By Tamlin H. Bason
Warner Bros. Entertainment Inc. did not infringe a plaintiff's trademark when it used the registered term on a fictional product on its 2012 The Dark Knight Rises film, the U.S. District Court for the Northern District of Indiana held May 16 (Fortres Grand Corp. v. Warner Bros. Entertainment Inc., N.D. Ind., No. 3:12-cv-00535-PPS-CAN, 5/16/13).
The court noted that there was scant case law on whether a product that appears in a movie or on television, but is not sold in the real world, can result in a likelihood of confusion with a similar product of the same name that is actually sold to consumers. Nonetheless, the court determined that consumers were not likely to be confused for the simple fact that only one of the products--the plaintiff's--actually exists. The court therefore granted Warner Bros.' motion to dismiss.
Moreover, the court determined that even if the film's use of the trademark did constitute infringement, then such use would still be protectable under the First Amendment.
The Dark Knight Rises was the third and final installment of Warner Bros.' hugely popular Batman trilogy directed by Christopher Nolan. In the film, which was released in the United States in July 2012, Batman must save Gotham from a group of villains intent, among other things, on blowing up the city.
The Dark Knight Rises was the only movie in the trilogy to feature some of the familiar supporting characters from the Batman oeuvre, including Catwoman. Catwoman's alter ego is Selina Kyle and part of the movie's plot concerned Catwoman's attempts to attain from one of the villains a software program that would allow her to erase Kyle's presumably lengthy criminal history from official databases. These attempts were inspired by Kyle's desire to start fresh.
At four points in the film the software was referred to as the “clean slate” program. Also at various points in the movie characters indicated that the software was manufactured by Rykin Data. Although a fictional company, Warner Bros. created two websites for Rykin Data that fans could access in real life. The sites were continuations of the fictional world depicted in the movie. Both websites also included references to Rykin's clean slate software.
Fortres Grand Corp., had sold a software program under the Clean Slate name in the real world since 2000. Fortres Grand had registered the mark in 2001, and claimed to have generated millions of dollars in revenue from sales of the software.
Fortres Grand's software protects computer networks by essentially wiping clean all evidence of previous user's activity. As a result, each subsequent computer user begins with a “clean slate.”
Fortres Grand claimed that Warner Bros. had infringed its trademark by using the clean slate term to refer to a fictional product that was similar to Fortres Grand's own product. It asserted Lanham Act claims of trademark infringement and unfair competition, and an Indiana state law claim of unfair competition. Warner Bros. moved to dismiss.
Judge Philip P. Simon began his order by quoting from J. Thomas McCarthy's McCarthy on Trademarks and Unfair Competition. In that publication, McCarthy asked: “Is it trademark infringement if a fictional company or product in a movie or television drama bears the same name or brand as a real company or product?” 6 McCarthy on Trademarks and Unfair Competition § 31:149 (4th ed.). McCarthy went on to note that there is little case law on that subject.
“That's unfortunate because it is the exact question at the heart of this case,” the court here said.
After noting the lack of relevant guidance, the court turned to Fortres Grand's claims. Those claims, the court noted, all relied on a theory of reverse confusion--when a large junior user saturates the market with a trademark similar or identical to that of a smaller senior user--in which the court considers the same factors in its assessment as an ordinary likelihood of confusion analysis.
“In order to state a claim for reverse confusion in this case, Fortres Grand 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 Grand,” the court said, quoting Custom Vehicles Inc. v. Forest River Inc., 476 F.3d 481, 484, 81 U.S.P.Q.2d 1753 (7th Cir. 2007) (29 PTD, 2/13/07).
Fortres Grand had failed to meet that standard, the court determined. Indeed, “[T]he 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.”
The problem for Fortres Grand, the court noted, was that the clean slate software in The Dark Knight Rises “only exists in the fictional world of Gotham; it does not exist in reality.” The court said:
That distinction--between Warner Bros. real product (a movie) and its fictional product (software)--makes a world of difference because so much of the consumer confusion analysis depends on a comparison of the products at issue. In analyzing the potential for consumer confusion in this case, one must compare Fortres Grand's “Clean Slate” software to Warner Bros.' real product --The Dark Knight Rises.
The court then noted that “the few courts that have addressed this issue” have also chosen to compare the film or television show itself to the real-world brand, and not the on-screen depiction of a brand to the products sold under the trademark registration.
For instance, in Ocean Bio-Chem Inc. v. Turner Network Television Inc., 741 F. Supp. 1546, 16 U.S.P.Q.2d 1264 (S.D. Fla. 1990), Star Brite Distributing Inc. sued the producers of a movie for depicting a fictional company called “Starbrite Batteries” for trademark infringement. The court dismissed the claims after determining that there was no likelihood of confusion between the parties' respective products. In so holding, the court said that TNT's product--the movie--was “not even remotely similar” to Star Brite Distributing's products.
Similarly, Davis v. Walt Disney Co., 430 F.3d 901, 77 U.S.P.Q.2d 1309 (8th Cir. 2005) (234 PTD, 12/7/05), held that the registered trademark “Earth Protector” for printed publications distributed by an advocacy group bearing the same name was not infringed by a Disney movie using the name “Earth Protectors” for a fictional company.
“[A] movie designed for children's entertainment that airs on a national children's network is not so similar to an infrequently broadcast cable-access environmental advocacy television program that consumers are likely to believe that the two products came from the same source," Davis said.
Lastly, the court noted a refusal to issue an restraining order preventing the release of a children's movie in Caterpillar Inc. Walt Disney Co., 287 F. Supp. 2d 913, 68 U.S.P.Q.2d 1461 (C.D. Ill. 2003). In that case, the court said that it was highly doubtful that the manufacturer of Caterpillar heavy equipment will be able to demonstrate likelihood of confusion based merely upon the use of its trademark-bearing bulldozers by a villain in a children's movie.
In this case, the court said, “[T]here is simply no plausible claim that consumers will make 'mistaken purchasing decisions' about the 'tangible product' being sold in the marketplace: no one looking for Fortres Grand's software is likely to mistakenly buy a ticket to The Dark Knight Rises.”
The court said that the Rykin Data websites also did not establish use of a trademark. If a fan logging on to one of those websites, or in fact going to any website, that attempted to purchase Rykin's clean slate software “would quickly find that they are unable to do so because it is not a real product,” the court said.
Accordingly, the court determined that Warner Bros. was entitled to a dismissal of the complaint based on Fortres Grand's inability to demonstrate likelihood of confusion.
As an alternative ground for dismissal, the court examined the film's use of the mark under the First Amendment. For this analysis the court turned to a two-prong test set forth by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994, 10 U.S.P.Q.2d 1825 (2d Cir. 1989).
Under Rogers, the First Amendment protects the unauthorized use of a registered trademark if there is (1) some artistic relevance to the work and (2) the mark is not used in a explicitly misleading manner so as to cause confusion as to the source or content of the work.
Both prongs were met here, the court said. It was clear that Warner Bros.' use of the of term clean slate “has artistic relevance to both the film and the websites,” the court said. The second prong, too, was clearly satisfied as nothing in the film had suggested that Fortres Grand had sponsored or endorsed the use of the term in the movie, the court said. Accordingly, Warner Bros.' use of the term was protected expression under the First Amendment, the court said. It thus granted Warner Bros.' motion to dismiss.
Warner Bros. was represented by Keith V. Porapaiboon of Jenner & Block, Chicago. Fortres Grand was represented by Christopher R. Putt of May Oberfell Lorbe, Mishawaka, Ind.
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