A recent US Court of Appeals decision (7th Circuit) in Fortres Grand Corporation vs. Warner Bros provides an interesting look at a trade-mark claim alleging that a fictional trade-mark in a major feature film violated trade-mark rights.
The plaintiff Fortres develops software known as Clean Slate, which is used on public computers to return the computer’s hard drive back to its original configuration upon reboot. Fortres holds a U.S. federal registered trade-mark for Clean Slate.
In Warner Bros.’ third and final instalment of the Batman movies, known as The Dark Knight Rises, one of Batman’s allies, Selina Kyle (Catwoman) begins the story as an unwitting pawn where she provides her services in exchange for a software program known as The Clean Slate which was developed by the fictional Rykin Data Corporation, and allows an individual to erase all traces of their criminal past from every data base on Earth, so that they can lead a normal life. But Catwoman is deceived and is told that the program does not exist. Batman’s alter ego, Bruce Wayne, had secretly acquired the program and ultimately provides it to Catwoman in exchange for her assistance.
In the closing scene of the movie we see that Catwoman has used the program to erase her criminal past and is now leading a normal life with Bruce Wayne.
As part of the marketing of the movie, two websites were created purporting to be affiliated with the fictional Rykin Data Corporation. These websites described The Clean Slate hacking tool and its operation, and showed an image of a fictional patent. Nothing was available for purchase or download from the sites, and they were purely too enhance the story of the fictional Gotham City universe.
After release of the movie, Fortres claimed it had a significant decline in sales and believed it was due to potential customers mistakenly believing it’s software product was illicit or phoney on account of the use of the name in the movie.
Warner Bros. successfully applied to have Fortres’ claim tossed out before trial, but Fortres appealed.
On appeal, Fortres argued that its claim was based on “reverse confusion”, where the first party in the marketplace (Fortres) suffers confusion due to a dominant “junior user” or later arrival in the marketplace; i.e. the dominance of the Warner Bros.’ movie would lead consumers to believe that Fortres’ software product was associated with Warner Bros.
The Court of Appeals did not like Fortres’ arguments. The Court found that the comparison must be between tangible products, namely Fortres’ software, and the movie, rather than the fictional software used in the movie’s story.
The Court assessed the various factors used in trade-mark confusion and stated that Fortres “has 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.”
The Court also found that someone visiting Fortres’ website is very unlikely to believe it is sponsored by Warner Bros.
The Court noted that the expression “clean slate” is just one variation of a phrase that traces its origins back to Greek philosophers, and its use is descriptively and suggestively broad and therefore Warner Bros’ use in the movie to describe a program that cleaned thae criminal’s slate is unlikely to cause confusion.
The Court stated:
Fortres has not and could not plausibly allege that consumers are confused into thinking that Fortres Grand is selling such a diabolical hacking tool licensed by Warner Bros. …
Trade-mark law protects the source-denoting function of words used in conjunction with goods and services in the marketplace, and not the words themselves. … Fortres Grand’s reverse confusion allegation – that consumers may mistakenly think Warner Bros. is the source of Frotres Grand’s software – is still “too implausible to support costly litigation”.
This decision shows that mere use of a fictional trade-mark, which may have some similarity to a real one in the marketplace, does not provide an easy avenue for a legal claim.