Catwoman Wipes a Clean Slate - Trademark Fair Use

Originally published as "Weighing Trademark Claims When Real Products Appear in Movies and TV" in the TEXAS LAWYER on November 10, 2014. Reprinted with permission.

By: Tamera H. Bennett

Anyone who has watched an episode of "The Big Bang Theory" is sure to hear about "Star Wars" and "Star Trek." Do TV or film producers need permission to include trademark references in the program or movie? From "The Big Bang Theory" to Batman movies, the debate over trademark infringement and fair use in media properties is a hot topic.

A trademark is a word, phrase, symbol or design, or a combination of those things that identifies and distinguishes the source of the goods of one party from those of another. Trademarks enable the public to recognize goods or services as originating from a particular source. A trademark owner can stop others from using its trademark in order to prevent confusion about the source of the goods or services. Use of another's trademark can be permissible as a "fair use."

The legal standard for trademark infringement is measured by a likelihood of consumer confusion. In its simplest terms, the standard asks whether a consumer will be confused as to the source of a product or service. A number of factors may be reviewed in making a determination of likelihood of consumer confusion in a trademark infringement case.

In the Aug. 14, 2014 ruling in Fortres Grand Corp. v. Warner Bros. Entertainment, the U.S. Court of Appeals for the Seventh Circuit stated "only confusion about 'origin, sponsorship, or approval of ... goods' supports a trademark [infringement] claim."

The legal dispute in Fortres Grand arose from The Dark Knight Rises, in which Selina Kyle (Catwoman) seeks to erase her criminal record from every computer database around the world. To erase herself, she had to get her paws on the fictional "Clean Slate" software. Fortres Grand Corp., a very real company, has a software product called the "Clean Slate" and a registered trademark for "[c]omputer software used to protect public access computers by scouring the computer drive back to its original configuration upon reboot."

According to the Seventh Circuit ruling, Fortres Grand noticed product sales were declining after the 2012 movie release and sued Warner Bros. for trademark infringement. In a 2013 ruling on a motion to dismiss, the Northern District Court of Indiana held for Warner Bros., finding no likelihood of consumer confusion as to the source of origin of the two products since Warner Bros. is in the business of making movies and Fortres Grand makes software.

The District Court relied on the 1989 U.S. Court of Appeals for the Second Circuit opinion in Rogers v. Grimaldi which held creative works, as compared to purely commercial endeavors, are protected as free speech by the First Amendment. Because of the First Amendment protection, the Rogers court concluded a balancing act must occur between the rights of the trademark owner and the First Amendment rights arising in the creative work. The court only reaches the balancing act after finding a likelihood of consumer confusion.

The balancing test used by the Second, Seventh, Ninth and Eleventh circuits, is the two-prong Rogers test: 1. whether the use of the third-party trademark has artistic relevance; and 2. if so, is it deliberately misleading as to the source or content of the work.

While there’s always a risk of a client getting sued if their next film references a third-party trademark, a client’s risk is reduced if it is only a passing reference and is not deliberately misleading to consumers.
— Tamera H. Bennett

The District Court found there was no plausible claim for consumer confusion between the Fortres Grand product "Clean Slate" and Warner Bros.' movie The Dark Knight Rises. The District Court, in applying Rogers, found artistic relevance in the film. And, that using the term "Clean Slate" was not explicitly misleading as to the source or the content of the movie. The District Court held that Warner Bros.' use was protected by the First Amendment. Because the Seventh Circuit affirmed the motion to dismiss on the grounds of no likelihood of consumer confusion, the Seventh Circuit had no reason to address the First Amendment question.

If Warner Bros. is OK to reference a fictional product that just happens to be a real product name and registered trademark, can clients use "Coke" or "Star Wars" in their films or TV shows without concern?

The sitcom "The Big Bang Theory" is centered on the lives of four geeky friends. The storyline revolves around their geekdom that includes "Star Wars," "Star Trek," and "Dungeons and Dragons." While the references to third-party trademarks flow in and out of the storyline, it's hard to imagine the trademark owners could succeed in a trademark infringement claim. Even if the court found there was a likelihood of consumer confusion between the source of the TV show and the source of the trademark, the Rogers test should trump.

Under prong one, the referenced brand names and trademarks tie into the show and have artistic relevance to the subject matter. And, under prong two, the producers of "The Big Bang Theory" don't seem to be deliberately misleading consumers to a connection between the source of the show and the owners of the trademarks. In fact, the show references so many different trademarks in the normal course of conversation between the characters it seems unlikely a consumer would consider each brand had a connection to the show.

While there's always a risk of a client getting sued if their next film references a third-party trademark, a client's risk is reduced if it is only a passing reference and is not deliberately misleading to consumers. So, Catwoman gets to move forward with a clean slate on trademark infringement. And, it's just a theory, but "The Big Bang Theory" probably shouldn't worry, either.

Tamera H. Bennett is a trademark, copyright and entertainment attorney and mediator practicing law in Texas and Tennessee as president at Bennett Law Office in Lewisville.

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