A video game is an ‘expressive work’? According to the Supreme Court of the United States it is.
This view is not surprising when you consider that an immersive gaming environment is a key component of today’s top grossing game titles. To bolster realism, many leading game developers incorporate real world imagery, including physical locations, famous names and famous brands into their gaming environment.
Historically, game developers have sought permission from the owners of famous trade marks to use their trade marks. However, after a spate of recent decisions from various United States courts, some developers are using these trade marks within their games without express authorisation.
In May, Electronic Artsannounced that despite the fact that it would no longer be entering into license agreements with gun manufacturers, it would continue to feature branded guns in EA games.
The rationale behind these decisions is that realistic games with narrative elements have the same free speech protections under the First Amendment as other ‘expressive works’, such as films, books and music. So long as there is some artistic relevance to use of the trade mark , and consumers are not mislead, inclusion of the trade mark is likely to be considered to be protected ‘fair use’ of the trade mark.
By way of example, use of the name ‘Pig Pen’ in the game Grand Theft Auto: San Andreas by Rock Star Video, Inc., to name a strip club,was held to be relevant to Rock Star’s goal of developing a cartoon style parody of East Los Angeles.  This was much to the annoyance of the club The Play Pen, whose trade mark and get-up was the object of the parody.
However, it does not always go the way of the developer. In a case concerning the use of Bell branded helicopters in the game Battlefield 3, EA attempted a pre-emptive strike against Textron, Inc., asking for a declaratory judgment that use of the Bell helicopter was protected under the First Amendment. The District Court denied the application, on the grounds that it was at least arguable that consumers may be misled into believing that Textron provided EA with technical expertise, enabling a realistic simulation of the helicopters within the game.
So what about the legal situation closer to home? Can Australian and New Zealand game developers also use famous trade marks in their games without permission? And what about game developers who have the right to use famous trade marks within the United States? Can they import those products into New Zealand without facing objections here?
Unlike the United States, Australia and New Zealand do not have a constitutionally enshrined right to ‘fair use’ of a trade mark under the principle of free speech. There are no cases in Australia and New Zealand that discuss use of famous trade marks in games. There are, however, some cases that discuss registration and use of parody trade marks, or use of well-known marks, that may shed light on how this matter would be approached.
In a New Zealand case, dealing with use of the famous ALL BLACKS and SILVER FERN Device trade marks, an injunction was granted prohibiting the sale of calendars entitled “Born to Lead – All Black Test Captains 1958-2001”, featuring photos of past and present team captains in uniform, and using the famous marks. Faced with an argument that use of the famous trade marks was merely descriptive and not use in a trade mark sense, the Court held that this use went beyond the mere descriptive, in that the calendar, as a whole, was designed to tap into, and use , the reputation of the All Blacks to maximise sales.
In Australia, the parodic use of a famous trade mark must not in any way imply an endorsement by the owner of the trade mark in question, or some connection with the original trade mark or its owner. In other words, if the execution of the parody is such that the consumer fails to realise that the use is satirical, this increases the likelihood of deception or confusion. On this basis, clever use of the similar trade mark, Tenfolds Grunge, (Penfolds Grange), in respect of identical goods, is acceptable, as it is clearly a parody. However, parodic use of the identical trade mark, Valium, on dissimilar goods, namely clothing, is not ,as such items are used as a medium for promoting pharmaceutical trade marks, thus increasing the risk of confusion. In trade practice cases concerning claims of misleading or deceptive conduct or passing off, the Australian courts have consistently held that even where the alleged infringement involves a parody, the only question is whether the elements of the cause of action have been made out.
So drawing on the above, the decided cases in Australia and New Zealand demonstrate that the requirement of use “as a trade mark”, and the dependence of trade mark actions on a likelihood of confusion ,may operate to permit use of famous trade marks in games without permission. However, as soon as it can be argued that the developer is relying on a reputation in the famous trade mark to drive sales of the game, or there is even a possibility that consumers may be misled into believing there is a connection between the developer and the owner of the trade mark, as in the Bell Helicopter’s case, there is a real risk of a successful objection from the owner.
The not so simple answer as to whether you can use famous trade marks without permission, in an Australasian context, is, therefore, it depends. Game developers will have to carefully tread their way through an infringement minefield should they want to use famous trade marks without permission.
Brown v Entertainment Merchants Association 131 S.Ct. 2729 (2011)
 Malathi Nayak, “Video game maker drops gun makers, not their guns”, at http://www.reuters.com/article/2013/05/07/us-videogames-guns-idUSBRE9460U720130507, last accessed 12 September 2013.
Rogers v Grimaldi 875 F.2d 994 (1989)
E.S.S. Entertainment 2000, Inc. v Rock Star Videos, Inc., 547 F 3.d 1095 (9th Cir. 2008)
Electronic Arts, Inc. v Textron, Inc et al. Case No. 3:2012cv00118 (N.D.Cal 2012)
The New Zealand Rugby Football Union v Saint Publishing Ltd (unreported, HC Auckland, M1458/01, 2 October 2001, per Williams J.
Southcorp Limited v Morris McKeeman  ATMO 48
Hylebut Pty Limited v Roche Products Limited (2007) 74 IPR 551
 Above no. 7
 Above no. 8
 See McIlenny v Blue Yonder Holdings Pty Ltd (1997) 149 ALR 496 and Pacific Dunlop v Hogan (Crocodile Dundee) (1989) 14 IPR 398