Ninth Circuit Backs Client Sony in "Gran Turismo" Trademark Dispute

October.23.2017

Finding in favor of Orrick clients Sony Interactive Entertainment America LLC and Sony Interactive Entertainment Inc., a federal appeals court has concluded that Sony’s “Gran Turismo” video games are protected as expressive works under the First Amendment and therefore not subject to the trademark infringement claims raised by VIRAG SRL, a European flooring company.

In an Oct. 20 ruling, the United States Court of Appeals for the Ninth Circuit considered the appearance of a VIRAG banner in the popular video game’s rendition of the Monza racing track in Italy. Ending a three-year-old trademark infringement suit, the unanimous three-judge panel relied on U.S. Supreme Court and Ninth Circuit precedent to conclude that the Gran Turismo game is expressive speech protected by the First Amendment:

“Because the Gran Turismo video games contain expressive elements such as characters, plot, music, and extensive interactions between players and the games’ virtual world, they qualify as expressive works and are entitled to First Amendment protection.”

The court applied the two-part test set forth by the Second Circuit in Rogers v. Grimaldi to find that the First Amendment bars VIRAG’s trademark claim, concluding that the use of the VIRAG mark both furthers the goal of “realism,” “a legitimate artistic goal,” and did not make any “explicit misstatement” that would cause consumer confusion.

Partner Lisa T. Simpson led the Orrick team, which included associates Hannah Garden-Monheit and Briggs M.Wright and former Orrick associate Ian Fein.

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Lisa T. Simpson Partner, Intellectual Property, Trademark, Copyright & Media

New York

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Practice:

Technology & Innovation Sector
Life Sciences Sector
Intellectual Property
Trademark, Copyright & Media
Complex Litigation & Dispute Resolution
Mass Torts & Product Liability

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Lisa T. Simpson Partner

New York

Lisa has been recognized as one of the "Top 250 Women in IP" by Managing Intellectual Property and has received accolades from American Lawyer, Benchmark Litigation, The Legal 500 USA and New York Times Magazine with World Trademark Review 1000 noting that Lisa “marries a rich comprehension of IP law with a gift for connecting with people, making full use of each advantage in the courtroom.” Lisa was recently named to Lawdragon's 500 Leading Litigators in America list.

Trial Experience

Lisa has served as trial counsel across a wide range of matters. She recently served as co-lead trial counsel in a case in Delaware Chancery Court in a dispute over corporate control and ownership. She is currently serving as lead trial counsel in an energy distribution contract and rate dispute in North Dakota. Lisa also served as trial counsel for Oracle in its dispute with Google over the Java APIs in Android phones in the Northern District of California and served as trial counsel in a matter involving the trade dress of a hip implant medical device in the District of Colorado. Lisa has also served as trial counsel in a number of product liability matters involving allegations concerning talc, analgesics and herbicides.

Intellectual Property

Lisa handles a variety of high-profile trademark, trade secret, and copyright matters. Lisa’s copyright experience includes some of the leading copyright cases of the past decade: she represented Oracle in its litigation with Google over the Java APIs, represented DISH Networks, LCC in its copyright litigation with the broadcast networks over various features offered by DISH’s Hopper DVR, including AutoHop and Sling and served as counsel to Supap Kirtsaeng before the U.S. Supreme Court on the issue of the copyright first sale doctrine’s applicability to goods manufactured abroad.

Lisa’s trademark and trade secret litigation has spanned a variety of courts and industries: she successfully defended trademark infringement claims in the Northern District of California on behalf of Sony over its popular “Gran Turismo” racing video game and scored two separate wins in the Southern District of New York and then in the Second Circuit on behalf of client Sanei in trademark litigation brought by fashion designer Jill Stuart. Lisa also successful established secondary meaning and secured a preliminary injunction for the New York City Triathlon in S.D.N.Y. Lisa also represented a major pharmaceutical and healthcare company in trade secrets litigation concerning multi-payor coordination of prescription drug benefits loyalty cards.

Products Liability and Consumer Class Action

Lisa serves as counsel to Johnson & Johnson, Chanel, and Avon in cases asserting claims arising from the use of its talcum powder products, including claims of mesothelioma and ovarian cancer. She also represented Wyeth and Dow Agrosciences in a variety of complex products liability and consumer class action litigations. Lisa served as counsel in hundreds of product liability matters concerning injuries allegedly associated with childhood vaccines, handled litigations involving the labeling and advertising of Advil, and obtained the dismissal, prior to class certification, of a consumer class action in a matter concerning the calcium supplement Caltrate.

Current Pro Bono Representation

Lisa served as trial counsel for Planned Parenthood of Indiana and Kentucky, securing an important trial win invalidating as unconstitutional a statewide law that jeopardized access to safe and legal abortion services in Kentucky.
Lisa also has served in a variety of firm management roles, including on the Firm’s Management Committee, as Hiring Partner for the New York office as well as Partner-in-Charge of Firmwide Campus Recruiting and as a member of the Professional Development Committee.