The United States District Court for the Northern District of Indiana has not held that Plaintiff’s trademark for CLEAN SLATE for software is UnIntellectual Property.  However, it has, for the first time answered the following question: “Is it trademark infringement if a fictional company or product in a movie or television drama bears the same name or brand as a real company or product?”
Plaintiff filed a lawsuit for trademark infringement against Warner Bros. based upon its use of a fictional software program called “clean slate” in the movie The Dark Knight Rises.  Warner Bros. moved to dismiss for failure to state a claim.  The Court granted Defendant’s motion and held that Defendant’s use of “clean slate” in the movie “does not infringe Fortres Grand’s “Clean Slate” trademark both because there is no plausible claim for consumer confusion and because Warner Bros.’s use of the mark is protected by the First Amendment.”  Plaintiff had attempted to rely upon reverse confusion, and the Court reasoned that none existed based upon the following conceptual framework required for a showing of reverse confusion:
“[R]everse confusion … exists when a junior user uses its size and market penetration to overwhelm the senior, but smaller, user. The “senior user” is the first to adopt and use a mark anywhere in the country. The “junior user” is the second user, regardless of whether it adopts and uses a mark in a geographically remote location. Reverse confusion doctrine protects the senior user’s control of its mark and the goodwill created by the mark from a junior user’s employment of the mark, and 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.”
The Court agreed with Defendant’s that it would be absurd to believe the market was so saturated by Defendant’s use that consumers would believe they were buying software from Defendant itself, especially given the fact that Plaintiff and Defendant do not offer even remotely similar services or goods.  The Court also held that the First Amendment protected Defendant’s use of “clean slate” because it was artistically relevant (software to erase a person’s criminal history) and not explicitly misleading as to source (which requires a very high showing, including sponsorship or endorsement by Plaintiff).
Video game lawyers, trademark attorneys, and intellectual property enthusiasts alike will appreciate this decision.  Television and movie producers can breath a sigh of relief with this decision.

Fortres Grand Corp. v. Warner Bros. Entm’t Inc., 3:12-CV-535, 2013 WL 2156318 (N.D. Ind. May 16, 2013).


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