By: Ariana Morello

After two years in the making, on December 28, 2018, Netflix released the long awaited Black Mirror: Bandersnatch.  For those who are unfamiliar, Black Mirror centers around technology and its potential consequences, often providing a bleak look into a dystopian future.  Due to its interactive and non-linear form, Bandersnacth was the first-of-its-kind and became widely popular with Netflix fans.  The movie follows protagonist Stefan as he attempts to become a famous video game creator.  By employing interactive storytelling, Netflix gives viewers the ultimate power; allowing them to choose between two scenarios, scene by scene.  The options range from tame scenarios, such as what Stefan will have for breakfast and what music he will listen to, to the morbid where viewers decide if Stefan should kill his father and what to do with the body.  As viewers choose each scenario, they subsequently seal Stefan’s fate.  Choices made earlier in the movie impact later options, with some storylines only reachable by a specific series of choices.  As a result of this new concept, Bandersnatch has gained mass popularity, with many viewers watching and rewatching the hours of footage to achieve different endings.  Amongst this mass popularity however, publisher Chooseco LLC (“Chooseco”) has filed a lawsuit against Netflix for trademark infringement due to Netflix’s use of the phrase “Choose Your Own Adventure.”

The Allegations

Chooseco is suing Netflix over use of its “Chose Your Own Adventure” trademark.  A trademark is any word, name, symbol, or design used to identify the goods of one manufacturer from those of another. To succeed on trademark infringement claim, a plaintiff must prove it owns a valid and legally protectable mark, it has priority in use of the mark over the defendant, and the defendant’s use is likely to cause consumer confusion.

Chooseco has a Choose Your Own Adventure brand of books that allows its readers to make choices which affect the outcome of the plot.  Similarly, in the first few minutes of Bandersnatch, Stefan references a fictional “Choose Your Own Adventure” book, which sets up the entirety of the  movie’s plot. Chooseco alleges the use of this phrase is trademark infringement.  Though Netflix pursued a license in 2016 with Chooseco for use of the “Choose Your Own Adventure” trademark, it never received one.  Before the release of Bandersnatch, Chooseco allegedly sent Netflix a cease and desist request to prevent its use, “in connection with its marketing efforts for another television program.”

In its complaint, Chooseco states Netflix “intentionally and willfully used Chooseco’s famous mark in order to benefit from the positive associations with…the brand by adults who read the series as youngsters.”  Further, Chooseco claims the goodwill for its products has been diluted due to the film’s dark, disturbing content.  Accordingly, the confusion caused by Netflix’s infringement on Chooseco’s trademark has caused confusion and tarnished the quality of the “Choose Your Own Adventure brand,” impacting book sales.

In February, Chooseco also amended its complaint to include allegations that Netflix appropriated Chooseco’s trade dress.  Trade dress consists of the packaging and visual appearance of a product. To succeed on a trade dress infringement claim, Chooseco must prove its trade dress is distinctive or has acquired secondary meaning, and that Netflix’s use is likely to cause consumer confusion.  Chooseco states Netflix appropriated the “rounded color borders” featured on the cover of “Choose Your Own Adventure” books by marketing materials with the rounded color border and also including it within the film.  Chooseco believes Netflix has used its rounded color border trade dress in order to “capitalize on nostalgia for Choose Your Own Adventure books’ ‘retro’ double border design.” Chooseco is seeking damages of at least $25 million, as well as injunctive relief.

Netflix Responds  

In March, Netflix responded to the allegations, urging the court to dismiss the lawsuit.  In its response, Netflix argued for dismissal under the Lanham Act, the federal trademark law, based on the First Amendment’s protection of artistic works, the fair use doctrine, and the lack of a likelihood of consumer confusion.  Netflix’s argument involves the following elements:

First, the Frist Amendment bars Chooseco’s claims because it is an artistic work.  Citing multiple cases, Netflix explains that the First Amendment is implicated when use of a trademark is “part of a communicative message.”  Often, as is arguably the case here, the risk of misunderstanding is outweighed by the interests of artistic expression.

Second, the Lanham Act does not prevent others from using a mark in a descriptive sense, such as in Bandersnatch where the phrase “Choose Your Own Adventure” is used to describe “a fictitious book with an imaginary author.”  Under the fair use doctrine, a defense is created where use of a mark is descriptive and used fairly in good faith to describe goods or services or a party.  Chooseco cannot prevent Netflix from using the phrase in a descriptive sense because “The owner’s rights in a mark extend only to its significance as an identifying source, not to the…descriptive meaning of a mark.” (citing Kelly-Brown v. Winfrey).

Third, Netflix claims Chooseco has failed to cite significant consumer confusion.  To determine if consumer confusion has occurred, courts utilize the Polaroid Test and analyze several factors such as the strength of the senior user’s mark, the similarity of the marks, the relatedness of the products, the sophistication of buyers, and the likelihood of expansion of the product lines.  A company may conduct a consumer survey in order to prove confusion.

Arguing in the alternative, Netflix claims even if Chooseco addressed these Polaroid factors, its argument would fail. In summary, Netflix argues that consumers would not associate a children’s brand focusing on adventure stories with Bandersnatch which has mature themes. Teetering on sarcasm, Netflix states the fact that reviews of Bandersnatch may refer to “Choose Your Own Adventure” “is no more evidence of confusion than for a review of the film ‘Austin Powers’ to refer to the genre of ‘James Bond’ films.” Lending to even less confusion, the opening credits and marketing of Bandersnatch prominently display Netflix as its source, rather than confuse consumers as to its origin.

Lastly, Netflix calls Chooseco’s trade dress claim, “even weaker” and scoffs as “absurd” the idea of consumers confusing Netflix’s Bandersnatch borders with Chooseco’s borders.  In its defense, Netflix argues Chooseco has not even registered its trade dress for the “rounded color borders,” which means it is barred from even stating the claim.  Even if it had, Netflix claims there is nothing distinctive about the borders and Chooseco has failed to show consumer confusion.  Netflix goes on to explain Chooseco’s borders are “squared off and indented, creating a mushroom-like shape” while Netflix’s Bandersnatch borders are rounded at all four corners.

In sum, it remains to be seen what path Netflix will choose to take.  Netflix could opt for a settlement with Chooseco or, in an ironic twist, Netflix may take its chances with the District Court for the District of Vermont, putting its fate in the hands of the judge.