The Dark Knight Rises, the latest "Batman" film released by Warner Brothers Entertainment Inc. ("Warner Bros."), grossed more than $1 billion worldwide and currently stands at eighth place on the all-time worldwide box office charts.  However, the film has at least one detractor: Fortres Grand Corporation ("Fortres"), the manufacturer and retailer of a computer software program called "Clean Slate."

In September 2012, Fortres sued Warner Bros. for trademark infringement and unfair competition stemming from Warner Bros.' use of "clean slate" in The Dark Knight Rises to describe a fictional software program.  The case addresses an interesting question: What are a party's rights when the name of its real trademarked product or brand is used for a fictional product or brand in a fictional setting?

In The Dark Knight Rises, the fictional "clean slate" software program was able to erase online references to the criminal history of the character known as "Catwoman."  Warner Bros. also referred to the fictional "clean slate" software on two promotional websites which purported to feature information about the software.  Since 2000 Fortres has used the mark CLEAN SLATE for a software product that erases evidence of prior user activity on computer networks. The company obtained a federal trademark registration for CLEAN SLATE in 2001.

After Fortres sued Warner Bros. for trademark infringement and unfair competition under the Lanham Act and unfair competition under Indiana state law, Warner Bros. moved to dismiss all claims.  Noting the surprisingly scant amount of case law addressing the issue, the Court dismissed Warner Bros.' claim for trademark infringement on the grounds that there was no plausible claim for consumer confusion and the use was protected by the First Amendment.

Fortres argued that Warner Bros.' use of "clean slate" created "reverse confusion" by causing consumers to believe that Fortres' software emanated from or was otherwise connected to or sponsored by Warner Bros.  However, the Court noted that trademark law protects against consumer confusion only in the context of purchasing decisions and not against consumer confusion generally.  No consumer can believe that Warner Bros.' fictional software emanates from, is sponsored by or is connected to Fortres (for the sole reason that such software does not exist and thus cannot be purchased).  Thus the Court found the relevant question to be whether Warner Bros.' use of "clean slate" in the film and/or on its promotional websites would cause consumers to mistakenly connect Fortres' software with the actual product offered by Warner Bros., namely the film The Dark Knight Rises.  The court found such consumer confusion unlikely.

The Court also held that Warner Bros.' use of "clean slate" is protected by the First Amendment regardless of whether consumer confusion could exist.  Under the oft-cited case Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), the Second Circuit found the Lanham Act inapplicable to an "artistic work" where the defendant's use of the name or mark in connection with the work is (1) "artistically relevant" and (2) not "explicitly misleading" as to the work's source or content.  Here, the court found that Warner Bros.' use of "clean slate" satisfied both prongs of the test. That this case involved reverse confusion rather than the forward confusion at issue in Rogers was irrelevant.

If followed elsewhere, the Fortres case will be seen as a victory for producers and publishers seeking to use trademarks in creative content.  The full opinion can be read here.

This article first appeared in Entertainment Law Matters, a Frankfurt Kurnit legal blog.

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