Based on this, Fortres Grand sued Warner Bros. for trademark infringement. Trademark infringement claims require "consumer confusion" over the source of a product. And U.S. District Court Judge Philip Simon concluded that a fictional movie product cannot create the required confusion. The court reasoned that there was no plausible claim that consumers would make mistaken purchase decisions about the tangible products: one product is a movie, and the other product is real computer software.
The court also upheld the use of the term "clean slate" under the 1st Amendment.
Fortres Grand v. Warner Bros.
Warner Bros. clean slate software only exists in the fictional world of Gotham; it does not exist in reality. - Fortres Grand v. Warner Bros.
In The Dark Knight Rises, Catwoman attempts to procure a software that will delete her virtual footprint, allowing her to escape her criminal past. Various people refer to the software is four times as "clean slate." Film promotional websites also reference the "clean slate" program. According to the (fake/promotional) Rykin Data Corporation website, clean slate "is the informal name for Rykin Data’s primary service, in which the corporation will amass personal histories (specifically off the Internet) and destroy it permanently."
“So where is it – the program, the clean slate?” - Selina Kyle (Catwoman)
The court analyzed all three claims under the same trademark infringement analysis. The court noted, "An essential ingredient of trademark infringement is 'a likelihood of confusion among consumers' as to the source of a product." General confusion is not enough.
Fortres Grand claimed "reverse confusion," which means that a large junior user (Warner Bros. in this case) saturates the market with a trademark identical or similar to a smaller, senior user (Fortres Grand). It argued that Warner Bros.' saturation of the market through its highly successful film and promotional websites confused consumers.
For reverse confusion, the junior's alleged saturation must cause the public to assume that the senior's products actually belong to the junior or that the products are somehow affiliated. The court described the framework of reverse confusion cases: "a small regional player uses a trademark for a product (tires, beverages, appliances) that is then completely overwhelmed when a much larger player (Goodyear, Quaker Oats, Maytag) rolls out a similar product with the same trademark on a nationwide level, and what ensues is mass consumer confusion."
The court quickly pointed out the obvious problem with the Fortres Grand's argument: Warner Bros.' clean slate isn't real. Fortres Grand cannot argue that Warner Bros. damaged it with saturation of fictional clean slate software. The court noted that consumer confusion depends on confusion between the actual products. And in this case, Warner Bros.' actual product is a movie.
The court rejected any argument that a consumer could believe the fictional clean slate is connected to Fortres Grand. The court reasoned that it would be absurd to think that customers buy tickets to The Dark Knight Rises because of a perceived association of the film with Fortres Grand. Because there was no plausible claim of consumer confusion, the court dismissed.
Here, there is simply no plausible claim that consumers will make "mistaken purchase decisions" about the "tangible product" being sold on the marketplace: no one looking for Fortres Grand's software is likely to mistakenly buy a ticket to The Dark Knight Rises. - Fortres Grand v. Warner Bros.
The court used the Rogers test to determine that the First Amendment trumped any trademark claims. Under Rogers, a federal trademark claim is inapplicable to "artistic works" if the use of the trademark is (1) "artistically relevant" to the work and (2) not "explicitly misleading" as to the source or content of the work.
The court concluded that Warner Bros.' use easily met the "purposefully low threshold" of artistic relevance, noting that the software was part of a major plot point. The court then found that Warner Bros. also met the second prong, reasoning that "explicitly misleading" requires an affirmative statement or conduct. If nothing else, it requires more than the mere use of the trademark.
Faced with this reality, Fortres Grand did not dispute that Warner Bros. met the Rogers test. Instead, Fortres Grand argued that Rogers only applied to "forward confusion." The court rejected this limited reading of Rogers and found that the First Amendment protected Warner Bros.' use.