Often when practicing entertainment law, particularly in Canada, attempts to analyze a particular situation run up against a road-block: there seems to be no caselaw covering the issue, and you’re stymied as to how to advise your client (beyond offering the most banal observations like “Well, there’s a risk”). Then, of course, the second-guessing begins: there must be some caselaw on this topic, and I’ve just missed it – right? It’s nice to have a decision like Fortres Grand Corporation v Warner Bros Entertainment (USDC, N.D. Indiana, 2013 WL 2156318) which covers multiple grounds: it provides some judicial guidance on a matter and confirms that you weren’t wrong when you couldn’t find any other decisions. Though the decision is an American one, and the analysis doesn’t perfectly map onto Canadian law, it is still a decision worth the attention of film & TV production lawyers.
The Fortres Grand case was brought to my attention by Friend of the Signal Gigi Morin, and contains the following statement, always music to a frustrated lawyer’s ears: “there is surprisingly little case law on the point”. The “point” in question in Fortres Grand is simple to describe (and in fact is so described by the authors of McCarthy on Trademarks and Unfair Competition): “Is it trademark infringement if a fictional company or product in a movie or television bears the same name or brand as a real company or product?”
The dispute in the case arose from the following facts: the defendants produced and released a movie (The Dark Knight Rises) in which the characters use and refer to a software program called “clean slate” (occasionally referred to in the movie as “the clean slate”; the same program also appears on immersive promotional websites created in connection with the marketing of the movie); the plaintiffs manufacture and sell a software program also called “Clean Slate”, and they also enjoy a US federal trade-mark for the name; the plaintiffs argued that the activities of the defendant amounted to trade-mark infringement.
As set out by the court, a successful trade-mark infringement action requires demonstrating a “likelihood of confusion among consumers” as to the source of a product. Under US law, there are two prevailing approaches to arguing trade-mark infringement: “forward” confusion involves a junior user (i.e., second-in-time user) who tries to “capitalize on the senior user’s [i.e., first-in-time user] good will and established reputation by suggesting that his product comes from the same source as does the senior user’s product”; “reverse” confusion involves a junior user who is larger and has greater market penetration than the senior user attempting to “overwhelm” the senior user’s control of its mark and goodwill and attempts to confuse the public into believing that the senior user’s product comes from, is connected to or endorsed by the junior user. In Fortres Grand, the plaintiff argued that reverse confusion was occurring.
The court dismissed the action on a motion for summary judgment, based on an intuitively simple problem with the plaintiff’s case: the defendant did not actually have a “real” product which competed with the plaintiff’s product for consumer attention; the only “real” product which the defendants had was a movie – as the court describes it, “in analyzing the potential for consumer confusion in this case, one must compare Fortres Grand’s “Clean Slate” software to Warner Bros.’ real product – The Dark Knight Rises“. Once that comparison is made, it is incredibly difficult to prove consumer confusion, as demonstrated by the handful of cases which the Fortres Grand court cites:
Ocean Bio-Chem Inc. v Turner Network Television (741 FSupp 1546) – MOW in which a child dies from pollution caused by a fictional company called “Starbrite Batteries”; Star Brite Distributing Inc. sued on the theory that the movie’s use of its trade-mark created a likelihood of confusion; court rejected the claim
Davis v Walt Disney Co. (430 F3d 901) – MOW in which heroes battle a company called “Earth Protectors”; plaintiff had founded an environmental advocacy organization called “Earth Protector”; court rejected claim
Caterpillar v Walt Disney Co. (287 FSupp2nd 913) – plaintiff’s farm equipment was featured in movie “George of the Jungle 2?; court rejected claim, noting “it appear unlikely … that any consumer would be more likely to buy or watch [the movie] because of any mistaken belief that Caterpillar sponsored this movie”
I offer the following extensive quote from the decision, because the judge articulates the argument much better than I could [all emphasis is in the original]:
This would be an easy case if Warner Bros. had saturated the market by rolling out a huge, nationwide campaign for a new computer program called “Clean Slate”. That really would have been a classic, “worst case scenario” of reverse infringement. But of course Warner Bros. didn’t do anything of the sort. Instead, it merely released a fictional movie that happened to involve an entirely fictional software referred to descriptively as “clean slate”.
To state a claim for reverse confusion in this instance, Fortres Grand would have to plausibly allege one of two things: 1) consumers have been deceived into believing that the fictional “clean slate” software in the movie “emanates from, is connected to, or is sponsored by” Fortres Grand or 2) consumers have been deceived into believing that the film The Dark Knight Rises ”emanates from, is connected to, or is sponsored by” Fortres Grand. … For entirely obvious reasons, neither of these is a plausible claim. First, no consumer – reasonable or otherwise – can believe the fictional “clean slate” software in the movie emanates from, is connected to, or is sponsored by Fortres Grand because the fictional software does not exist in reality. Any consumer going online or into a store looking to buy the “clean slate” software mentioned in The Dark Knight Rises would quickly find that they are unable to do so because it is not a real product.
Another way of understanding this point is to say that Warner Bros. is only using “clean slate” in a “non-trademark” way. In other words, the film’s use of the phrase “clean slate” is not “identifying the source” of the software product (because there is no real software product), nor is it really “identifying the source” of the film. …
Second, no consumer – reasonable or even unreasonable – would believe that the The Dark Knight Rises itself is connected to Fortres Grand. Warner Bros. makes this point well: “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 [the plaintiff's] products”. As the Seventh Circuit recently put it in a similar context, the Complaint “does not allege that the use of [the trademark] has caused any confusion about the film’s source and any such allegation would be too implausible to support costly litigation.”
In addition to dismissing the plaintiff’s case for failing to pass muster on the “likelihood of confusion” test, the court held that Warner Bros. use of “clean slate” was protected by the US 1st Amendment: referring to the 2nd Circuit decision in Rogers v Grimaldi (875 F2d 994), the court notes that the Lanham Act (the US federal trademarks legislation) is inapplicable to artistic works if the defendant’s use of a mark in the artistic work is (1) “artistically relevant” to the work and (2) not “explicitly misleading” as to the source or content of the work. The court in Fortres Grand held that the defendants satisfied both prongs of the test: the first step of the test involves a low threshold to clear (“the level of relevance merely must be above zero”), while the second step involves a high threshold (“explictly” misleading) – Warner Bros. easily met both steps.
While not directly applicable to the Canadian context, the Fortres Grand case offers guidance for film & TV production lawyers confronted with a script report which shows that their client’s project wants to make use of a fictional product whose name conflicts with a real world product.