A Murky Slate

Does a product have to exist in real life in order to infringe a trademark in real life? According to a U.S. District judge in Indiana, the answer is "Yes."

Warner Bros. Entertainment prevailed in a unique trademark infringement lawsuit in which a software company sued Warner Bros. over the use of a fictional software program featured in the blockbuster movie "The Dark Knight Rises."

Fortres Grand, a software company which has been selling its Clean Slate software since 2000, sued Warner Bros. over its use of the fictional "clean slate" software that Anne Hathaway's character Selina Kyle/Catwoman wants to use to erase her criminal record from every computer database in the world.

Fortres Grand claimed that its Clean Slate software, a security program that erases your computer's history (but not your criminal history - sorry!) suffered "reverse confusion" from Warner Bros.' use of a fictional product with the same name as the plaintiff's real product.

Warner Bros. argued that “Plaintiff is not in the motion picture business, and it would be absurd to think that customers buy tickets to 'The Dark Knight Rises' or purchase the DVD/Blu-ray because of a perceived association of the Film with Fortres Grand’s products.”

Judge Philip Simon sided with Warner Bros. for various reasons (and seems to have gotten a kick out of the case).

"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," writes Judge Simon in his decision.

Judge Simon goes on to write that even if Warner Bros.' use of "clean slate" had caused any sort of consumer confusion (an implausible claim, says the judge), the use of the term would still be protected by the First Amendment" The phrase "clean slate" is both artistically relevant to the work in which it appears, and is not "explicitly misleading as to the source or content of the work."