TM/right of publicity mismatch claims another video game victim

Virag, SRL v. Sony Computer Entertainment America LLC, No.
3:15-cv-01729 (N.D. Cal. Aug. 21, 2015)
In yet another demonstration of the ridiculous mismatch
between right of publicity law and trademark law, Sony wins dismissal of
trademark claims for its use of a flooring company’s mark on a sign in its
racing game, but a claim of a right of publicity violation based on the
argument that the mark “personifies” the company’s principal survives,
including a claim for punitive damages for that alleged violation.
Virag is a successful Italian company in the commercial
flooring business.  Mirco Virag is one of
its owners and a professional racing driver with a number of victories on the
European Rally Circuit; he’s driven a Virag-sponsored car in the Rally of Monza
race in Monza, Italy.   Virag’s mark is
displayed on a bridge over the Monza track. 
Allegedly, in the international racing world, the Virag mark has become
a “personification” of Mirco Virag.
Sony makes race car driving simulation games under the name “Gran
Turismo.”  Gran Turismo 5 and 6 included
a simulated version of the Monza track, including the Virag mark on the bridge.  The games have sold over 13 million copies.  Virag and Mirco Virag allegedly received
negative feedback from Virag customers about the appearance of the Virag mark
in the games.
Sony allegedly excluded some other marks that appear at the
Monza Track from the game, but allegedly intentionally incorporated Virag’s
mark to create a false impression of sponsorship.  (Sigh.) 
Sony also got licenses or authorization from other mark owners to use
their marks, but not from Virag.  This
appropriation allegedly generated millions of dollars in revenue.  (Note that false advertising plaintiffs get
kicked out on the pleadings for making such ridiculous claims of damages.)
The Virag company’s right of publicity claim: A corporation
lacks a right of publicity.  No case
allows it, though groups of people may have rights of publicity they collectively
assign to a corporation.  Use of a mark
may implicate a real human being’s right of publicity if the mark identifies
that human being, but that doesn’t give the corporate markholder a right of
publicity in itself.
Mirco Virag’s right of publicity did survive, though the
court acknowledged that the facts alleged didn’t match previous right of
publicity cases.  Virag didn’t allege
that Mirco Virag’s name etc. appeared in the game; plaintiffs alleged that
Virag the mark identified flooring.  But White says that the issue is whether an
individual’s “identity” has been misappropriated, and plaintiffs alleged that,
in international racing, Virag the mark “personifies” Mirco Virag.  Virag has allegedly been using Mirco Virag’s
success at racing to promote itself as a flooring company for years.  And that’s enough to state a claim, at least
for purposes of a motion to dismiss.

A number of thoughts apart from the overall cry of agony: (1) Marketing and
linguistic research indicates that conceptual links are not necessarily bidirectional.
The alleged facts may well support the claim that Mirco Virag stands for Virag
the mark, but that doesn’t mean that Virag the mark stands for Mirco Virag. (Before
you say Motsenbacher, take a look at
the actual Motsenbacher ad.)  (2)  If ever there were a case for incidental use,
this would have to be it.  (3) Because
this claim is identity-based, it does not depend on Virag the mark being the
same, orthographically, as Mirco Virag’s last name.  On this theory, the use of “Microsoft”
implicates Bill Gates’ right of publicity; “Apple,” Steve Jobs; “Virgin,”
Richard Branson, etc.  (4) I can’t wait
for the next Donald Trump right of publicity case based on this theory.

  (5) Good luck applying this theory on summary
judgment!  How will we distinguish evoking
Virag-the-mark from evoking Virag-the-person? 
What evidence will be relevant? 
This is especially important because …

Virag’s trademark infringement/false designation of origin
claims were barred by the First Amendment. 
Continuing from previous paragraph: given that the First Amendment
absolutely protects references to Virag-the-mark, there are several significant
sub-issues.  Among them: Should there be
a heightened standard of proof to find that the reference is to Virag-the-person,
because if the reference is only to Virag-the-mark and the factfinder is wrong,
First Amendment-protected noncommercial speech is being suppressed?  Independently, suppose a factfinder
determines that, because Mirco Virag personifies Virag, there is no way to make
the First Amendment-protected reference to Virag without also making a
reference to Mirco Virag.  (That is,
after all, the logical consequence of the “personification” theory—any means of evoking Virag would invoke
Mirco Virag as well.)  If there is a
First Amendment right to make the trademark reference, shouldn’t that override
the right of publicity here?  (Of course,
it always should do so, but we need a case to say that.  This might actually be a good vehicle because
the TM/ROP doctrinal divide reaches peak ridiculousness here, which is not the
judge’s fault in this case.)

Anyhow, Rogers v.
controls.  Virag argued that
the games  had “no plot, no characters,
no dialog, and no meaningful interaction between the game player and the
virtual world,” but were just driving simulators.  Nope. 
They have “characters (the race car drivers), plot (the drama of the
races), and music. And there certainly is meaningful interaction between the
game player and the virtual world: how else would a game player play the games?
By not interacting with them?”  Brown
v. Electronic Arts
found that realistic simulations of American football
[nice one, judge!] were protected expressive works; so too here.
smo 6. They all are expressive works that qualify for First
Amendment protection.
Virag argued that Rogers
didn’t apply because the Virag mark didn’t have enough cultural significance to
be an integral part of our vocabulary, like Barbie.  That’s not a threshold for the Rogers test, as E.S.S. demonstrated when it applied Rogers to the Play Pen strip clup in L.A. despite the fact that the
mark had “little cultural significance.” 
Rogers can also be applied on
a motion to dismiss because the standard for artistic relevance is so low—it’s
an on/off test—and because the only limit is on explicit misleadingness, which can be judged on the face of the
“[G]iven the central role of realism to Gran Turismo 5 and
Gran Turismo 6, the defendants’ use of the VIRAG® mark has at least some (i.e.,
more than zero) artistic relevance to the games.”  The fact that Sony allegedly used the mark
for commercial gain was irrelevant as long as there was artistic relevance.
There were no plausible allegations of explicit misleadingness.  It was insufficient that, given their
involvement in the European racing scene, consumers could allegedly think that Virag
provided expertise and knowledge for the games or sponsored them. “The mere use
of a mark is not explicitly misleading, even if combined with consumer
confusion.”  Electronic Arts, Inc. v.
Textron Inc., No. C 12-00118 WHA, 2012 WL 3042668 (N.D. Cal. July 25, 2012),
was not to the contrary.  Textron refused to dismiss a claim
brought by Bell Helicopter about a helicopter focused game; it preceded Brown v. EA, where the Ninth Circuit “drove
home the point that a defendant must give an ‘explicit indication’ or make an ‘overt
claim’ or ‘explicit misstatement’ that causes consumer confusion.”  Plus, in that case, the helicopters were
allegedly a main selling point for the game (which shouldn’t matter, given Brown), whereas here the games are
racing games, not flooring games, and the Virag mark was “on a bridge over a
track and not on a car,” which “comes nowhere close to an explicit misstatement
as to source or content.”
However, Virag’s request for punitive damages for the right
of publicity violation survived. 
Punitive damages are available against a tortfeasor who has acted with “oppression,
fraud, or malice.” Malice is “conduct which is intended by the defendant to
cause injury to the plaintiff or despicable conduct which is carried on by the
defendant with a willful and conscious disregard of the rights or safety of
others.” In federal court, a plaintiff need not allege facts supporting the
punitive damages claim with particularity.
The allegations of the complaint that Sony “intentionally
and without authorization chose to incorporate the VIRAG® mark to create a
false impression of sponsorship or authorization” and that Sony obtained
licenses or authorization from other trademark holders to use their marks were
enough to fall within the definition of malice—conduct intended to cause injury
to the plaintiff.  But (1) those
allegations go to the trademark claims, not the right of publicity claims, and
the trademark claims are barred by the First Amendment; (2) relatedly, how
could there be malice as to the ROP given the First Amendment protection for
use of the mark to identify the mark owner?

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