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Julia Anne Matheson is a partner at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP in Washington, DC. She specializes in trademark, unfair competition, and Internet-related issues including strategic international portfolio management, counseling and clearance, opposition and cancellation proceedings, and litigation and enforcement matters. Whitney D. Cooke is an associate at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. She specializes in trademark issues including strategic international portfolio management, counseling and clearance, and enforcement matters before federal district court and the Trademark Trial and Appeal Board.
Movie audiences and television viewers have long been accustomed to seeing famous trademarks pop up as the plot of a movie or television show unfolds. For example, Audrey Hepburn stood outside TIFFANY & CO. in the iconic 1961 film Breakfast at Tiffany’s, and an ASTON MARTIN or BMW is often featured in James Bond films. The prominent use of “real-life” trademarks in films and television shows—whether as a result of a product placement deal secured with the mark owner or, alternatively, as evidence of a product’s real-world popularity (e.g., STARBUCKS cups in various television shows)—is commonplace. The inclusion of such famous marks brings real-world elements into expressive works, and creates continuity between the real world and the fictional world portrayed on film. In such situations, there is no question that the movie or television program is referring to a product that has a real-life counterpart.
Movies, television shows, and video games have also long featured make-believe product names and trademarks without real-life counterparts, including, for example, Looney Tunes’ ACME brand equipment that Wile E. Coyote used in his unsuccessful attempts to capture the Road Runner. In other instances, however, a “make-believe” product name may coincidentally be the same as a “real-life” but lesser-known trademark. In these cases, courts assessing a likelihood of confusion claim must consider the fictional world in which the trademark appears vis-à-vis the real-life rights of the trademark owner, and determine whether the use of a real-life trademark in the context of a fictional work is protected under the First Amendment pursuant to the leading Rogers v. Grimaldi test.1
Recently, in Fortres Grand Corp. v. Warner Bros. Entertainment Inc., the U.S. District Court for the Northern District of Indiana addressed the viability of a trademark infringement claim arising out of the use of a federally registered trademark in the final film of the Batman trilogy, The Dark Knight Rises.2 While the district court assessed the likelihood of confusion between the real-life product and the fictional product in the movie by applying the traditional Rogers test, in a slight twist it also looked at how the mark was used on virtual reality websites promoting the film. The Fortres Grand ruling confirms that such websites are entitled to the same type of likelihood of confusion analysis and First Amendment defense accorded the film itself.
Fortres Grand is a small software company that makes a computer program called “Clean Slate,” which protects the security of computer networks by erasing all evidence of prior user activity such that each new user starts his or her computer activity with a “clean slate.” In addition to owning a federal trademark registration for the CLEAN SLATE mark, Fortres Grand had sold millions of dollars of its CLEAN SLATE software. In the movie The Dark Knight Rises, the character Selina Kyle (who is the alter ego of the villainess Catwoman) seeks a software program that will erase her criminal history from every computer database in the world. This program, designed by the fictional company Rykin Data, is referred to descriptively several times as providing users with a “clean slate.”3 While the film references the fictional product and its function, it never shows the product or packaging, or identifies the product by name.
But Warner Bros. did not stop there. As part of its multifaceted and novel promotional campaign for The Dark Knight Rises film, Warner Bros. created websites (at rykindata.com and rykindata.tumblr.com) offering fans access to an alternative reality extension of the film’s fictional world.4 These virtual reality sites allow fans to access a website for the fictional Rykin Data company promoting the fictional criminal history elimination software product. The website includes descriptions of the product’s functionality, technology, and patents but, as in the film, the phrase “clean slate” is not used as the product name or trademark, but rather is used descriptively in text to identify the product’s function. As the court recognized, the fictional websites within the virtual reality world “look like what a (fictional) citizen of Gotham might find if they were looking for information on the (fictional) Rykin Data company,” and include images of a fictitious software patent and a fictitious endorsement from the Gotham City Better Business Bureau.5
Fortres Grand filed an action for trademark infringement and unfair competition against Warner Bros., objecting to its use of “clean slate” in the film and on the virtual reality websites on reverse confusion grounds. In particular, Fortres Grand alleged that, due to the film’s popularity, the consumer reach of Warner Bros.’ fictional product and use of the phrase “clean slate” was so widespread that it would deprive Fortres Grand of the market for its own real-world product by so saturating the market that future consumers would believe Fortres Grand was trading off of the Warner Bros. film.6 Warner Bros. responded to the complaint with a motion to dismiss.
In ruling on the motion to dismiss, the court focused first on the essential ingredient of any trademark infringement claim—whether forward or reverse—namely, whether a likelihood of confusion exists among consumers that impacts purchasing decisions, as contrasted with general amorphous marketplace confusion without commercial impact. The court emphasized that trademark infringement is designed to protect against mistaken purchasing decisions and not against confusion generally.7 It was Fortres Grand’s inability to plausibly demonstrate the former type of confusion that ultimately led the court to rule in Warner Bros.’ favor.
The court emphasized that to evaluate whether confusion would impact purchasing decisions, the proper analysis must consider each side’s real products. The obvious problem with Fortres Grand’s reverse confusion argument was that the clean slate software “only exists in the fictional world of Gotham; it does not exist in reality.”8 As the court noted, “[t]hat distinction—between Warner Bros. real product (a movie) and its fictional product (software)—makes a world of difference because so much of the consumer confusion analysis depends on a comparison of the products at issue.”9 Accordingly, rather than comparing the fictional software product with its real-world counterpart as had been urged by Fortres Grand, the proper comparison for the reverse confusion analysis was between the movie and the real computer software program sold by Fortres Grand.
In constructing the proper confusion analysis for this uncommon scenario, the district court relied in part on the decision in Ocean Bio-Chem, Inc. v. Turner Network Television, Inc. In that case, Star Brite Distributing Inc., a real company owned by plaintiff Ocean Bio-Chem, sued the makers of the television movie Incident at Dark River, alleging trademark infringement based on the movie’s depiction of fictional company “Starbrite Batteries” as the source of pollution that causes a child’s death.10 That court rejected Star Brite’s infringement claim after finding that the proper comparison for a likelihood of confusion analysis was between “the parties’ ultimate products: those that Ocean markets under the Star Brite name and the movie itself.”11
A similar conclusion was reached in Davis v. Walt Disney Co., in which Earth Protector, Inc., an environmental advocacy organization with a cable-access television program, sued Walt Disney Co. for its broadcast of Up, Up, and Away, a television movie in which a family of superheroes uncover and thwart the misdeeds of an environmental software company named “Earth Protectors.”12 In that case as well, the court concluded that the proper comparison for a likelihood of confusion analysis was between the parties’ real products, namely, a children’s made-for-television movie and a broadcast cable-access environmental advocacy television program. The court ultimately found that consumers were unlikely to believe that the parties’ products emanated from the same source.13
Focusing on the “big picture,” the Fortres Grand court concluded that no consumer “reasonable or otherwise” could believe that the “clean slate” software featured in The Dark Knight Rises emanates from, is sponsored by, or is connected to Fortres Grand, “because the fictional software does not exist in reality.”14 Nor would any reasonable consumer buy tickets to The Dark Knight Rises because of a “perceived association” of that film with Fortres Grand’s products, or vice versa.15 As such, the type of purchasing confusion that would be actionable under an infringement claim simply could not exist.
Also important to the court’s likelihood of confusion analysis was its finding that Warner Bros.’ use of the phrase “clean slate” did not qualify as a trademark use. First, by definition, “clean slate” could not identify the source of a software product where no such product actually existed in the real world. Nor was “clean slate” used in a way that identified the source of the film. Instead, Warner Bros. “merely released a fictional move that happened to involve an entirely fictional software referred to descriptively as ‘clean slate.’”16 The court did not consider whether a different analysis might have applied had Warner Bros. used CLEAN SLATE as the trademark for the software rather than merely descriptively to identify the fictional product’s function.
Turning to the Rogers analysis, the court concluded that “[e]ven if there were a potential for consumer confusion here,” the case would still be dismissed because Warner Bros.’ use of “clean slate” was protected by the First Amendment. Under the two-pronged test set forth in Rogers, the protections of the Lanham Act are inapplicable to “artistic works” as long as a defendant’s use of the mark is (1) “artistically relevant” to the work, and (2) not “explicitly misleading” as to the source or content of the work.17
Fortres Grand contended that First Amendment protection should not apply to cases of reverse confusion where the defendant’s use of a trademark is neither an “expressive critique” nor referential of a culturally recognized mark.18 According to Fortres Grand, First Amendment protection under Rogers should be limited to the artistic use of culturally relevant trade symbols. Because Fortres Grand’s CLEAN SLATE trademark was not well known enough to be culturally relevant, First Amendment protection should not apply. The court disagreed that First Amendment protection under Rogers was limited in this manner, noting the chilling effect such a limitation would have for creative works:
Plaintiff’s proposed rule would mean that a small, relatively unknown trademark owner, claiming rights in a mark that few people have ever heard of, would enjoy monopoly power over the use of certain words in expressive works—power that the First Amendment plainly denies to the owners of famous, household-word trademarks.19
Applying the Rogers test to Warner Bros.’ use of “clean slate” in The Dark Knight Rises, the district court held that “clean slate” had artistic relevance to both the film and the websites because it directly related to the plot of the movie, as Fortres Grand’s complaint conceded. The court articulated the second prong of the Rogers test as “whether the use of ‘clean slate’ in The Dark Knight Rises would confuse its viewers into thinking that Fortres Grand ‘is somehow behind’ the film or ‘that it sponsors’ the film.”20 The court found no evidence of such confusion.
The court likewise rejected Fortres Grand’s attempts to characterize Warner Bros.’ promotional websites as commercial speech rather than artistic works entitled to the Rogers First Amendment analysis. While noting that the boundary between commercial and noncommercial speech has yet to be clearly delineated, the court emphasized that “[t]he websites at issue here do far more than simply propose a commercial transaction—in fact, it is hard to see that they really propose any commercial transaction, other than obliquely convincing consumers to buy a ticket to the film.”21 Rather than purely commercial vehicles for the film, the court described the websites as “fictional extensions of the film” and “artistic works in and of themselves” that are entitled to First Amendment protection.22
In its pending appeal of the district court’s dismissal, Fortres Grand argues that the district court erred in failing to recognize that the First Amendment does not protect parties from liability based on speech that is likely to cause confusion. Specifically, during oral argument held before a Seventh Circuit panel in December 2013, Fortres Grand asserted that its sales have dropped over 50 percent since the release of The Dark Knight Rises. It also argued that unlike instances in which a famous trademark appears in a film, the use of “clean slate” amounted to a fictional product borrowing the name of a real-life counterpart, which resulted in a “criminal mirror image” of what Fortres Grand’s product does.23 Warner Bros. responded by emphasizing the need for First Amendment protection for artists who bring real-world elements into expressive works. From the bench, Judge David F. Hamilton expressed concern that overturning the district court’s decision would open up “whole new realms of trademark litigation between fact and fiction.”24
As entertainment companies expand the scope of their promotional activities well beyond their core entertainment property, the issue of the degree of protection that should be afforded those activities is still in flux. The proliferation of websites such as Warner Bros.’ virtual reality site has occurred alongside and in connection with the meteoric rise of the use of social media sites to promote films, and the mega-million dollar box office draw of film franchises such as The Avengers, The Hunger Games, and The Hobbit.25 Fortres Grand is the first case of its kind to address this issue with respect to virtual reality websites and is being carefully monitored by the entertainment community and trademark owners alike. Affirming the district court’s ruling would confirm that promotional extensions of the type developed by Warner Bros. should enjoy the same level of First Amendment protection under Rogers because they are extensions of and have “artistic relevance” to the film, while a reversal could have a significant chilling effect on such promotional extensions. Stay tuned.
1. See Rogers v. Grimaldi, 874 F.2d 994 (2d Cir. 1989). While the court emphasized the lack of guiding precedent on this issue, the authors note at least the following decisions of interest: Ocean Bio-Chem, Inc. v. Turner Network Television, Inc., 741 F. Supp. 1546 (S.D. Fla. 1990) (denying plaintiff’s motion for a preliminary injunction against defendant’s use of STAR BRITE trademark in film Incident at Dark River in connection with fictional “Starbrite Batteries” company on grounds that consumers were unlikely to connect plaintiff’s various products to fictional batteries); Zeocrystal Indus., Inc. v. Fox Broad. Co., 923 F. Supp. 132 (N.D. Ill. 1996) (finding that reference to a magical weapon using “Zeo Crystals” in the Power Rangers television series did not infringe plaintiff’s mark ZEOCRYSTAL for odor-removing mineral powders, and noting that registration of the mark did not create a presumptive exclusive right to use the mark for entirely different goods); Davis v. Walt Disney Co., 393 F. Supp. 2d 839 (D. Minn. 2005), aff’d, 430 F.3d 901 (8th Cir. 2005) (finding that use of the fictional “Earth Protectors” company in film Up, Up, and Away did not infringe the right of environmental advocacy group EARTH PROTECTOR); Frosty Treats, Inc. v. Sony Computer Entm’t Am., Inc., 426 F.3d 1001 (8th Cir. 2005) (holding that defendant’s use of ice cream truck with “Frosty Treats” label in video game series Twisted Metal did not infringe plaintiff’s rights in the mark FROSTY TREATS based on plaintiff’s failure to show secondary meaning, dissimilarity of the marks, and fact that the parties’ products did not compete); and E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 444 F. Supp. 2d 1012 (C.D. Cal. 2006), aff’d, 547 F.3d 1095 (9th Cir. 2008) (dismissing trademark infringement claim brought by owner of strip club PLAY PEN against video game creator that included fictional “Pig Pen” strip club in the video game Grand Theft Auto: San Andreas, and finding that the Rogers test applies to elements within creative works).
2. 947 F. Supp. 2d 922 (N.D. Ind. 2013).
3. Id. at 924.
4. Id. at 924–25.
5. Id. at 925.
6. Id. at 927.
7. Id. at 926 (citing Rearden LLC v. Rearden Commerce, Inc., 683 F.3d 1190, 1214 (9th Cir. 2012)).
8. Id. at 928.
10. Ocean Bio-Chem, Inc. v. Turner Network Television, Inc., 741 F. Supp. 1546 (S.D. Fla. 1990).
11. Id. at 1557.
12. 430 F.3d 901 (8th Cir. 2005).
13. Id. at 904.
14. Fortres Grand, 947 F. Supp. 2d at 930.
16. Id. at 929.
17. Id. at 931 (citing Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989)).
18. Id. at 932–33.
19. Id. at 933.
20. Id. at 932.
21. Id. at 933–34.
22. Id. at 934.
23. Transcript of Oral Argument, Fortres Grand Corp. v. Warner Bros. Entm’t, Inc., No. 13-2337 (7th Cir. Dec. 10, 2012), available at http://media.ca7.uscourts.gov/oralArguments/oar.jsp?caseyear=13&casenumber=2337&listCase=List+case%28s%29.