Here’s a fun case. Plaintiff, an Indiana corporation, has sold security software under the mark CLEAN SLATE since 2000. In Defendant Warner Bros’ latest Batman movie, The Dark Knight Rises, Batman promises to obtain a software program called CLEAN SLATE that will erase a person’s criminal history from every computer database in the world. This has apparently caused hundreds of internet references for the fictional movie software, to which Plaintiff objects.
What do you think is the likely outcome of this case? Can it survive a Motion to Dismiss? Is Warner Bros really using CLEAN SLATE as a trademark?
It also shines a spotlight on that magic moment in the marketing department where an invention titled “Targeted Data Detection and Elimination Algorithm” becomes…CLEAN SLATE! [Note: The patent application is from movie promotional materials. It is not real.]
Fortres Grand Corporation v. Warner Bros Entertainment Inc.
Court Case Number: 1:12-cv-00263-PPS-RBC FileDate: Monday, July 30, 2012 Plaintiff: Malibu Media LLC PlaintiffCounsel: Paul J. Nicoletti of Nicoletti & Associates PLLC Defendant: John Does 1-14 Cause: Copyright Infringement, Contributory Infringement Court: Northern District of Indiana Judge: Chief Judge Philip P. Simon ReferredTo: Magistrate Judge Roger B. Cosbey
Court Case Number: 2:12-cv-00294-PPS-APR FileDate: Monday, July 30, 2012 Plaintiff: Malibu Media LLC PlaintiffCounsel: Paul J. Nicoletti of Nicoletti & Associates PLLC Defendant: John Does 1-11 Cause: Copyright Infringement, Contributory Infringement Court: Northern District of Indiana Judge: Chief Judge Philip P. Simon ReferredTo: Magistrate Judge Andrew P. Rodovich
Mortar Net continues its attempts to protect its “dovetail-shaped line of fibrous mesh products for use in masonry applications” (see example in Exhibit A below). Mortar Net’s counsel have a pretty clear hurdle to overcome in the “functionality doctrine,” which prevents manufacturers from protecting specific features of a product by means of trademark law. If a feature gives a producer a competitive advantage which is not related entirely to its function as a brand identifier, then it cannot be trademarked, regardless of advertising and promotional efforts. Such features are more appropriately protected under patent law. This is Mortar Net’s third filing of the year (see Related Cases below) and all have been assigned to a different judge, so maybe they’ll get lucky and find a judge willing to extend trademark protection to their dovetail design.
Mortar Net USA Ltd v. Masonry Reinforcing Corporation of America
Court Case Number: 2:12-cv-00252-PPS-PRC File Date: Tuesday, July 03, 2012 Plaintiff: Mortar Net USA Ltd Plaintiff Counsel: Daniel W Glavin of O’Neill McFadden & Willett LLP Defendant: Masonry Reinforcing Corporation of America Cause: Trade Dress Infringement, Federal Trademark Infringement, Trademark Infringement, Federal Unfair Competition, Common Law Infringement Infringement, Common Law Unfair Competition Court: Northern District of Indiana Judge: Chief Judge Philip P Simon Referred To: Magistrate Judge Paul R Cherry