Someone needs to put a stop to this kind of nonsense.
In The Dark Knight Rises, a few references are made to a fictional software product known as “clean clate,” which can erase all information about a person’s past. This is handy if you are Catwoman and you live in a fictional comic-book universe.
Fortres Grand (yes, apparently that’s how they spell it) is a software company that sells a product, named “Clean Slate,” which erases the data on an individual computer. It’s been on the market since 2000. Since 2001, they’ve held a USPTO trademark registration for the mark CLEAN SLATE for “Computer software used to protect public access computers by scouring the computer drive back to its original configuration upon reboot.”
Fortres Grand sued Warner Bros., the makers of the movie, claiming trademark infringement based on WB’s use of the words “clean slate” in the movie and on 2 movie-related websites*. That’s correct, they claimed that the reference to an imaginary product in a movie infringed their actual, real world trademark rights.
In May 2013, a federal District Court judge in Indiana dismissed the case on the grounds that there was no likelihood of confusion because WB’s product was a film, not a piece of software (at least not in the same sense).
The core of Fortres Grand’s claim was “reverse confusion.” In a typical trademark infringement case, the Senior User (here, Fortres Grand) has a well-known brand, and the Junior User (WB) attempts to trade off the goodwill of that brand. That doesn’t apply here, as few people have heard of Fortres Grand’s Clean Slate product relative to the number of people who are aware of the movie.
Reverse confusion, on the other hand, occurs when the Junior User is more well-known. From the 2013 ruling:
[I]n a reverse confusion case, the “large junior user saturates the market with a trademark similar or identical to that of a smaller, senior user”such that “the public comes to assume that the senior user’s products are really the junior user’sor that the former has become somehow connected to the latter.”
In order to state a claim for reverse confusion in this case, Fortres Grand has to make plausible allegations that Warner Bros. saturated the market with a product that the public has been “deceived into believing . . . emanates from, is connected to, or is sponsored by” Fortres Grand…the fatal flaw in Fortres Grand’s case has to do with correctly identifying the exact product that Warner Bros. has introduced to the market – a film, not a piece of software…
There’s an obvious problem with Fortres Grand’s argument…: Warner Bros. “clean slate” software only exists in the fictional world of Gotham; it does not exist in reality. This may seem to be a small point, but it has big ramifications for the consumer confusion analysis, which become apparent once you realize the argument that Fortres Grand has not made – and cannot make.
…Fortres Grand’s only claim in this regard is that it has been damaged by Warner Bros’ saturation of the market with its “its big-budget film and its promotional websites.” What Fortres Grand does not (and cannot) argue is that it has been damaged by Warner Bros’ saturation of the market with its (fictional) “clean slate software.”
That distinction – between Warner Bros. real product (a movie) and its fictional product(software) – makes a world of difference because so much of the consumer confusion analysis depends on a comparison of the products at issue. In analyzing the potential for consumer confusion in this case, one must compare Fortres Grand’s “Clean Slate” software to Warner Bros.’ real product – The Dark Knight Rises.
The court also found that WB was entitled to a 1st Amendment defense on the grounds that the use was artistically relevant and was not “explicitly mislead[ing] as to the source or the content of the work.”
Fortres Grand appealed the decision as it applied to reverse confusion without bringing up the 1st Amendment defense. On August 14, 2014, the 7th Circuit Court of Appeals upheld the District Court’s ruling in favor of WB. Notably, the court stated:
It is…plausible that entertainment-based products could be confused as being affiliated with (by means of licensing) the same source as a movie.
So, to answer the question posed in the title of this blog post, yes, I suppose it’s possible that fictional products could infringe real-world trademarks if the circumstances led audiences to believe that the use of the mark was licensed.
The Court of Appeals cited a 1986 case, McGraw-Edison v. Walt Disney Prods., in which Disney produced TRON-branded telephones. McGraw-Edison had been making electrical fuses with the same brand name. The court in that case found that there could be a trademark claim based on likelihood of confusion. But that was clearly a different situation – WB isn’t making “Clean Slate” brand desktop software. The current case relates only to brief references to the name in the movie, and, possibly, on a few websites.
OK, so Batman won. Why did I start this blog post off with “Someone needs to put a stop to this kind of nonsense”? In this case, WB has all the money in the world to defend its position. But what if Fortres Grand had leveled the same charges against a small, independent film studio, comic book publisher, or other type of artist? Would they have a few hundred grand lying around to take this kind of matter to the Court of Appeals? Probably not.
Trademark owners need to recognize the reasonable limits of their claims. No consumers would make the leap between a product mentioned in a fictional superhero movie and an obscure real-world product with a very different set of features. That’s not what trademark law is all about, and it was foolish of Fortres Grand to waste their time and money – and that of WB – on such a frivolous claim.
* It’s possible that the websites were actually created by fans, but that’s not really relevant to the core point here.