Fortres Grand Corp. v. Warner Bros. Entertainment Inc.
947 F. Supp. 2d 922
N.D. Ind.2013Background
- Fortres Grand markets and sells software named “Clean Slate”; it holds a federal trademark registration for that name in relation to computer software.
- The defendant, Warner Bros., released The Dark Knight Rises (2012), featuring a fictional software program called “clean slate” created by Rykin Data.
- Two promotional websites (rykinda-ta.com and rykin data.tumblr.com) depicted the fictional Rykin Data and its “Clean Slate,” including a fictional patent and other related materials.
- Fortres Grand alleges three claims: trademark infringement under the Lanham Act, federal unfair competition, and Indiana state unfair competition, based on Warner Bros.’ use of the term “clean slate.”
- Warner Bros. moves to dismiss under Rule 12(b)(6), arguing no likelihood of confusion and, alternatively, First Amendment protection.
- The court considers admissible websites as central to the complaint and analyzes reverse confusion rather than forward confusion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Fortres Grand states a claim for reverse confusion | Fortres Grand alleges Warner Bros. saturated the market with its film and sites causing confusion with Fortres Grand | Warner Bros. argues no plausible consumer deception since the real product is a movie, not a competing software | Yes/No: The court holds Fortres Grand fails to plausibly show consumer deception; grant dismissal (conceptual hold pending amendment). |
| What is the proper product comparison for likelihood of confusion | Fortres Grand’s claim rests on confusion between its software and Warner Bros.’ film/website | Proper comparison is between each side’s real products (Fortres Grand’s software vs. The Dark Knight Rises) rather than fictional in-film product | The court adopts the real-product comparison and finds no likelihood of confusion. |
| Whether Rogers v. Grimaldi First Amendment test applies to reverse confusion and to websites | Rogers should not bar reverse confusion; First Amendment should only limit forward confusion | Rogers test applies and protects expressive uses in films and related sites | Rogers test applies to reverse confusion; use is protected by First Amendment. |
| Whether the websites are protected as artistic expression and not commercial speech | Websites convey branding and promotional content | Websites are creative extensions of the film and protected as artistic expression | Rogers protection extends to websites; no actionable trademark claim. |
Key Cases Cited
- Ocean Bio-Chem, Inc. v. Turner Network Television, Inc., 947 F.2d 1556 (Fla. 1990) (proper comparison is between real products, not fictional in-film items; not likely to cause confusion)
- Davis v. Walt Disney Co., 430 F.3d 901 (8th Cir. 2005) (fictional content compared to real products; not likely to confuse)
- Caterpillar Inc. v. Walt Disney Co., 287 F.Supp.2d 913 (C.D. Ill. 2003) (unlikelihood that a film’s content implies sponsorship by a real brand)
- Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (Two-prong test: artistic relevance and no explicit misleading source)
- Custom Vehicles, Inc. v. Forest River, Inc., 476 F.3d 481 (7th Cir. 2007) (reverse confusion framework; saturation may mislead public about source)
- Eastland Music Group, LLC v. Lionsgate Entertainment, Inc., 707 F.3d 869 (7th Cir. 2013) (Rogers applied to artistic works; First Amendment considerations)
- E.S.S. Entm’t, 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008) (applies Rogers test to body of artistic works)