The rapid development of computer games means that each year, more and more productions are being created, exploring diverse themes and offering players new ways to engage in virtual gameplay. Game developers strive to recreate the world presented in their games as accurately as possible. For this reason, many of them choose to incorporate trademarks registered to other entities into their games. Another reason developers may choose this approach is to enhance the game's appeal to players. Most automotive enthusiasts will be more interested in a racing game featuring real-world car brands.
When a game featuring third-party trademarks appears on the market, it will often trigger a reaction from that entity. It's worth recalling the nature of trademark protection. When registering trademarks with the Polish Patent Office or the European Union Intellectual Property Office (EUIPO), registration is made in the appropriate classes of the Nice Classification. This method of granting protection allows for the same trademarks to be registered in different classes by different entities. Thus, a beverage producer can register a given mark even though the same mark is already a trademark of a footwear manufacturer.
Therefore, theoretically, a computer game producer could also introduce a trademark into the game, provided it is not registered in classes covering products or services related to virtual gameplay, such as class 9 or 28. However, in light of court decisions that have recently appeared in many countries, the above does not seem so obvious.
In the case of the football manager game BDFL Manager, in which trademarks related to German football clubs were included, the court found that trademark infringement may occur in the event of similarity between the goods for which the trademarks were registered (in this case related to sports) and due to the possibility of misleading consumers.
American case law has developed the so-called Rogers Test, which has been used since the Rogers vs. Grimaldi ruling. This test aims to verify whether a balance has been struck between the protection of trademark holders and the protection of free speech guaranteed by the First Amendment to the United States Constitution. Applying the Rogers Test requires answering two questions:
- whether the use of a third party trademark has artistic significance
- if the answer to the above question is yes, is it intentionally misleading as to the source or content of the work?
In the light of the above test, the fulfilment of the condition in point one and the absence of the negative condition in point two means that there is no infringement.
This test has also been used in several cases concerning the placement of trademarks in computer games. The first of these cases ( ESS Entertainment 2000 v. Rock Star) concerned the computer game GTA: San Andreas, which featured a dance club called "Pig Pen Gentlemen's Club," which was inspired by the Los Angeles club "Play Pen." In this case, it was easy to conclude that the game developers met both conditions of the Rogers test, as including such a club in the game helped capture the atmosphere of that part of Los Angeles, and moreover, there was no possibility of the game's audience assuming that the club's owners were connected to the game's production.
Similarly, in the Dillinger, LLC v. Electronic Arts Inc. case, which concerned the inclusion of a firearm named Dillinger in a game, a reference to the criminal John Dillinger, the test was met. There was no evidence that Electronic Arts was likely to mislead the public, and the company's actions had artistic significance.
The situation was different in the Electronic Arts, Inc. v. Textron, Inc. . In that case, EA used combat helicopters in Battlefield 3, which in real life are manufactured by Textron. The court stated that the extensive use of helicopters in the game could create the false impression that Textron was involved in the game's production and had granted the developers a license. The Rogers test may not have been met here, but the case was nevertheless resolved amicably.
Polish case law currently lacks rulings addressing this issue. However, the dynamic growth of the computer gaming industry in Poland may lead to legal disputes on this matter. Despite the differences between the Polish and American legal systems, it's worth considering the aforementioned rulings when considering the subsumption of specific factual circumstances under applicable legal norms.
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