 318 F.3d 900, 905 (9th Cir. 2003).65. MCCARTHY ON TRADEMARKS 11:45. McCartiiy describes a hypothetical scenariowhere the use of a trademarked credit card called "Adventure" in a slogan "Go on anadventure, with [competitor's credit card]" would probably be considered classic fair use.66. E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 444 F. Supp. 2d 1012,1028 (CD. Cal. 2006) (citing Cairns v. Franklin Mint, 292 F.3d 1139, 1151 (9tii Cir. 2002)).I 67. Cairns, 292 F.3d at 1151 (emphasis in original). I 68. Walking Mountain, 353 F.3d at 809 (quoting New Kids on the Block v. News AmPubl'g, Inc., 971 F.2d 302, 305 (9tii Cir. 1992)).69. Rck Star Videos, 444 F. Supp. 2d at 1029 (quoting Walking Mountain, 353 F.3d a809) (internal quotation marks omitted)..

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    Grimaldi," which aHows the use of a mark if the use has some artisticrelevance to the work and there is a low HkeHhood of consumer confusion.

    2. The Evolution of Trademark Case I^w Addressing Architectural WorksAs mentioned in the previous Section, trademark protection for

    architecture is rooted in consumer protection. An early CaHfornia case,Weinstock, Ljtbin & Co. v. Marks^'' dealt with protecting consumerassociations in architecture. The plaintiff owned a dry goods store inSacramento with a distinct architecture involving alcoves and arches." Theplaintiff sued a competitor who built a store nearby with a confusingly simararchitecture and business name. *" The court enjoined the defendant andstated that the defendant was "defrauding [the] plaintiff of its business [and]steaHng its goodwi."^^

    The theme of consumer protection is consistendy emphasized in casesinvolving trademarks in budings^^ and trade dress involving architecture.

    of maintaining broad opportunities for expression." Id. (quoting Deere & Co. v. MTDProducts, Inc., 41 F.3d 39, 44 (2d Cir. 1994)).73. 875 F.2d 994 (2d Cir. 1989). For more on the Rogers test, see infra Section II.B.74. 109 Cal. 529(1895).75. MCCARTHY ON TRADEMARKS 7:100. The co urt stated that the architecture of thebuilding was unique within Sacramento. Weinstock, 109 Cal. at 534 (1894).76. MCCARTHY ON TRADEMARKS 7:100. The business name in question was"Mechanical Store" versus "Mechanic's Store." Weinstock, 109 Cal. at 537.77. Weinstock, 109 d. M 539.78. See MCCARTHY ON TRADEMARKS 7:100 (listing cases involving trademarks inarchitecture and building design. Some no teworthy cases include: White Tow er System, Inc.V. White Castie System of Eating Houses Corp., 90 F.2d 67 (6th Cir.), cert, denied, 302 U.S.720 (1937) (enjoining plaintiff from use of White Tower mark and architecture of aminiature castie because of confusion with White Casde restaurants); House of Hunan, Inc.

    V. Hunan at Pavilion, 227 U.S.P.Q. 803 p . D . C . 1985) (finding two large marble lions infront of Chinese restaurant as a distinctive architectural feature and issuing injunction tocompeting Chinese restaurant using same design 150 yards away); McDonald's Corp v.Moore, 243 F. Supp.. 255 (S.D. Ala. 1965) (finding trademark protection for McDonald'sgolden arches restaurant design against competitor who used a series of twenty one yellowloops for their restaurant).79. See M CCA RTH Y ON TRADEMARKS, 7:100 listing cases involving trade dress inbuildings. Some noteworthy cases include: Fuddruckers, Inc. v. Doc's B.R. Others, Inc., 826F.2d 837, 841 (9th Cir. 1987) (stating that trade dress protection could be acquired in the"restaurant's dcor, menu, layout and style of service."); Freddy Fuddruckers Inc. v.RidgeHne, Inc., 589 F. Supp. 72, 74 (N.D. Tex. 1984) (finding trade dress in combinationincluding "an exposed glassed-in butcher shop for meat preparation, .. . a bakery showcasefor the bakery products; a fresh vegetable condiment island with stacked vegetables,.. . dark

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    Bilding designers, however, must be careful that the court does not findtheir trade dress as functional or they risk losing protection.^" Also, if a tradedress is shared by many simuar businesses, the court might find that there isno chance of consumer confusion because there is nothing distinctive in thebuding design.^'

    Even a somewhat loose standard of trade dress protection was found tobe vaUd by the Supreme Court. The Court found protection for a chain ofMexican-style restaurants in Texas.^^ Taco Cabana, which opened its firstrestaurant in 1978, sued Two Pesos, a competing restaurant, which opened inlQS.^'' The Court described the buding as "a festive eating atmospherehaving interior dining and patio areas decorated with artifacts, bright colors,paintings and murals."^" The Supreme Court upheld the holding of the FifthCircuit and found that Taco Cabana's trade dress was entided to protection.

    The Sixth Circuit found that uniformity in the mark at issue was a keyfactor for estabUshing a trademark in architecture in a case involving theRock and RoU HaU of Fame and Museum (the Museum), which hadregistered its name and unique building design as trademarks.^^ Professionalphotographer Charles Gente took a sunset picture of the buding andcreated a poster using the picture and the name "Rock N' RoU HaU ofFame."^^ The Museum filed a complaint aUeging that it had used the nameand buding design as trademarks and Gentile's poster infringed, duted, andunfairly competed with these marks.^^ A district court found that themuseum had shown a UkeUhood of success in proving the trademark claims

    Steinbook, 247 N.Y. 531 (1928) (finding trademark protecdon in color combinadon of blueand orange); MCCARTHY ON TRADEMARKS 7:48 (discussing color combinadons astrademarks).

    80. Prufrock, Ltd. v. Lasater, 781 F.2d 129 (8th Cir. 1986) (finding design of "downhome country cooking" restaurant which included exposed kitchen area, andquedecoradons, and small print wallpaper were funcdonal). See a/so Prints Plus, Inc. v. ClassicGraphics, Inc., 225 U.S.P.Q. 679, 680 (N.D. Cal. 1985) (finding interior design elementswere funcdonal for seUing prints including display racks, neutral color carpedng, highceilings, removed work areas, and verdcal storage bins).

    81. Ale House Management, Inc. v. Raleigh Ale House, Inc., 205 F.3d 137 (4di Cir.2000) (denying trade dress protecdon for the intedor of a bar including a centrally locatedrectangular bar with seadng, television monitors, arcades, and pool tables decorated in woodand brass).

    82. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).83 . /at 765.84. Id

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    and granted a preliminary injunction.^^ The Sixtii Circuit reversed thisfinding, stating that it was not convinced tiiat the Museum had used thebuilding as a trademark.^^ The court also found tiiat die characterization ofthe Museum building as a fanciful mark (which die plaintiff argued and diedistrict court found) did not wo rk with the co nce pt of a building. '" A fancifulmark has no purpose other ti ian to be a trademark; using die museum as abuilding confiicted with characterizing it as fanciful." The court also foundthat the Museum used various representations of the building taken fromdifferent angles as a mark instead of one, uniform image. '^ This hurt theirtrademark argument because it is tougher for consumers to gain anassociation when tiie mark in question is constantiy changing.^^ The courtmade this clear by stating.

    In reviewing the Museum's disparate uses of several differentperspectives of its building design, we cannot conclude that theycreate a consistent and distinct commercial impression as anindicator of a single source of origin or sponso rship .. . . Consistent

    88 . Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Prods., 934 F. Supp. 868,872-73 (N.D. Ohio 1996).89. Rock and Roll Hall of Fame, 134 F.3d at 754. The court also stated tiiat they did notview the protection of the photographed building as the type of protection tiiat trademarksare meant to grant:That is to say that, when we view the photograph in Gentile's poster, wedo not readily recognize the design of the Museum's building as anindicator of source or sponsorship. What we see, rather, is a photographof an accessible, well-known, public landmark. Stated somewhatdifferentiy, in Gentile's poster, the Museum's building strikes us not as aseparate and distinct mark on the good, but, rather, as the good itself.Id 90. The court noted.Although the plaintiffs 'invented' the Museum, the Museum's existence asa landmark in downtown Cleveland undermines its 'fancifulness' as a

    trademark. . . . [A fanciful mark, such as a made up word] is distinctive as amark because it readily appears to a consumer to have no other purpose.In contrast, a picture of the Museum on a product might be more readilyperceived as ornamentation than as an identifier of source.Id at 754-55.91. / a t 755 .92. Id93. Id. The court compared this to earlier cases where certain images had been used forcelebrity marks. In those cases, the owners of the rights to the celebrities had tried to use the

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    and repetitive use of a designation as an indicator of source is thehallmark of a trademark.'"Th e court also stated diat i t was unsure wh ether the use of "Rock N ' Ro

    Hau of Fame" would be an infringement of the registered mark or adescripdo n of the buding pictured.'^

    Adapdng trademarks in architecture to the digital age leads to a new setof chaenges. The Second Circuit upheld die non-infringement of the digitalalteradon of adve rdsem ents on famous budings.'^ Th e film Spider-Mandigitay altered adverdsements placed on Times Square budings andreplaced them widi other sponsorship, '^ The owners of the Times Squarebudings sued Sony alleging trademark and trade dress infringement. '^ Theseplaindffs aeged that by altering the adverdsements that were already there,Sony had infringed die trademarks and trade dress of the buildings and hadcaused consumer confusion as to die buding's associadon with thesubsdtuted adverdsements. In a two-page opinion, the district courtdismissed the claims, stadng diat there was no consumer confusion as thealteradon did no t affect purch asing de cisio ns ." T he district cou rt alsodismissed die trade dress infringement by stadng that the adverdsing dress ofthe budings changes constandy.'"" The Second Circuit affirmed the decisionand stated diat the plaindffs had faed to assert what exacdy consdtuted thetrade dress infringed. '"' This case is a good example of courts reiteradng thattrademark protecdon for buildings is rooted in consumer protecdon. Sincethere were no purchasing decisions affected by the alteradon of theadverdsements and no uniform trademark usage, the court found noinfringement.

    94. Id95 . Id at 156.96. Sherwood 48 Associates v. Sony C orp. of America, 76 F. App 'x 389 (2d Cir. 2003).97. Sherwood 48 Associates v. Sony Corp. of America, 213 F. Supp. 2d 376, 377 n.2(S.D.N.Y. 2002) (stadng diat Sony subsdtuted a "USA Today" ad for die "Samsung" ad diat

    was in the original shot).98. The owners also alleged a baseless trespass claim which was also dismissed Id . at

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    C. COPYRIGHTCongress added copyright protection for buudings and other

    architectural works in 1990.'^ This protection carried with it an importantmitation due to the pubc nature of these works. This Section wl explorethe law and cases around copyrights in budings./ . The Underpinnings of Copyright Law as to Architectural Works

    Unlike trademark law, copyright law protects artistic expression.Copyright law traditionay protects books, photographs, motion pictures,paintings, musical compations, and other works containing artisticelements.'"^ Urdike trademark law, copyright protection, uke patent law,draws its support from the Constitution.'"'* Patent law is meant to protectuseful articles whereas copyright law is meant to protect those elements ofartistic works that can be separated from the useful aspects.'

    Congress granted budings and architectural works copyright protectionon December 1,1990 witii the Architectural W orks Copyright Protection Act(AWCPA).""^ Before 1990, plans for budings could be protected as graphicalworks but the budings themselves could not.'' Budings were originayconsidered uncopyrightable because they were seen as functional and thus"useful articles" outside the realm of copyright protection.'"^ However, toconform to the Berne Convention, Congress passed the AWCPA, whichadded architectural works to the st of protectable expression.'"' Congressdefined an architectural work as "the design, of a buding as embodied in any

    102. The Architectural Works Copyright Protect ion Act of 1990, Pub. L. No. 101-650,701-7 06,104 Sta t. 5133 (1990) (codified at scattered sections of 17 U.S.C ) .

    103. 17 U.S.C. 102 (2006).104. See WILLIAM F. P A T RY, P A T RY O N C O P Y R I G H T 3:1 (database ed. 2009)[hereinafter PATRY ON COPYRIGHT] ("Congress shall have the P o w e r . . . To P r o m o t e the

    Progress of Science and useful Arts, by securing, for l imited Times, to Author s andinventors, the exclusive Right to their respective Writings and Discoveries." (quoting U.S.C O N S T , art. I, 8)).

    105. See, e.g.. Mazer v. Stein 347 U.S. 201 (1954) (finding protection of an ornamenta llamp base as a statue by separating the expressive aspects of the lamp base from the l ampitself). This idea is k n o w n as separability and wiU be discussed in infra Section LC.2.

    106. Architectural Works Copyright Protect ion Act of 1990, supra note 102.107. J U L I E E . C O H E N ET AL., C O P Y R I G H T IN A G L O B A L I N FO R M A T I O N E C O N O M Y 268

    (2 d ed. 2006).108. Id109. PATRY O N C O P Y R I G H T 3:107. The Berne Convent ion is an agreement between

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    tangible medium of expression, including a building, architectural plans, ordrawings." By having protection avaable as soon as the work is fixed.Congress intended to protect the original designer of the building.'" Thisintent is further emphasized by the fact that the fixation requirement forarchitectural works does not require the construction of the building beforeprotection is acquired. Although completion of the buding wl meet thisrequirement, protecfion is avaable for "plans, drawings, blueprints andcomputer disks.""^ Congress did not choose to protect au three-dimensionalstructures when they enacted the AWCPA; Congress made a poHcy decisionto include only those structures that were human inhabitable as architecturalworks and to exclude "interstate highway bridges, cloverleafs, canals, damsand pedestrian walkways" because their protection was not required by theBerne Convention."^

    The functional view of budings persists even after the adoption of theAWCPA. The legislative history of tiie AWCPA shows that Congressenvisioned a two-step analysis for determining copyrightabity involvingseparation of the original design elements of the buding and then judgingwhlether these elements are functional.'"* Although budings that lack

    110. 17 U.S.C. 101 defines "architectural wo rks" as "die design of a building asembodied in any tangible medium of expression, including a building, architectural plans, ordrawings. The work includes the overall form as well as the arrangement and com position ofspaces and elements in the design, but does not include individual standard features." Notprotecting standard features is a common trend in copyright, which seeks to protect onlywhat is original about the work.111. PATRY ON CO PYRIGHT 3:108.112. Id . 3:108. The inclusion of computer disks is meant to protect plans in computerprograms such as AutoCAD. Patry later mentions that Congress added protection for theschematics of a building because of a fear diat "if an architectural work could be fixed onlyin building, there would be no liability if an infringer 'scooped' the architect byconstructing the building first." Id .

    113. Id . Patry later gives examples of protected buildings: "houses, apartments, officebuildings, churches . .. [also] structures that are used by humans but not inhabited, such asbelvederes, pergolas, gazebos, and garden paviLions." Id Patry also describes the definitionsof a building from the copyright office:The term building means humanly habitable structures that are intended tobe both permanent and stationary, such as houses and office buOdings, andother permanent and stationary structures designed for human occupancy,including but not limited to churches, museums, gazebos, and gardenpavilions. [This definition excludes] [s]tructures other than buildings, such asbridges, cloverleafs, dams, walkways, tents, recreational vehicles, mobile

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    originaUty (such as a gene ric office bu din g co m po se d of stand ard features)are generaUy not protectable, an original combination of standard featureswould still be."=Co ngress added a "ph oto gra ph ic exc eptio n" in 120(a) to Umit theprotection granted to items classified as architectural works, stating that theexclusive rights do not include the "right to prevent the making, distributing,or pubUc display of pictures, paintings, photographs, or other pictorialrepresentations of the work, if the buding in which the work is embodied islocated in or ordinary visible from a pubUc place."'"^ Further, the legislativehistory of the Act impUes tiiat monuments, originaUy given fuU copyrightprotection as sculptures, were reclassified as architectural works with aU thelimitations that classification carries."^ Case law also impUes that works of artthat are essential to or exist as part of a building can be classified as, andsubject to the Umitations of, architectural works."^

    This exception is especiaUy useful to the gaming industry because itaUows the use of pubUcly viewable budings to create a reaUstic gameenvironment without opening the companies up to Uabuity from the budingarchitects. WuUam Patry states this exact idea when talking about thephotographic exception:

    The limitation to two-dimensional reproductions is also important,since the exemption does not cover three-dimensionalreproductions. By three dimensional is meant a physical three-dimensional object, and not a two-dimensional that is designed toappear three-dimensional. For example, no depiction of a work ona computer, whether in conjuncdon with a [Computer AidedDesign or CAD] program on a virtual world such as second Ufe

    First, an architectural work should be examined to determine whetherthere are original design elements present, including overall shape andinterior architecture. If such design elements are present, a second step isreached to examine whether the design elements are funcdonally required.If the design elements are not funcdonally required, the work isprotectable without regard to physical or conceptual separability.115. PATRY ON CO PYRIGHT 3:108.116. 17 U.S.C. 120(a) (2006).117. C O H E N , supra note 107, at 278 ("Monumental, nonfuncdonal works of architectureare currendy protected under 102(a)(5) of dde 17 as sculptural works. These w orks are,nevertheless, architectural works, and as such, will not be protected exclusively under secdon

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    [sic], is a three-dimensional copy within the meaning of thestatute."^It is important to note that the CAD program mentioned by Patry is thescreen representation of a CAD design. As was previously mentioned,' " thefixation requirement is met when an architectural plan is fixed within acomputer disk. However, the fixed design as rendered and displayed on acomputer screen is not protected as an architectural work. When displayedon a screen, the design is viewable for the world to see.The photographic exception for virtual worlds makes sense when welook at the reasons behind architectural copyright protection. Congress

    decided to protect plans because of the fear that someone would "scoop" thebuilding, for example buuding the structure and obtaining copyrightprotection before the original architect.'^' Congress wanted to guarantee thatthe designer of the building would be the one to buud it. Once the building iscomplete, the copyright ensures that no one else will create another identicalphysical building. By allowing an exception for two-dimensionalrepiresentations. Congress protects tiie physical building while recognizing itspubHc nature. A three-dimensional representation within a virtual worldwould not infringe the physical buuding since there is still only one physicalcopy of it. The architect's design is still protected and embodied in thephysical building. Further, a three-dimensional virtual reproduction is still atwo-dimensional representation and within the photographic exception.Although the design might appear to be three-dimensional, the projection onthe screen is a two-dimensional image drawn to appear three-dimensional.

    The protection of architectural works would reach too broadly if acopyright holder was allowed to assert protection against virtual worldrepresentations of publicly visible buildings. This important realization alsocomes with a limitation for game developers because of how Congressdecided to protect architectural works. Creators of virtual representations ofbuildings must be careful with their source material and ensure thatreproductions only utilize pictures taken from publicly viewable vantagepoints. Virtual representations of real world buildings will fall within thephotographic exception only if they are created from publicly accessiblepictures; recreation from a building's plans or schematics wl not fall withinthe exception. Though the eventual representation would still be the same, acopyright violation would occur if a virtual representation of a buuding was

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    created from architectural plans as opposed to pictures taken from a pubHcspace.

    2. Leicester v. Warner Bros, and A rchitectural-Sculptural M ergerThe Ninth Circuit in Leicester v. Warner Bros.^^^ extended the protecdon

    afforded in the photographic excepdon to other copyrightable worksincorporated into a buding. The case dealt with the fuming of a buildingused in the movie Batman Forever. A scene in the fm contained both theactual buding and a sculptural work built as a part of it. Warner Brothersalso made a miniature reproducdon of the sculpture for the filming.'^^ Thecourt in Leicester held that the photographic excepdon included sculpturalw orks that are seen as par t of the building as a whole.'^" T he sculptor tried aseparabiHty argument and stated that his work was "conceptuay separate"from the buding it was but for.'^^ If the court had accepted this analysis, itcould have held that the photographic excepdon only appHed to the actualbuding and not to the sculpture on top of it. This type of a holding wouldmake Htde sense given the radonale behind the photographic excepdon, thatthe building was clearly in pubHc view and thus pictures of it should not beconsidered copyright infringement.

    T he Leicester court rejected the sculptor's separabity analysis.'^^ In doingso, the court appHed the photographic excepdon to a completely separate

    122. 232 F.3d 1212 (9di Cir. 2000).'123. Id atlll5.124. Id. at 1217. T he appeals court, reviewing the district court findings, found that[a]gainst this backdrop, the district court found that the lantern towersand the smoke towers, including the decoradve elements at the top, arepart of the 801 Tower as a whole. As it explained, each tower appears tobe an integrated concept which includes both architectural and ardsdcpordons. TThe court rejected Leicester's assumpdon that the decoradvepordon should be looked at alone as conceptually separate, ardsdcembellishments of the whole; rather, it found, the ardsdc and architecturalimpression is one created by the towers as a whole, complemendng thepilasters and condnuing the theme of the third floor lanterns of thebuilding. Thus, it concluded, the four towers are part of the design plan ofthe building.Id125. 7^. at 1215.126. 7 . at 1219:Leicester further maintains that the sdreetwall towers are a sculptural workwhich is "conceptually separate" from the building and thus

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    work of copyright. The court recognized that the practical purposes of thephotographic exception outweigh independentiy copyrightable items ofexpression closely tied to the architecture in question.'^^ The court treatedthese independent copyrightable works as a part of the buding,demonstrating how powerful the photographic exception can be for thereproduction of budings within a virtualIL E.S.S. ENTERTAINM ENT V.ROCKSTAR GAMES

    A recent Ninth Circuit case attempted to synthesize the trademarkaspects of architecture in video games and, in the p rocess, adopted the Rogerstest for uses that were not in the titie of a work. This Part addresses thebackground of the case, the district court opinion, and the appeUate opinion.A. BACKGROUND

    E.S.S. Entertainment operates the Play Pen strip club in eastern LosAngeles. The logo of this estabshment consists of the words "the Play Pen"and the words "Totay Nude" written in a publicly avaable font with ashouette of a nude female dancer inside the stem of the first "P".^29 ^ j ^ ^mark was an unregistered mark.""Rockstar Games is the developer of many games, including the GrandTheft Auto (GTA) series. Rockstar is not a stranger to litigation; many

    ; equally integrated and serve the same purpose on Eighth as the FigueroaStreet smoke towers do on Figueroa.127. The court expounds on this when it states that "[g;)iven the important publicpurpose served by these uses and the lack of harm to the copyright owner's market, theCommittee chose to provide an exemption, rather than rely on the doctrine of fair use,which requires ad hoc determinations." Id. at 1217.128. 7^ at 1219-20:Whether or not Leicester may have some other claim for a differentinfringement of his copyright in the Zanja Madre towers as a sculpturalwork, we believe he has none for a pictorial representation of the 801Tower and its streetwaU embodying a protected architectural work.Otherwise, 120(a)'s exemption for pictorial representations of buildingswould make no sense. When copyright owners in architectural works weregiven protection for the first time in 1990, the right was limited by 120(a) so that publicly visible budings could freely be pho togra phe d.See H.R. Rep. 101-735, at 1112, 21-22. This reOected a shift from the

    prior regime of relying on "ad hoc determ inations" of fair use. Id. at 2 1 -22. Having do ne this, it would be counterintuitive to suppose that

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    lawsuits have been filed against the company, a majority of them involvingthe GTA series.'^' The GTA series was launched in 1997 and Rockstar hasreleased new games under that brand every few years since.'^^ Each gametakes place in a fictitious city that is based on a real world counterpart.'^^Grand Theff Auto: San Andreas features three virtual cities, "Los Santos ," "SanFierro," and "Las Venturas," which are based on Los Angeles, San Francisco,and Las Vega s, respectively.''''* The neighborhoods are ficfionaHzed versionsof their real world counterparts.'^^ The "Pig Pen" is a virtual strip clublocated within the Eastern port ion of Los Santos.'^' ' Though the artists usedimages taken from East Los Angeles when creating the Los Santos section ofthe game, including images of the Play Pen, they testified that they were nottrying to recreate the estabHshment.'^^

    T h e two structures are very different. The court noted that the Pig Pen is"a totay different size, color, shape, and structure than the Play Pen. . . . [It]does not have a stone faade, a valet stand, large plants and gold columnsaround the entrance, or a six foot black iron fence surrounding the parkinglot."'^^ The color schemes of the pole signs of the two places are differentand the Pig Pen's sign does not feature a trio of nude shouettes nor does ithave a "totaHy nude" sign below it. '^'

    131. See Duncan Mansf ield, 'Grand Thefr Auto' makers fight $246M lawsuit, ASSOCIATEDPRESS, N O V . 11, 2003, available at (describing a lawsuit filed by the families of two people killed by individualsclaiming video games motivated them to shoot); Rebecca Leung, Can A Video Game Lead ToMurder'?, June 19, 2005, available at (detailing the killing of three individuals by a minor who saidafter the incident that "Life is like a video game. Everybody's got to die sometime.");Grandmother sues 'Grand Theft Auto' maker, ASSOCIATED PRESS, July 27, 2005, available at (lawsuit over sexually explicit animation that wasdisabled in the final game but enabled through user hack).

    132. E.g. "Grand Theft Auto", Encyc. Britannica, 2010, available at

    133. Rock Star Videos, 444 F. Supp. 2d 1012,1016.134. Id135. IdatXOM:

    The neighborhoods [of Los Santos, the fictionalized Los Angeles,] arepopulated with cartoon-style liquor stores, ammunition dealers, casinos,pawn shops, tattoo parlors, bars, and strip clubs, among other things. Thebrand names, business names, and other aspects of the locations havebeen changed to fit the overall "Los Santos" theme and the [Grand TheftAuto series'] irreverent tone.

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    B . D I S T R I C T C O U R T O P I N I O NE.S.S. Entertainment filed suit against Rockstar Games in the Central

    District of CaUfornia.'"" It claimed that Rockstar had used the Play Pen'sdistinctive logo and trade dress in Grand Theft Auto: San Andreas withoutautho rization and created a UkeUhood of confusion am on g con sum ers as towhether E.S.S. Entertainment had endorsed, or was associated with, thegame.'"" Roc kstar Ga m es m ove d for sum ma ry judgm ent on aU the claimsasserting nominative fair use and First Amendment protection as defenses.' ' '^

    The district court dismissed the nominative fair use defense because itrequires the defendant to use the mark to "clearly identif[y] and intentionallyrefer[[ to the plaintiffs product or service."'' '^ Rockstar's artists andemployees testified that they used the trade dress and mark to create afictionaUzed strip club within Los Santos and not to refer to the actual PlayPen estabUshment.' ' '^ The court, thus, denied summary judgment fornominative fair use.

    For the First Amendment analysis, the district court stated thattrademark protection does not aUow the owner of the mark to "quash anunauthorized use of the mark by another who is communicating ideas orexpressing points of view."' ' '^ The court further used the Rogers test,' '"' whichthe Ninth Circuit adopted for previous trademark uses within the titie of awork. The Rogers test aUows trademark protection to apply to artistic workswhere the pubUc interest in avoiding consumer confusion outweighs thepubUc interest in free expression.'' '^ Rockstar's use of this defense was novelbecause the Ninth Circuit had not ruled on whether uses that did not involvethe titie of the work feU within it. In a previous case the Ninth Circuit hadcontemplated the use of the Rogers test in this context but chose not to applyit because other defenses appUed.'"^ In that case, the Ninth CircuitSpecificaUy mentioned that if nominative fair use had not been appUcable, the

    140. Complaint, E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, No. CV05-2966,2005 WL 3879981 (CD. Cal. Apr. 22, 2005).141. Rock Star Videos, 444 F. Supp . 2d at 1014.142. /a t 1027,1036-37.143. / a t 1031.144. /a t 1034.145. Id at 1037 (quodng Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900 (9di Cir.

    2002)).146. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).

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    court probably would have used the Rogers test.'"*' The district court looked toother circuits that applied the Rogers test to all expressive uses of a trademarkor trade dress in artistic works, whether titular or not, and found that theRj)gers test should be used for Grand Theft Auto.'^

    Under the Rogers test, the district court first had to determine whether thePig Pen had artistic relevance to the game.'^' E.S.S. argued that Rockstar'suse of the Pig Pen was improper because the establishment had not reachedthe status of a landmark and was not relevant to creating a realistic depictionof the city.'^^ The court, however, found that the mark did have artisticrelevance to the game's depiction of Los Angeles.'^^ The court found that thedecision to borrow aspects of the Play Pen's design was closely connected toth e artistic design of t he fictional E as t Los Ang eles city.' "* Thi s satisfied th efirst prong of the Rogers test because the borrowed elements had some artisticrelevance to the underlying work.'^^ The court further found that

    [the] defendants incorporated distinctive elements of the Play Pennam e, logo, and trade dress . . . to create a locale that players wouldreaduy recognize as the Game's version of East Los Angeles.Because defendants' artistic objective was . . . [not to] produce anexact replica of East Los Angeles, it was unnecessary fordefendants to copy everything about the Play Pen, including thearchitectural style of its buildings.

    The second requirement of the Rogers test requires "that the use of themark [does] not explicidy mislead as to the source or content of the work."'"Because the Pig Pen was not featured in any advertisements and the playerdid not even need to visit the establishment to finish the game, the courtfound that there was no chance of content confusion.'^^ The court alsofound there was littie risk of source confusion because neither the game norpromotional materials contained any explicit indication of endorsement by

    149. Id at 1038 (citing Mattel, Inc. v. Walking Mountain Produ ctions, 353 F.3d 729, 809n.l7 (9th Cir. 2003)) ("Were the nominative fair use test not available and so attractive tothis claim, we very well m[ight] have had to apply Rogers.").150. Id . (citing cases and treatises including a Second Circuit and Sixth Circuit caseapplying the Rjogers test).151. /a t 1040.152. Id153. /a t 1041.

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    the Play Pen's owners.'^' The court further found that a sma chance ofassociadon between the mark owner and the ardsdc work is not enough todefeat a First Amendment defense under the Rogers test."' Since Rockstar'suse of the trademark passed both aspects of the Rogers test, the district courtgranted the modon for summary judgment.""' The court further found thatbecause the analysis for E.S.S.'s other state law claims was substandaHy thesame as for the Lanham Act claim, summary judgment was appropriate.'^^C. NIN TH CIRCUIT OP INIO N

    On appeal, the Ninth Circuit affirmed the district court decision.'^^ As aresult, the court adopted the Rogers test for any use of a trademark in anardsdc work and found that Rockstar Games's use of the Play Pen passed thetest. The Ninth Circuit held that the requirement for ardsdc relevance wasa very low threshold."'^ The Ninth Circuit analysis focused on the ardsdcpurpose of including Los Angeles architecture.' '' In finding ardsdc relevance,the court found that a reasonable way to create a cartoon-style parody ofEast Los Angeles was "to recreate a cridcal mass of the businesses andbudings that consdtute it.""^^ The Ninth Circuit further found that there wasa low HkeHhood of misleading consumers based on the use of the

    159. 7 at 1045.160. Id . ("While the similar font and common use of nude silhouettes might suggest anassociadon between the Play Pen and [Grand Thefi Auto: San Andreas] to some consumersthis is not enough to defeat First Amendment protecdon under Rogers.").161. 70 . at 1048.162. 7atlO49.163. E.S.S. Entertainment 2000, Inc. v. Rockstar Games, Inc., 547 F.3d 1095, 1101 (9diCir. 2008).164. The N inth C ircuit stated that an ardsdc work's use of a trademark is not acdonable"unless the [use of the mark] has no ardsdc relevance to the underlying work whatsoever, or,if it has some ardsdc relevance, unless [it] explicidy misleads as to the source or the contentof the work." The Ninth Circuit further said that "[a]lthough the test tradidonally applies touses of a trademark in the dde of an ardsdc work, there is no principled reason why it oughtnot also apply to the use of a trademark in the body of the work." Id. at 1099.165. Id. at 1100 ("In other words, the level of relevance merely must be above zero.").166. IdIt is also true that Play Pen has Mtde cultural significance, but the samecould be said about most of the individual establishments in East LosAngeles. Like most urban neighborhoods, its distincdveness Hes in its

    "look and feel," not in pardcular destinadons as in a downtown or touristdistrict. And that neighborhood, with all that characterizes it, is relevant to

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    The adoption of the Rogers test, along with previous case law, leads to theconclusion that the First Amendment wl usuay aow the inclusion ofarchitectural works in virtual worlds. This Part combines the protectionsfrom the Rogers test for trademark infringement with the exceptions tocopyright to argue that video games wl rarely infringe legal protections inarchitectxire.A. ARCHITECTURAL TRADEMARKS AFTER E.S.S. v. ROCKSTAR GAMES

    For a game to infringe trademarks in architecture under the Rogers test, itsuse must lack artistic value to the game and expcitiy mislead consumers.This Section wl go through each of thse prongs and conclude that suchinfringement wl rarely, if ever, occur.

    / . Artistic IntentThe Ninth Circuit specificaUy stated that the recreation of pubc

    budings is a sufficient artistic purpose for a First Amendment defense andthat a developer could evoke the feel of Los Angeles by creating a criticalmass of budings.'^'

    The Ninth Circuit stated that the artistic relevance of a work has to be"above zero."' This low threshold gives game developers a lot of freedomwhen incorporating trademarks into their own works. The court aowed agame developer to utize the trade dress and potentiay trademarkedarchitecture of a "critical mass" of Los Angeles budings for the artistic goalof a cartoon-style parody of the city.'^' The same principle should hold truefor creating a realistic representation of a city. In sum, any translation of thereal world to a game representation should pass the artistic bar.

    buying public would reasonably have believed that ESS produced the video game or, for thatmatter, that Rockstar operated a strip club.")169. Id. (stating that "Rockstar's artistic g o a l . . . is to develop a cartoon-style parody ofEast Los Angeles. Possibly the only way, and certainly a reasonable way, to do that is torecreate a critical mass ofthe businesses and buildings that constitute it.").170. Id171. Although the Ninth Circuit does not specifically tell developers to use the

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    the fact that the game was not based around operating a strip club and thatthe club did not play a prominent role in the advertisements of the game.Under this logic, there are few instances where an in-game trademarkedbuding could mislead the consumer.

    It is possible that the buding's use in a parody of Los Angelesinfiuenced the Ninth Circuit's dismissal of the UkeUhood to mislead. Thecourt mentions the GTA series' parody aspects in the description of thegame but not in the analysis of consumer confusion. Even though theopinion might have impUcitiy considered this aspect, the opinion does notanalyze the trademark use in this way. The Ninth Circuit opinion fuUyanalyzed the mark as referring to the strip club and concluded that therewould be no consumer confusion.'^^ Although it would have been easier tostate that there was Utde possibiUty of confusion between an obvious parodyof the Play Pen mark and building and the in-game use, the Ninth Circuit'sanalysis includes statements that identify E.S.S. without mentioning thecartoon-style aspects of the use.'^' These statements reaffirm the difficulty ofinfringing architectural trademarks in video games; whether the use is anobvious parody or a complete architectural reproduction, the reasoningsupporting a low UkeUhood to mislead wl be the same.

    However, the growth in traditional advertising uses within games couldlead to more restrictions on the use of architecture based on the consumerconfusion prong. More companies recognize the growing popularity ofgames and are increasing their advertising efforts in that area.'^" Burger K ing,M&Ms, Doritos, 7-UP, and others have aU sponsored the creation of gamesbased on their brands.'^' AdditionaUy, many games prominentiy featureadvertisements within the virtual world that promote various products,' ^ andseems far-fetched that someone playing San Andreas would think ESS had providedwhatever experdse, support , or unique s t r ip-club knowledge it possesses to the p r o d u c d o nof the game." Rockstar Games, 547 F.3d at 1100.

    178. The court does s tate , however , that the strip club is generic and the district courtopinion goes into detail about the differences so it is possible that the court decided it wasnot worth addressing.

    179. Rockstar Games, 547 F.3d at 1100-01 ("Nothing indicates that the buying publ icwould reasonably have believed that ESS produced the video game . . . . A reasonableconsumer would not think a company tha t owns one strip club in Eas t Los Angeles . . . alsoproduces a technologically sophisdcated video game like San Andreas.").

    180. See genera//y D a v i d R a d d , The Secrets of Advergaming, BUSINESSWEEK, May 2 3 , 2007, E.g., Lore Sjberg, Burger King Serves Up Tasty Games, WIRED, Dec. 5, 2006,

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    various companies have sponsored downloadable additions to games.'"^ Thefundamental difference between these types of uses and the use thatoccurred in Rockstar Games and other cases of trademarked architecture is theuse of the trademark in a traditional advertising context. Traditional forms ofsponsorship, including advertising billboards, prominent product placement,and overt splash screens and messages, would lead a consumer to concludethat a game is supported and endorsed by the trademark owner. This type ofuse approaches the level of explicitiy misleading the consum er. W ithoutthese types of traditional sponsorship associations, the likelihood of explicidymisleading consum er would be low.

    Though Rockstar used aspects of the Play Pen's architecture and some ofthe trade dress for the logo, it was stul used as a pubHc building in a way thatthe average consumer would not traditionally associate with sponsorship.There was Utde risk that a consumer would think that a location with litderelevance to the overall story and not placed on any promotional Screenshots,videos, or box art was somehow associated with the development orpromotion of the game. This is the nature of architectural works in videogames. The game developer's use of architecture wiU rarely lead to consumerconfusion over the sponsorship of the game. Even if the architecture andtrade dress are prominentiy displayed, the amount of time the player spendsat:ound or within the building wl most likely be similar to that in RjockstarGames. Unless the developer decides to create the "McDonald's home base"or other simuar locale that contains a prominent mission or repeatedinteractions, the use would not approach that of sponsorship. Essentially, adeveloper would need to actively attempt to evoke a sponsorship with thearchitectural work for it to lead to consumer confusion. Even the prominentplacement of potentially trademarked architecture can lead to no consumerconfusion and a mutually beneficial relationship.'^''When games reproduce billboards and other traditional forms ofadvertisements, the result of this prong of the test is harder to predict. Eventhough the architecture of a billboard on its own is unlikely to raise anytrademark liability due to its functional nature, the use of the trademarkedbdrnouts-paradise-city/ (Oct. 14, 2008, 10:45). There was also a special "blooper reel"sponsored by Axe body spray in Rjxinbow Six Vegas 2. See Posting of Brian Crescente Kotaku, m/22 6196 /clips-rainbow -six-vega s-blooper-easter-egg / (Jan. 4,2007,19:00).183. Downloadable add-ons have been sponsored by Fanta, Monster Energy Drink,

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    adverdsement might. Because these uses are more in-line with tradidonaladverdsing, the HkeHhood of consumer confusion could be greater. Thereasoning of the Ninth Circuit, however, seems to miss the mark whenappHed to tradidonal adverdsements. The Ninth Circuit focused on theHkeHhood of the mark to confuse the consumer as to the game's origin, butin cases of sma adverdsements within a large world, unless the sameadverdsement was reproduced throughout the city,'^^ it is unHkely that asingle adverdsement would cause the consumer to think that the game wasdeveloped or produced by the company holding that trademark. Consumersmight think that the company sponsored or endorsed the use of the mark ingame, but it is unHkely that this could cause consumers to beHeve that thecompany was responsible for making the game or lending their experdse.'^"^The trademark's use in tradidonal adverdsing is very different from havingthe logo appear on a splash screen or other prom inent placement.'*'

    The quesdon of whether a trademark holder endorsed a game is moredifficult. Considering that many games use in-game adverdsements togenerate revenue,'** the HkeHhood that an in-game product adverdsement fora famous trademark would lead to a consumer thinking the trademark ownerhad specificay endorsed it is high.'*' It is stl quesdonable whetherendorsement would actuay mislead the customer in the tradidonaltrademark sense. The Ninth Circuit analysis hinged on source confusion;even with an adverdsement, it would sti be clear that the adverdsing markholder did not create the game or lend their experdse. Although this type of

    185. Such as having every billboard say, "Enjoy Coca-Cola."186. This leads to the quesdon whether consumer percepdon that a game is endorsed bya trademark holder would itself lead to consumer confusion. If the trademarks were notprominendy featured on the game art or in adverdsem ents, there would be Utde fear of inidalinterest confusion.187. Cf Sega Enterprises Ltd. v. Accolade, Inc., 977 F.2d 1510 (9th Cir. 1992). Sega fileda trademark infringement acdon for Accolade's inclusion of code which caused Sega'strademarked logo to appear during the start of the Accolade game. Id . at 1528. The NinthCircuit, however, determined that S ega required the inclusion of the code for a game on theirconsole to work properly, making the trademark funcdonal. Id . at 1532. Had Accoladeincluded the code for purposes other than getdng the game start on a Sega console,however, the cou rt could have come out differendy.188. See Posdng of Greg Boyd, Vejay Lalla to Gamasutra, 27/em erging_issues_in_ingame_ .php (Feb. 11 , 2009) (stadng that in gameadverdsing generated |370 million in 2006 with projected growth to |2 billion by 2012). Butsee Reena Jana, 7.r That a Video Game - or an Ad?, BUSINESSWEEK, Jan. 25, 2006,

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    458 BERKELEY TECH NO LOG Y LAW JO UR NA L [Vol. 25:429

    use woid more closely approach an explicitiy misleading endorsement bythe trademark holder, the Rogers test might sti aow it. The district courtfocused their analysis on misleading the consumer as to whether the markholder had lent their specific expertise to development of the game.''" Realworld advertisements could contribute to the reastic artistic purpose of acity and should be aowed as long as they are neither prominentiy placed norexpcitiy suggest sponsorship. If the usage does not mislead consumers as tothe game's origin, the usage should be aowed under the Rogers test.

    It is unkely that developers would bother to try to incorporatetrademarked advertisements in their games without permission. Because ofthe relative simpcity of replacing actual advertisements on architecture withfake or approved advertisements,"' most game companies would avoid anyabity altogether. Additionay, the ability of game developers to makesubstantial revenue from sponsored advertisements would ukely promptthem to use ads that trademark owners endorse.''^ The developer thatchooses to use authentic ads and forgo potential additional revenue wouldlikely do this to further the player's sense of reasm and immersion in thevirtual world. When a developer makes this choice, the only factorconsidered should be the lost ad revenue; the law recognizes video games asprotected artistic works and the fear of utigation should not be a motivator.The developer that chooses additional artistic immersion should not facelitigation because of this choice.B. COM BINING TH E N IN T H CIRCUIT'S TRADEMARK TREAT MEN T WITH

    COPY RIGHT LAWThe Ninth Circuit's treatment of the trademark usage of pubclyviewable budings in Rockstar Games complements the defenses for pubc

    architectural works but into the Copyright Act. The photographicexception"'' provides strong protection for game developers seeking to utizecopyrighted architecture in their virtual worlds, and this protection has onlybecome stronger through case law. Leicester held that the photographicexception applies to traditional artistic works incorporated into a buding

    190. E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 444 F. Supp. 2d 1012,1047 (CD. Cal. 2006).191. The developer would simply need to replace the image used for the advertisementwith a non-infringing version or substitute advertisement.

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    becau se of the ir con trib utio n to the b u din g as a whole.'^"* Ind ee d, th is typeof analysis is increasingly important for game developers seeking to use theexception for copyrighted architectural works containing other copyrightedexpression.

    It is possible that the result o Leicester was motivated by the fact that thecity of Los Angeles required buildings to include their own separate artisticrequirements, causing the work in question to be viewed more easy as a partof the whole."^ However, this aspect of the case did not enter the appeHatecourt's analysis. Rather, the analysis from the case focused on the simarityof th e architec tural wo rk w ith the building.'^*" A ltho ug h som e of thissimarity might be attributed to the requirement of the city, the analysisholds up regardless of the city requirements.

    There is an argument that games can more easy handle the removal ofindependendy copyrightable elements of a buding. UnHke the film crew inLeicester, who could not relocate the independentiy copyrighted statue, it isless burd ens om e for a game developer to sub sti tute or remov e theseindependentiy copyrighted elements. This requirement, howev^er, would workagainst the artistic purpose of using actual buildings to give an authentic feelfor the player. Copyright protections provide exceptions for two-dimensionalreproduction of pubHc budings and trademark law provides an artisticexception if the use is artistic and does no t cause consu m er confusion."^Both of these uses are weH suited for games. Combining these two shouldaHow game developers to create accurate, reaHstic, and immersive worlds fortheir games without fear of HabiHty from the use of budings andarchitecture.

    However, this is not enough. The conclusion of the Ninth Circuit inRockstar Games should aHow the free speech exemption to extend to otheraspects of the buding, including the logo. As long as there is a lowHkeHhood of ' expHcit co ns um er con fusion , the law s ho uld aHow thedeveloper to use the associated logo. The Ninth Circuit 's analysis (use of thetradem ark in an artistic work an d a low HkeHhood of con sum er confusion)should aHow the use of traditional marks in video games. If the buding isrecognizable enough to acquire trademark protection, the addition of thelogo associated with the architectural work should not change the result ofthe Rogers test . The Rogers test is fiexible enough to aHow the use oftrademarked logos on their associated buildings, and copyright law would

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    460 BERKELEY TECH NO LOG Y LAW JOU RN A L [Vol. 25:429

    exempt their use under the photographic exception. These uses wouldcontribute to the artistic intent of the developers and could further theimmersive aspect of their virtual worlds.IV . E X A M P L E S F R O M M O D E R N G A M E SA^ U S E O F BUILDINGS F O R IMMERSION''^

    Even though the use of fake or altered versions of trademarked, easyrecognizable buildings could work against the artistic relevance of a game,developers typicaUy sacrifice some reaUsm for reduced UabiUty. The lawalready shields developers from UabiUty and any changes made only hurt thegame-playing audience.

    In Rainbow Six: Vegas, a game set in the city of Las Vegas during aterrorist incident, players are transported to a virtual recreation of the city. '^'The game used representations of Las Vegas hotels and casinos freely duringthe opening scenes. The Vegas scenario starts with a heUcopter fiying overthe city. The use of Las Vegas landmarks is quickly apparent as the playersurveys the city below and this use contributes to the sense of immersion.However, as soon as the player lands, the recognizable locales are only visiblein the background. The areas where the player engages in combat withenemies are aU fictional locations within the city.^ Later, there is a scenewhere the player witnesses from an adjacent buding the destruction of thetop fioor of a tower. Although the scene is an important plot point, theplayer having no association with the destroyed buding lessens the impactof its destruction and the player's sense of immersion.

    Contrast this scene with Call of Duty: Mo dem Wa rfare 2, in which theplayer must explore a war-torn Washington, D.C. As the player explores thelevel, they wimess destroyed versions of the Washington monument, theWhite House, and the Capitol buding. Although the idea is simuar, thedestruction of U.S. budings as major plot points in a game, the fact that theplayer sees recognizable landmarks contributes to the immersive aspect of

    198. Spoiler Alert: the following Section talks about aspects of two games and revealscertain plot elements. Readers who do not wish to know about Rainbow Six: Vegas and Callof Duty Modem Warfare 2 are advised to skip to the next Section.199. Cf. Brian Haynes, P/ajers snipping up video game depicting terror attack on Las Vegas, LASVEGAS REV ., Dec. 4,2006, at 2B.

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    the scene and the impact it has on the player.^"' The destroyed buildings donot have trademark protection, and thus no risk of liability to the developer.Even so, from the player's perspective, the scene in Modem Warfare 2seeinga destroyed Washington monumenthas more impact than seeing anunnamed building destroyed in the distance.^"^

    Although the destruction of video game representations of trademarkedarchitecture has not been addressed by the courts, weighing the artisticrelevance versus the likelihood to mislead the customer should allow the useand destruction of the trademarked building. This type of use might invoketrademark dilution by tarnishment or blurring. The First Amendmentprotections built into trademark law, however, should overcome these typesof problems. Although most developers would probably rather take theRainbow Six: Vegas approach and create fictional locations, the artistic lossfrom this practice hurts the players' experience and the game's atmosphere.The Rogers test should allow these types of uses and game developers shouldnot be afraid to exploit these rights for their artistic works. The developers ofCall ofDuty: Modem Warfare 2 were able to use these buildings because neithertrademark nor copyright protect thema decision which greatiy helped theartistic goal of the game. Developers should not be forced to sacrifice artisticrelevance because of fears of trademark and copyright liability. Since the lawalready encourages uses that further artistic pursuits, the destruction oftrademarked buildings should be no different from a traditional use.

    The same artistic protections under the First Amendment shouldovercome a dilution by tarnishment for questionable subject matterargument. Trademark owners, while protective of their mark, should nothave the power to control its use in artistic works. Given the very low artisticbar of the Rjogers test, a court wl likely find that the use of a mark associatedwith a building wl contribute to the artistic purpose of a game. Though thetrademark owner might n ot w ant to associate with a video game in general or

    201. See, e.g., Musgrove, supra note 2.202. Another example of realistic buildings and architecture helping immersion comesfrom a recent game-related podcast where one of the hosts talks ahout Assassin's Creed II, agame set in Renaissance Italy. The host was looking for a specific building in Florence andfound it using Google Maps to map where it was in relation to his current location. Podcast:4 Guys lUP: 11/20/2009 at 1:43:00, available at http:/ /podcast Cf Podcast: Joystiq Podcast Episode 119, 12/04/2009at 22:00, available at

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    the specific content of a certain game, if the mark passes the Rgers test, thenthe owner should not be able to restrict its use.B. THE CHURCH OF ENGLAND

    Even the unauthorized use of architecture, in a video game can have amutuay beneficial reladonship for the buding owner. The game ResistancFall of Man included a scene inside Manchester Cathedral.^"^ The gamerecreates the interior of the cathedral and involves a firefight between theplayer and the aHen enemies of the game. The scene contains the architectureand many of the interior ardsdc aspects of the cathedral, including stainedglass windows and statues.

    This reproducdon caused controversy with the leaders of the Church ofEngland. The Church claimed the depicdon to be desecration and copyrightinfringement, stadng that it was inappropriate of Sony to aow players toshoot guns in a city with a gun problem.^"" A good am ount of back and forthbetween Sony and the Church ensued.^^ Sony issued an unreserved apologybut refused to change the game or issue a donadon as the Churchdemanded.'"'^In the end it appears that the use has resulted in a mutuay beneficialeffect. Resistance: Fall of Man went on to se over a milHon copieworldwide.^"^ During the controversy, its United Kingdom sales rank wentfrom 40th to 22nd, and it remained in the top forty for two addidonalweeks.^"* The controversy also indirecdy benefited Manchester Cathedral,which saw a significant increase in visitors after the controversy broke.^"'Although it would be tough to equate increased tourism with possibledesecradon of a reHgious buding, the direct impact of the game's scene on

    203. See Cathedral row over video war game, B B C N e w s Q u n e 9, 2007 , 1 7 :3 2 G M T ) , available/ Id

    205. See e.g., Ruth Gledhi l l , Manchester Cathedral says Sony apology notenough and issues ne wdigital rules, TIMES ONLINE 0uly 6, 2007),

    206. The Wardman Wire,,2007).

    207. Sony, church discuss violent gam e, WASHINGTON TIMES (June 13, 2007) , GfK ChartTrack for the week ending June 16, 2007, http://www.chart-

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    tourist numbers is highghted by David Marsha, director ofcommunications for the Diocese of Manchester: "Teachers te us thatteenagers in particular are interested to see a buding which they thought wasfictional."^'" The cathedral did eventuay forgive Sony for using tiiearchitecture in their game, but stated that the controversy was important toensure that game developers have respect for the subjects of their games.^"

    Even though the law protecting the cathedral in th