By Eriq Gardner, The Hollywood Reporter
A fictional technology featured in The Dark Knight Rises doesn’t infringe a company’s trademark, the 7th U.S. Circuit Court of Appeals affirmed on Thursday.
In the Warner Bros. film, Anne Hathaway plays Selina Kyle, who agrees to exploit her skills as a cat burglar in return for a software program that will erase her criminal history from every computer database in the world. At one point in the film, this character tells Batman, “Wayne says you can get me the clean slate.” Later in the film, she gets “the clean slate” courtesy of Batman.
Holy alter ego, there really is a product called Clean Slate!
Fortres Grand has been selling the product since 2000. The software supposedly can be used to erase the trail of history on one’s computer.
The company sued Warner Bros., alleging “reverse confusion” under trademark law, arguing the Hollywood studio’s ability to overwhelm the market with its use of “clean slate” would cause consumers to be confused — kind of like how Kyle was confused when at one point during the movie she was told “clean slate” didn’t exist.
“I think the fatal flaw in Fortres Grand’s case has to do with correctly identifying the exact product that Warner Bros. has introduced to the market — a film, not a piece of software,” wrote an Indiana federal judge in a May 2013 decision to dismiss the case.
On appeal, Fortres Grand argued that the judge focused too heavily on the “similarity of the products” factor in the standard seven-factor test. The other factors that courts typically analyze are the similarity between marks, the area and manner of concurrent use, the degree of care likely to be exercised by consumers, the strength of the complainant’s mark, actual confusion and an intent on the part of the alleged infringer to palm off its products as those of another.
Seventh Circuit Judge Daniel Manion admits that while the parties offer up dissimilar products, that fact isn’t dispositive of the issue of consumer confusion. The question, says the judge quoting a previous case, is “whether the products are the kind the public attributes to a single source.”
Remember, trademarks aren’t copyrights. They serve to identify and distinguish the goods of one seller from another. Thus, the emphasis on source.
“The problem here is that Fortres Grand wants to allege confusion regarding the source of a utilitarian desktop management software based solely on the use of a mark in a movie and two advertising websites,” writes the appellate judge. Warner Bros. “does not sell any movie merchandise similar to Fortres Grand’s software which also bears the allegedly infringing mark. Fortres Grand mentions that Warner Bros. sells video games. Desktop management software and video game software may be similar enough to make confusion plausible, but Fortres Grand does not allege that the video games bear the “clean slate” mark. Nor does Fortres Grand allege that desktop management software is a commonly merchandised movie tie-in (as a video game might be).”
Judge Manion says that even if the analysis goes beyond the dissimilarity of the products, the software company’s allegation of reverse confusion is “just as implausible.”
He writes, “Both the movie and Fortres Grand’s software are available on the internet, but the movie was shown first and primarily in theaters and Fortres Grand’s software is only available at its website, not at other places on the internet. And anyone who arrives at Fortres Grand’s website is very unlikely to imagine it is sponsored by Warner Bros. (assuming, safely, that Fortres Grand is not using Catwoman as a spokesperson for its program’s efficacy).”
The opinion goes on to articulate other reasons why the appellant fails. Read it here. We’d say that Fortres Grand is in need of “clean slate” to erase the tracks of its legal loss, but frankly, the money spent on litigation probably doubled as good promotion. Selina Kyle won’t be buying, though. She’s fictional.