There's Always Money in the Banana Stand

Cheesy Poofs.  Oceanic Airlines.   Sabor de Soledad.  Dunder Mifflin.  The Cornballer.  Sex Panther.

Each of these product or brand marks had a similar beginning–as a fictional product in a fictional world.  And with one exception, these marks have continued to exist only in the worlds for which they were created.  But what happens when a third party, without first obtaining a license, decides to capitalize on the goodwill associated with fictional marks that have no corresponding product in the real world?

Well, the answer is two-fold:  (1) If a mark is famous enough, there might be a case of infringement; and (2) beyond that, we don’t really know. Some courts have held that extremely powerful and well-known fictional marks are entitled to some form of trademark protection.  In DC Comics v. Kryptonite, 336 F.Supp.2d 324 (S.D.N.Y. 2004), for example, the court held that the term “kryptonite” was so well known as a part of the Superman brand that a bicycle lock company that adopted the name Kryptonite was, in fact, infringing…never mind the lack of actual evidence of consumer confusion as to source, or evidence of consumer confusion caused by close proximity of the goods.  In a similar vein, 20th Century Fox successfully enjoined an Australian beer maker from producing and selling a brand of Duff Beer (the famous beer brand from The Simpsons) on trademark and passing-off grounds.  However, there is an argument that even a trademark for the Simpson’s version of Duff Beer would only be a trademark for an entertainment product, and not an actual beer.  Without evidence of proximity confusion or source confusion, a court could only fall back on the Kryptonite case–a standard that maybe only Duff Beer could meet.

Two other recent cases, though not directly on point, may provide some guidance.  In one, Eastland Music Group v. Lionsgate Entertainment, No. 12-2928, (7th Cir., 2013), Eastland Music Group claimed trademark over the band name Phifty-50, as well as over the name 50/50.  Then in 2011, Lionsgate released its feature film, 50/50, with the name based on the 50/50 chance that one of the main characters has to survive his struggle with cancer.  Eastland, naturally, claimed infringement.  In rejecting this claim, the Seventh Circuit focused on whether the title of the fictional work causes any source confusion with the registered trademark–which in this case, it did not.  The court recognized that 50/50 is an extremely common phrase, and that it would be highly unlikely that consumers would attend the Seth Rogen/Joseph Gordon-Levitt cancer movie in hopes of seeing two hours of this.

The second recent case is Fortres Grande Corp. v. Warner Bros. Entertainment, which revolves around the use of the fictional “Clean Slate” software in The Dark Knight.  Even though the “Clean Slate” software Selina Kyle (Catwoman) can’t wait to get her hands on is fictional, a real life software package also exists with the same name; and Fortres Grande, the company behind the software, was none too pleased by the use of their product’s name.  As a result, Fortres Grand claimed infringement by “reverse confusion” against Warner Bros.  ”Reverse confusion” is more or less what it sounds like–a junior user of a trademark (normally a larger company) with superior market reach and penetration creates confusion in regards to a mark also claimed by a senior user (usually a smaller company).  The District Court for the Northern District of Indiana, however, had a problem with the infringement argument similar to the one the Seventh Circuit did in Eastland: there should be some confusion as to source for an infringement claim to succeed.  As the judge points out, the Clean Slate software in The Dark Knight is purely fictional, and is a product of the movie industry.  To think that someone would be confused about which company produced which product is, as the judge stated, “absurd.”

So where does that leave us?  In the case of a mark for a fictional product, the senior mark user must be able to show one of two things:  (1) either that the mark is as strong, if not stronger, than that of Superman’s Kyptonite (a mighty feat indeed), or (2) that there is evidence of confusion as to the source of the allegedly infringing mark. This second argument is also a difficult one–it is unlikely, for instance, that consumers purchasing a Cornballer would confuse the product as having been put into the market by Fox.  That said, with the increase in promotional tie-in products put out by film and tv companies, an argument that consumers may be confused by marks on real versions of fictional products is not unfounded.  But will it be enough to prove a case of confusion in court?

Maybe only if you are Superman.

–Stewart Bohan

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2 Responses to Trademark Rights and Fictional Products. Or, Why I Can and Will Open My Own Frozen Banana Stand

  1. Kim Smith says:

    I am actually surprised these types of cases are not more common. It is a pretty convenient way to make a quick buck. Just let the people writing the tv show or movie come up with a product, then develop it and profit off of the show/movie’s goodwill.

  2. Avery VanPelt says:

    Great post, Stewart! While reading this, I was wondering about what happens if the TV or film company does intend to promote a real-life product based on the fictional brand, a point you addressed at the end of your discussion. Many of the likelihood of confusion tests for trademark infringement do consider the possibility of either party expanding its product line using its mark. I wonder how this “expansion” is interpreted when it isn’t expansion to a new good or service, but expansion from fiction to reality. Think about how many children’s movies result in huge revenue streams from spin-off or tie-in products. If Disney or 20th Century Fox (or their like) were behind the fictional brand, I would almost expect them to capitalize on this potential market recognition, and thus I might initially be confused as to its source if the product were actually offered in the marketplace.