November 19, 2018
Originally posted 2018-11-19 11:19:46
By Christina Severino | amdlawgroup.com
The U.S. Court of Appeals for the Seventh Circuit recently affirmed that security software company Fortres Grand has failed to state an adequate claim for trademark infringement against Warner Brothers under the Lanham Act (15 U.S.C. §§ 1114 and 1125)and for unfair competition under Indiana law. The district court held that Fortres Grand did not assert a conceivable theory of consumer confusion. In addition, the court ruled that Warner Brothers’ First Amendment right in using the words “the clean slate” remains intact.
The case stems from Fortres’ claim that use of the words, “clean slate” in the film The Dark Knight Rises had a direct impact on the Fortres’ drop in sales of its software. Fortres claimed that use of this phrase by Warner Brothers caused confusion. “Clean Slate” is a security software program sold by Fortres Grand and is registered under Trademark Register Number 2,514,853.
In the film, character Selina Kyle (Catwoman) is promised access to a similar program by a corrupt organization, in exchange for her completing a task. This software (developed by the fictional “Rykin Data Corporation”) would essentially wipe her criminal record as a cat burglar. When she completed her obligations, the organization revealed to her that there was no such software. In response, Selina joins forces with Batman (Bruce Wayne) in order to stop this organization from detonating a nuclear core in Gotham City. Bruce Wayne later obtains this clean slate program and ends up giving Selina the software as a token for her help. In addition to the film itself, Fortres Grand also referenced in its complaint that there were two websites created, that describe the fictional Rykin Data Corporation’s clean slate hacking tool, along with an image of its fictional patent for the software. However, there were no options available on the website to purchase or download any software. Warner Brothers later claimed in its response that these websites were created by fans, not their company or affiliates.
In reaching its decision, the court’s analysis included discussion of the likelihood of confusion. Specifically, the court mentions that, “general confusion ‘in the air’ is not actionable.” The court concluded that a trademark claim such as this would have only been supported if there was confusion regarding, “origin, sponsorship, or approval of…goods” applied. Another theory offered by Fortres Grand was “reverse confusion,” which is described as a situation in which, “the senior user’s products are mistaken as originating from the junior user. As applied in this case, the senior users’ (Fortres Grand’s) products are being confused with the well-known junior user (Warner Brothers). Under this test, Fortres Grand would have to show that Warner Brothers’ use of “clean slate” in The Dark Knight Rises to describe the Rykin hacking software caused a likelihood of consumer confusion, resulting in customers believing that Fortres’ Clean Slate Software, “emanates from, is connected to, or is sponsored by,” Warner Brothers. Finally, among other theories raised on appeal, Fortres argued that (under the applicable 7-factor test for likelihood of confusion) that the second factor—The similarity of the products for which the name is used—was at issue. They claimed that even though the software is much different than movies, this fact alone is not controlling in considering the seven factors. In response, the court stated that the issue there would be, “whether the products are the kind the public attributes to a single source.” Dismissing these theories, the court affirmed Warner Brothers’ motion to dismiss.
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