It's Fiction vs. Reality in 'Dark Knight' Trademark Appeal
A software company is pressing to revive its trademark infringement claims against Warner Bros. Entertainment Inc. for using the name of a real-life computer program in the Batman movie The Dark Knight Rises.
Lawyers for security software maker Fortres Grand Corporation, based in Plymouth, Ind., have asked the U.S. Court of Appeals for the Seventh Circuit to give the company a second chance in its fight against Warner Bros. Fortres contends its sales of its Clean Slate software dropped in half after consumers mistakenly believed it was the same program mentioned in the 2012 Batman film.
In the trial court, U.S. District Judge Philip Simon in the Northern District of Indiana dismissed the claims as “implausible” since no one would believe Fortres had sponsored—or had any connection to—the Batman film.
Fortres attorney Phillip Barengolts said in a brief filed this month in the appellate court that the drop in sales after the release of the movie confirmed "reverse confusion," where a larger use—in this case, Warner Bros.—"saturates the market with a trademark similar to or identical to that of a smaller, senior user."
“Further,” Barengolts continued in the brief, “given the large-scale merchandising that accompanies major blockbusters, it is not implausible to conclude that consumers may believe that references to a software they recognize from The Dark Knight Rises are for the same software they saw in the Film, and not for the software of a much smaller, but nonetheless senior, user of the mark Clean Slate.”
Warner Bros., part of Time Warner Inc., is due to file its Seventh Circuit brief by October 30. A lawyer for the company, Jenner & Block partner Andrew Bart, co-chairman of the content, media & entertainment practice, did not respond to a request for comment. Warner Bros. spokesman Paul McGuire declined to comment.
Barengolts, a partner at Chicago’s Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, said in Fortres' court papers that the case presents an issue of first impression in the Seventh Circuit: whether a fictional item from a movie can infringe the trademark of a real product.
In dismissing the case in May, Simon, the presiding trial judge, said the case addressed a “relatively uncharted territory of trademark law.” But he concluded there was no trademark infringement because the two real products at issue were dissimilar—a movie and a software program.
"No consumer—reasonable or unreasonable—would believe that the The Dark Knight Rises itself is connected to Fortres Grand," Simon wrote. The judge also found that "even if there were a potential for consumer confusion here," the First Amendment protects Warner Bros.' use of the term "clean slate."
Fortres claims it has sold millions of dollars worth of its Clean Slate software, for which it registered a trademark in 2011. Soon after the release of The Dark Knight Rises, Fortres sued Warner Bros. for trademark infringement and unfair competition under the federal Lanham Act, and for unfair competition under Indiana law.
In the movie, Catwoman’s character, otherwise known as Selina Kyle, uses the Clean Slate program to erase her criminal history. The movie’s marketing also included the Web sites of Rykin Data Corporation, a fictional company featured in the film that sold the software. Fortres is seeking damages for its lost sales and money spent to clear up alleged consumer confusion.
In his brief, Barengolts claims that Simon applied the wrong standard given the “commercial reality that consumers are used to connecting movies with real world products.” Fictional products regularly enter the world of commerce, he wrote, citing Luke Skywalker’s lightsaber, Harry Potter’s wand and the Batmobile.
Barengolts also argued the First Amendment does not apply in this case. In his brief, Barengolts wrote the First Amendment "does not insulate a party from liability for speech that is likely to cause, or that has caused, significant consumer confusion."
Simon had relied on the 1989 decision by the U.S. Court of Appeals for the Second Circuit in Rogers v. Grimaldi in concluding that Warner Bros. was entitled to artistic expression under the First Amendment. That ruling cited the First Amendment in striking down a trademark infringement case brought by performer Ginger Rogers over the 1986 film title Ginger and Fred.
Fortres also is seeking to revive its unfair competition claim under Indiana law.