A Step Too Far Part II – Pros and Cons of Each Side’s Position in Take-Two v. Pinkerton
In our last blog post, we explained:
- the background of a current lawsuit between Rockstar Games and the Pinkerton agency regarding the hit videogame Red Dead Redemption 2; and
- how this case illustrates the potential pitfalls rights holders face in sending a cease and desist letter to a potential infringer.
In this article, we delve into the pros and cons of each side’s position in this case and offer our opinion as to which party is likely to prevail.
Background Recap:
The main substantive issue in this case is Red Dead Redemption 2’s alleged infringing use of the Pinkerton agency’s various intellectual property rights. More specifically, Red Dead Redemption 2 includes Pinkerton characters in 10 of the game’s 106 missions, including the two Pinkerton characters Andrew Milton and Edgar Ross as depicted below:
According to the complaint, these characters introduce themselves as “Agent Milton. Agent Ross. Pinkerton Detective Agency, seconded to the United States government.” Moreover, each character can be seen wearing a badge which allegedly is based upon the style of badge used by the Pinkertons from 1850 through 1925 as shown below:
The (Unfortunately Narrow) Scope of the Pinkerton Trademark Rights:
The PINKERTON® agency dates back to as early as 1850 – making it one of the oldest private security and investigation agencies in the world. The agency currently operates under two entities – Pinkerton Consulting & Investigations, Inc. and Pinkerton Service Corporation.
To protect its trademark rights, the Pinkerton agency has registered numerous trademarks in International Class 42, each of which registrations cover, inter alia, security guard and private investigation services, including:
- the word mark PINKERTON’S (Reg. No. 0887265);
- PINKERTON (STYLIZED) (Reg. No. 1593562) as shown below:
- PINKERTON (STYLIZED & DESIGN) (Reg. No. 1778207) as shown below:
- PINKERTON (STYLIZED & DESIGN) (Reg. No. 1780710) as shown below:
- PINKERTON (STYLIZED & DESIGN) (Reg. No. 3773594) as shown below:
- PINKERTON CONSULTING & INVESTIGATIONS (STYLIZED & DESIGN) (Reg. No. 2450925) as shown below:
and
- PINKERTON DETECTIVE (STYLIZED & DESIGN) (Reg. No. 0546426) as shown below:
In light of such registrations, the Pinkerton agency has done much to establish strong trademark rights in the PINKERTON® brand in connection with security guard and private investigation services.
Unfortunately, however, the Pinkerton agency’s failure to seek trademark rights beyond security guard and private investigation services has deleteriously impacted the agency’s ability to assert rights in its PINKERTON® brand in connection with goods and services other than security guard and private investigation services. Indeed, this situation is a good example of why companies often license their brand for use in connection with ancillary goods / services, namely, to broaden their trademark rights. Had the Pinkerton agency sought to merchandise the PINKERTON® brand – i.e., expanding use into traditional “merch” categories such as hats, t-shirts, coffee mugs, etc., and then followed up that licensed use with the filing of trademark applications covering such use – the PINKERTON® brand would likely be seen as much broader and stronger in this case: giving the Pinkerton agency a stronger litigation position. This is an important tactic which many brand-savvy companies already employ; to wit, merchandizing their brand – not necessarily to make more money (although ancillary revenue is always helpful) – but to broaden the intellectual property rights which protect their core business areas.
First Amendment Standard Re: Use of the PINKERTON® Brand:
In its decision in the 1989 case, Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989), the Second Circuit Court of Appeals (which covers the Southern District of New York where Take-Two v. Pinkerton is being litigated) reconciled the tension between free speech and a third party’s use of a registered trademark as follows:
“We believe that in general the [Trademark] 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. In the context of allegedly misleading titles using a celebrity’s name, that balance will normally not support application of the Act unless [1] the title has no artistic relevance to the underlying work whatsoever, or, [2] if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.”
While the Rogers case involved the use of a mark in connection with the title of a film, other courts have since expanded the so-called Rogers test from use of a trademark in the title of an artistic work to use of a trademark in the body of a work itself. See, e.g., E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1099 (9th Cir. 2008).
Moreover, in its E.S.S. Entm’t 2000 decision, the Ninth Circuit further held that the “no artistic relevance” portion of the Rogers test meant that “…the level of relevance merely must be above zero.”
Finally, a decision in a recent Southern District of New York case, Louis Vuitton Malletier S.A. v. Warner Bros. Entm’t Inc., 868 F. Supp. 2d 172, 178 (S.D.N.Y. 2012), further clarifies that:
- the first prong of the Rogers test – the artistic relevance prong – “ensures that the defendant intended an artistic—i.e., noncommercial—association with the plaintiff’s mark, as opposed to one in which the defendant intends to associate with the mark to exploit the mark’s popularity and good will”; and
- the second prong of the Rogers test – the explicitly misleading prong – examines “whether the defendant’s use of the mark is misleading in the sense that it induces members of the public to believe the work was prepared or otherwise authorized” by the rights holder.
The Likely Arguments of the Pinkerton Agency:
The Pinkerton agency will likely argue that the use of the PINKERTON® brand in Red Dead Redemption 2:
- has no artistic relevance to the underlying work; and
- is explicitly misleading in the sense that consumers could be confused into believing that Red Dead Redemption 2 was prepared or otherwise authorized by the Pinkerton agency.
With respect to point (i), the Pinkerton agency may argue that there was no reason why Red Dead Redemption 2 needed to be “hyper technical” in its portrayal of Western history. Rather, the game could have simply made the characters Andrew Milton and Edgar Ross into generic detectives (without mentioning the name of the agency), associated them with a different historical (but now defunct) agency or associated them with a fictional agency – perhaps even a fictional agency based, in part, on the Pinkerton agency.
Moreover, the Pinkerton agency will likely emphasize the fact that 10 of the game’s 106 missions (i.e., nearly ten percent of the total missions) involve the Pinkerton agency characters – far more use than would be artistically “necessary.”
With respect to point (ii), the Pinkerton agency are likely to have difficulty in arguing that consumers could be confused into thinking that a private detective and security firm produced a video game. However, the Pinkerton agency might be able to raise a credible argument that consumers could be confused into thinking that the game was “authorized” (i.e., licensed) under the PINKERTON® brand – in the same manner that consumers certainly believe that the NFL “authorized” the use of NFL branding in the John Madden video game.
Consumers are well aware that professional sports teams have had great success in licensing their intellectual property for use in video games (e.g., the Madden NFL 19 and the FIFA 19 games). We believe that the Pinkerton agency might be able to demonstrate that consumers will be confused into thinking that the Pinkerton agency, like the National Football League, has licensed its trademark rights for use in Red Dead Redemption 2.
Noting again as an aside, if the Pinkerton agency could produce copies of licensing agreements for the PINKERTON® brand extending beyond security guard and private investigation services, such agreements could be relevant to showing that consumers view the PINKERTON® brand as a “licensed” brand. Such licensing could help prove that consumers are likely to suspect involvement / endorsement by the Pinkerton agency in connection with Red Dead Redemption 2.
The Likely Arguments of Rockstar Games:
Rockstar Games will likely argue that the use of the PINKERTON® brand in Red Dead Redemption 2:
- has artistic relevance to the underlying work; and
- is not explicitly misleading in the sense that consumers could be confused into believing that Red Dead Redemption 2 was prepared or otherwise authorized by the Pinkertons.
With respect to point (i), Rockstar Games – in its January 11, 2019 Complaint – has already begun arguing that Red Dead Redemption 2 has artistic relevance to the video game’s story line. For example, Rockstar Games’ Complaint argues that:
“[t]he inclusion of historical references to Pinkerton agents in Red Dead 2 is artistically relevant to the game, as Red Dead 2 is a game about the end of the Wild West era and Pinkerton agents played a key historical role therein.”
The Complaint even goes so far as to include pages of background information about the Pinkerton agents– including photographs – discussing the long history of the agency and its role in the Wild West era. This is all to show that it is artistically relevant to a Wild West game to include references to the Pinkerton agents.
With respect to point (ii), Rockstar Games has also already begun arguing that Red Dead Redemption 2 is not explicitly misleading to consumers, i.e., that consumers will not be confused into thinking that the Pinkerton agency prepared or otherwise authorized the video game. For example, Rockstar Games’ Complaint alleges that:
“…because of the Pinkerton National Detective Agency’s notoriety and key involvement in the Wild West, its agents have appeared in numerous creative works set in the Nineteenth Century and early Twentieth Century time period. In the works in which they appear, Pinkerton agents are often depicted capturing outlaws or acting as mercenaries in the Wild West.”
As another aside, although protected by “litigation privilege” – the ironically derogatory way in which the Complaint depicts the Pinkerton agency in the aforementioned quote, to wit, as having “notoriety,” (“the state of being famous or well known for some bad quality or deed”) might well be argued by the Pinkerton agency as reflective of the harmful impact of the depiction of the Pinkerton agency in the Red Dead Redemption 2 video.
Rockstar Games’ Complaint next contains many pages of allegations discussing various instances when the PINKERTON® brand appeared in artistic works such as books, films and television programs. Perhaps most notably, the Complaint even includes an image of the cover of Book 1 of Elizabeth Miller’s Pinkerton Detective Series as shown below which includes a subtitle noting that it is part of the author’s “Pinkerton Detective Series”:
Rockstar Games will likely argue that this plethora of – apparently – unauthorized use of the PINKERTON® brand will make it unlikely that the consuming public will be confused into believing that similar use in Red Dead Redemption 2 was prepared or otherwise authorized by the Pinkertons. Additionally, such use may present a future affirmative defense for Rockstar Games that the Pinkerton agency should be precluded from relief inasmuch as the agency apparently “sat on its hands” by failing to police its brand with respect to such creative works.
Our Thoughts:
As with many issues in intellectual property law, the lines in this case are somewhat blurred. On the one hand, a creative work could certainly make Constitutionally protected references to a historically important company such as the Pinkerton agency. On the other hand, it is also conceivable that a creative work could go “a step too far” by using the PINKERTON® brand to such a degree that consumers would be confused.
Here, we think this case will come down to whether a jury feels that the degree of Red Dead Redemption 2’s use of the PINKERTON® brand – viewed in light of past licensed and unlicensed use of such brand by third parties – is sufficient to confuse consumers into believing that Red Dead Redemption 2 was prepared or otherwise authorized by the Pinkerton agency.
Candidly, the Pinkerton agency will likely encounter difficulties in asserting that there is no artistic relevance in the use of the PINKERTON® brand given the historicity of Pinkerton agents and their role in shaping the Western frontier. However, based on reviewing the court documents filed thus far, our opinion is that the Pinkerton agency has a fair chance of prevailing on the second prong of the Rodgers test: showing consumer confusion. We think this is especially true since the Pinkerton characters appear in approximately 10% of the game’s “missions.”
We think this case is akin to:
- making a football video game about games played by a team from Pittsburgh in the late 1970s and early 1980s, then including players from the PITTSBURGH STEELERS® – who won four Superbowl Championships between 1975 and 1980 – in ten percent of the game’s missions; or
- making a video game about formulating different soda drinks set in historical Atlanta, Georgia, then having characters from the COCA-COLA® factory appearing in ten percent of the game’s missions.
Self-evidently, the NFL or the Coca-Cola Company would raise serious, well-founded objections to such use – and likely prevail. Just as self-evidently, such rights holders would object all the more vigorously if – as in the case of Red Dead Redemption 2’s portrayal of the Pinkerton agency characters – such use cast their brands in a negative (“notorious”) light.
Our firm will continue to monitor this case and report on future developments.
