Fortres Grand v Warner Bros: wiping clean trademark-based challenges to fictional marks

United States of America

Trademark-based challenges to the content of creative works under US law generally have ended badly for the challengers. In many cases, this has been because of judicial sensitivity to free speech concerns, but those concerns have not always driven victories for the defendants.

A recent example of this phenomenon can be found in the opinion of the US Court of Appeals for the Seventh Circuit in Fortres Grand Corp v Warner Bros Entertainment Inc (No 13-2337, 2014 WL 3953972, August 14 2014). Although affirming the dismissal of an infringement claim against a fictional trademark for an equally fictional product, the court did not base its decision on a perceived need to protect the defendant’s constitutional right to free expression. Instead, it applied the same analysis as it might in any other context to affirm a holding of non-infringement as a matter of law.

The litigation in Fortres Grand was initiated by the owner of the federally registered CLEAN SLATE mark, which the registrant used in connection with computer software that removed private data from publicly shared computers. The subject of the plaintiff’s ire was a subplot in the motion picture The Dark Knight Rises, which depicted efforts by the character Batman to save his hometown of Gotham City from destruction and which had been produced and distributed by the defendant. The subplot turned on the existence (or non-existence) of a software program developed by the fictional Rykin Data Corp and referred to by the characters in the movie as “the clean slate”. Beyond those references, the defendant established two websites to promote its film, which, the court noted, “contained descriptions of the clean slate hacking tool and its operation and a fictional patent. Nothing was available for purchase or download from the websites - they were purely an informational extension of the fictional Gotham City universe”.

The trial court concluded solely on the basis of the plaintiff’s complaint that the defendant’s use of 'clean slate' did not infringe the plaintiff’s rights because that use created a likelihood of confusion with the plaintiff’s CLEAN SLATE mark, and the Seventh Circuit affirmed. Rather than expressly taking into account whether the defendant’s film qualified as constitutionally protected free speech, the appellate court invoked its usual test for likely confusion, which took into account:

  1. the similarity between the parties’ marks;
  2. the similarity between the parties’ products;
  3. the area and manner of the marks’ concurrent use;
  4. the degree of care likely to be exercised by consumers;
  5. the strength of the plaintiff’s mark;
  6. any actual confusion; and
  7. the defendant’s intent to pass off its products as those of the plaintiff.

Despite identifying each of these factors as relevant to the infringement inquiry, the court focused primarily on the degree of competitive proximity between the parties’ products. On that issue, the court concluded that:

[t]here is little authority on how to treat the ‘similarity of the products’ factor when one of them is fictional..., but what few cases have confronted the issue have considered the likelihood of confusion between the senior user’s product and the junior user’s creative work - not any fictional product therein.”

Noting the absence of any CLEAN SLATE-branded items offered by the defendant, it then concluded that:

the only products available to compare - [the plaintiff’s] software and [the defendant’s] movie - are quite dissimilar, even considering common merchandising practice. [The plaintiff] has alleged no facts that would make it plausible that a super-hero movie and desktop management software are ‘goods so related in the minds of consumers in the sense that a single producer is likely to put out both goods’.

The court acknowledged that the similarity between the parties’ uses lent some support to the plaintiff’s case, but that:

"juxtaposed against the weakness of all the other factors, this similarity is not enough. Trademark law protects the source-denoting function of words used in conjunction with goods and services in the marketplace, not the words themselves.”

Therefore, the plaintiff’s complaint had been properly dismissed at the pleadings stage of the case.

Ted Davis, Kilpatrick Townsend & Stockton LLP, Atlanta

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