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Wiping the Slate Clean: When Fake Movie Products Have Real-World Counterparts

Often when practicing entertainment law, particularly in Canada, attempts to analyze a particular situation run up against a road-block: there seems to be no caselaw covering the issue, and you’re stymied as to how to advise your client (beyond offering the most banal observations like “Well, there’s a risk”). Then, of course, the second-guessing begins: there must be some caselaw on this topic, and I’ve just missed it – right? It’s nice to have a decision like Fortres Grand Corporation v Warner Bros Entertainment (USDC, N.D. Indiana, 2013 WL 2156318) which covers multiple grounds: it provides some judicial guidance on a matter and confirms that you weren’t wrong when you couldn’t find any other decisions. Though the decision is an American one, and the analysis doesn’t perfectly map onto Canadian law, it is still a decision worth the attention of film & TV production lawyers.

The Fortres Grand case was brought to my attention by Friend of the Signal Gigi Morin, and contains the following statement, always music to a frustrated lawyer’s ears: “there is surprisingly little case law on the point”. The “point” in question in Fortres Grand is simple to describe (and in fact is so described by the authors of McCarthy on Trademarks and Unfair Competition): “Is it trademark infringement if a fictional company or product in a movie or television [show] bears the same name or brand as a real company or product?”

The dispute in the case arose from the following facts: the defendants produced and released a movie (The Dark Knight Rises) in which the characters use and refer to a software program called “clean slate” (occasionally referred to in the movie as “the clean slate”; the same program also appears on immersive promotional websites created in connection with the marketing of the movie); the plaintiffs manufacture and sell a software program also called “Clean Slate”, and they also enjoy a US federal trade-mark for the name; the plaintiffs argued that the activities of the defendant amounted to trade-mark infringement.

As set out by the court, a successful trade-mark infringement action requires demonstrating a “likelihood of confusion among consumers” as to the source of a product. Under US law, there are two prevailing approaches to arguing trade-mark infringement: “forward” confusion involves a junior user (i.e., second-in-time user) who tries to “capitalize on the senior user’s [i.e., first-in-time user] good will and established reputation by suggesting that his product comes from the same source as does the senior user’s product”; “reverse” confusion involves a junior user who is larger and has greater market penetration than the senior user attempting to “overwhelm” the senior user’s control of its mark and goodwill and attempts to confuse the public into believing that the senior user’s product comes from, is connected to or endorsed by the junior user. In Fortres Grand, the plaintiff argued that reverse confusion was occurring.

The court dismissed the action on a motion for summary judgment, based on an intuitively simple problem with the plaintiff’s case: the defendant did not actually have a “real” product which competed with the plaintiff’s product for consumer attention; the only “real” product which the defendants had was a movie – as the court describes it, “in analyzing the potential for consumer confusion in this case, one must compare Fortres Grand’s “Clean Slate” software to Warner Bros.’ real product – The Dark Knight Rises“. Once that comparison is made, it is incredibly difficult to prove consumer confusion, as demonstrated by the handful of cases which the Fortres Grand court cites:

  • Ocean Bio-Chem Inc. v Turner Network Television (741 FSupp 1546) – MOW in which a child dies from pollution caused by a fictional company called “Starbrite Batteries”; Star Brite Distributing Inc. sued on the theory that the movie’s use of its trade-mark created a likelihood of confusion; court rejected the claim
  • Davis v Walt Disney Co. (430 F3d 901) – MOW in which heroes battle a company called “Earth Protectors”; plaintiff had founded an environmental advocacy organization called “Earth Protector”; court rejected claim
  • Caterpillar v Walt Disney Co. (287 FSupp2nd 913) – plaintiff’s farm equipment was featured in movie “George of the Jungle 2”; court rejected claim, noting “it appear unlikely … that any consumer would be more likely to buy or watch [the movie] because of any mistaken belief that Caterpillar sponsored this movie”

I offer the following extensive quote from the decision, because the judge articulates the argument much better than I could [all emphasis is in the original]:

This would be an easy case if Warner Bros. had saturated the market by rolling out a huge, nationwide campaign for a new computer program called “Clean Slate”. That really would have been a classic, “worst case scenario” of reverse infringement. But of course Warner Bros. didn’t do anything of the sort. Instead, it merely released a fictional movie that happened to involve an entirely fictional software referred to descriptively as “clean slate”.

To state a claim for reverse confusion in this instance, Fortres Grand would have to plausibly allege one of two things: 1) consumers have been deceived into believing that the fictional “clean slate” software in the movie “emanates from, is connected to, or is sponsored by” Fortres Grand or 2) consumers have been deceived into believing that the film The Dark Knight Rises “emanates from, is connected to, or is sponsored by” Fortres Grand. … For entirely obvious reasons, neither of these is a plausible claim. First, no consumer – reasonable or otherwise – can believe the fictional “clean slate” software in the movie emanates from, is connected to, or is sponsored by Fortres Grand because the fictional software does not exist in reality. Any consumer going online or into a store looking to buy the “clean slate” software mentioned in The Dark Knight Rises would quickly find that they are unable to do so because it is not a real product.

Another way of understanding this point is to say that Warner Bros. is only using “clean slate” in a “non-trademark” way. In other words, the film’s use of the phrase “clean slate” is not “identifying the source” of the software product (because there is no real software product), nor is it really “identifying the source” of the film. …

Second, no consumer – reasonable or even unreasonable – would believe that the The Dark Knight Rises itself is connected to Fortres Grand. Warner Bros. makes this point well: “Plaintiff is not in the motion picture business, and it would be absurd to think that customers buy tickets to The Dark Knight Rises or purchase the DVD/Blu-ray because of a perceived association of the Film with [the plaintiff’s] products”. As the Seventh Circuit recently put it in a similar context, the Complaint “does not allege that the use of [the trademark] has caused any confusion about the film’s source and any such allegation would be too implausible to support costly litigation.”

In addition to dismissing the plaintiff’s case for failing to pass muster on the “likelihood of confusion” test, the court held that Warner Bros. use of “clean slate” was protected by the US 1st Amendment: referring to the 2nd Circuit decision in Rogers v Grimaldi (875 F2d 994), the court notes that the Lanham Act (the US federal trademarks legislation) is inapplicable to artistic works if the defendant’s use of a mark in the artistic work is (1) “artistically relevant” to the work and (2) not “explicitly misleading” as to the source or content of the work. The court in Fortres Grand held that the defendants satisfied both prongs of the test: the first step of the test involves a low threshold to clear (“the level of relevance merely must be above zero”), while the second step involves a high threshold (“explictly” misleading) – Warner Bros. easily met both steps.

While not directly applicable to the Canadian context, the Fortres Grand case offers guidance for film & TV production lawyers confronted with a script report which shows that their client’s project wants to make use of a fictional product whose name conflicts with a real world product.

Wiping the Slate Clean: When Fake Movie Products Have Real-World Counterparts

Depicting Trade-marks in Artistic Works: University of Alabama vs New Life Art

Although a decision from the US 11th Circuit Court of Appeals has limited precedential value in Canadian courts, the decision in University of Alabama vs New Life Art, Inc. (filed June 11, 2012) (hat tip: Hollywood, Esq.) is useful for Canadian entertainment lawyers because it indicates the analytical framework which courts use in assessing whether infringement has occurred when a trade-mark is incorporated into an artistic work.  The case is particularly instructive for lawyers trying to provide guidance to clients who want to make use of trade-marked material (for example, a sports team jersey) in a different work (such as a movie).

The case involved artist Daniel A. Moore, who has built a reputation for creating realistic paintings depicting scenes from sporting events, with particular focus, relevant to this dispute, on scenes involving the University of Alabama football team (a sample of Mr. Moore’s work can be found here).  Moore’s paintings are sold, reproduced as prints (which are also sold) and reproduced on paraphenalia such as mugs and calendars.  Although the University and Moore had, for about a decade, entered into agreements relating to Moore’s work, for a much longer period of time Moore had been preparing his paintings without any involvement with, or permission from, the university.  As these things go, the University demanded that Moore stop executing his paintings without their permission – Moore refused, and the University sued Moore for, among other things, trade-mark infringement.

While the entire decision is interesting in its own right, the nub of the court’s conclusion is this:

“we conclude that the First Amendment interests in artistic expression so clearly outweigh whatever consumer confusion that might exist on these facts that we must necessarily conclude that there has been no violation of the Lanham Act [the US analogue of the Trade-marks Act (Canada)]” (pages 18-19 of the .pdf of the decision)

While US First Amendment jurisprudence does not map precisely onto Canadian freedom of expression analysis, the emphatic nature of the 11th Circuit’s decision is worth noting – and, as the court notes when citing a string of precedents, the danger of restricting free expression will factor heavily into a court’s decision when confronted with expressive materials (even materials which can be used in commerce and have a significant commercial component).  As the court states:

“Therefore, we have no hesitation in joining our sister circuits by holding that we should construe the Lanham Act narrowly when deciding whether an artistically expressive work infringes a trademark. This requires that we carefully “weigh the public interest in free expression against the public interest in avoiding consumer confusion.” An artistically expressive use of a trademark will not violate the Lanham Act “unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work.” (citations omitted)(page 24 of the .pdf of the decision)

The primary elements in a successful defence to a claim of trade-mark infringement appear then to be that the use of the mark must have some artistic relevance to the underlying expressive work, unless there is an explicit attempt to mislead consumers as to source or content.

The decision in the University of Alabama case can be comfortably read with the recent Southern District of New York decision in the “Hangover: Part II” case where Louis Vuitton Malletier, S.A. sued Warner Bros. for trade-mark dilution because of a scene in the movie making use of counterfeit Louis Vuitton handbags.  (For earlier Signal coverage of the case, see here; for Hollywood, Esq.’s coverage, see here; and for LawLawLand’s coverage, see here.)  The court granted the defendant’s motion to dismiss the plaintiff’s claim because the use of a knock-off bag was “protected … because it has some artistic relevance to the Film and is not explicitly misleading”.

While it is worth stressing again that the cases noted above are US decisions and so would not be controlling in Canadian courts, it is also worth highlighting that claims for trade-mark infringement should not be viewed by producer’s counsel as open-and-shut cases.  Mere use of a trade-marked item in a new work will not automatically trigger liability – there are countervailing freedom of expression issues which should be taken into account.

Depicting Trade-marks in Artistic Works: University of Alabama vs New Life Art

Sounds Like a Revolution – Trade-marking Sounds in Canada

On March 28, 2012, the Canadian Intellectual Property Office (CIPO) announced that it is now accepting applications for “sound marks”.  As Lorraine Fleck points out in a guest post at the IPKat blog, the genesis of this change in Canadian trade-mark policy stems from an application by Metro-Goldwyn-Mayer (otherwise known as MGM) for a trade-mark for its “roaring lion” sound, which film fans will recognize from the opening credits of MGM films (the application can be seen here – give MGM props for perseverance: they first filed the application in 1992).

CIPO’s announcement stipulates that applications for sound marks must include the following elements:

  1. state that the application is for the registration of a sound mark;
  2. contain a drawing that graphically represents the sound;
  3. contain a description of the sound; and
  4. contain an electronic recording of the sound.

The graphic representation of the sound will almost inevitably be a “spectrogram” and the “electronic recording of the sound” must be “in MP3 or WAVE format, limited to 5 megabytes in size, and recorded on a CD or DVD”.

The change brings Canada into line with trade-marks practice in other jurisdictions such as the United States, Australia and the EU.  What sorts of sounds have been registered as marks in the US?  Helpfully, the US Patent and Trademark Office hosts a “Kids’ Pages” directory which contains links to multiple registered sound marks.  Among them:

The change has a number of interesting implications for Canadian entertainment lawyers.  As Jeanette Lee points out, once registrations for sound marks start being issued, another element will be added to errors and omissions (E&O) clearance reviews: people who incorporate pre-existing works into their own works will need to be cognizant that a sound they are incorporating might be protected as a registered trade-mark.

There will certainly be an expansion in the number of “things” which can be trade-marked, which may make lawyers and trade-mark agents salivate at the thought of additional filings, though proposed sound marks will still need to meet the usual thresholds for trade-mark registration of not being functional and/or clearly descriptive or deceptively misdescriptive.  When it comes to “entertainment products”, however, policy issues are raised where there is an overlap between a copyrighted work and a proposed sound mark.  (As an example, in the US, the composition “Sweet Georgia Brown” is a registered mark of the Harlem Globetrotters in connection with “entertainment services in the nature of basketball exhibitions”.)  Canadian courts have expressed some reservations about using trade-marks to extend intellectual property protection over copyrighted works (see Drolet v. Stiftung Gralsbotschaft, 2009 FC 17), since the time-limited quasi-monopoly provided by copyright could be skirted by the possibly-perpetual protection afforded by trade-mark registration.  As Ivy Tsui speculated at IPilogue (The “Unconventionality” of Sound Marks), could the “Hockey Night in Canada” theme song be trade-marked, thereby trumping a transfer of copyright?

The immediate effect of the CIPO announcement is to expand the possibility of IP protection for sound-based assets – what will play out in the long-term will be the question of quite where the boundaries should exist between trade-mark and copyright protection for those same assets.

Sounds Like a Revolution – Trade-marking Sounds in Canada

Protecting Fictional Trade-Marks

Back in April of 2010, we posted about efforts in the UK undertaken by the producers of Coronation Street to protect their interest in a fictional brand of beer featured on the show (Trade-mark Protection for a Fictional Beer).  With a hat tip to the indispensable Lon Sobel at Entertainment Law Reporter, Benjamin Arrow has written a great article on protecting fictional trade-marks: “Real-Life Protection for Fictional Trademarks” (21 Fordham Intell. Prop. Media & Ent. L.J. 111).

Assessing the question from the point of view of US law, Arrow looks at trade-mark and copyright issues relating to the protection of fictional brands, with nods to the case where DC Comics sought (and obtained) an injunction against someone publishing a newspaper called The Daily Planet, and the seminal Australian case on the topic, wherein the producers of The Simpsons, sought to prevent use of the word “Duff” in connection with the sale of beer (Twentieth Century Fox Film Corporation and Matt Groening Productions Inc v the South Australian Brewing Co Ltd and Lion Nathan Australia Pty Ltd [1996] FCA 1484).

Protecting Fictional Trade-Marks

Titles and Trademarks (and Cigarettes!) in Film and TV Projects

As we’ve discussed previously here at the Signal (Title Dispute – Similar or Identical Titles for Film and TV Projects) the extent to which the “title” of a motion picture or television project can function as a trade-mark involves a fairly detailed analysis.  Leonard Glickman has published “What’s In a Title?” (hat tip: Entertainment Law Reporter), which offers a lengthy consideration of the matter, including a discussion of the possibility of a title which would otherwise be unprotectable as a trademark acquiring a “secondary meaning”.  As Leonard notes in his conclusion:

In light of the foregoing restrictions with respect to the protection and registration of titles, what options are available to producers of films or other single work titles? In Canada, an applicant could apply on a proposed use basis for a series of works and stretch out the application process by extending the time frame for filing a declaration of use. In the interim, the applicant could produce and release a sequel thereby creating a series and removing obstacles to registration and enforceability. Even if a sequel is not produced and the application is abandoned, the producer can start to build secondary meaning in the title and attempt to enforce its rights in the title against third parties. When filing the application, the applicant must have a bona fide intent that it will produce a series of productions. Otherwise, the application or registration may be open to challenge under Section 30(i) of the Canadian Trade-marks Act.

US commentators have suggested there is merit to registering single work titles under the state registration system. Although the registrations have little substantive value, they will be disclosed in title search reports and potentially deter a third party from adopting the title. Another method used to protect titles is to register proposed titles with the Motion Picture Association of America’s Title Registration Bureau, the members of which are the Hollywood studios and hundreds of independent production companies. Once a title is so registered, other members of the Bureau are bound by the Bureau’s rules which impose restrictions on their ability to adopt and use the same title or a confusingly similar title.

On a slightly tangential (but related, really!) point, Samuel M. Duncan’s article “Protecting Nominative Fair Use, Parody, and Other Speech-Interests by Reforming the Inconsistent Exemptions from Trademark Liability”, while bearing a bit of a mouthful of a title, offers an excellent overview of US trademark law and, of particular value for entertainment lawyers, provides the tools to assess when the use of a trademark in an audio-visual project is shielded from claims of infringement.

Finally, with a hat tip to the Dear Rich blog, an interesting little tidbit about depicting trademarked tobacco products in movies.  As readers of the Duncan article, linked to above, will know, the mere depiction of a trademarked product in a film or TV project may not give rise to a viable infringement claim (though often E&O policy clearance requirements will nevertheless prohibit such a depiction) – notwithstanding that, however, Philip Morris has made this rather polite request to film and TV producers:

Unfortunately, the fact that we do not engage in product placement does not mean that our brands are never shown. Some producers and directors choose to depict our brands in their work without our permission. But we are limited in our ability to stop all displays of our brands because federal and state trademark laws, as well as the U.S. Constitution, protect freedom of expression and the “fair use” of trademarks in works such as movies and television shows. Our position is clear – we do not want our brands or brand imagery depicted in movies and television shows. The unauthorized use of our brands and brand imagery perpetuates the misunderstanding among some that we pay or are otherwise responsible for these depictions, which is simply not the case. We strongly encourage the movie studios to eliminate references to or depictions of our brands.

Titles and Trademarks (and Cigarettes!) in Film and TV Projects