Argued December 10, 2013
Appeal from the United States District Court for the Northern District of Indiana, South Bend Division. No. 12-cv-00535 -- Philip P. Simon, Chief Judge.
For FORTRES GRAND CORPORATION, an Indiana corporation, Plaintiff - Appellant: Phillip Barengolts, Attorney, Pattishall, Mcauliffe, Newbury, Hilliard & Geraldson, Chicago, IL; Christopher R. Putt, Attorney, May, Oberfell & Lorber, Mishawaka, IN.
For WARNER BROTHERS ENTERTAINMENT, INCORPORATED, a Delaware corporation, Defendant - Appellee: Andrew H. Bart, Attorney, Jenner & Block Llp, New York, NY.
For Electronic Frontier Foundation, Amicus Curiae: Eugene Volokh, Attorney, University of California, School of Law, Los Angeles, CA.
Before MANION, ROVNER, and HAMILTON, Circuit Judges.
Manion, Circuit Judge.
Fortres Grand Corporation develops and sells a desktop management program called " Clean Slate." When Warner Bros. Entertainment used the words " the clean slate" to describe a hacking program in the movie, The Dark Knight Rises, Fortres Grand noticed a precipitous drop in sales of its software. Believing Warner Bros.' use of the words " clean slate" infringed its trademark and caused the decrease in sales, Fortres Grand brought this suit. Fortres Grand alleged that Warner Bros.' use of the words " clean slate" could cause consumers to be confused about the source of Warner Bros.' movie (" traditional confusion" ) and to be confused about the source of Fortres Grand's software (" reverse confusion" ). The district court held that Fortres Grand failed to state a claim under either theory, and that Warner Bros.' use of the words " clean slate" was protected by the First Amendment. Fortres Grand appeals, arguing only its reverse confusion theory, and we affirm without reaching the constitutional question.
I. Factual Background
Fortres Grand develops and sells a security software program known as " Clean Slate." It also holds a federally registered trademark for use of that name to identify
the source of " [c]omputer software used to protect public access computers by scouring the computer drive back to its original configuration upon reboot." Trademark Reg. No. 2,514,853. As the description in the trademark registrations suggests, the program wipes away any user changes to a shared computer (wiping the slate clean, so to speak). It is the kind of program that might be used at schools, libraries, hotels, etc., to keep public computers functioning properly and free of private data. Because a desktop management program is security software, its single most important ...