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Batman to the Rescue: Court says Warner Bros.’ fictional product does not infringe upon real one

In its most recent Batman production, "The Dark Knight Rises," Warner Bros. makes several references to a fictional software program informally known as “clean slate,” created by the fictional company Rykin Data. Specifically, movie character Selina Kyle (a.k.a. Catwoman) attempts to obtain the “clean slate” software program in her efforts to erase her criminal history from computer databases worldwide. Warner Bros. created websites (e.g., www.rykindata.com) to promote the film and for fan use which also references the imaginary “clean slate” software program.

The real “Clean Slate” cries foul

As it so happens, Fortres Grand Corporation provides an actual software program called “Clean Slate,” which is used by consumers to erase evidence of the prior user’s computer activity from access by subsequent users of that same computer. Fortres Grand sued Warner Bros. for trademark infringement as well as federal and state unfair competition in the United States District Court for the Northern District of Indiana in Fortres Grand Corp. v. Warner Bros. Entm’t, Inc. Its claims are based on the theory of “reverse confusion,” which occurs when a larger or more powerful company begins using a trademark after a smaller, less well-known entity has already put that, or a confusingly similar mark, in use. In response to Fortres Grand’s complaint, Warner Bros. filed a motion to dismiss.

The “reverse confusion” theory

The “reverse confusion” theory is designed to prevent a larger latecomer from throwing around its weight and saturating the market in a manner that overwhelms the senior, yet smaller, user. An example of this scenario is when a mid-market or regional company launches a product under a certain name, only to discover that a national or international company has subsequently launched a competing product under a similar name. Due to the size and market presence of the larger company, consumers recognize the later product over the original. Thus, the “reverse confusion” theory not only protects the junior user’s trademark rights, but it also “protects the public from being deceived into believing that the senior user’s product emanates from, is connected to, or is sponsored by the junior user.”

Courts have had little opportunity to comment on this type of case. Despite this lack of precedent, Indiana’s Northern District Court determined that Warner Bros. did not commit trademark infringement. According to the court, the “fatal flaw” in Fortres Grand’s case is that Warner Bros. did not saturate the market with an actual software program, but instead widely disseminated a popular film. Comparing the two sets of goods is an important element in a trademark infringement action, and in this case the two goods at issue were not similar (i.e., software product vs. movie). To the extent consumers wanted to buy the “clean slate” software product referenced in the movie, they would be unable to do so.

First Amendment protection

In trademark law parlance, Warner Bros. is not using the term “clean slate” as a “trademark” (i.e., to identify the source of goods or services); therefore, there can be no trademark infringement. Nonetheless, in the event there was an issue with consumer confusion, the court determined that Warner Bros.’ use of “clean slate” was protected by the First Amendment.

This case is important because it sets another marker in this relatively untouched area of trademark law. It will also be interesting to see whether this decision has any implications on product placement cases, where a movie displays a real-life product without obtaining a license from the trademark owner.

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