It’s been settled in the 7th U.S. Circuit Court of Appeals last week: the Catwoman case isn’t valid. Okay, so maybe no one is actually calling it that, but it’s an amusing enough epithet for the public so we’ll go with it for now. The trademark infringement lawsuit filed by a company who created a product that is coveted by Catwoman in the film The Dark Knight Rises was filed by Fortres Grand, a software company that’s been selling “Clean Slate” technology since 2000. It’s for the “Clean Slate” software program that will erase her criminal history from every computer database in the world that Catwoman agrees to “exploit her skills as a cat burglar,” as is reported in this Hollywood Reporter article online. And if you think that well-informed San Antonio trademark lawyers might have been skeptical of the suit from the beginning, you’d probably be right, but hey, that didn’t stop Fortres Grand from claiming trademark infringement in the first place.
The challenge in proving trademark infringement in this situation, according to San Antonio trademark lawyers following the case, would have been product confusion. The Fortres Grand product can supposedly be used to erase the trail of history on a computer. Kind of similar, right? Eh, maybe not, say the courts. Fortres Grand was insisting that the Hollywood studio would overwhelm the market with its uses of “clean slate,” causing consumers to be confused. But there are actually seven criteria (“the standard seven-factor test”) that the court uses to determine whether the “reverse confusion” claim under trademark law would apply to the Catwoman case, and none of them really came close to being valid, a federal judge decided.
“I think the fatal flaw in Fortres Grand’s case has to do with correctly identifying the exact product that Warner Bros. has introduced to the market – a film, not a piece of software,” said the dismissive judge in May of 2013. Yikes, that’s pretty scathing. But you can’t entirely blame Fortres Grand, for trying to aggressively protect its product trademark. As expert San Antonio trademark lawyers are well aware, if you don’t make the effort to protect your product, it’s likely that someone else can swipe it later. Fortres Grand, who filed an appeal, obviously thought so too.
The ruling judge in the appeal, Seventh Circuit Judge Daniel Manion got all technical about the decision he issued, saying it’s not enough to invalidate the claim of infringement that the products are dissimilar (film vs. software), but that it has to do with “whether the products are the kind the public attributes to a single source.” Arguing that web surfers looking either for the Warner Bros.’ product (the film) or the Fortres Grand product (the software) are very unlikely to imagine that either is sponsored by the other, “assuming, safely, that Fortres Grand is not using Catwoman as a spokesperson for its program’s efficiency,” the Judge Manion managed to get a sarcastic comment in the ruling before chucking out the appeal.
And if Judge Manion’s ruling has San Antonio trademark lawyers smirking at its mocking tone, it has the rest of us with criminal histories feeling pretty sad that Fortres Grand’s product won’t do what a fictional Catwoman was promised, either.