By: Marisa McNally
Chooseco LLC (“Chooseco”) filed a complaint in Vermont district court on January 11, 2019, against Netflix, Inc. (“Netflix”) for trademark infringement and dilution under the Trademark Act of 1946 (the “Lanham Act”).[1] Netflix’s new feature film, Black Mirror: Bandersnatch, that aired on December 28, 2018, is at the center of the suit.[2] Following the journey of a young programmer designing a video game set in 1984, the film enables interaction with the narrative by allowing the viewer to make certain decisions for the characters.[3] For example, the viewer is instructed to choose between two different cereals for the protagonist using the buttons on the viewer’s remote.[4] This interactive characteristic of the film is one of the first of its kind.
Netflix was careful to advertise the film as “interactive” and not as “Choose Your Own Adventure.” However, at one point in the film, the protagonist explains that the video game he is making, while simultaneously giving a nod to the nature of the film itself, is a “Choose Your Own Adventure.” [5]
Chooseco claimed rights to the phrase “Choose Your Own Adventure” as early as 2004 in relation to certain goods and services, namely, interactive books that allow readers to choose outcomes for the protagonist.[6] Chooseco has subsequently claimed rights to this mark as its brand in connection with motion pictures and downloadable computer applications.[7] The complaint indicates that Chooseco’s marketing strategy includes appealing to adults now in their twenties, thirties, and forties who remember the brand from the “Choose Your Own Adventure” books in their youth.[8] Upon Netflix’s use of the phrase “Choose Your Own Adventure,” Chooseco claims that Netflix’s unauthorized use of the mark causes confusion, tarnishes, denigrates, and dilutes the distinct quality of Chooseco’s brand. [9]
This suit comes after Netflix had approached Chooseco in 2016 seeking a license to use “Choose Your Own Adventure” in its film.[10] Having been denied by Chooseco, Netflix decided to use “Choose Your Own Adventure” in its script anyway, if not but to simply describe the nature of the video game the protagonist was making. Chooseco notes in its complaint that Netflix is aware of its unauthorized use not only because it had actively pursued a license, but it chose to wrap “Choose Your Own Adventure” in quotes in the subtitles of the film; the quotes indicating the use of a coined term, a coined term owned by Chooseco. [11]
Despite Netflix’s futile attempts at obtaining a license from Chooseco as a precautionary measure, Netflix may still be justified in using “Choose Your Own Adventure” if Netlfix can prove that the term has become a result of genericide. A mark becomes generic when a mark’s primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used.[12] Trademark protection cannot be granted to marks that are deemed generic.[13] Terms including thermos, Aspirin, and cellophane are examples of trademarks that lost their protection due to the public’s generic use of them. Here, Netflix will argue that “Choose Your Own Adventure” no longer refers to the brand of books produced by Chooseco, but rather refers to the genre of storytelling that involves the reader or viewer in making decisions for the protagonist in any given media. If this is so, Chooseco may have a very difficult time preserving protection for its brand.
Since Chooseco first obtained trademark rights to “Choose Your Own Adventure,” the brand has faced no challengers. Surprisingly, Chooseco was granted its trademark without any challenge from the United States Trademark and Patent Office (“USPTO”) either. Perhaps it is more commonly used in present day, but even in 2004, when the mark was first granted to Chooseco, “Choose Your Own Adventure” could have been considered at least merely descriptive. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.[14] “Choose Your Own Adventure” would appear to at least describe the interactive quality or characteristic of Chooseco’s books.
Perhaps Netflix may raise this argument as well. Marks that are considered merely descriptive also cannot be granted trademark protection unless they have acquired distinctness through secondary meaning. [15] This might be a moot point considering the USPTO has already granted Chooseco ten trademarks[16] for the mark “Choose Your Own Adventure” as it relates to a variety of goods and services with five more proposed marks pending.[17] However, if Netflix can prove that the coined term has lost its distinctness as it relates to Chooseco’s goods and services, perhaps the apparent descriptiveness will no longer matter as the term is deemed generic.
Having dabbled in this interactive narrative genre before, Netflix experienced success with two children’s shows that adopted this type of storytelling: Puss in Book: Trapped in an Epic Tale and Buddy Thunderstruck. [18]Netflix’s Black Mirror feature film will be the first of this kind geared toward adult viewing, and, quite possibly, could be the catalyst for “Choose Your Own Adventure” genericde.
[1] Complaint at 1, Chooseco LLC v. Netflix, Inc., No. 2:19-CV-8 (2019).
[2] Id.
[3] Bill Donahue, Netflix Facing ‘Choose Your Own Adventure’ Trademark Suit, Law360 (January 13, 2019), https://www.law360.com/articles/1117871/netflix-facing-choose-your-own-adventure-trademark-suit.
[4] Complaint, supra note 1, at 6.
[5] Id. at 7.
[6] CHOOSE YOUR OWN ADVENTURE, Registration No. 2,913,403.
[7] CHOOSE YOUR OWN ADVENTURE, Registration Nos. 3,234,147; 4,682,357.
[8] Complaint, supra note 1, at 2.
[9] Id.
[10] Id. at 5.
[11] Id. at 8.
[12] TMEP 1209.01(c)(i) (October 2018).
[13] Id.
[14] TMEP 1209.01(b) (October 2018).
[15] Id.
[16] CHOOSE YOUR OWN ADVENTURE, Registration Nos. 5651588; 5501606; 5501605; 4889435; 4682357; 2913403; 3313431; 3234147; 2905158; 2807473.
[17] U.S. Trademark Application Serial Nos. 87/865,700 (filed April 6, 2018); 87/865,698 (filed April 6, 2018); 87/865,897 (filed April 6, 2018); 87/865,969 (filed April 6, 2018); 87/422,202 (filed April 24, 2017).
[18] Casey Newton, Netflix’s Interactive Shows Arrive to Put You In Charge of the Story, The Verge (January 13, 2019), https://www.theverge.com/2017/6/20/15834858/netflix-interactive-shows-puss-in-boots-buddy-thunderstruck.
