A federal district court has held that a fictional product in a movie that bears the same name as a real product is not trademark infringement. Fortres Grand Corp. v. Warner Bros. Entertainment Inc., Case No. 3:12-cv-535 (N.D. Ind. May 16, 2013) (available here). Fortres sued Warner Bros. for trademark infringement after the release of the Warner Bros. Batman film “The Dark Knight Rises.” Fortres manufactures and sells a software program called “Clean Slate” and argued that the movie’s reference to a fictional software program of the same name was trademark infringement. Warner Bros. moved to dismiss. The Court concluded that there was no trademark infringement and dismissed the case.
Fortres has marketed and sold the “Clean Slate” software since 2000. The software is designed to erase all evidence of user activity, thereby protecting the security of computer networks whenever a new user starts his or her computer activity. Fortres received a federal trademark registration in 2001 for “Clean Slate.” In the Warner Bros. movie, Selina Kyle (Catwoman) tried to track down a copy of a software to erase her criminal record from every computer in the world. The software is referred to four times in the movie as “clean slate.” As part of advertising, Warner Bros. created two websites to promote the film which are focused around the fictional company Rykin Data that created the “clean slate” software in the film.
The Court looked at the likelihood of confusion between Fortres’ “Clean Slate” software and Warner Bros. use of “clean slate” in the film. “A classic trademark infringement case involves ‘forward’ confusion in which the junior user attempts to capitalize on the senior user’s good will and established reputation by suggesting that his product comes from the same source as does the senior user’s product. . . For example, if a small technology company created software for managing spreadsheets and started selling it as ‘Excel,’ Microsoft – the senior user of that trademark – would no doubt file a suit on a theory of forward confusion.” Fortres, Slip Op. P. 6. However, this is not the case here. Fortres’ claims of trademark infringement are “reverse” confusion, which occurs when the junior user uses its size and market power to overwhelm the smaller senior user. “In order to state a claim for reverse confusion in this case, Fortres [ ] 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.” Fortres, Slip Op. P. 7.
The biggest issue with Fortres’ argument is that Warner Bros. “clean slate” software is fictional. “What Fortres [ ] does not (and cannot) argue is that it has been damaged by Warner Bros’ saturation of the market with its (fictional) ‘clean slate software.’” Fortres, Slip Op. P. 9. Fortres’ argument also fails because Warner Bros. real product is the movie and not the “clean slate” software. Thus, the Court concluded that in analyzing potential customer confusion, it would have to compare Fortres’ “Clean Slate” software to Warner Bros. “Dark Knight Rises” movie. The Court rejected Foretres’ claims because (1) “no consumer – reasonable or otherwise – can believe the fictional ‘clean slate’ software in the movie emanates from, is sponsored by, or connected to Fortres [ ] because the fictional software does not exist in reality” and (2) “no consumer – reasonable or even unreasonable – would believe that the “The Dark Knight Rises” itself is connected to Fortres.” Fortres, Slip Op. P. 12 – 13 (emphasis in original). Warner Bros. use of the term “clean slate” was not to identify the software or the movie. Instead, it was just part of the dialogue. The Court applied the same reasoning to the websites, finding that the use of “clean slate” was to indicate the film, not the fictional software.
The Court noted that even if there was customer confusion that Warner Bros. was protected by the First Amendment. In the overlap between trademark law and First Amendment rights, “the Lanham Act is inapplicable to ‘artistic works’ as long as the defendant’s use of the mark is (1) ‘artistically relevant’ to the work and (2) not ‘explicitly misleading’ as to the source or content of the work.” Fortres, Slip Op. P. 14. Here, Warner Bros. clearly met the first prong because the use of “clean slate” had artistic relevance both to the film and to the promotional websites. In fact, part of the plot line of the film is that Batman promises to help track down the “clean slate” software. Warner Bros. also met the second prong because the use of “clean slate” would not confuse customers into thinking that Fortres somehow was behind or sponsored the film. The Court concluded that this test applies to both forward and reverse confusion claims. Again, the Court applied the same reasoning to the Warner Bros. promotional websites and determined first that the websites were not commercial speech, and that they were protected by the First Amendment. The Court dismissed Fortres’ complaint.