November 5, 2013 | By Daniel Nazer

A Trademark Troll Rises—and Falls: EFF Asks Court to Shut Down Ridiculous Trademark Claims

Another day, another silly trademark claim – but even silly claims can have real consequences for folks who don’t have the resources to fend them off. That’s why EFF today filed an amicus brief in the case of Fortres Grand v. Warner Brothers. This case involves a dispute over a fictional product – a software program called ‘Clean Slate’ – that appeared in a Batman movie. Turns out there’s a real program with the same name. There’s also a real company called Acme – but that doesn’t mean Wile E. Coyote can’t order from the fictional one.

The claim is absurd, so we’re not too worried that Warner Brothers is going to lose. But we are worried about the next creator – the independent filmmaker, the photographer, author, or musician who fears to use a term in her work because it echoes a trademark. Where the use of a mark is clearly protected by the First Amendment, like this one, it should be thrown out early, before the case gets too expensive to defend.

Warner Brothers released The Dark Knight Rises in 2012. One of the film’s subplots involves Selina Kyle searching for a program called ‘Clean Slate’ that she hopes will remove her criminal record from every computer in Gotham. Meanwhile, in the real world, Fortres Grand happens to sell a program called Clean Slate. After the movie came out, Fortres Grand sued Warner Brothers for trademark infringement. Apparently, it feared that consumers might confuse its real-life product for a fanciful and entirely fictional program featured in a Batman movie.

The district court promptly, and correctly, dismissed Fortres Grand’s claims. As the court explained: “no consumer – reasonable or otherwise – can believe the fictional ‘clean slate’ software in the movie emanates from, is sponsored by, or connected to Fortres Grand because the fictional software does not exist in reality.”

We are urging the Seventh Circuit to affirm the district court’s common-sense ruling not just because it’s right, but because it sends a message that trademark cases like this can and should be thrown out quickly. While Warner Brothers has the resources to fight this case, many artists cannot afford to defend against trademark litigation. And even frivolous trademark claims help feed the restrictive clearance culture that pressures artists to remove or blur trademarks from creative works.

Our brief in this case was prepared by the First Amendment Amicus Brief Clinic at UCLA School of Law. Thanks to Professor Eugene Volokh and his students for their excellent work!

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