Fortres Grand Corporation v. Warner Bros. Entertainment Inc.

The U.S Court of Appeals for the Seventh Circuit affirmed the dismissal of a trademark infringement claim, finding that a real computer software product was not similar to a movie that used an identical name for a fictional software product in the story.  Fortres Grand Corporation v. Warner Bros. Entertainment Inc., Case No. 13-2337 (7th Cir., Aug. 14, 2014) (Manion, J.).

Fortres Grand provides a desktop software management program called CleanSlate, which is used to wipe away private data from shared, public-access computers.  After Warner Bros used the words “the clean slate” to describe a computer hacking program in the movie, The Dark Knight Rises, Fortres noticed a drop in sales of its CleanSlate software and filed a trademark infringement suit against Warner Bros.  Fortres alleged trademark infringement under theories of “traditional confusion,” namely, that consumers would be confused as to the source of The Dark Knight Rises film, and “reverse confusion,” claiming that consumers would be confused as to the source of its CleanSlate software.

The district court dismissed the complaint, finding that Fortres failed to state a claim under either theory of infringement and held that Warner Bros. use of “clean slate” was protected by the First Amendment.  Fortres appealed, but only on the “reverse confusion” theory of trademark infringement, claiming that its prior, senior use of the CleanSlate trademark has been mistaken as originating from Warner Bros. based on Warner Bros later, junior use of “clean slate.”

On appeal, the 7th Circuit looked to its seven-factor test for finding a “likelihood of confusion” and noted that there is little authority on how to treat the “similarity of the products” factor when one of the products is fictional.  In reviewing the few relevant cases, however, the 7th Circuit found that it must consider the likelihood of confusion between the senior user’s CleanSlate software and the junior user’s creative film work and not any particular fictional software product within the film, as this approach comports best with the Supreme Court’s emphasis in Dastar that confusion must be analyzed with respect to the “tangible product sold in the marketplace.”  Nevertheless, the circuit court also noted that in determining the existence of a likelihood of confusion between products, the question is whether the products are of the kind that the public attributes to a single source.

The 7th Circuit cited a similar case involving Disney, where the movie studio sold licensed promotional goods bearing the TRON trademark in association with Disney’s TRON movie, and such use was found to infringe the prior use of TRON by a company that sold electrical fuses.  The circuit court distinguished the Disney case, finding that Warner Bros. did not sell any movie merchandise similar to Fortres’ software which bears the “clean slate” mark.  Therefore, the only products available to compare were Fortres’ software and Warner Bros.’ movie, which the court found to be “quite dissimilar,” even when taking into consideration the common practice of merchandising related to films.  The court explained that Fortres “alleged no facts that would make it plausible that a super-hero movie and desktop management software are ‘goods related in the minds of consumers in the sense that a single producer is likely to put out both goods.’”

Fortres argued that the district court had erred in relying on the weakness of a single likelihood of confusion factor (i.e., the similarity of the goods), but the 7th Circuit found that the allegations of reverse confusion were equally implausible in light of the other factors (with the exception of the similarity of the marks), including the strength of the mark and the fact that Warner Bros. “descriptive use” of the words “clean slate” in the movie’s dialogue to describe a program that cleans a criminal record is unlikely to cause confusion.  The court also rejected Fortres’ arguments that “internet chatter” by movie fans regarding whether The Dark Knight Rises “clean slate” program was real and could potentially work as depicted in the film constituted actual consumer confusion.

Finally, the 7th Circuit noted that Fortres’ fundamental complaint was really one of dilution since it was claiming that Warner Bros. use of “clean slate” had tarnished its CleanSlate trademark by associating it with illicit software.  But, the court properly stated that “reverse confusion” could not be used to extend dilution protection to a non-famous trademark.  Accordingly, the court affirmed the district court’s ruling that Fortres failed to plausibly allege confusion and, as such, the court also noted that it was unnecessary to consider Warner Bros. claims that its use of “clean slate” was protected under the First Amendment.