This is Fiction, not Trademark Infringement: A Cat (Woman) in Need of a Clean Slate

The Seventh Circuit Court affirmed on August 14 that a fictional company or product cannot infringe the trademark of a real company or product. The case is Fortres Grand Corporation v.Warner Bros., no. 12-cv-00535.

Appellant Fortres Grand sells “Clean Slate,” a desktop management program which erases all evidence of user activity on a computer. It holds the registered trademark “Clean Slate” for computer software. Appellee Warner Bros. released in 2012 the Batman The Dark Knight Rises movie which features the fictional software program “clean slate.”

Fortres Grand noticed a decline in sales of the Clean Slate program after the movie was released and filed a trademark infringement suit against Warner Bros., claiming that its use of the words “clean slate” was both a source of consumer confusion and a source of reverse confusion. Warner Bros. moved to dismiss, arguing that a fictional product cannot infringe a trademark. In May 2013, the Northern District of Indiana granted the motion to dismiss. Fortres Grand appealed and the Seventh Circuit affirmed.

In the Batman movie, the character Selina Kyle, which is none other than Katwoman Catwoman, is in dire need of a software program to delete her criminal past. Fortunately, the fictional company Rykin Data has developed such program, which plays an important part in the plot as Bruce Wayne eventually acquires it after Catwoman is betrayed by a criminal organization which had promised her a copy in exchange for her professional and nefarious services. The program is referred to four times in the movie as “clean slate.” The fictional Rikin Data company was featured on social media (here for example), albeit by fans, not by Warner Bros., as specified in its response brief. One of such sites explains that “Rykin Data has developed the methods in which a software-based application can source the total sum of one's personal information archived on all databases and permanently purge this data, effectively granting the subject a clean slate within the digital world.”

My Data And I Are Wiped Out 

Reverse confusion occurs when consumers believe that it is the senior user which is infringing on the junior user’s trademark. In the Seventh Circuit, a plaintiff claiming reverse confusion must prove that the “large junior user [has] saturate[d] themarket with a trademark similar or identical to that of a smaller, senior user.” However, Warner Bros. had introduced a movie on the market, not a piece of software, and the software referred to in the movie was fictitious. The District Court reasoned that Fortres Grand could not have therefore been damaged by Warner Bros.’s saturation of the market. Also, Warner Bros. did not used the words “clean slate” to identify the source of the fictitious software product and, further, “no consumer – reasonable or even unreasonable – would believe that the The Dark Knight Rises itself is connected to Fortres Grand. “ For the Seventh Circuit, Fortres Grand failed to prove that consumers would be confused into thinking that its software “emanates from, is connected to, or is sponsored” by Warner Bros.

There was no likelihood of confusion either for the District Court, as both products were not similar. Fortres Grand argued on appeal that the court should have compared its “Clean Slate” software to the fictitious software developed by Rykin Data. But the Seventh Circuit was not convinced by this argument, quoting the 2003 Supreme Court Dastarv. Twentieth Century Fox case where the Court explained that “origin of the goods” in the Lanham Act means “the source of wares… [i.e.] the producer of the tangible product sold in the marketplace” (at 31). Therefore, it was indeed the movie which had to be compared with Appellant’s software. However, confusion could still be likely if the public would attribute a single source to both products, but the Seventh Circuit noted that both products are “quite dissimilar” and were also sold in different channels of trade.

This Duck Does Not Infringe Any Trademark 

The Seventh Circuit did not address the First Amendment issue, but the Northern District Court had also found that Defendant’s use of “Clean Slate” was protected by the First Amendment, citing the 1989 Rogers v. Grimaldi Second Circuit case. For the Second Circuit, the Lanham Act applies to artistic works “only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” However, First Amendment weights more in the balance if the use of trademark “has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless [it] explicitly misleads as to the source or the content of the work.” The District Court found that Warner Bros. had satisfied the two prongs of the Rogers test and thus found its use of “clean slate” protected by the First Amendment.

This is particularly welcome as “clean slate” is such a common expression. The Seventh Circuit noted that it is “commonly used  and ”is just one variation of a phrase (pinakis agraphos in Greek (often translated “unwritten tablet”) or tabula rasa in Latin (often translated “blank slate” or “scraped tablet”)) that traces its origins at least as far back as Aristotle and is often used to describe fresh starts or beginnings.” Allowing a trademark owner to prevent the use in a movie of a common expression would have had a chilling effect on free expression.

Source for the Acme image is The Complete Illustrated Catalog of ACME Products.