“It’s how our decision along that path affect the whole that matters” – How a decision during production of Bandersnatch led Netflix to a Trademark Lawsuit
Netflix started out 2019 with a fresh Trademark lawsuit filed over their “Black Mirror: Bandersnatch” film. The film has been a big hit as Netflix took advantage of the strong following their original series, Black Mirror, already had. Bandersnatch allows viewers to dictate the story line and ultimately decide the ending. There are several different choices that can be made throughout the film with the main character setting the scene early on in the movie, and coincidently for this lawsuit, by informing his father that a videogame he wants to create is based on a fictional “’Choose Your Own Adventure’ Book.” Unfortunately for Netflix, Choose Your Own Adventure books are very real, and the owners of the book series brought suit against Netflix for trademark infringement and dilution.
The complaint was filed by Chooseco LLC, in Vermont federal court by a plaintiff that asserts ownership of the trademark “Choose Your Own Adventure.” According to the complaint, Chooseco has sold over 265 million copies of books bearing the mark and has been using the mark since the 1980s. These books are very popular to those of us born in the 1980s and 1990s. In its complaint, Chooseco states that the target market for their books are children to young adults from ages 7-14. However, they claim they have effectively focused marketing efforts on consumers in their 20s, 30s, and 40s based on a “hook of nostalgia.” Bandersnatch is rated “TV-MA,” holding some of the same 20-40 year old audience that is also targeted by Chooseco.
In support of their dilution claim, Chooseco points to the differences between the “PG” content of their books and the Netflix film’s “dark and, at times, disturbing content” that allegedly tarnishes Chooseco’s goodwill in their trademark. Netflix will be able to raise several defenses but will most likely point to descriptive fair use and the Rogers test.
Descriptive fair use allows a party to use another party’s trademark without permission, so long as use of the mark is in good faith and is used only to describe the goods and services of the using party. This is where the case gets interesting. In 2016, Netlfix and Chooseco engaged in negotiations for a licensing agreement to use the trademark but never came to an agreement. Instead, Chooseco signed a movie deal with 20thCentury Fox. Chooseco points to these negotiations in support of their claim that Netflix acted in bad faith and it is likely why they are requesting $25 million in damages (or Netflix’s profits, whichever is greater) along with treble damages and injunctive relief to stop Netflix from continuing use.
The Roger test states that the Lanham Act should not be applied to use of marks, including book titles, in creative works “unless the title has no artistic relevance to the underlying work whatsoever or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.” This test raises the bar for trademark related actions in creative works, as the finding of likelihood of confusion must outweigh the First Amendment interest in the above test.
This suit is the newest in lawsuits being filed over Netflix originals, following the Copyright suit filed by the Satanic Temple over Netflix’s “Chilling Adventures of Sabrina.” The parties settled that case and if Netlfix can choose its own adventure, we may see them settle this lawsuit too.