Choose Your Own Litigation
Many of you may remember reading a “Choose your own Adventure” book in your childhood, and being fascinated by the different trajectory a story could take as you made different selections in the story line. R.A. Montgomery created the children’s book series entitled “Choose Your Own Adventure” in the late 1970’s. The original Bantam series sold more than 250 million copies from 1979 to 1998, when computers naturally took over the divergent path idea. In 2003, Montgomery formed Chooseco, LLC in 2003 to breathe new life into the series and expand into new media. Chooseco now owns the trademark CHOOSE YOUR OWN ADVENTURE in over 15 different international classification of goods and services, including the production of television programming (the “Mark”).
More recently, in January of 2019, Chooseco instituted a multimillion-dollar lawsuit against streaming giant, Netflix, for several causes of action relating to trademark and trade dress infringement. Chooseco claims that an episode of Netflix’s show Black Mirror, which feature a young programmer who creates an adventure video game called Bandersnatch based on a “choose your own adventure” book of the same name, infringes and dilutes the Mark.
Netflix’s Bandersnatch is an interactive film that allows its viewers to make choices which ultimately decide the plot and ending of the film. The main character is a video game developer who adapts a fantasy “choose your own adventure” novel into a video game. Bandersnatch “dark and, at times, disturbing content” which, according to its complaint, is in stark contrast to Chooseco’s own CHOOSE YOUR OWN ADVENTURE books, which are lighthearted and targeted at audiences between the ages of seven and fourteen. They argue that Bandersnatch, which contains, including “murder, mutilation of a corpse, decapitation, and other upsetting imagery” dilutes and/or tarnished their mark.
Chooseco further points out that it engaged in extensive negotiations with Netflix regarding licensing the Mark for use in the episode, but that negotiations fell through and Netflix chose to go forward and use the Mark regardless. Netflix does not deny these allegations.
In response, Netflix filed a motion to dismiss the suit on several bases. Principally, Netflix argues that a media in which the reader or viewer makes decisions which ultimately affect the outcome of the story, is a storytelling device, which is not protectable by trademark law. Netflix notes that trademark law protects “symbols or devices used to identify a product in the marketplace” and do not protect ideas. Borrowing a page out of copyright law and precedent, Netflix concludes that a narrative storytelling device, like the one employed in Chooseco’s Choose Your Own Adventure series, is an idea and thus is not protected by trademark law.
The federal judge in Vermont assigned to the case has yet to make any definitive rulings in the case, but it seems that Chooseco faces an uphill battle. As noted by Netflix in its motion to dismiss, artistic works 
like Bandersnatch receive special protection from trademark litigation under the First Amendment – think Andy Warhol’s use of the Campbell soup can or Marilyn Monroe’s image. Under the cited Second Circuit case, Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), for example, the use of a trademark in an artistic work is constitutionally protected unless it either “has no artistic relevance to the underlying work whatsoever, or explicitly misleads as to the source…of the work.” The threshold for proving that a work has at least some artist relevance to the underlying work is extremely low and should easily be satisfied by Netflix in this case.
The constitutional free speech protection provided by the First Amendment requires an “especially compelling case of consumer confusion” to satisfy the other prong of the Rogers standard. Id. Here, Chooseco will need to provide sufficient evidence of consumers who were confused into believing that Bandersnatch was somehow affiliated with its Choose Your Own Adventure Trademark and compelling reasons for why other consumers will continue to be confused by Netflix’s use of the Mark. Chooseco may be unable to do either or both.
As with a choose your own adventure book (or television show), there are several different pathways this litigation could take, whether the two sides hash it out in federal court or quickly settle out of court, but it is hard to imagine any ending where Chooseco takes this case to trial and successfully litigates the case on the merits.
