By: Toye Adenekan
Netflix closed the 2018 year with one of the most innovative pieces of television programming seen in recent history when it premiered the film ‘Bandersnatch’ from the ‘Black Mirror’ series. The film allows viewers to “Choose Their Own Adventure” by providing them with the option to select different choices that the main character could make, thus allowing them to influence the outcome of the film. Different viewer choices will lead to drastically different narrative outcomes for the character. A majority of the feedback from users and the press was positive which ultimately created great publicity for Netflix; however, not all the resulting feedback was positive.
ChooseCo, the publisher behind the original “Choose Your Own Adventure” novels that were published in the 1980s and 1990s, felt that Netflix had taken too much liberty with the trademarked phrase. As a result, ChooseCo filed a $25 million lawsuit against Netflix in January 2019, less than two months after the film was released. Netflix initially moved to dismiss the suit, arguing that it had a First Amendment right to use the phrase in an artistic context. It relied on Rogers v. Grimaldi, a Second Circuit case which states that as long as the use of another’s trademark is artistically relevant and is not misleading, it is not a trademark infringement because such use is protected speech under the First Amendment.
Under Rogers, a use of a famous mark which is 1) of an artistic nature; and 2) does not mislead consumers is not a trademark infringement. The standard for whether a use of a trademark is of an artistic nature is “purposely low” because the First Amendment protection of speech and expression supersedes the rights given to trademark holders by the Lanham Act.Thus, any use which has some artistic purpose, even if a commercial purpose is included, will “satisfy the artistic relevance prong” of the Rogerstest.To fail the second prong of the test, the use of the mark must be “explicitly misleading” to customers, causing them to think the mark holder is “somehow behind” the mark user’s product.A mark holder looking to prove that the use fails the second prong must provide evidence probative of the user’s behavior which shows an intent to deceive or mislead; showing that the use confused consumers is not enough.
Judge William Sessions of the United States District Court for the District of Vermont has denied Netflix’s motion to dismiss and is allowing the case to go forward. While Judge Sessions acknowledged that Netflix’s film was an artistic work and the use of the phrase had artistic relevance and thus cleared the “low bar” of the first prong of the Rogerstest, he ruled that it was a question of fact whether or not Netflix’s use of the phrase “Choose Your Own Adventure” was misleading. Specifically, the facts that 1) Netflix previously engaged in failed negotiations with ChooseCo to license its books; 2) the book at the center of the film’s plot is explicitly referred to a “Choose Your Own Adventure” book; and 3) the film’s interactive nature is intentionally similar to ChooseCo’s signature novels, all create a question as to whether or not Netflix’s use of the phrase is misleading.
Past cases have shown that the bar to clear for a finding of infringement under Rogersis extremely high, and although Netflix’s previous negotiations with ChooseCo may show that it had a motive to intentionally create an impression of sponsorship by ChooseCo in the minds of viewers, the Rogerstest is likely too high a hurdle for ChooseCo to clear. The use of the exact phrase “Choose Your Own Adventure” by the main character in the film to refer to the novel at the center of the plot will lend powerful support to ChooseCo’s argument that Netflix’s actions were intentional. Netflix’s previous attempts to license Choose Your Own Adventure books show that it had a motive to create an association with the books in viewer’s minds, and the fact that the film is designed to operate the same way as the books, albeit in a different medium, may convince a factfinder that Netflix’s actions were intended to mislead viewers. However, when taking into account the significant burden Rogerscreates for trademark holders because of the First Amendment implications, ChooseCo’s case is likely doomed to fail, despite the strength of the evidence against Netflix.
An unfavorable ruling for Netflix could create a chilling effect for companies looking to use trademarks in an artistic context. It could create a precedent under which companies would need to be careful not to create any misleading similarities between the artistic work and the underlying characteristics of the product whose trademark is being utilized. However, as previously stated, the Rogerstest creates a significant burden for trademark holders due to the protections offered by the First Amendment: ChooseCo may have cleared the first hurdle, but it has a long way to go before declaring victory.
Jesse Damiani, Black Mirror: Bandersnatch Could Become Netflix’s Secret Marketing Weapon, TheVerge(Jan. 2, 2019, 12:15 PM), https://www.theverge.com/2019/1/2/18165182/black-mirror-bandersnatch-netflix-interactive-strategy-marketing.
Jackie Strause, ‘Black Mirror’ Interactive Film: Inside the 2-Year Journey of ‘Bandersnatch’, The Hollywood Reporter(Dec. 28, 2018, 5:00 AM), https://www.hollywoodreporter.com/live-feed/black-mirror-bandersnatch-netflixs-interactive-film-explained-1171486.
See Damiani, supra note 1 (describing ‘Bandersnatch’ as a Netflix’s “first big success” using an interactive format); Rick Porter, Emmys: ‘Black Mirror: Bandersnatch’ Wins Best TV Movie, The Hollywood Reporter(Sept. 22, 2019, 6:42 PM), https://www.hollywoodreporter.com/news/black-mirror-bandersnatch-wins-emmy-best-tv-movie-1242108;see alsoEriq Gardner, Netflix’s ‘Black Mirror: Bandersnatch’ Leads to “Choose Your Own Adventure” Trademark Lawsuit, The Hollywood Reporter(Jan. 11, 2019, 8:38 AM), https://www.hollywoodreporter.com/thr-esq/netflix-sued-exploiting-choose-your-own-adventure-black-mirror-bandersnatch-1175428.
Gardner, supra note 4.
Complaint, Chooseco LLC v. Netflix, Inc., No. 2:19-cv-00008-wks, (D. Vt. Jan. 11, 2019); see alsoGardner, supranote 4.
Memorandum of Law in Support of Defendant’s Motion to Dismiss at 12, Chooseco LLC v. Netflix, Inc., No. 2:19-cv-00008-wks, (D. Vt. Mar. 21, 2019).
See Rogers v. Grimaldi, 875 F.2d 994, 1005 (2nd Cir. 1989).
See Rogers, 875 F.2d at 999.
Order Denying Defendant’s Motion to Dismiss at 10, Chooseco LLC v. Netflix, Inc., No. 2:19-cv-00008-wks, (D. Vt. Feb. 11, 2020).
See Brown v. Elec. Arts, Inc., 724 F.3d 1235, 1245-46 (9th Cir. 2013).
Id. at 1246 (stating that relevant evidence “must relate to the behavior of the identifying material’s user, not the impact of the use.”)
See Order Denying Defendant’s Motion to Dismiss at 1, Chooseco LLC v. Netflix, Inc., No. 2:19-cv-00008-wks, (D. Vt. Feb. 11, 2020).
See Order Denying Defendant’s Motion to Dismiss at 20, Chooseco LLC v. Netflix, Inc., No. 2:19-cv-00008-wks, (D. Vt. Feb. 11, 2020).
Id.; Eriq Gardner, Netflix Loses Bid to Dismiss $25 Million Lawsuit Over Black Mirror: Bandersnatch, The Hollywood Reporter(Feb. 11, 2020, 10:03 AM), https://www.hollywoodreporter.com/thr-esq/netflix-loses-bid-dismiss-25-million-lawsuit-black-mirror-bandersnatch-1278701.
See Brown v. Elec. Arts, 724 F.3d at 1248 (dismissing a claim when the mark holder was unable to prove the identifying user explicitly misled customers, even after he showed proof that consumers were misled by the use).
See id. at 1246 (quoting ETW Corp v. Jireh Publishing, Inc., 332 F.3d 915 (6th Cir. 2003) for the proposition that in cases where Rogersapplies, “the risk of misunderstanding [created by the identifying use] . . . is so outweighed by the interest in artistic expression as to preclude application of the Lanham Act.”)