Netflix Asks Judge to Dismiss "Choose Your Own Adventure" Lawsuit

Black Mirror Bandersnatch-Publicity-H 2019
Courtesy of Netflix

Netflix wants a federal judge in Vermont to throw out a trademark lawsuit over the immersive film Black Mirror: Bandersnatch. But how the judge gets to dismissal, well, the streaming giant is outlining a few different possible paths.

The lawsuit comes from Chooseco, LLC, a childrens' book publisher that owns the trademark to "Choose Your Own Adventure."

In January, Chooseco alleged that it had engaged in extensive negotiations with Netflix but that the streamer ended up not having obtained a license. According to Chooseco, that's a $25 million problem for Netflix, given that Stefan Butler, the main character in Bandersnatch, explains to his father that his latest video game design is based on a fictional book. After his father remarks that it must be good because Butler is always "flicking backwards and forwards," Butler responds, "No, it's a 'Choose Your Own Adventure' book."

In an amended complaint, Chooseco added a trade dress claim to the suit because the fictional Tuckersoft game company in Bandersnatch uses “rounded color borders” on its videogame packaging that Chooseco claims is similar to borders it uses on its book covers.

On Thursday, Netflix asserts that all claims fail by arguing, "The idea of a narrative storytelling device in which readers or viewers make their own choices is not protected by trademark law."

Path #1 for the judge... Protect the film's creative expression as a matter of First Amendment speech.

Netflix attorneys at Ballard Spahr point to the seminal case, Rogers v. Grimaldi, whereby unless a work has no artistic relevance, the use of a mark must be misleading for it to be actionable.

"Here, the phrase 'Choose Your Own Adventure' is artistically relevant to the film because its plot involves the protagonist’s efforts to convert the book 'Bandersnatch' into a videogame, and the storytelling structure of the film mirrors the fictional storytelling structure of the book and videogame," states the dismissal brief before addressing whether there's anything misleading about the film. "Where, as here, the complaint fails to plead any plausible theory of consumer confusion, much less a 'particularly compelling' case, dismissal is warranted."

Netflix also takes up Chooseco's suggestion that the streamer wanted to benefit from those who may be nostalgic for the old "choose your adventure" books. 

"Even accepting that (dubious) interpretation of what the reference to 'Choose Your Own Adventure' was intended to accomplish, a party does not have the right to prevent its trademark from being used to evoke nostalgia or situate a narrative within a particular time and place," responds Netflix.

Path #2 for the judge... Decide that use of the phrase is descriptive fair use.

Netflix explains that trademarks are used for identification purposes, but that others in good faith may use protected marks in a descriptive fashion.

"Chooseco’s mark was used to refer to something existing only in the film’s fictional universe — the book 'Bandersnatch' — and, in particular, to describe its branching storytelling technique," continues Netflix's memorandum. "Chooseco has not plausibly alleged 'bad faith' on Netflix’s part, including because Netflix identifies itself as the brand responsible for Bandersnatch and the streaming service through which it is disseminated."

As for the failed licensing negotiations, Netflix adds, "Pointedly, Chooseco does not, and cannot, allege that these licensing negotiations concerned Bandersnatch — or, for that matter, any other content for adult audiences. In any event, that Netflix may have been aware of Chooseco’s trademark does not mean that, in using the phrase 'Choose Your Own Adventure' in Bandersnatch’s dialogue, Netflix 'acted with the intent relevant in trademark cases — that is, an intent to capitalize on consumer deception or hitch a free ride on plaintiff’s good will.' ... Rather, the use is evidence only of what is plain on the face of the film — that it explores the Choose Your Own Adventure idea. Because such a use is necessarily lawful, even a knowing use is not evidence of bad faith."

Path #3 for the judge... Decide that Chooseco has failed to make good traditional claims.

Netflix reiterates that the plaintiff has failed plead a plausible case of consumer confusion, plus adds if Chooseco's mark has any strength among consumers, it is through an association with wholesome children's books, not the mature themes from a dark story like Bandersnatch.

"This is especially so because one of Bandersnatch’s clear purposes is to comment on, and darkly satirize, the familiar 'Choose Your Own Adventure' narrative style through the lens of modern technology," write the streamer's attorneys.

The dismissal brief then takes up the similarity of the marks, the proximity of the products and other factors. A claim for trademark dilution is said to fail because Choose Your Adventure is not being used as a "source-designator" for Bandersnatch or Netflix's service. As for trade dress, besides the lack of registration, Netflix questions the secondary meaning of “rounded color borders" and points out that again, the plaintiff has failed to plead consumer confusion.

Here's the full brief.