Monday, May 20, 2013

Never steal anything from someone you can't outrun: Warner Bros. defeats infringement claim

Fortres Grand Corporation v. Warner Bros. Entertainment Inc., No. 3:12-cv-00535 (N.D. Ind. May 16, 2013)

McCarthy has said that there’s “surprisingly little” case law on whether a fictional company or product using the same name/brand as a real one constitutes trademark infringement.  If this is surprising, as the court here agreed, it’s only because we’ve started expecting overreach as a baseline.  This case adds to the small but obviously correct body of case law rejecting such claims (and, I hope, putting defendants in a position to ask for an award of fees next time).

Fortres Grand makes a real software program, Clean Slate.  Clean Slate erases evidence of user activity on a particular computer, and it’s a registered mark for “computer software used to protect public access computers by scouring the computer drive back to its original configuration upon reboot.”

The Dark Knight Rises included a handful of references to a fictional software program called “clean slate,” which Selina Kyle wanted to erase her criminal history from every computer database in the world.  (Yet another example of ridiculous tech premises; see also Carrion on Revenge, the Machine on Person of Interest, “Let’s Enhance,” and Phone Trace Race (warning: this last link goes to TVTropes; I am not responsible for the time you waste if you follow it).)  Also, WB created two relevant websites, and, to promote the film. (Ed. note: Eric Goldman says keyword ad cases make no business sense; this tumblr has 5 entries, and the top one—featuring Selina Kyle—has only 94 reblogs/likes, whereas the others have 11, 4 (one of which is me), and none. Perhaps this also wasn’t worth suing over?)  As the court explained, the sites served to extend the movie experience:

[R]ather than just creating a straightforward promotional website where consumers can get information about the film (like, in this instance,, additional websites are created that market the film in a more subtle or creative way. In this instance, the websites are essentially a creative outgrowth of the fictional world of the film. They look like what a (fictional) citizen of Gotham might find if they were looking for information on the (fictional) Rykin Data company. They include images of fictional police reports related to the fictional character Selina Kyle, a fictional police file labeled “Cat Burglar Investigation,” a fictitious software patent, and an endorsement from a fictional Gotham City Better Business Bureau (BBB). [Hilariously/sadly, this last seems to have been removed, perhaps when counsel got a better look at the tumblr because of this suit.] 

These websites also use the term “clean slate” to describe the software referenced in the film. … One of the pages on the website is titled “PROGRAM: ‘CLEAN SLATE’” and explains that “‘Clean Slate’ is the informal name for Rykin Data’s primary service, in which the corporation will amass personal histories (specifically off the Internet) and destroy it permanently.” Both websites also contain a fictitious patent for the software, the abstract of which states that the invention has the effect of “granting the subject a clean slate within the digital world.” The Tumblr site also contains this statement: “Rykin Data: Providing Fresh Starts since 2004. . . . Clean slates are possible. . . . Have a fresh, clean start.”

The court considered these materials on the motion to dismiss because they were integral to the complaint.

Fortres Grand sued for trademark infringement and unfair competition under state and federal law; all the claims were subject to the same standard.  It claimed reverse confusion.

The court began by noting what trademark law isn’t about: “trademark infringement protects only against mistaken purchasing decisions and not against confusion generally.” To prevail, Fortres Grand needed to plausibly allege that Warner Bros. saturated the market with a product that the public was deceived into believing emanates from, was connected to, or was sponsored by Fortres Grand.  The fatal flaw in the case involved correctly identifying “the exact product that Warner Bros. has introduced to the market – a film, not a piece of software.”  Paradigm reverse confusion cases involve directly competing products where a small regional producer is overwhelmed when a larger player “rolls out a similar product with the same trademark on a nationwide level.”

But Warner Bros. didn’t have real “clean slate” software.  Fortres Grand couldn’t argue that it had been damaged by the saturation of the market with “clean slate” software.  Confusion had to be judged by Warner Bros.’ actual product, as other courts in similar situations have also ruled.  See Ocean Bio-Chem, Inc. v. Turner Network Television, Inc., 741 F. Supp. 1546 (S.D. Fla. 1990) (Star Brite Distributing had no claim against fictional Starbrite Batteries); Davis v. Walt Disney Co., 430 F.3d 901 (8th Cir. 2005) (Earth Protector advocacy organization had no claim against fictional environmental software company Earth Protectors); Caterpillar Inc. v. Walt Disney Co., 287 F. Supp. 2d 913 (C.D. Ill. 2003) (no consumer would be more likely to buy or watch George of the Jungle 2 because of any mistaken belief, based on presence of Caterpillar vehicles in the movie, that Caterpillar sponsored it). 

Fortres Grand couldn’t plausibly allege either that consumers were deceived into believing that the DKR “clean slate” program came from Fortres Grand, or that they were deceived into believing that DKR came from Fortres Grand. 

“First, no consumer – reasonable or otherwise – can believe the fictional ‘clean slate’ software in the movie emanates from, is sponsored by, or connected to Fortres Grand because the fictional software does not exist in reality.” A consumer who tried to find it would quickly discover that it didn’t exist.  In other words, Warner Bros. was not making a trademark use of “clean slate”: it didn’t identify a source of software because there was no such software, and it didn’t identify the source of the film either (citing, inter alia, New Kids).

“Second, no consumer – reasonable or even unreasonable – would believe that the The Dark Knight Rises itself is connected to Fortres Grand.”  Fortres Grand isn’t in the motion picture business, and no one would buy tickets or discs because of a perceived association with Fortres Grand’s products.  Any allegation of confusion about the film’s source would be too implausible to survive Iqbal/Twombly.  (Notice how sponsorship/product placement has been erased from the analysis.  Really, the only coherent way to understand these statements is as normative claims, irrefutable by empirical evidence, rather than as descriptive claims.)  The promo websites changed nothing. “To the extent it can be said that the term ‘clean slate’ on these sites is even being used as a trademark, it can only be to indicate the source or origin for the film The Dark Knight Rises.”

Mark McKenna will appreciate this bit:  Pragmatically, infringement means confusion as to source, which means origin, which means “the producer of the tangible product sold in the marketplace.” Hello, Dastar! Vague, generalized confusion isn’t enough, since the key target is mistaken purchasing decisions.  Because “no one looking for Fortres Grand’s software is likely to mistakenly buy a ticket to The Dark Knight Rises,” there was no plausible claim for such mistakes.

And also: the use of “clean slate” was protected by the First Amendment, even if there were potential consumer confusion. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), provided the standard.  The Lanham Act doesn’t apply to artistic works as long as a use is artistically relevant and not explicitly misleading as to the source or content of the work.  Rogers is about titles, but also applies to the use of a mark in the body of a work.

The first prong, artistic relevance, is a purposely low threshold.  “Clean slate” had artistic relevance to both the film and the websites, as Fortres Grand’s own complaint acknowledged—it was the name of a program that would erase a person’s criminal history from every computer database.  Nor was the use explicitly misleading.  As the 9th Circuit has (confusingly) said, “the relevant question” is whether the use of “clean slate” in The Dark Knight Rises would confuse its viewers into thinking that the Fortres Grand “is somehow behind” the film or “that it sponsors” the film.  The requirement of explicit misleadingness makes this a high bar: a work must make some affirmative statement of sponsorship or endorsement, beyond the mere use of a plaintiff’s mark, in order to be explicitly misleading.  There was no such affirmative statement here.

The court rejected Fortres Grand’s argument that Rogers only applies to forward confusion, not reverse confusion, because Rogers was about protecting use of “culturally relevant” marks.  Because Warner Bros. wasn’t trying to refer to Fortres Grand at all, it argued, Rogers wasn’t relevant. The court didn’t see the logic there.  First Amendment protection didn’t depend on the infringer’s having “some well-thought-out, ‘expressive’ critique of the trademark.”  In fact, the chilling effect of Fortres Grand’s position could be huge.  Small, relatively unknown trademark owners shouldn’t enjoy monopoly power over use of words in expressive works any more than the owners of famous marks should.  Other courts had concluded similarly; the one case that supported Fortres Grand, Rebelution, LLC v. Perez, 732 F. Supp. 2d 883 (N.D. Cal. 2010), read “artistic relevance” too narrowly, requiring defendant’s use “to be with reference to the meaning associated with plaintiff’s mark.”  As the Ninth Circuit has held, “the level of relevance merely must be above zero” (and, implicitly, “relevance” means “relevance to the work,” not “relevance to the plaintiff”—which is the only sensible reading; otherwise the reality show Apple Pickers about competing fruit sellers would be vulnerable to a claim from Apple, whose computers would lack artistic relevance to the show).

The same analysis applied to the promotional websites.  Fortres Grand argued that Rogers didn’t apply because the sites were commercial speech, but they weren’t, in that they did more than propose a commercial transaction.  “[I]n 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. Instead, they are creative, fictional extensions of the film – artistic works in and of themselves – and are thus entitled to First Amendment protection.”  Rogers applied in the same way.

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