Software Maker Files Appeal in Batman Film Trademark Suit

Software company Fortres Grand is pressing to revive its trademark infringement claims against Warner Bros. Entertainment Inc. for using the name of the real-life “Clean Slate” computer program in the Batman movie The Dark Knight Rises. Lawyers for the security software maker, based in Plymouth, IN, 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 Grand contends its sales of its software dropped in half after consumers mistakenly believed it was the same program mentioned in the 2012 Batman film.

In the trial court, Chief U.S. District Judge Philip Simon in the Northern District of Indiana dismissed Fortres Grand's claims as “implausible” because no one would believe the software maker had sponsored ' or had any connection to ' the Batman film. Fortres Grand Corp. v. Warner Bros. Entertainment Inc., 3:12-cv-535. Fortres Grand attorney Phillip Barengolts said in an appellate brief filed in October 2013 that the drop in sales after the release of the movie confirmed “reverse confusion,” in which 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.”

Barengolts, a partner at Chicago's Pattishall, McAuliffe, Newbury, Hilliard & Geraldson said in Fortres Grand's 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, District Judge Simon concluded there was no trademark infringement because the two real products at issue were dissimilar ' a movie and a software program. 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 Grand claims it has sold millions of dollars worth of its Clean Slate software, for which it registered a trademark in 2011.

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 websites of Rykin Data Corporation, a fictional company featured in the film that sold the software. Fortres Grand is seeking damages for its lost sales and money spent to clear up alleged consumer confusion.

In the appellate brief, Fortres Grand counsel Barengolts claims that Judge 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 argues the First Amendment does not apply in this case. Barengolts noted that the First Amendment “does not insulate a party from liability for speech that is likely to cause, or that has caused, significant consumer confusion.”

Judge Simon had relied on the 1989 decision by the U.S. Court of Appeals for the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), in concluding that Warner Bros. was entitled to artistic expression under the First Amendment.

Fortres also seeks to revive its unfair competition claim under Indiana law.

Amanda Bronstad is a Staff Reporter for The National Law Journal, an ALM affiliate of Entertainment Law & Finance.

Software company Fortres Grand is pressing to revive its trademark infringement claims against Warner Bros. Entertainment Inc. for using the name of the real-life “Clean Slate” computer program in the Batman movie The Dark Knight Rises. Lawyers for the security software maker, based in Plymouth, IN, 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 Grand contends its sales of its software dropped in half after consumers mistakenly believed it was the same program mentioned in the 2012 Batman film.

In the trial court, Chief U.S. District Judge Philip Simon in the Northern District of Indiana dismissed Fortres Grand's claims as “implausible” because no one would believe the software maker had sponsored ' or had any connection to ' the Batman film. Fortres Grand Corp. v. Warner Bros. Entertainment Inc., 3:12-cv-535. Fortres Grand attorney Phillip Barengolts said in an appellate brief filed in October 2013 that the drop in sales after the release of the movie confirmed “reverse confusion,” in which 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.”

Barengolts, a partner at Chicago's Pattishall, McAuliffe, Newbury, Hilliard & Geraldson said in Fortres Grand's 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, District Judge Simon concluded there was no trademark infringement because the two real products at issue were dissimilar ' a movie and a software program. 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 Grand claims it has sold millions of dollars worth of its Clean Slate software, for which it registered a trademark in 2011.

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 websites of Rykin Data Corporation, a fictional company featured in the film that sold the software. Fortres Grand is seeking damages for its lost sales and money spent to clear up alleged consumer confusion.

In the appellate brief, Fortres Grand counsel Barengolts claims that Judge 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 argues the First Amendment does not apply in this case. Barengolts noted that the First Amendment “does not insulate a party from liability for speech that is likely to cause, or that has caused, significant consumer confusion.”

Judge Simon had relied on the 1989 decision by the U.S. Court of Appeals for the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), in concluding that Warner Bros. was entitled to artistic expression under the First Amendment.

Fortres also seeks to revive its unfair competition claim under Indiana law.

Amanda Bronstad is a Staff Reporter for The National Law Journal, an ALM affiliate of Entertainment Law & Finance.