There’s no trademark infringement where a fictional company or product portrayed in a film has the same name as an actual company or product, a federal court in Indiana has determined. In South Bend, the U.S. District Court granted Warner Brothers’ motion to dismiss the trademark infringement case filed by Fortres Grand Corp., which claimed the Batman film The Dark Knight Rises referred to its “Clean Slate” computer software, causing consumer confusion.
Clean Slate, which plaintiff Fortres manufactures and secured a federal trademark for in 2001, protects the security of a computer by erasing all evidence of user activity so others who follow on a device can’t see it.
This case arises in references to a fictional computer program called “clean-slate” in Warner’s 2012 Batman film, in which Selina Kyle, the character who becomes Catwoman, tries to get her paws on software to scrub her criminal history from computer databases around the world. The fictional software program is designed by “Rykin Data” and is referred to four times in the film. Two websites – rykindata.com and rykindata.tumblr.com – were created to promote the film. Fortes sued Warner Brothers, asserting trademark infringement and unfair competition under the Lanham Act.
The studio moved to dismiss the case, described by the court as a classic infringement claim involving “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.”
However here, Fortres puts forth a theory of “reverse” confusion, where 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’s or that the former has become somehow connected to the latter.”
The concept of reverse confusion is illustrated in Big O Tire Dealers Inc. v. Goodyear Tire & Rubber Co., where Goodyear Tire started selling a new radial tire under the trademark “Bigfoot,” when Big O Tire was already selling a tire under that name. Big O sued on a theory of reverse confusion and won a jury verdict, affirmed in the U.S. Court of Appeals for the Tenth Circuit.
In the current Indiana case, U.S. District Judge Philip Simon found that Fortres failed to state a claim for reverse confusion, saying: “I think 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.” Warner’s “clean slate” software only exists in the fictional world of Gotham; it does not exist in reality, therefore Fortres couldn’t argue that it had been damaged by Warner Bros.’ saturation of the market with its (fictional) “clean slate software.” Instead Fortres argued it had been damaged by Warner’s saturation of the market with “its big-budget film and its promotional websites.”
Simon looked to cases such as Ocean Bio-Chem Inc. v. Turner Network Television Inc., where the court found the proper comparison for a likelihood of confusion analysis was between “real” products offered by each side. Here, the court found no consumer, reasonable or otherwise, could 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 if consumer sought to buy the software mentioned in the film, that would be impossible because it doesn’t exist. Similarly, the court found no consumer, reasonable or even unreasonable, would believe that The Dark Knight Rises itself is connected to Fortres because the plaintiff isn’t in the movie-making business.
Simon agreed with Warner’s claim that, even if there was potential consumer confusion, its work is protected by the First Amendment. Citing Rogers v. Grimaldi, where plaintiff claimed that defendant’s film, Ginger and Fred, created the false impression that Ginger Rogers was associated with the work, the U.S. Court of Appeals for the Second Circuit found that First Amendment interests trumped trademark claims. In this case, Warner Brothers has satisfied both prongs of the Rogers test, showing “artistic relevance” and that the film’s use of “clean slate” is not “explicitly misleading as to the source or the content of the work.”