by Paul Alan Levy
A useful ruling last week from the federal court in Northern Indiana dismissed its face a complaint brought by an obscure company that makes “Clean Slate” software, which can be used to wipe all user activity off a computer network. The plaintiff complained that Warner Brothers' The Dark Knight Rises showed its characters discussing a fictional software program, also called “Clean Slate,” that sounds like plaintiff’s software on steroids—it can wipe all record of one character's criminal record off every computer in the world. Plaintiff alleged that, given the saturation of popular culture by the movie and accompanying web sites, it risked “reverse confusion”—public perception that its software has some connection to Warner Brothers.
The most compelling and significant part of the opinion was its deployment of the Rogers v Grimaldi test of artistic relevance, which avoids conflicts between the First Amendment and trademark law by barring trademark claims over expressive uses of trademarks so long as the trademark has artistic relevance to the expressive use and the use of the mark is not explicitly misleading. The court held that, when the Rogers test applies, the plaintiff must allege must show that the defendant’s use exceeds the protections of Rogers. Similarly significant is the holding that uses on the web sites are equally protected by Rogers because the web sites are just extensions of the artistic expression of the films themselves.
The First Amendment discussion was offered as alternative holding to the first part of the opinion, which melded the concepts of non-trademark use and several of the traditional “likelihood of confusion” factors to hold that the complaint, considered in the context of the film and web sites themselves, does not sufficiently allege likelihood of confusion. I found this part of the opinion far less satisfactory. It is hard to see the film’s use of “clean slate” as non-trademark use—it is, after all, the name of the fictional product, and in theory the public might have been confused about whether the product with thie fictional name was made by plaintiff company. More sensible is the discussion of the fact that confusion about who makes the software is not one of the selling points for the movie, which is the only thing that Warner Brothers is selling. In that sense, the name does not receive a "commercial" use; but the court discusses the commercial/non-commercial distinction only in the course of its First Amendment Rogers v. Grimaldi section.
Indeed, although the opinion makes much of the fact that the software in the film is fictional (noting that McCarthy's trademark treatise mentions the dearth of case law about fictional references to trademarks), the broader point is that the fictional characger of the product was irrelevant. The very fact that trademark holders complain when the authors of fiction (or pseudo-historical dramas, for that matter) include references to real products by their real names as part of the story is an example of excessive effort to control use of trademarked names.
Trademarked goods can be culturally significant, and it can help explain a character to portray the character in relation to a particular good or service. Even if some companies pay to have their products placed in movies as part of their marketing efforts, authors should not be have to worry about referring to trademarked items whose names they have not paid to license.
