Fortres Grand Corporation v. Warner Brothers Entertainment
763 F.3d 696
| 7th Cir. | 2014Background
- Fortres Grand owns a registered trademark for "Clean Slate," a desktop-management/security program that restores public computers to a trusted baseline.
- Warner Bros. used the phrase "the clean slate" in The Dark Knight Rises to describe a fictional hacking program; promotional websites (alleged by plaintiff to be Warner Bros.'s) further described the fictional tool.
- After the film's release, Fortres Grand alleges a significant drop in sales and that consumers began associating its product with illicit software depicted in the movie.
- Fortres Grand sued under the Lanham Act (15 U.S.C. §§ 1114, 1125) and Indiana unfair-competition law, asserting reverse confusion (that consumers think Fortres Grand's product emanates from or is connected to Warner Bros.).
- The district court dismissed under Rule 12(b)(6) for failure to plausibly allege likelihood of confusion and held Warner Bros.' use was First Amendment–protected; the Seventh Circuit affirmed dismissal on the confusion ground and declined to reach the constitutional defense.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Fortres Grand plausibly alleged reverse confusion under the Lanham Act | Warner Bros.' prominent use of "the clean slate" in a blockbuster film and related websites caused consumers to think Fortres Grand's software originated from or was affiliated with Warner Bros., explaining the sales decline | The movie and Fortres Grand's desktop software are dissimilar goods; Warner Bros.' use was in a creative work and promotional sites tied to fiction, making source confusion implausible | Dismissal affirmed: plaintiff failed to plausibly allege likelihood of reverse confusion |
| Whether the product-similarity factor permits comparing Fortres Grand's software to the fictional program in the film | Fortres Grand: the relevant comparison is to the fictional software depicted (Rykin Data's program) | Warner Bros.: courts should compare the senior user's product to the junior user's tangible marketplace good (the movie) and its merchandising, not a fictional device | Court held the correct comparator is Warner Bros.' tangible product (the movie); even so, the goods are dissimilar and product-similarity weighs against confusion |
| Whether internet chatter and sales decline plausibly show actual confusion | Fortres Grand: web posts questioning whether the movie's tool is real and a drop in sales indicate actual confusion or marketplace harm | Warner Bros.: online speculation concerns the fictional capability, not confusion about source; search-result displacement doesn't show origin confusion | Court: alleged "internet chatter" and sales loss did not plausibly allege actual confusion about source; allegations insufficient |
| Whether alleged tarnishment should be remedied as reverse confusion | Fortres Grand: harm from associating its mark with illicit software supports relief under trademark doctrines | Warner Bros.: alleged harm is tarnishment/dilution, not source confusion; dilution protection is limited to famous marks | Court: plaintiff's real claim sounded in tarnishment/dilution, which requires a famous mark; reverse-confusion claim cannot be stretched to remedy tarnishment for a nonfamous mark |
Key Cases Cited
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (Supreme Court) ("goods" in § 1125 means tangible product sold in the marketplace)
- McGraw-Edison Co. v. Walt Disney Prods., 787 F.2d 1163 (7th Cir.) (product-similarity inquiry: whether public attributes different goods to a single source)
- Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947 (7th Cir.) (describing reverse confusion and harms to a senior user)
- Eastland Music Grp., LLC v. Lionsgate Entm't, Inc., 707 F.3d 869 (7th Cir.) (plausibility standard applies to allegations of consumer confusion)
- Peaceable Planet, Inc. v. Ty, Inc., 362 F.3d 986 (7th Cir.) (recognizing reverse confusion doctrine)