Rebellion Developments Ltd. v. Stardock Entm't, Inc., Case No.: 12-12805

REBELLION DEVELOPMENTS LIMITED,CHRISTOPHER KINGSLEY and JASON KINGSLEY, Plaintiffs,

v. STARDOCK ENTERTAINMENT, INC.and IRONCLAD GAMES CORPORATION, Defendants

Case No.: 12-12805

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF MICHIGAN SOUTHERN DIVISION

Dated: May 9, 2013

Honorable Victoria A. Roberts

ORDER AND OPINION GRANTING DEFENDANTS'

MOTION TO DISMISS

I. INTRODUCTION

Plaintiffs Rebellion Developments Limited, Christopher Kingsley and Jason Kingsley (collectively "Plaintiffs") bring suit against Defendants Stardock Entertainment, Incorporated and Ironclad Games Corporation (together, "Defendants"). Plaintiffs allege that Defendants' computer game entitled SINS OF A SOLAR EMPIRE: REBELLION, infringes the registered trademark for their video game development company, REBELLION. Plaintiffs' Complaint contains the following counts: Count One, infringement of U.S. trademark under 15 U.S.C. §1114(1); Count Two, false designation of origin and unfair competition under 15 U.S.C. §1125(a); Count Three, violation of the Michigan Consumer Protection Act under M.C.L. § 445.903; and Count Four, common law unfair competition.

In their Motion to Dismiss, Defendants seek dismissal on the grounds that the First Amendment prohibits trademark claims for the use of a term in the title of an expressive work;Plaintiffs sue Defendants because one of their recently released computer games has the name REBELLION as part of its title. Defendants argue that the Complaint, along with its exhibits and other documents, cannot satisfy the two-prong test set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d. Cir. 1989).

The Motion to Dismiss is GRANTED. The Court finds that the Rogers test is controlling. Plaintiffs cannot satisfy either prong of the Rogers test in order to survive this motion to dismiss.

II. BACKGROUND AND PROCEDURAL HISTORY

Jason and Christopher Kingsley founded Rebellion Developments Limited in 1991 as a computer and video game development company. Since 1991, Rebellion has evolved into a well-known British computer games company, and has developed more than forty video games for major gaming consoles such as the Sony Playstation, the Xbox, and the Wii.

Plaintiffs own U.S. Reg. No. 2845116 ("the '116 registration") for the mark REBELLION for use with, among other things, "entertainment and amusement machines and apparatus, namely, video games and electronic games; discs, optical discs, silicon chips, microchips, electronic circuits all encoded with computer programs for video games and all for use with the aforesaid apparatus; musical sound recordings, program memory cartridges for electronic amusement, namely, video game apparatus; parts for the aforesaid goods" and "computer programming, computer software development services for others; providing on-line website information in the field of entertainment software and computer software development services for others; customization, maintenance of computer programs; computer software design and development." The '116 registration has a registration date of May 25, 2004 and a claimed date of first use in October 1994.

Defendant Ironclad Games Corporation ("Ironclad") is a computer game developer, and Defendant Stardock Entertainment Incorporated ("Stardock") is the exclusive publisher and distributor of Ironclad's computer games. Defendants recently released a new computer game called SINS OF A SOLAR EMPIRE: REBELLION, and offer it for sale on their websites and other third party websites. On many of these websites, Defendants, reviewers, and players sometimes refer to the computer game as REBELLION. There is some evidence of consumer confusion; a YouTube user mistakenly made reference to Plaintiffs as the developer of SINS OF A SOLAR EMPIRE: REBELLION.

On April 23, 2012, Plaintiffs sent Defendants a letter requesting that they cease and desist from using REBELLION for computer games. Defendants refused. Plaintiffs filed their four-count Complaint on June 26, 2012.

III. STANDARD OF REVIEW

To survive a motion to dismiss, a complaint must contain sufficient factual matter, accepted as true, to "a claim to relief that is plausible on its face." Ashcroft v. Iqbal, 556 U.S. 662, 678, (2009). A claim is plausible on its face "when the plaintiff pleads factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Id. This standard does not "impose a probability requirement at the pleading stage; it simply calls for enough fact to raise a reasonable expectation that discovery will reveal evidence of illegal [conduct]." Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 556 (1955). To determine whether the plaintiff has set forth a plausible claim, the Court "must construe the complaint liberally in the plaintiff's favor and accept as true all factual allegations and permissible inferences therein." Gazette v. City of Pontiac, 41 F.3d 1061, 1064 (6th Cir.1994).

In determining whether a complaint sets forth a claim plausible on its face, the Court may consider the pleadings, the exhibits attached to the complaint, and documents referred to in the complaint that are central to the plaintiff's claim. See Greenberg v. Life Ins. Co. of Va., 177 F.3d 507, 514 (6th Cir. 1999); Richmond Transp., Inc. v. Departmental Office of Civil Rights of U.S. Dept. of Transp., 11-13771, 2012 WL 1229947 (E.D.Mich. Apr.12, 2012). When reviewing a motion to dismiss, the district court may not consider matters beyond the complaint. Winget v. JP Morgan Chase Bank, N.A., 537 F.3d 565, 576 (6th Cir. 2008).

IV. APPLICABLE LAW AND ANALYSIS

A. The Rogers Test Is The Controlling Authority In Lanham Act Cases Involving Titles of Expressive Works

Defendants argue that when a trademark owner asserts that the title of an expressive work infringes that trademark, courts hold that the standards for trademark infringement must be altered to accommodate the First Amendment's protection for freedom of expression. In such instances, courts apply a two-pronged test formulated by the Second Circuit in Rogers v. Grimaldi. Under the Rogers test, the trademark owner must show either (1) the title of the expressive work has "no artistic relevance" to the work, or (2) that the title "explicitly misleads as to source or the content of the work." Rogers, 875 F.2d. at 999.

Plaintiffs argue that the Rogers test does not govern this dispute. Instead, they argue that the First Amendment does not automatically insulate all artistic works from liability under the Lanham Act, and may offer little protection for a competitor who labels its commercial good with a confusingly similar mark. They say that Defendants are using REBELLION as a trademark because Defendants, in fact, filed a trademark application for the mark. Plaintiffs also argue that Defendants use the title SINS OF A SOLAR EMPIRE: REBELLION to attract publicattention by placing it on their packaging, and in its marketing & advertising materials. Therefore, Plaintiffs say Defendants use REBELLION solely to identify a source. As such, they argue that the likelihood of confusion factors set forth in Wynn Oil Co. v. Thomas, 839 F.2d 1183 (6th Cir. 1988) should be used in determining the sufficiency of their allegations.

Rogers controls. First, it is well established in this Circuit and others that video games are expressive works. See Brown v. Entm't Merchants Ass'n, 131 S. Ct. 2729, 2733 (2011); E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc., 444 F.Supp.2d 1012, 1039 (C.D.Cal. 2006); Video Software Dealers Ass'n v. Maleng, 325 F.Supp.2d 1180, 1184 (W.D.Wash. 2004); James v. Meow Media, Inc., 300 F.3d 683, 696 (6th Cir. 2002).

Second, the Sixth Circuit adopted the Rogers test. See Parks v. LaFace Records, 329 F.3d 437, 450 (6th Cir. 2003) (holding that the likelihood of confusion and "alternative means" tests do not give sufficient weight to the public interest in freedom of expression); ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 937 (6th Cir. 2003) (finding Rogers the most appropriate method to balance the public interest in avoiding consumer confusion with the public interest in free expression).

Third, Plaintiffs' arguments against the use of the Rogers test are unpersuasive. The Rogers court itself recognized that the titles of literary and artistic works could acquire secondary meaning and become eligible for protection as trademarks. Rogers, 875 F.2d at 998. Rogers also did not include in its test, any inquiry as to whether the title can or does function as a source identifier. The Second Circuit acknowledged that "[t]itles, like the artistic works they identify, are of a hybrid nature, combining artistic expression and commercial promotion. The title of a movie may be both an integral element of the film-maker's expression as well as a significant means of marketing the film to the public. The artistic and commercial elements of titles areinextricably intertwined." Id. It is clear that the commercial nature of artistic works does not diminish their protections under the First Amendment, and the fact that a title attempts to attract public attention with stylized components is irrelevant.

Plaintiffs also argue that the cases Defendants cite in support of their argument all involve defendants who use a trademarked term as a direct reference to the plaintiff. In Rogers, for example, the defendant used the movie title "Ginger and Fred" because he intended to reference Ginger Rogers and Fred Astaire. Plaintiffs argue that because there is no indication of such reference here, the Rogers test does not apply. Plaintiffs say that Defendants are expressing nothing more than what any user of a suggestive trademark expresses when branding its product, and the Lanham Act's limitations on such expressions do not violate the First Amendment.

This argument is unavailing. This referential requirement is simply not required by either prong of the Rogers test. Further, many courts have applied Rogers where the defendants' usage...