Holy trademark non-infringement, Batman!

August 14, 2014

From today’s Fortres Grand Corp. v. Warner Bros. Entertainment, Inc. (7th Cir. Aug. 14, 2014) (some paragraph breaks added):

Fortres Grand develops and sells a security software program known as “Clean Slate.” It also holds a federally registered trademark for use of that name to identify the source of “[c]omputer software used to protect public access computers by scouring the computer drive back to its original configuration upon reboot.”

As the description in the trademark registrations suggests, the program wipes away any user changes to a shared computer (wiping the slate clean, so to speak). It is the kind of program that might be used at schools, libraries, hotels, etc., to keep public computers functioning properly and free of private data. Because a desktop management program is security software, its single most important characteristic is its trustworthiness. Fortres Grand had been able to establish its Clean Slate software in the marketplace as a trustworthy program.

In July 2012, Warner Bros. released The Dark Knight Rises, the third and final installment in a film depiction of the comicbook hero Batman. The film was an immense commercial success. In the film, Batman and his allies battle a shadowy organization hell-bent on the destruction of Gotham City, Batman’s home town. One of Batman’s allies, the antihero Selina Kyle (Catwoman), begins the story as an unwitting pawn of the shadowy organization. In exchange for her unique services as a cat burglar, the organization agrees to give her a software program known as “the clean slate,” which was developed by “Rykin Data Corporation” and enables an individual to erase all traces of her criminal past from every database on earth so that she may lead a normal life (that is, to wipe her slate clean)….

Additionally, as part of the marketing of the movie, two websites were created purporting to be affiliated with the fictional Rykin Data Corporation. The websites contained descriptions of the clean slate hacking tool and its operation and an image of a fictional patent. Nothing was available for purchase or download from the websites — they were purely an informational extension of the fictional Gotham City universe.

After the film was released, Fortres Grand noticed a significant decline in sales of its Clean Slate software. It believes that this decline in sales was due to potential customers mistakenly believing that its Clean Slate software is illicit or phony on account of Warner Bros.’ use of the name “the clean slate” in The Dark Knight Rises. Accordingly, Fortres Grand filed suit alleging that Warner Bros.’ use of the words “clean slate” in reference to the software in its movie infringed Fortres Grand’s trademark … The district court concluded that Fortres Grand had not alleged a plausible theory of consumer confusion, upon which all of its claims depend, and that Warner Bros.’ use of the words “the clean slate” was protected by the First Amendment. Fortres Grand appeals.

The Seventh Circuit held for Warner Bros., but without having to reach the First Amendment issue. Rather, the court held that Fortres Grand didn’t have a valid trademark claim: The only one of Fortres Grand’s legal theories still in play, “reverse confusion,” required a finding “that consumers may mistakenly think Warner Bros. is the source of Fortres Grand’s software,” and such a finding was so implausible that the case was rightly dismissed.

It may be that what Fortres Grand was really worried about is that Warner Bros.’ use of the term “clean slate” would taint Fortres Grand’s “Clean Slate” mark, and make it seem less appealing or less distinctive (though if it wanted distinctiveness, it should have used a less common term than “clean slate”).

But this sort of “trademark dilution” claim requires that the mark be a “famous mark,” something that’s likely not true of Fortres Grand’s mark. And this sort of trademark dilution claim is likely unavailable for uses of a trademark within a song, a movie and the like (see Mattel v. MCA Records (9th Cir. 2002), the “Barbie Girl” case). Even trademark confusion claims are often preempted either by statutory or First Amendment considerations when the trademark is used within such a work; but trademark dilution claims are even more clearly barred in such situations. Probably for these reasons, Fortres Grand litigated only a confusion claim, not a dilution claim, and the Seventh Circuit concluded that “it would not be appropriate to use a contorted and broadened combination of the ‘reverse confusion’ and ‘related products’ doctrines to extend dilution protection to non-famous marks which are explicitly excluded from such protection by statute.”

The Seventh Circuit opinion also includes — likely facetiously — a “spoiler alert,” but this is actually the second court opinion to include a “spoiler alert” related to a movie. (The first was just a few months ago, State v. Molner (Wisc. Ct. App. June 3, 2014), related to “Primal Fear.”) It may be the first court opinion, though, to discuss Batman’s alternate transterrestrial contacts: “Unlike other depictions of Batman, such as his appearance in the Justice League comics, there are no alien races from other planets, so wiping all traces of oneself from earth’s databases is sufficient.”

The UCLA First Amendment Amicus Brief Clinic, which I run, filed a friend-of-the-court brief on behalf of the Electronic Frontier Foundation, supporting Warner Bros.; you can see it here. I should also acknowledge that I am indeed badly mixing sub-mythoses here, between the case, the headline, and the image on the blog front page.

Eugene Volokh teaches free speech law, religious freedom law, church-state relations law, a First Amendment Amicus Brief Clinic, and tort law, at UCLA School of Law, where he has also often taught copyright law, criminal law, and a seminar on firearms regulation policy.
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