Be careful when referring to an entertainment experience as a “choose your own adventure.” That phrase is protected by a trademark, despite being a general descriptive term for a certain type of entertaining activity. As a result, using that phrase even once in a book or a movie without paying for a license might be enough for a lawsuit.
Chooseco holds the trademark to “choose your own adventure,” a branding phrase which refers to its books that allow readers to make choices that determine the story’s plot and ending. These books were popular in the 1980s and 1990s, and as someone who grew up in those decades, I read them.
I am among Chooseco’s target demographic, a mom in my late 30s who might buy those books for my kids due to nostalgia.* But I’m less likely to do so after reading about their lawsuit against Netflix for describing a fictitious book as a “choose your own adventure” in the movie Bandersnatch. Chooseco also alleges that Netflix used a “retro” design similar to the covers of Chooseco’s books.
I am not a fan of zealous copyright/trademark enforcement for minor references to protected works or words, even when the alleged infringer is a large company that generally deserves little sympathy.**
Chooseco sued Netflix in January 2019, Netflix filed a motion to dismiss the case in March 2019, and on February 11, 2020, the United States District Court for the District of Vermont issued an opinion denying Netflix’s motion, thereby allowing Chooseco’s case to proceed (Opinion in Chooseco LLC v. Netflix, Inc, PDF).
Chooseco argued that Netflix “intended to and did trade upon the goodwill associated with Chooseco’s trademark” by “mislead[ing] the public into assuming a connection exists between Chooseco and Netflix.” Netflix responded by arguing that its reference to “choose your own adventure” was protected by the First Amendment.
The Court applied a balancing test from Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which “weighs the public interest in avoiding consumer confusion against the public interest in free artistic expression.” Opinion at *3. The Court determined that Netflix’s use of the term “choose your own adventure” has artistic relevance but that discovery is necessary to determine if this reference “explicitly misleads as to the source of work.” Opinion at *6. Then the Court dismissed Netflix’s fair use defense, stating, “Chooseco has pleaded sufficient factual allegations indicating that it is at least plausible Netflix used CHOOSE YOUR OWN ADVENTURE as a mark, in a non-descriptive sense, and in bad faith.”
I wouldn’t be surprised if Netflix wanted viewers of Bandersnatch to associate the movie with their fond memories of Chooseco’s Choose Your Own Adventure books. But I don’t see how anyone could confuse the tome-sized, mature-audience “choose your own adventure” book in Bandersnatch for the puny children’s books Chooseco produces.
The fictitious book looks very different from the real ones, but it’s a choose-your-own-adventure type of book in a choose-your-own-adventure-type of film. That similarity doesn’t harm Choosco, though. It’s free advertising that reminds everyone to revisit those books and pass them along to their children.
Chooseco, however, denies this positive aspect of Netflix’s reference. They allege in the complaint that Netflix has “tarnish[ed] Chooseco’s famous trademark” because Bandersnatch involves “dark and violent themes [that] are too mature for the target audience of Chooseco’s CHOOSE YOUR OWN ADVENTURE BOOKS.”
Well, if that’s true, then Bandersnatch isn’t in competition with any entertainment Chooseco would produce for its young audience, and as a result, Chooseco’s profits remain intact.*** Furthermore, while it might be true that the young audience Chooseco targets isn’t likely to watch Bandersnatch, the parents of those children are more likely to watch it and possibly revisit Chooseco’s books after the reference in Bandersnatch reminds them about it.****
The fact that this complaint survived a motion to dismiss is a reminder that our laws allow general, descriptive phrases like “choose your own adventure” to receive trademark protection, silencing some future uses of those words. This time, Chooseco has targeted a big company with resources to fight it. Next time, it could be anyone.
For now, Chooseco’s case against Netflix continues. We’ll see what happens.
*Chooseco alleges in its complaint (PDF): “Chooseco has… used the hook of nostalgia to interest adults who read the books when they were young in buying CHOOSE YOUR OWN ADVENTURE books for their children.”
**According to the opinion, “Chooseco asserts that ‘discovery is needed to determine whether Bandersnatch is, at least in part, a marketing tool designed to collect behavioral information on its viewers.” That’s a disturbing thought, but hardly surprising. The opinion states that the point of Bandersnatch is “to comment on the continually-mounting influence technology has on society.”
***In the complaint, Chooseco states that Twentieth Century Fox (which I believe has a different name now) holds an option contract to produce interactive movies based on the books.
****In Netflix’s Answer to Chooseco’s Amended Complaint (PDF), filed on February 25, 2020, Netflix raises several defenses to Choosco’s claims, including “Chooseco’s trademark lacks acquired distinctiveness” and Chooseco “has experienced no actual harm or injury.”