Warner Brothers Keeps a “Clean Slate” in Trademark Infringement Case

Posted by on Sep 15, 2014

In a case stemming from the 2012 box office hit, The Dark Knight Rises, the U.S. Court of Appeals for the 7th Circuit granted Warner Brothers’ motion to dismiss allegations of trademark infringement made against it for a fictional software program appearing in its film. (Read the decision here)

Fortres Grand Corporation owns and sells Clean Slate, a computer security program that can restore a computer hard drive back to its original configuration. It is often used for public access computers in schools and libraries to ensure that all personal data stored on the machines are wiped clean.

Warner Brothers produced The Dark Knight Rises and Batman fans may recall that in the final installment of the trilogy, Catwoman conspires with the enemy in hopes of making all traces of her criminal past disappear. She promises the bad guy her services as a cat burglar in exchange for a fictional software program known as “the clean slate,” which would erase her criminal record from every database on earth. The clean slate program in the film was developed by the fictional “Rykin Data Corporation,” and two real websites were created in connection with Rykin. The sites were marketing tools for the movie, and contained descriptions of the clean slate program, but offered nothing for sale or download.

Following the film’s release, the Clean Slate software experienced a sharp decline in sales. Fortres Grand alleged that Warner Brothers’ use of term “clean slate” in its movie caused customers to mistakenly believe that the real Clean Slate software was illegal or fake. Fortres Grand filed suit, saying Warner Brothers’ use of “clean slate” was likely to cause confusion under Lanham Act § 32 (15 U.S.C. § 1114(1)(a)), Lanham Act § 43 (15 U.S.C. § 1125(a)(1)), and Indiana unfair competition law.

During trial Fortres Grand alleged that Warner Brothers’ use of the mark would cause confusion, but on appeal it changed directions with a “reverse confusion” argument. Traditionally, confusion occurs when a junior user – a user who comes later – has a product that is believed to have originated from the senior, or original, user. In a reverse confusion claim, the situation is simply the opposite. The senior user is mistakenly believed to have originated from the junior. This typically happens when the junior is a well-known brand.

Of note was the fact that Fortres Grand was alleging reverse confusion of its product with a non-existent program from a movie. The court acknowledged that parties have fought infringement cases against fictional products, but that the likelihood of confusion question should focus on the senior user’s product and the junior user’s creative work, i.e. The Dark Knight Rises movie as a whole, and not the fictional product in it.

Given this approach, the three-judge panel ruled that the dissimilarity between the parties’ goods, despite similarity of the marks, was not enough to uphold Fortres Grand’s claims, granting Warner Brothers its motion to dismiss. The court also focused on the fact that Warner Brothers only used the mark in its movie and on the fictional websites, and was never used for any real, competing product. The court showed little sympathy for Fortres Grand or its customers writing, “[w]hoever these unusually gullible hypothetical consumers are, Fortres Grand has not and could not plausibly allege that consumers are confused into thinking Fortres Grand is selling such a diabolical hacking tool licensed by Warner Bros.”