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IP/Entertainment Case Law Updates

Chooseco LLC v. Netflix, Inc.

District court denies motion to dismiss trademark claims for Netflix’s use of plaintiff’s “Choose Your Own Adventure” trademark in Black Mirror: Bandersnatch movie, finding sufficient allegations of consumer confusion to preclude dismissal under Rogers test and questions of actual use of trademark and of Netflix bad faith that preclude finding of descriptive fair use. 

Chooseco is the publisher of the popular “Choose your Own Adventure” novels and owns a federal trademark registration for “Choose Your Own Adventure,” which covers various types of media, including books and movies. Chooseco sued Netflix, alleging trademark infringement, trademark dilution, unfair competition and false designation under the Lanham Act and common law unfair competition for the content company’s use of the term “Choose Your Own Adventure” in Netflix’s interactive movie Black Mirror: Bandersnatch. Netflix filed a motion to dismiss, which the court denied.

Chooseco’s books, which were a bestselling children’s series most popular in the 1980s and ’90s, allow the reader to act as the story’s protagonist by making a decision on every page as to what happens next. Bandersnatch is an interactive movie based on Netflix’s popular series Black Mirror, which takes a dystopian view of technology and society and is known for its dark and disturbing themes. 

In Bandersnatch, the viewer interacts with the movie and makes choices that affect the plot and ending of the movie, utilizing a format similar to Chooseco’s books. Specifically, in a scene at the beginning of Bandersnatch, the protagonist explicitly describes a book in the film as a “Choose Your Own Adventure,” referencing both a plot point within the movie and a meta-commentary on the structure of the movie itself. Plaintiff also alleged that Netflix marketed Bandersnatch by using similar trade dress to the original “Choose Your Own Adventure” novels.

Netflix argued that it was insulated from all the Lanham Act claims by the First Amendment because Bandersnatch is an artistic work. The court applied the Second Circuit’s Rogers test, a balancing test addressing unauthorized uses of trademarks in artistically expressive works, weighing consumer confusion against artistic expression.  

The court concluded that Bandersnatch is an expressive work and that the use of “Choose Your Own Adventure” in the movie has artistic relevance because it connects the narrative techniques used within the movie to the movie itself and because Bandersnatch is set in the 1980s, the era in which the “Choose Your Own Adventure” books were most popular.  

The court found, however, that Chooseco sufficiently alleged that consumers might be confused by the use of the “Choose Your Own Adventure” trademark in Bandersnatch and might believe that Bandersnatch was authorized by Chooseco. Pointing to the similarities in format, the express use of the phrase “Choose Your Own Adventure” and the fact that Bandersnatch is set during the era when the “Choose Your Own Adventure” books were most popular, the court determined that a factual dispute existed as to whether consumers actually were being confused, precluding the motion to dismiss.  

Netflix also argued that the doctrine of descriptive fair use—when a trademark is used in a manner other than as a mark, in a descriptive way and in good faith—should apply. The court found it plausible that Netflix used the term other than as a mark but concluded that the fair-use determination on Netflix’s motion to dismiss was inappropriate because it required more evidence than was presented in the complaint to determine whether consumers perceive “Choose Your Own Adventure” to be a descriptive phrase or it is exclusively associated with Chooseco’s brand. The court also gave weight to evidence presented that Netflix did not use the term in good faith; the company attempted to license the use of the mark prior to the production of the movie, thus acknowledging Chooseco’s trademark right in the term. Netflix also could have used any number of other, similar terms rather than “Choose Your Own Adventure.”

Netflix also argued that Chooseco’s trademark dilution claim failed because the reputational harm at the center of this type of claim must flow from the use of plaintiff’s mark as a source descriptor for defendants’ own goods, but the district court disagreed. The Lanham Act describes 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,” and a mark can be tarnished by association with products of shoddy quality or the mark’s portrayal in an “unwholesome or unsavory context.” Chooseco’s factual allegations that Netflix had used “Choose Your Own Adventure” to label the fictitious book at the center of Bandersnatch’s plot and that the association with Bandersnatch’s “dark and disturbing content” diluted the goodwill and marketing value of the Chooseco’s mark were sufficient to support the dilution claim at the motion-to-dismiss stage. Netflix also argued that Chooseco’s dilution claim failed because it alleged not that the mark was used to denote defendant’s products but rather plaintiff’s products. The court rejected this argument as well, noting that Netflix used “Choose You Own Adventure” to identify the fictitious book featured in the movie, not plaintiff’s actual product, and that Chooseco’s allegations, taken as true, supported the core of the tarnishment claim—that plaintiff’s mark suffered negative associations through defendant’s use. 

Acknowledging that the movie itself was expressive content protected by the First Amendment, the court nonetheless rejected Netflix’s argument based on the Lanham Act’s express exemption for noncommercial use, finding that Netflix’s use of the “Choose Your Own Adventure” mark might qualify as commercial use. The court noted that Chooseco alleged that Netflix’s motivations in using the mark were “purely economic,” that it chose Chooseco’s most popular product and Netflix used elements of Chooseco’s trade dress in its promotion and marketing of the film. These allegations, the court concluded, satisfied Chooseco’s pleading requirements. 

The court also found that because Chooseco had met its pleading requirements for its Lanham Act claims, it also may proceed with its unfair competition claim. 

Summary prepared by Melanie Howard and Alex Inman