In E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., the Ninth Circuit addressed the question of whether the producer of the video game "Grand Theft Auto: San Andreas" had a defense under the First Amendment to the claim of trademark infringement brought by the operator of a strip club in downtown Los Angeles called the Play Pen Gentlemen's Club.
In "Grand Theft Auto: San Andreas," the game depicts, in the words of the Ninth Circuit, "one or more dystopic, cartoonish cities" modeled after American urban areas including, as relevant to this case, Los Angeles. The game's version of Los Angeles, called "Los Santos," depicts various businesses such as liquor stores, ammunition dealers, bars and strip clubs, which were inspired, at least in part, from photographs of actual businesses in Los Angeles, including the Play Pen. The strip club in the game, however, was named the "Pig Pen" and lacked some of the characteristics of the Play Pen building.
Nonetheless, the operator of the Play Pen sued the producer of the game for trade dress infringement, unfair competition and trademark infringement under the Lanham Act and unfair competition under California state law claiming that the game "used Play Pen's distinctive logo and trade dress without its authorization and has created a likelihood of confusion among consumers as to whether [the plaintiff] has endorsed, or is associated with, the video depiction."
The producer of the game moved for summary judgment arguing the affirmative defenses of nominative fair use and the First Amendment. The District Court (Judge Margaret M. Morrow, who wrote a very thorough 55-page opinion containing a wealth of authority) rejected the nominative fair use defense but granted summary judgment to the game producer based on the First Amendment defense.
The Ninth Circuit agreed with the District Court, concluding that because the game's "Pig Pen" strip club did not use the actual trademarked Play Pen logo, the nominative fair use defense did not apply.
Applying the Second Circuit's test from Rogers v. Grimaldi, the Ninth Circuit also upheld the defendants' First Amendment defense to the strip club's trademark claims. Although traditionally, the test had been applied to uses of a trademark in the title of an artistic work (such as the song "Barbie Girl" in the Mattel, Inc. v. MCA Records, Inc. case), the Ninth Circuit concluded that it should also apply to the use of a mark in the body of the work, such as the "Pig Pen" strip club in the video game. Other than this clarification, the Ninth Circuit's application of the Rogers test was straightforward: the use of the mark had some artistic relevance to the work ("some" meaning the level of relevance must merely be more than zero); and the use of the mark did not explicitly mislead as to the source or content of the work. As to the latter point, the Ninth Circuit described its conclusion in creative fashion:
Both San Andreas and the Play Pen offer a form of low-brow entertainment; besides this general similarity, they have nothing in common. The San Andreas Game is not complementary to the Play Pen; video games and strip clubs do not go together like a horse and carriage or, perish the thought, love and marriage.
You can read the Ninth Circuit's opinion here (PDF, 11 pages).