By Jody Coultas, J.D.
Although the film qualified as an artistic work, the court did not have sufficient evidence to determine whether its use of the CHOOSE YOUR OWN ADVENTURE mark was explicitly misleading.
Netflix, Inc., has been denied dismissal of trademark infringement and dilution claims filed by the creators of a popular children’s book series that was referenced in a film created by Netflix. There was not sufficient evidence to reject the assertion that use of the mark CHOOSE YOUR OWN ADVENTURE was explicitly misleading, according to the federal district court in Burlington, Vermont. The court easily concluded that Netflix’s Bandersnach, a feature-length installment of its Black Mirror series, was an artistic work. However, discovery was required to determine whether the use of the mark explicitly misled viewers as to the source or the content of the work. There was also not enough evidence to determine whether Netflix’s references to publisher Chooseco LLC’s book series and trade dress were protected by the fair use doctrine. The court also concluded that Chooseco sufficiently stated a claim for dilution (Chooseco LLC v. Netflix, Inc., February 11, 2020, Sessions, W.).
Chooseco publishes the CHOOSE YOUR OWN ADVENTURE book series, which allow readers to select the plot and ending of the books. It is one of the bestselling children’s series of all time, although mostly popular in the 1980s and ’90s. Chooseco owns a federally registered trademark for the word mark CHOOSE YOUR OWN ADVENTURE for various types of media including books and movies. The unregistered trade dress historically featured an illustration surrounded by a double frame with two separate colors. The books now in print display a frame with only one color but retain the same shape.
On December 28, 2018, Netflix released Bandersnatch as a part of its Black Mirror series. Bandersnatch chronicles the main character’s attempts to develop a videogame based on a fictitious book. The interactive film allows viewers to make choices that affect the "plot and ending of the film." In one scene, the main character states that he is writing a "Choose Your Own Adventure book" where "[y]ou decide what your character does." The subtitles for the film couch the phrase in quotation marks and capitalize the first letter of each word. To promote Bandersnatch, Netflix allegedly used similar trade dress as that used by CHOOSE YOUR OWN ADVENTURE books.
Chooseco filed claims for trademark infringement, dilution, false designation of origin, and unfair competition.
First Amendment production. Netflix argued that the First Amendment insulates its use of Chooseco’s mark from Lanham Act claims because Bandersnatch is an artistic work. Chooseco claimed that Bandersnatch is not a purely artistic work because Netflix alleged used the film as a marketing tool designed to collect behavioral information on its viewers, and that Netflix may have sold product placement opportunities in the film. Generally, the Lanham Act does not apply 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. The threshold for artistic relevance is purposely low.
At the outset, the court noted that the First Amendment equally protects works with mixed purposes as those that are "purely artistic" and rejected Chooseco’s argument that the court should reduce the First Amendment protections afforded to the film. Also, the court found that Netflix’s use of the mark satisfied the artistic relevance test. The use of CHOOSE YOUR OWN ADVENTURE had artistic relevance because it connected the narrative techniques used by the book, the videogame, and the film itself. Also, Bandersnatch parallels the viewer’s control over the protagonist to the ways technology controls modern day life, which "expands the use’s artistic relevance because it anchors the fractalized interactive narrative structure that comprises the film’s overarching theme." Netflix’s use of the mark was also artistically relevant because the use of the mark was associated with a 1980s aesthetic, which Bandersnatch encompassed.
Chooseco argued that the use of the mark was merely to exploit the publicity value of associating the film with Chooseco’s brand. Also, Chooseco argued that because there were numerous alternative phrases that Netflix could have used "to convey the concept of an interactive story without referencing the mark itself," the use of the mark added nothing other than "marketing power." However, the Second Circuit specifically addressed, and dismissed, the "alternative avenues" analysis as it did not sufficiently accommodate the public’s interest in free expression. In this case, there was sufficient evidence to meet the low threshold of artistic relevance.
The court required the parties to engage in discovery before it could rule on the factual dispute as to whether Netflix’s use of the mark was explicitly misleading. Chooseco sufficiently alleged that consumers associate its mark with interactive books and that the mark covers other forms of interactive media, including films. Also, the book, videogame, and Bandersnatch itself all employ the same type of interactivity as Chooseco’s products. These similarities increases the likelihood of consumer confusion. Bandersnatch was set in an era when Chooseco’s books were popular—potentially amplifying the association between the film and Chooseco in the minds of consumers. While the link between Chooseco and the aspects of its trade dress that Netflix purportedly usurped was not particularly strong, this consideration adds to a context which may create confusion. However, discovery was needed before the court could rule on this issue.
Fair use. The court did not have sufficient facts to dismiss Chooseco’s claims based on the fair use doctrine. Descriptive fair use is an affirmative defense that requires a defendant show "that the use was made (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith." To determine whether a particular use is made "as a mark," courts look at whether the term was used to attract public attention. The physical characteristics and context of the use made it plausible that Netflix used the term to attract public attention. However, there was not sufficient evidence to determine whether consumers perceived the Choose Your Own Adventure phrase in a descriptive sense or whether they simply associated it with Chooseco’s brand. As to good faith, Chooseco points to Netflix’s attempted purchase of a license to use the mark in another context and its actual use of the mark to market a different program until Chooseco sent a cease and desist letter. While Chooseco provided sufficient evidence indicating that it is at least plausible Netflix used CHOOSE YOUR OWN ADEVENTURE as a mark, in a non-descriptive sense, and in bad faith, the court concluded it was inappropriate to resolve the issue at this stage of the litigation.
Dilution. Chooseco sufficiently stated a claim for trademark dilution, according to the court. Netflix argued that the dilution claims should be dismissed because Bandersnatch did not use the phrase ‘Choose Your Own Adventure’ as a source-designator for the film or the Netflix service. Dilution by tarnishment as an "association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark." Chooseco sufficiently alleged that Netflix used its mark to label the book at the center of Bandersnatch and used Chooseco’s trade dress in its marketing for the film, and that the association between Chooseco’s mark and Bandersnatch dilutes the goodwill and marketing value of the mark because of the film’s dark and disturbing content. This was sufficient to state a claim.
Unfair competition. Chooseco met the pleading requirements for its unfair competition claims, according to the court.
This case is No. 2:19-cv-08.
Attorneys: Kendall A. Hoechst (Dinse, Knapp & McAndrew, PC) for Chooseco LLC. Catherine I. Seibel (Ballard Spahr, LLP) and Robert B. Hemley (Gravel & Shea PC) for Netflix, Inc.
Companies: Chooseco LLC; Netflix, Inc.
MainStory: TopStory Trademark VermontNews
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