Fictional Product in "The Dark Knight Rises" Does Not Infringe Real Trademark: N.D. Ind. | Practical Law

Fictional Product in "The Dark Knight Rises" Does Not Infringe Real Trademark: N.D. Ind. | Practical Law

In Fortres Grand Corp. v. Warner Bros. Entertainment Inc., the US District Court for the Northern District of Indiana held that there is no claim for trademark infringement when a fictional product in a movie is referred to by a term that is the same as a real product's name.  

Fictional Product in "The Dark Knight Rises" Does Not Infringe Real Trademark: N.D. Ind.

by PLC Intellectual Property & Technology
Published on 21 May 2013 • USA (National/Federal)
In Fortres Grand Corp. v. Warner Bros. Entertainment Inc., the US District Court for the Northern District of Indiana held that there is no claim for trademark infringement when a fictional product in a movie is referred to by a term that is the same as a real product's name.

Key Litigated Issue

In Fortres Grand Corp. v. Warner Bros. Entertainment Inc., the key issue before the US District Court for the Northern District of Indiana was whether trademark infringement exists if a fictional product in a dramatic work bears the same name as a real product or company.

Background

Fortres Grand develops and sells a software product under the trademark "Clean Slate." Fortres Grand's software provides computer network security by erasing all evidence of a user's activity so that it is not accessible to subsequent viewers. Warner Bros. is a film studio that released The Dark Knight Rises in 2012. In one of the movie's plot lines, a character attempts to obtain a fictional software program referred to as "clean slate," which can erase her criminal history. To promote the film, Warner Bros' also created two websites that looked like what a character in the film might find if he were looking for the software. The websites used the term "clean slate" to refer to the fictional software and featured, among other things a fictional:
  • Software patent.
  • Gotham City Better Business Bureau endorsement.
Based on these uses, in September 2012, Fortres Grand sued Warner Bros., asserting federal trademark infringement and federal and state unfair competition claims. Warner Bros. responded with a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6).

Outcome

In its May 16, 2013 opinion, the district court granted Warner Bros.'s motion to dismiss, holding that:
  • Using the term "clean slate" to refer to a fictional product in the 2012 movie, The Dark Knight Rises, did not infringe plaintiff Fortres Grand's "Clean Slate" trademark for its software product.
  • Even if Warner Bros.'s use of "clean slate" could constitute actionable trademark infringement, the term's use is protected by the First Amendment.

Reverse Confusion

The court first noted that Fortres Grand's claims involved reverse confusion, and that to state a claim for reverse confusion Fortres Grand must plausibly allege that Warner Bros. saturated the market with a product that the public was deceived into believing emanates from, is connected to or is sponsored by Fortres Grand.
The district court found that the appropriate product to consider in this analysis is Warner Bros.'s real product, meaning the movie, rather than its fictional software product. Noting that trademark law only serves to protect consumers against mistaken purchasing decisions, the court concluded that there is no plausible claim that consumers looking for Fortress Grand's software would mistakenly purchase a ticket to The Dark Night Rises.

Non-trademark Use

The court was further persuaded that Fortres Grand's claims failed because Warner Bros. was not using the "clean slate" mark as a trademark. Specifically, the film's and website's use of "clean slate" could not identify the source of a product that does not exist.

First Amendment

The court also found that even Warner Bros. use of the term "clean slate" could constitute trademark infringement, it is protected by the First Amendment under the test adopted by the US Court of Appeals for the Second Circuit in Rogers v. Grimaldi. Under this test, an artistically expressive use of a trademark does not violate the Lanham Act unless:
  • The use of the mark has no artistic relevance to the underlying work.
  • If the mark has some artistic relevance, it is explicitly misleading about source.
The court concluded that Warner Bros.'s use of "clean slate" met both of these prongs.
Update: On August 14, 2014, the US Court of Appeals for the Seventh Circuit affirmed this decision (763 F.3d 696 (7th Cir. 2014)).
Update: On January 12, 2015, the US Supreme Court denied Fortres Grand's petition for writ of certiorari (No. 14–560, (Jan. 12, 2015)).

Practical Implications

This decision may provide trademark owners and filmmakers with further clarity on the boundaries of permissible uses of brands in artistic works, and cautions trademark owners to consider the limits of trademark protection before engaging in what could be costly litigation. However, the case also underscores the value of careful rights clearance when producing artistic works. The court notes in a footnote the absence of a dilution claim, which may suggest its view that similar facts could support a dilution claim for a famous mark. In addition, the opinion also notes the lack of substantial case law on this issue.

Court Documents