Fake Website Selling Fake Software Doesn’t Infringe Real Trademark

I’m taking a short break from the posts about my all-important, earth-shattering article because this legal opinion is too awesome not to. Read it here (Fortres Grand v. Warner Bros.). It involves: Dark Knight Rises, “Catwoman*,” fake software, real software, viral marketing, and the First Amendment. So, yeah, I kind of have to blog about it. Now.

* Before you ask: Eartha Kitt.

In The Dark Knight Rises, an important plot point is some fictional software called “Clean Slate” that can completely remove your criminal history from every database in the world—except in places that still keep paper files, I guess. Actually, “fictional” doesn’t do it justice. Perhaps “fantastic” or “outlandish” or “magical” are better.

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Don’t you hate it when your slates are not clean? Try Clean Slate brand slate cleaner.

Not terribly coincidentally, CLEAN SLATE is also the name of a software product published by the plaintiff. This product erases all record of your doings on a computer so that subsequent users can’t tell what you’ve been up to on the computer. The idea is that each user starts with a “clean slate.” The reason that this doesn’t seem so coincidental to me is that CLEAN SLATE isn’t terribly imaginative. In trademark parlance, it’s a “suggestive” mark. That isn’t to say it’s a bad mark—in fact, it may be a very good* mark—only that third parties are likely to come up with it for similar software products.

* By “good” I don’t necessarily mean “strong,” but a mark that is (1) enforceable (the more easily, the better), and (2) able to acquire consumer goodwill.

But the plaintiff isn’t all that bothered by what are really just a few stray references in the movie. As part of the efforts to promote the film, the film producers created a website and a Tumblr site for the fictional company—Rykin Data—that makes the fictional/fantastic/outlandish “Clean Slate” software product. The Tumblr site is still up, and you can get a good look at: Anne Hathaway (playing Selina Kyle/Catwoman), terrific fake website copy (“Now under new management, Rykin Data hopes to provide for the public even more opportunities to guarantee a fresh start in today’s world.”), and a fake U.S. Patent abstract (a nice touch for an IP lawyer). The fictional/fantastic/outlandish program “Clean Slate” is given its own page, including a fake “how it works” section and an “is it legal?” section*.

* Um, it it were real, it wouldn’t be legal.

Watch Out for that LOC Factor!

Plaintiffs called this a classic case of “reverse confusion,” which occurs when a larger competitor starts using a smaller company’s mark to the point that the larger competitor’s use supplants the smaller company’s use. The Judge was not so sure. He thought that confusion could happen only between real products. You can’t confuse a consumer into buying a product that doesn’t actually exist.

Of course, the film producers are using CLEAN SLATE to promote something. The mere fact that the goods are not competitive does not normally end the inquiry. The “competitive proximity of the goods” is only one factor to determine likelihood of confusion, although if the goods are sufficiently dissimilar, it can be determinative (which is why you can have DELTA Airlines, DELTA faucets and DELTA dental). Two of the three opinions that the court cites in support of this conclusion all at least go through the motions of weighing the factors. The other was an order denying a temporary restraining, in part because the plaintiff’s likelihood of success was very small given the dissimilarity of the goods, and the drastic effect of issuing the TRO (which would have spared the world George of the Jungle 2*).

* Caterpillar, the manufacturer of heavy machinery, was embarrassed that its vehicles were on display in the George of the Jungle movies. Can you blame them? Unfortunately, acute embarrassment isn’t always actionable.

This isn’t to say that the court will end up reaching the same result if it went through the likelihood-of-confusion factors.

Ginger Rogers, the Crimson Tide and the First Amendment

More interestingly, the court had an alternative basis for dismissing the plaintiff’s complaint: the First Amendment right to free expression. Trademark law “should be construed to apply to artistic worlds only where the public interest in avoiding consumer confusion outweighs the public interest in free expression.” So says the famous decision Rogers v. Grimaldi, in which (the) Ginger Rogers sought to stop Fellini’s film Ginger and Fred, about cabaret performers who imitated the real Ginger Rogers and Fred Astaire. The court went on to hold that, where the mark is a celebrity’s name and the use is artistically relevant to a title of work, the balance will never tip in favor of infringement unless the title is explicitly misleading.

Rogers was about how you title or name your expressive works. But the situation here is different. It’s the use of a real software product’s name in a fake website promoting a fake software product, but also promoting a real movie. The court held that the Rogers test applied, and found that the websites were artistic (which is true) and not explicitly misleading (also true).

But does the Rogers test apply so broadly, such that any expressive or creative work has broader than usual latitude to use others’ marks (and not just celebrity names)? In Ala. Bd. of Trustees v. New Life Art, the University of Alabama sued iconic painter Daniel Moore for, well, painting things like this: pictures of University of Alabama players wearing University of Alabama uniforms. University sports uniforms are protectable, so there was a colorable claim.* In rejecting the University of Alabama’s claim for trademark infringement, the Eleventh Circuit held: “The extent of [Moore’s] use of the University’s trademarks is their mere inclusion (their necessary inclusion) in the body of the image which Moore creates to memorialize and enhance a particular play or event in the University’s football history.” Even if some consumers might mistakenly think the University of Alabama endorsed Moore’s paintings, the interest in artistic expression so outweighs that harm that the courts just won’t recognize trademark infringement.

* The case is regarded as something of a public relations screw-up because many University of Alabama alumni loved Moore’s work, precisely because it portrays their beloved football team so vibrantly. Why did the University file so foolish a lawsuit? You should talk to these guys, who were pulling the strings.

The Daniel Moore case isn’t quite a perfect fit here, but it was close enough for the judge. Whereas Moore used a very powerful and well-known mark, but did so because it was artistically necessary, the film producers used a weaker and rather obscure mark, but it was not artistically necessary (though certainly it was artistically relevant). The film-maker’s point was that there will always be a need to make up names for fake products, and they can’t clear every single one, and they shouldn’t have to.

Stay tuned for the appeal.

Thanks for reading!