An Artistic Defense to Claims of Trademark Infringement: Examining the Lawsuit Over Netflix's Use of "choose Your Own Adventure" Phrase in the Interactive Film Black Mirror: Bandersnatch
| Publication year | 2019 |
| Author | By Andrew M. Sevanian |
By Andrew M. Sevanian1
Andrew is an attorney at Poole & Shaffery, LLP. His practice areas include business transactions, corporate, intellectual property, and mergers and acquisitions. As an attorney, his goal is to establish collaborative working relationships with his clients while helping his clients find ways to succeed. In addition to his legal practice, Andrew is a movie buff.
As the illustrious Mel Brooks once said, "it's good to be the king."2 However, when you are the proverbial king of digital entertainment platforms, you may just find yourself in the crosshairs of claimants contending your content contravenes their intellectual property rights. Such is the case with Netflix, Inc. ("Netflix"), the media streaming giant known for its vast library of movies, television shows, and documentaries. One such movie is Netflix's Emmy-winning (2019) Black Mirror: Bandersnatch—an interactive film set, in the 1980s, that involves a protagonist attempting to adapt a fictional "choose your own adventure book" called "Bander-snatch" into a video game that will allow players to make choices for what the playable character does. Throughout the story, viewers of the film are given the opportunity to make certain choices, such as selecting one of two options for the protagonist's breakfast cereal. Some of these choices create a domino effect of consequences and a modification to the story's outcome. From a creative standpoint, it is an engaging and fascinating vehicle for storytelling. From a legal standpoint, some unwanted plot twists have developed for Netflix.
Chooseco LLC ("Chooseco"), publisher of the "CHOOSE YOUR OWN ADVENTURE" book series, sued Netflix in the United States District Court for the District of Vermont. Chooseco holds a number of federally registered trademarks for the phrase "CHOOSE YOUR OWN ADVENTURE," including United States Patent and Trademark Office ("USPTO") Registration Number 3234147, which covers, among other things: "books, motion picture theatrical films, on-line computer games, and serialized publications, namely, interactive multiple choice, multiple ending stories and games delivered by Video on Demand, Digital Video Recorder, cable, terrestrial, and satellite television."
In its complaint, which was filed on January 11, 2019, and amended on February 26, 2019, Chooseco claims that Netflix is committing trademark infringement, trademark dilution, unfair competition, and false designation of origin under the federal Lanham Act,3 as well as unfair competition under Vermont state law, by using the phrase "choose your own adventure" within Bandersnatch and without Chooseco's permission. Based on such allegations, Chooseco seeks, among other things, at least $25 million in damages or Netflix's profits, whichever are greater.
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On March 21, 2019, Netflix filed a motion to dismiss Chooseco's lawsuit in which Netflix raised various affirmative defenses, including the argument that Netflix's use of the "choose your own adventure" phrase within Bandersnatch is not only protected fair use of the mark but also constitutionally protected artistic expression. According to Netflix, "the First Amendment bars trademark claims arising out of uses [of a mark] in artistic works in these circumstances" (i.e., as a thematic element or line of dialogue within a creative work).4Netflix also argues that the Lanham Act bars trademark infringement claims when the use of a trademark is done "in a purely descriptive sense, such as having a film's protagonist describe a book in which he chooses his own adventure as a 'Choose Your Own Adventure' book."5 As Netflix states, "[t]he idea of a narrative storytelling device in which readers or viewers make their own choices is not protected by trademark law."6
Netflix's First Amendment defense is an incredibly savvy move. Should the court choose to accept this argument, it will likely have significant consequences to the outcome of this case. In recent months, Chooseco and Netflix have filed pleadings in opposition to and support of, respectively, Netflix's motion to dismiss. Currently, the motion is pending a decision from the court. This article examines some of the underlying causes of action presented by Chooseco as well as how Netflix's First Amendment defense may negate those causes of action. Please note that this article was written as of September 2019. In the time between the writing of this article and its publication, there may be updates in the underlying case between Chooseco and Netflix that could affect the analysis expressed herein.
As it relates to Chooseco's claim of trademark infringement, the court must determine whether Netflix's Bandersnatch film is "likely to cause confusion, or to cause mistake, or to deceive" consumers into believing that the film emanates from the same source as Chooseco's "CHOOSE YOUR OWN ADVENTURE" book series.7 When analyzing whether "likelihood of confusion" exists between two marks, courts in the U.S. Court of Appeals for the Second Circuit, which has appellate jurisdiction over the District of Vermont and this case between Chooseco and Netflix, typically refer to relevant factors derived from the seminal case Polaroid Corp. v. Polarad Electronics. Corp ("Polaroid").8 In Polaroid, the court established several factors to determine whether consumer confusion is likely to occur.9 Based on the pleadings thus far, the following Polaroid factors stand out as likely to be the most significant to the issue of trademark infringement: (1) the degree of similarity between the two marks, (2) the proximity of the products, and (3) the strength of the senior user's mark. While the court may very well assess additional factors to determine if trademark infringement has occurred, the most significant factors are addressed below.
1. The Degree of Similarity Between the Two MarksThe names "Black Mirror: Bandersnatch" and "Choose Your Own Adventure" are completely dissimilar in sound and appearance. However, the Bandersnatch film does refer to a "choose your own adventure book" within its story.10 The question then becomes whether Netflix's use of the phrase "choose your own adventure" during the Bandersnatch film qualifies as the usage of a trademark. If so, the facts tend to favor Chooseco, as the respective marks of Netflix and Chooseco would be practically identical (i.e., both featuring the phrase "choose your own adventure"). If not, then the facts tend to favor Netflix, as the respective marks are dissimilar.
The legal definition of a "trademark" is "any word, name, symbol, or device, or any combination thereof ... to identify and distinguish ... [a person's] goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown."11 Netflix argues that its usage of the phrase "choose your own adventure" within the Bandersnatch film is done in a purely descriptive manner—i.e., "to describe its fictitious book (or, for that matter, to describe the kind of narrative device the film employs)"—rather than as a source-identifying trademark.12 As Netflix states [WARNING: SPOILERS AHEAD]:
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The film's opening credits and its marketing both prominently display Netflix's own trademark and identify the film as part of Netflix's well-known Black Mirror anthology - including in the title of the film, Black Mirror: Bandersnatch. To access the film, a viewer must subscribe to Netflix, further confirming for viewers that Netflix is its source. Bandersnatch itself includes a storyline that revolves around its protagonist learning that he is being controlled by Netflix viewers, and an ending in which a Netflix programmer is shown creating the program. In contrast to the way in which Netflix's mark is used, it is fanciful to suggest that the fleeting use of the phrase "Choose Your Own Adventure" in a single scene somehow signifies that Chooseco is the source of, or affiliated with, the film or Netflix's streaming services.13
If the court agrees with Netflix on this point, there is a strong possibility Netflix wins on this particular Polaroid factor due to such descriptive usage of the "choose your own adventure" phrase being non-actionable fair use.14 Furthermore, Netflix argues that when the "unauthorized use of another's mark is part of a communicative message and not a source identifier, the First Amendment is implicated in opposition to the trademark right."15 The issue of how First Amendment protection may apply in this case between Netflix and Chooseco is discussed further under Section D, infra.
In its opposition to Netflix's motion to dismiss, Chooseco argues that Netflix's usage of the phase "choose your own adventure" within the Bandersnatch film is not entitled to protection under the First Amendment as such usage "was explicitly misleading and had no artistic relevance."16 Chooseco further argues that Netflix's use of the phrase "choose your own adventure" is not entitled to the affirmative defense of descriptive fair use because Netflix used the phrase "as a symbol to attract public attention."17
2. Proximity of the ProductsAssuming the facts favor Chooseco on the first Polaroid factor noted above, then the similarity of the products and services associated with the respective marks in this case must be analyzed. Typically, when two marks are highly similar, the products and/or services associated with those marks do not have to be identical or directly competitive; rather, likelihood of confusion may exist when the products and/or services are "related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the...
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