A recent US Court of Appeals decision (7th Circuit)
in Fortres Grand Corporation vs. Warner Bros provides an
interesting look at a trade-mark claim alleging that a fictional
trade-mark in a major feature film violated trade-mark
The plaintiff Fortres develops software known as Clean Slate,
which is used on public computers to return the computer's
hard drive back to its original configuration upon
reboot. Fortres holds a U.S. federal registered trade-mark
for Clean Slate.
In Warner Bros.' third and final installment of the Batman
movies, known as The Dark Knight Rises, one of
Batman's allies, Selina Kyle (Catwoman) begins the story as an
unwitting pawn where she provides her services in exchange for a
software program known as The Clean Slate which was developed by
the fictional Rykin Data Corporation, and allows an individual to
erase all traces of their criminal past from every data base on
Earth, so that they can lead a normal life. But Catwoman is
deceived and is told that the program does not exist.
Batman's alter ego, Bruce Wayne, had secretly acquired the
program and ultimately provides it to Catwoman in exchange for her
In the closing scene of the movie we see that Catwoman has used
the program to erase her criminal past and is now leading a normal
life with Bruce Wayne.
As part of the marketing of the movie, two websites were created
purporting to be affiliated with the fictional Rykin Data
Corporation. These websites described The Clean Slate hacking tool
and its operation, and showed an image of a fictional
patent. Nothing was available for purchase or download from
the sites, and they were purely to enhance the story of the
fictional Gotham City universe.
After release of the movie, Fortres claimed it had a significant
decline in sales and believed it was due to potential customers
mistakenly believing it's software product was illicit or
phoney on account of the use of the name in the movie.
Warner Bros. successfully applied to have Fortres' claim
tossed out before trial, but Fortres appealed.
On appeal, Fortres argued that its claim was based on
"reverse confusion", where the first party in the
marketplace (Fortres) suffers confusion due to a dominant
"junior user" or later arrival in the marketplace;
i.e. the dominance of the Warner Bros.' movie would lead
consumers to believe that Fortres' software product was
associated with Warner Bros.
The Court of Appeals did not like Fortres' arguments.
The Court found that the comparison must be between tangible
products, namely Fortres' software, and the movie, rather than
the fictional software used in the movie's story.
The Court assessed the various factors used in trade-mark
confusion and stated that Fortres "has alleged no facts that
would make it plausible that a super-hero movie and desktop
management software are goods related in the minds of consumers in
the sense that a single producer is likely to put out both
The Court also found that someone visiting Fortres' website
is very unlikely to believe it is sponsored by Warner Bros.
The Court noted that the expression "clean slate" is
just one variation of a phrase that traces its origins back to
Greek philosophers, and its use is descriptively and suggestively
broad and therefore Warner Bros' use in the movie to describe a
program that cleaned the criminal's slate is unlikely to cause
The Court stated:
Fortres has not and could not plausibly allege that consumers
are confused into thinking that Fortres Grand is selling such a
diabolical hacking tool licensed by Warner Bros. ...
Trade-mark law protects the source-denoting function of words
used in conjunction with goods and services in the marketplace, and
not the words themselves. ... Fortres Grand's reverse confusion
allegation – that consumers may mistakenly think Warner Bros.
is the source of Frotres Grand's software – is still
"too implausible to support costly litigation".
This decision shows that mere use of a fictional trade-mark,
which may have some similarity to a real one in the marketplace,
does not provide an easy avenue for a legal claim.
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guide to the subject matter. Specialist advice should be sought
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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