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Chooseco v. Netflix: Who Will Get to Choose Their Own Adventure?

Reports Trademark

Chooseco LLC v. Netflix, Inc., No. 2:19-cv-08 (D. Vt. Feb. 11, 2020).

Netflix recently was denied its motion to dismiss a lawsuit over its Black Mirror episode Bandersnatch. Chooseco—the company that owns the trademark rights to the children’s book series Choose Your Own Adventure—sued Netflix in January 2019 for trademark infringement, trademark dilution, and unfair competition.

Unlike other episodes of the popular Black Mirror series, Bandersnatch requires viewers to make choices for the characters, thereby dictating the direction of the plot. However, the episode’s potential similarities to Chooseco’s book series are not limited to the interactive nature of the film itself. As Judge Sessions wrote, “[t]he protagonist in Bandersnatch explicitly stated that the fictitious book at the center of the film’s plot was a ‘Choose Your Own Adventure’ book. In addition, the book, the videogame, and the film itself all employ the same type of interactivity as Chooseco’s products.”

Seeking $25 million in damages, Chooseco first invoked the Lanham Act—the federal statute that provides remedies for trademark infringement. But the Second Circuit has held that the Lanham Act will not be applied to an expressive work unless (1) the disputed use has no artistic relevance to the underlying work, or (2) if it has some artistic relevance, the use explicitly misleads as to the source or the content of the work. Rogers v. Grimaldi, 875 F.2d 994 (2nd Cir. 1989).

Regarding the first prong, Chooseco claimed that Bandersnatch was not purely an artistic work. Given the early stage of the lawsuit, they argued that “[d]iscovery is needed to determine whether Bandersnatch is, at least in part, a marketing tool designed to collect behavioral information on its viewers” and that “Netflix may have sold product placement opportunities as a form of advertisement, which would also suggest the film is not purely artistic.”

Netflix countered, and Judge Sessions agreed, that the First Amendment equally protects works with mixed purposes as those that are “purely artistic.” See Joseph Burstyn, Inc. v. Wilson, 343 U.S. 495 (1952). The judge thereby sided with Netflix in holding that the episode passes the artistic prong of Rogers. Regarding the second prong, however, he concluded that there was enough of a factual dispute for the case to proceed to discovery. He reasoned that the prevalence of the same type of interactivity as Chooseco’s products in Bandersnatch and the fact that the episode was set in an era when Chooseco’s books were popular both increase “the likelihood of consumer confusion.”

In addition to the First Amendment defense above, Netflix also raised a descriptive fair use defense, which contends “that the use was made (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith.” Kelly-Brown v. Winfrey, 717 F.3d 295 (2nd Cir. 2013). Judge Sessions largely dismissed this defense on the grounds that (1) it is at least plausible Netflix used the term to attract public attention by associating the film with Chooseco’s book series, (2) there are insufficient facts necessary to determine whether consumers perceive the phrase “Choose Your Own Adventure” in a descriptive sense or associate it with Chooseco, and (3) Chooseco’s factual allegations make it plausible that Netflix acted in bad faith. As a result, the court refused to resolve the trademark infringement claim before proceeding to discovery.

Chooseco also brought a dilution claim, alleging that Netflix’s use of the trademark harmed its reputation and diluted its distinctive quality. Again, given the early stage of the lawsuit, Judge Sessions agreed that proceeding to discovery is warranted. In particular, he agreed that Chooseco’s factual allegations around Bandersnatch’s dark and disturbing content, Netflix’s use of the trademark in reference to a fictitious book in the film, and the commercial nature of the film presented a plausible dilution claim.

Lastly, the court found that Chooseco met its pleading requirements for its common law cause of action for unfair competition. Notwithstanding Netflix’s argument that “Choose Your Own Adventure” has been used by others to describe a branch of storytelling, Judge Sessions concluded that Chooseco’s factual allegations, taken altogether, merit discovery.

Given that the parties had discussed but failed to reach a licensing agreement several years ago, they may now have impetus to restart discussions—this time in the context of a potential settlement.