Kevin Qiao is a J.D. Candidate, 2021 at the NYU School of Law.

On December 28, 2018, Netflix released Black Mirror: Bandersnatch, a relatively unique interactive film that gave viewers the ability to make choices for the main character during critical moments (one particularly mind-bending choice involves telling the fictional character that the viewer is controlling him via Netflix), thereby altering the overall plot and leading the viewer to one of many possible endings. This format might trigger a hint of nostalgia for some of us who grew up with the “Choose Your Own Adventure” book series, in which the reader is asked to flip to certain page numbers to make key decisions for the characters throughout the story. In fact, in one early scene in Bandersnatch, the protagonist refers to an in-universe book called “Bandersnatch,” which serves as the “basis” for the videogame the film is centered on, as a “Choose Your Own Adventure” book. But Chooseco, the children’s book publishing company who owns the “Choose Your Own Adventure” mark, felt more than just a hint of nostalgia—it felt a full-blown $25 million case of trademark infringement. In their initial complaint, Chooseco alleges that Bandersnatch unfairly benefits from association with the “Choose Your Own Adventure Series,” for which Netflix failed to obtain a license during previous “extensive negotiations.” Chooseco asserts that the explicit mentioning of the mark as key plot point in the film, as well as the fact that the both products employ the same kind of interactivity, makes it highly likely that there has been consumer confusion. Additionally, they assert that they suffered reputational harm by this connection with the Black Mirror series. Like many stories told under the Black Mirror umbrella, Bandersnatch is often grim, violent, and full of upsetting images, so it makes for a less than ideal partnership for publishers of books aimed at young children.

Netflix was quick to file a motion to dismiss on the grounds that the usage of the term is protected under the First Amendment, particularly through the Rogers v. Grimaldi balancing test, which asks a court to evaluate if that mark has “artistic relevance” to the underlying creative work. If so, the mark must be “explicitly misleading” for an infringement claim to stand. The Vermont US District Court Judge, however, found that as a matter of law, the use of the mark had artistic relevance as it is used to “described the interactive narrative shared by the book, the videogame, and the film itself. Moreover, Netflix intended this narrative structure to comment on the mounting influence technology has in modern day life. In addition, the mental imagery associated with Chooseco’s mark adds to Bandersnatch’s 1980s aesthetic. Thus, Netflix’s use of Chooseco’s mark clears the purposely-low threshold of Rogers’ artistic relevance prong.”[1]

Much could be said about what the utility of the “artistic relevance” prong is if the threshold is set so low, but either way the Judge found it inappropriate to dismiss the case without further factual inquiry into whether the film is explicitly misleading. For what it’s worth, while there is a pretty severe circuit split on what satisfies the “explicitly misleading” prong, the Second Circuit effectively collapses the test with the standard, but fact intensive, likelihood of confusion analysis. It therefore makes sense to proceed with discovery. The judge also asserted that more factual evidence was required to evaluate if Netflix had a descriptive fair use defense (i.e., if Netflix was simply using the trademark in a purely descriptive way to describe media with a branching story), as it was at least “plausible” that Netflix used the term to attract consumer attention by associating the film with Chooseco’s books.[2] The court lacked necessary facts to determine whether reasonably prudent consumers perceive “Choose Your Own Adventure” as a brand or as a descriptive phrase in this context.[3]

Unsurprisingly, as an alternative means in order to shut down the litigation as quickly as possible, Netflix addressed this setback by adding a guns blazing attack on the validity of the “Choose Your Own Adventure” mark itself. Netflix now asserts that not only have they not violated Chooseco’s rights, Chooseco in fact has no rights at all based on the doctrine of genericide. In essence, this means that while the mark at one time referred to a specific product that bears its name, it now serves as the generic name for the entire category of the product (examples include aspirin or thermos, both of which were once brand names). Unlike their prior claims regarding descriptive fair use, which would likely require a vast amount of time and energy to administer surveys regarding the consumer perception on the mark, Netflix’s genericide claim has noticeably more factual assertions and cites specific examples, including Supreme Court opinions, that back up the claim that “any situation that requires making a series of unguided choices, or that provides an opportunity to go back and re-make a series of choices that turned out badly, is referred to as a “Choose Your Own Adventure.” [4] As such, Netflix believes the current usage of the term encompass the entire genus of “interactive-narrative fiction,” and Chooseco’s books and Bandersnatch are merely just one species of the genus.[5]

Interestingly, while the argument is a relatively solid one, outright cancellation of a trademark (which are infinite so long as they remain in use by the mark holder) is a tall order. It’s one thing to ask a judge for an exception to the mark owner’s rights. It’s another to ask them to completely eliminate any rights the owner thought that they might have had. Accordingly, it would seem likely, at least during the motion to dismiss phase, that a judge would require much more factual information to determine if the reasonably prudent consumer actually views “Choose Your Own Adventure” as a generic term. It’s entirely possible this push is just a litigation tactic to force a settlement. In the meantime, as the rest of us await a decision, we’ll have to let the process run its course to choose which ending this mark will face.

[1] Chooseco LLC v. Netflix, Inc., No. 2:19-cv-08, 2020 U.S. Dist. LEXIS 23510, at *18-19 (D. Vt. Feb. 11, 2020).

[2] Id. at *24.

[3] Id. at *25.

[4] Defendant Netflix Inc.’s Answer at *20, Chooseco LLC v. Netflix, Inc., No. 2:19-cv-08, 2020 U.S. Dist. LEXIS 23510.

[5] Id. at *21.

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