E.S.S. v. Rock Star: Trademarks | Outside IP Counsel

The Ninth Circuit extended Rogers v. Grimaldi to video games: GTA's Pig Pen strip club beat the Play Pen's Lanham Act claims with artistic relevance above zero.

In E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008), decided November 5, 2008, the Ninth Circuit held that the makers of Grand Theft Auto: San Andreas did not violate the Lanham Act by placing a virtual strip club called the “Pig Pen” in their game, even though the club’s look was modeled on the real Play Pen Gentlemen’s Club in Los Angeles. Writing for a panel that included Judge Susan Graber and Senior Eighth Circuit Judge John R. Gibson, sitting by designation, Judge Diarmuid O’Scannlain affirmed summary judgment for Rockstar on First Amendment grounds without ever reaching the merits of the trademark claims.

The decision matters because of what it extended and how low it set the bar. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), had shielded the use of trademarks in the titles of artistic works. E.S.S. carried the Rogers balancing test into the body of an expressive work, and into a medium, the video game, that courts had barely begun to treat as art. Its formulation that artistic relevance “merely must be above zero” became the threshold for a generation of expressive-use litigation, up to Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023).

At a glance

Case: E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) (No. 06-56237)
Decided: November 5, 2008; opinion by Judge O’Scannlain, joined by Judge Graber and Senior Judge Gibson (8th Cir., by designation); summary judgment for Rockstar affirmed
Holding: Grand Theft Auto’s “Pig Pen” did not infringe the Play Pen’s trademark or trade dress because the use had artistic relevance above zero and did not explicitly mislead consumers as to source, so the First Amendment barred the Lanham Act and state-law claims.
Status: Final, and still good law as of July 2026 for uses of a mark that are not source identifiers, the lane left open by Jack Daniel’s and confirmed in Punchbowl, Inc. v. AJ Press, LLC, 90 F.4th 1022 (9th Cir. 2024).

The Rogers framework and its arrival in the Ninth Circuit

The doctrinal engine of E.S.S. is borrowed. In Rogers v. Grimaldi, the Second Circuit confronted Ginger Rogers’s objection to Federico Fellini’s film Ginger and Fred and concluded that the Lanham Act should be construed to apply to artistic works “only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” That balance crystallized into a two-part test: the use of a mark in an expressive work is not actionable unless it has no artistic relevance to the underlying work whatsoever, or, if it has some relevance, unless it explicitly misleads as to the source or the content of the work.

The Ninth Circuit adopted Rogers in Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), the “Barbie Girl” case, where the test protected the use of a mark in a song title. But titles are a narrow category. The open question in 2008 was whether the same protection reached a mark used inside the work itself: not the name on the box, but the scenery within the world. E.S.S. answered yes and applied Rogers directly to the Pig Pen.

A strip club in East Los Santos

E.S.S. Entertainment 2000 operates the Play Pen Gentlemen’s Club in Los Angeles. Rockstar Games, a label of Take-Two Interactive, published Grand Theft Auto: San Andreas in 2004, set in a fictionalized California anchored by the city of “Los Santos,” a stylized Los Angeles. To build the game’s “East Los Santos” district, Rockstar’s artists photographed real neighborhoods in East Los Angeles, including the Play Pen, and folded altered versions of what they saw into the game. The result was the virtual Pig Pen, which echoed elements of the Play Pen’s logo and architecture without copying them exactly.

E.S.S. sued in the Central District of California in April 2005, asserting trade dress infringement and unfair competition under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), along with California statutory trademark, unfair competition under Business and Professions Code section 17200, and common-law unfair competition claims. The district court, in an opinion reported at 444 F. Supp. 2d 1012 (C.D. Cal. 2006), granted Rockstar summary judgment on its First Amendment defense, and E.S.S. appealed. Because the panel held the First Amendment defense applied equally to the state-law claims and the Lanham Act claim, a single constitutional analysis disposed of the entire case.

Nominative fair use was the wrong tool

Before reaching Rogers, the panel disposed of Rockstar’s alternative defense, and the ruling is a useful reminder of the doctrine’s limits. Nominative fair use applies when a defendant uses the plaintiff’s actual mark to refer to the plaintiff’s own product, as when a mechanic advertises that it repairs Volkswagens. Rockstar had not done that. The game says “Pig Pen,” not “Play Pen,” and Rockstar’s lead map artist testified that the goal was not to comment on the Play Pen as such but to evoke the look and feel of an East Los Angeles neighborhood. A use that changes the mark and does not refer to the markholder’s product falls outside nominative fair use, so the First Amendment framework had to carry the case alone.

Artistic relevance: the bar sits just above the floor

On the first Rogers prong, E.S.S. rested on two observations: San Andreas is not “about” the Play Pen the way “Barbie Girl” was about Barbie, and the Play Pen, unlike Barbie, is no cultural icon. The panel called both observations factually accurate but held they missed the point. The relevance requirement, it held, is not a measure of how central the mark is to the work; “the level of relevance merely must be above zero.” Rockstar’s artistic goal was to create what the court described as a cartoon-style parody of East Los Angeles, and a neighborhood is made of its businesses. The court noted that recreating a critical mass of the businesses and buildings that make up the neighborhood was a reasonable way to reach that goal, so a strip club similar in look and feel to the Play Pen had at least some artistic relevance, and that was enough.

The “above zero” formulation is the case’s most durable export. It converts the first prong into a near-automatic pass for any work that integrates a mark into its setting, atmosphere, or commentary, and it deliberately keeps judges out of the business of grading artistic choices. Later Ninth Circuit decisions, notably Brown v. Electronic Arts, Inc., 724 F.3d 1235 (9th Cir. 2013), applied the same threshold to the depiction of real athletes in games, and district courts relied on it in disputes like AM General LLC v. Activision Blizzard, Inc., where Humvees appeared in Call of Duty.

Explicitly misleading: the Dodger Stadium hot dog stand

The second prong asks whether the use explicitly misleads consumers about the source or content of the work. Here the panel made two moves that continue to shape litigation. First, it reaffirmed that the mere use of a trademark, standing alone, cannot make a work explicitly misleading; otherwise the second prong would swallow the defense and, in the words of the circuit’s Barbie Girl decision that the panel invoked, “render Rogers a nullity.” Something more than the use itself, some affirmative statement or overt suggestion of sponsorship, is required.

Second, the court asked whether a reasonable consumer would actually draw a source connection, and answered with common sense. The Play Pen is a single club, not widely known outside its neighborhood; San Andreas is a technologically sophisticated game produced by a global publisher. Video game players, the court reasoned, would not believe that a local strip club made the game or that Rockstar operates a strip club. E.S.S. countered that the game allowed players to linger in the virtual club, but the panel’s response supplied one of the opinion’s memorable lines: fans can spend all nine innings of a baseball game at the hot dog stand, and that hardly makes Dodger Stadium a butcher’s shop. With both prongs satisfied, the First Amendment defeated the Lanham Act claim, and California law posed no separate obstacle.

Open questions

E.S.S. left the “explicitly misleading” prong underspecified, and the Ninth Circuit later complicated it in Gordon v. Drape Creative, Inc., 909 F.3d 257 (9th Cir. 2018), which suggested that using a mark in the same way the markholder does could create a jury question. The larger unsettled issue is the aftershock of Jack Daniel’s, which held in 2023 that Rogers does not apply at all when the accused infringer uses the mark as a source identifier for its own goods. The Supreme Court declined to endorse or reject Rogers for other uses, and the Ninth Circuit in Punchbowl confirmed the test survives for non-source-identifying expressive uses. But the boundary is blurry for modern games: when a studio sells branded virtual goods inside its world, is the depiction still scenery, or has it become a source identifier? Courts had not definitively resolved that question as of July 2026.

Implications for brands and businesses

A realistic setting is not an endorsement claim. Game studios, filmmakers, and other creators may depict altered versions of real businesses as part of a world’s texture. After E.S.S., a markholder must show the work explicitly misleads about source, not merely that consumers might notice the resemblance.
Local fame is weak leverage. The court weighed the gulf between a single neighborhood club and a global entertainment product. Brands with limited public recognition face an uphill battle arguing that consumers would infer sponsorship of a major expressive work.
Check the source-identifier line before relying on Rogers. Since Jack Daniel’s, the defense evaporates when the mark brands the defendant’s own product. Merchandise, virtual goods for sale, and title-screen branding demand a conventional clearance analysis, not a Rogers bet.
Nominative fair use will not stretch to fictionalized uses. If the work alters the mark and does not refer to the markholder’s actual product, that defense is unavailable, and the First Amendment framework is the one that must carry the weight.

Frequently asked questions

Did Jack Daniel’s v. VIP Products overrule E.S.S. v. Rock Star? No. Jack Daniel’s held that Rogers does not apply when the accused use is a source identifier for the defendant’s own goods, but the Court left Rogers intact for non-source uses. Depicting a trademarked business inside a game world, as Rockstar did, is not source-identifying use, and in Punchbowl, Inc. v. AJ Press, LLC (9th Cir. 2024) the Ninth Circuit confirmed that Rogers remains circuit law for such uses. As of July 2026, E.S.S. remains good law within that narrowed lane.

What does “artistic relevance above zero” actually require? Almost nothing. The Ninth Circuit held that the mark’s relevance to the work “merely must be above zero,” so courts do not weigh how much the work needs the mark or how artfully it is deployed. A cartoon-style rendering of East Los Angeles could include a strip club resembling the Play Pen because the neighborhood’s businesses were relevant to the game’s setting, even though the game was not about the club.

Does E.S.S. mean video games can freely copy real-world businesses? Not freely. The use must appear inside an expressive work and must not explicitly mislead consumers about source or content, and after Jack Daniel’s a game that uses another’s mark to brand the game itself or its merchandise loses Rogers protection entirely. Games that sell branded virtual goods, or that imply sponsorship in their marketing, still face the ordinary likelihood-of-confusion analysis.