Disappointing: Netflix Decides To Settle With Chooseco LLC Over 'Bandersnatch' Lawsuit

from the sigh dept

Well, it's been quite a stupid and frustrating run in the trademark lawsuit between Netflix and Chooseco LLC, the folks behind Choose Your Own Adventure books from our youth. At issue was the Black Mirror production Bandersnatch, in which the viewer takes part in an interactive film where they help decide the outcome. The main character is creating a book he refers to as a "choose your own adventure" book. Chooseco also complained that the dark nature of the film would make the public think less of CYOA books as a result. Netflix fought back hard, arguing for a dismissal on First Amendment grounds, since the film is a work of art and the limited use or reference to CYOA books was an important, though small, part of that art. The court decided that any such argument was better made at trial and allowed this madness to proceed, leading Netflix to petition for the cancellation of Chooseco's trademark entirely. This story all seemed to be speeding towards an appropriately impactful conclusion.

But reality has apparently turned us to the wrong page of the story. Netflix and Chooseco have reached a settlement, predictably short on details save for one very specific area.

On Monday, at a status conference before U.S. District Court Judge William Sessions III, the parties revealed that they had reached a settlement. While terms weren't released, the parties did tell the judge of one slightly unusual condition — the judge's February 2020 opinion denying Netflix's dismissal motion would have to be vacated. Sessions agreed to the demand. He chose to pretend he never questioned whether Netflix's film was explicitly misleading.

I'll admit that last bit has me a bit flummoxed. I haven't run into this sort of thing previously, where a case is settled and a previous order by a judge refusing dismissal of said case is vacated. I have pinged a couple of lawyers and have gotten mostly shrugs. The most I can say about it from digging around is that Netflix may not have wanted some precedent-setting ruling like this officially on the books for one reason or another.

The rest of the settlement details are not for public consumption. Without those details, it's difficult to know just who won out here, though it's notable that Chooseco appears to be keeping, and even expanding, it's trademark rights on "Choose Your Own Adventure." I could speculate that the threat to the mark was enough to get the company to mostly back off Netflix.

But that's the frustration here, honestly. Netflix raised some important First Amendment concerns in its defense, concerns that deserve a day in court. For now, at least, this one dumb lawsuit is over.

Filed Under: 1st amendment, bandersnatch, black mirror, choose your own adventure, free speech, trademark
Companies: chooseco, netflix

Netflix Seeks Cancellation Of "Choose Your Own Adventure" Trademark

from the you-have-chosen...poorly dept

This really should happen more frequently than it does. You will hopefully recall the ongoing drama between Chooseco, the company behind the Choose Your Own Adventure series of books we all remember from the 80s and 90s, and Netflix, producer of the hit series Black Mirror and its recent iteration entitled Bandersnatch. To catch you up, Bandersnatch was an interactive streaming show that billed itself as a "choose your own adventure" show, allowing the viewer to influence the progression of the story via choice. Chooseco sued Netflix over this production, claiming trademark infringement. Chiefly at issue is the appearance of a book mockup in the series, trade dress and marketing surrounding the show, and the fact that a character in the show refers to his own video game creation as a "choose your own adventure" game.

Separately, wielding this trademark, Chooseco inked a lucrative deal with Amazon to develop CYOA stories for the Amazon Alexa (keep this in mind for later). Chooseco also separately went after other indie game developers for using the phrase in their own marketing (again, important for later). And while Netflix sought to have the case tossed on grounds that its use of the phrase and trade dress was protected by the First Amendment, and was not protectable for Chooseco, and that there was no chance of customer confusion. The court, somewhat predictably, decided that those were arguments better made at trial.

And so here we are, with Netflix setting forth those same affirmative defenses... but with one notable addition.

Netflix is asking for the cancellation of Chooseco’s ‘Choose Your Own Adventure’ trademark, as the dispute between the two companies over a “Black Mirror” episode rumbles on.

Netflix, in a new filing at the US District Court for the District of Vermont on Tuesday, February 25, argued that not only has the term “choose your own adventure” become generic (and available under principles of fair usage), but also that characters and storylines from its 2018 interactive episode “Bandersnatch” differs from other interactive productions.

Yup. In addition to the affirmative defenses laid out in its motion for dismissal, Netflix is now asking that Chooseco's trademark be cancelled entirely. This is going to have a ripple effect across all of the other actions Chooseco has taken as set forth above. Those indie game threats? Those go away if Chooseco doesn't have a trademark to wield. Future lucrative deals such as that struck with Amazon? Nope, those are gone, too, potentially. By picking this wholly unnecessary fight, Chooseco has potentially given Netflix the ability to yank away the one poker chip it had left to play.

From the filing:

The alleged “Choose Your Own Adventure” marks that are the subject of Registration Nos. 2,913,403; 4,682,357; 5,651,588; 2,807,473; and 3,234,147 lack distinctiveness, are generic, and therefore are unprotectable. As detailed herein, the phrase “Choose Your Own Adventure” no longer denotes a single source or origin. Instead, it is a common phrase used by the general public to refer (a) to any situation that requires making a series of unguided choices, or that provides an opportunity to go back and re-make a series of choices that turned out badly, or (b) to any interactive fictional work that employs a “branching” narrative style, regardless of the source or origin of the work.

As used in the context of fictional works, the phrase “Choose Your Own Adventure” encompasses the entire genre of interactive-narrative fiction, a genus of media of which Chooseco’s book series is just one species.

Anyone really want to argue that the above isn't true? It sure seems to be. I have long known what a CYOA book was. I, until covering this story, had zero idea that there was a single company with a registered trademark behind those books. Because, really, there isn't. CYOA is essentially a genre. And somewhat descriptive. And not particularly identifying as to a source of a product.

There are legions of interactive novels, for instance, that are self-described as CYOA. And, yet, here we are in 2020, the year of our lord, first seeing legal action by Chooseco over it? Come on.

Again, I wish we saw this more often. Trademark bullies looking for a payday should more often have to at least face the risk of losing their trademarks entirely. While there is no guarantee that this will work in Netflix's favor at trial, at least this threat would deter more bullying in general.

Filed Under: bandersnatch, black mirror, choose your own adventure, generic, trademark
Companies: chooseco, netflix

Court Allows Chooseco's Lawsuit Against Netflix Over 'Bandersnatch' To Move Forward

from the pro-choice dept

You will recall our previous posts about Chooseco, the company behind those "Choose Your Own Adventure" books from the 80s, and its lawsuit against Netflix. At issue is Netflix's Black Mirror iteration entitled Bandersnatch. The episode essentially runs a choose your own adventure scenario in streaming film, with the viewer being able to control the outcome of the narrative through choice. In addition, Netflix marketed the episode with references to it being a "choose your own adventure" style story. In addition, the protagonist in the episode refers to a book that is the basis for a video game he's creating as "a choose your own adventure book." Predictably, Netflix petitioned the court for a dismissal, arguing that the First Amendment allowed it to make the references it did in the production, so long as it wasn't purposefully confusing the public with its use of the "choose your own adventure" mark. In the conclusion of that post, we wrote this:

Netflix would like the court to acknowledge that pretty much everything Chooseco is complaining about that is included in Bandersnatch is not protectable, and that pretty much all the rest is protected as expression and art by the First Amendment. Frankly, it's hard to imagine how the court could argue differently, although there's always the chance the court might decided that these are issues best decided in the trial phase.

Which, sadly, is exactly what happened. The court's decision (embedded below) takes the reader on quite the journey, where it essentially does a full analysis on the test for using trademarks in artistic works. That test consists of two components: is the use in an artistic work and, if so, is that use purposefully misleading the public. Chooseco argued that because Netflix made money off of Bandersnatch, it can't be considered purely artistic. The court points out that's besides the point, since precedent exists for partially-artistic, partially commercial works to be afforded equal protection. In addition, the threshold for the use of a mark being artistically relevant is, again by precedent, literally anything other than entirely irrelevant. The court goes on to note that Bandersnatch's use definitely does have artistic relevance given the context of the episode as a whole. The decision concludes:

"Here, the protagonist of Bandersnatch attempts to convert the fictional book 'Bandersnatch' into a videogame, placing the book at the center of the film’s plot," states the ruling. "Netflix used Chooseco’s mark to describe the interactive narrative structure shared by the book, the videogame, and the film itself. Moreover, Netflix intended this narrative structure to comment on the mounting influence technology has in modern day life. In addition, the mental imagery associated with Chooseco’s mark adds to Bandersnatch’s 1980s aesthetic. Thus, Netflix’s use of Chooseco’s mark clears the purposely-low threshold of Rogers’ artistic relevance prong."

That sure does sound like the court thinks Netflix's First Amendment claim is a good one. And, yet, as happens so many times with courts at this stage of proceedings, deference is given to plaintiffs, as well as the larger trial process and the need for discovery to be performed. For that reason, the court sets its own analysis aside and allows the trial to move forward.

"Here, Chooseco has sufficiently alleged that consumers associate its mark with interactive books and that the mark covers other forms of interactive media, including films," continues the decision. "The protagonist in Bandersnatch explicitly stated that the fictitious book at the center of the film’s plot was a 'Choose Your Own Adventure' book. In addition, the book, the videogame, and the film itself all employ the same type of interactivity as Chooseco’s products. The similarity between Chooseco’s products, Netflix’s film, and the fictitious book Netflix described as a 'Choose Your Own Adventure' book increases the likelihood of consumer confusion."

The court reached the same conclusion on Netflix's claim that its use was Fair Use. Essentially, the court has decided that Chooseco's suit is worth at least the discovery phase of a trial.

Again, this isn't entirely surprising, even if it is certainly frustrating. Trademark law cannot supersede the First Amendment, and even this court seems to think that Netflix is on solid footing with its First Amendment claim. For anyone to argue that a franchise like Black Mirror using the term "choose your own adventure" is going to confuse the public into thinking Chooseco is somehow involved is pretty silly. And, yet, Chooseco gets to the discovery phase of a trial over it.

Filed Under: art, bandersnatch, choose your own adventure, fair use, trademark
Companies: chooseco, netflix

Netflix Asks Court To Dismiss Chooseco's Lawsuit For All The Obvious Reasons

from the this-adventure-sucks dept

You will recall that Chooseco LLC, the company behind the Choose Your Own Adventure books that people my age remember with such fondness, decided quite stupidly to sue Netflix over Black Mirror's audience-influenced production called Bandersnatch. The lawsuit is silly for any number of reasons, including that the whole thing rests on a character in Bandersnatch mentioning a CYOA book as the inspiration behind his fictional video game coupled with the fact that the film (a third medium) lets viewers choose how the story progresses. How Chooseco thinks any of that legal pixelation resolves into an actual trademark or copyright violation is anyone's guess, because it most certainly does not. Storytelling mechanics are most definitely not protectable as intellectual property. On top of that, Chooseco subsequently announced its own licensed deal with Amazon for Alexa. The timing of it all sure seems to indicate that Chooseco might have wanted to send Netflix a thank you for revitalizing interest in its products, rather than filing a lawsuit.

But since the lawsuit was filed, it was only a matter of time before Netflix tried to have it tossed.

But lawyers for Netflix argue the phrase is common and simply “a reference to the book’s narrative device”.

It also dismissed claims by Chooseco of similarities between the border of a game by fictional video game developer Tuckersoft and its own book covers. Netflix said there was “nothing distinctive” about the publisher’s borders and the designs were in any case “markedly different”.

In a filing last week, the online broadcaster said: “No amount of further amendment will change Bandersnatch’s actual uses of the phrase ‘Choose Your Own Adventure’. Nor will amendment change the fictional ‘Tuckersoft’ company’s uses of the rounded color borders, let alone make them similar to Chooseco’s. Nor will amendment alter the First Amendment protection for such artistic uses, the protection for descriptive fair uses like the use of the challenged phrase, or the absence of any secondary meaning for the rounded color borders element of Chooseco’s trade dress.”

It's pretty much as we predicted. Netflix would like the court to acknowledge that pretty much everything Chooseco is complaining about that is included in Bandersnatch is not protectable, and that pretty much all the rest is protected as expression and art by the First Amendment. Frankly, it's hard to imagine how the court could argue differently, although there's always the chance the court might decided that these are issues best decided in the trial phase.

Which would be too bad, really. Lawsuits as plainly silly as this deserved to be tossed, not validated by full trials.

Filed Under: bandersnatch, choose your own adventure, fair use, trademark
Companies: chooseco, netflix

ChooseCo Inks Lucrative Deal With Amazon, Possibly Thanks To Netflix's 'Bandersnatch'

from the biting-the-hand dept

When we discussed Chooseco, the company behind the Choose Your Own Adventure series of books from decades past, and its lawsuit against Netflix for having content that allowed watchers to choose paths within the narrative, we focused mostly on how silly the lawsuit was purely from a merit standpoint. The trademark suit rested mostly on a throwaway reference or homage made by a character in the Netflix work, and the claim that Chooseco has licensed its name in the past but lost the opportunity to do so for this work. None of that makes the public at all likely to be confused into thinking that Bandersnatch was somehow a Chooseco product, nor does such a reference somehow cause the work to be trademark infringement.

But there's another angle in all of this. The homage made in Bandersnatch was truly an homage, meaning that it called to mind for many of a certain age the fondness we had for these Choose Your Own Adventure books. Despite the films dark themes, the reference itself is a positive one. And, frankly, it probably caused many to think about the series of books for the first time in a long time, making it something of an advertisement for Chooseco's products.

And that buzz surrounding Bandersnatch certainly coincidentally occurred alongside the more recent announcement that Chooseco has agreed to partner with Amazon to produce Choose Your Own Adventures for the Alexa.

You may remember ChooseCo from its lawsuit with Netflix over the Black Mirror episode. The company claims that Netflix never acquired the proper license to use the “Choose Your Own Adventure” trademark.

But clearly, ChooseCo still aims to benefit from the attention, and from Netflix’s ability to make this storytelling gimmick popular with a younger generation of tech-savvy consumers.

In collaboration with Amazon’s  Audible division, the two companies are together releasing an Alexa skill (properly licensed) that will bring ChooseCo’s Choose Your Own Adventure stories to life on Alexa-powered devices, like Echo smart speakers, which are controlled through voice commands.

Should Chooseco actually have thanked Netflix for its nod in Bandersnatch rather than suing over it? I'm not sure, but it doesn't seem unlikely that the huge amount of buzz surrounding the film contributed to, if not created, the Amazon opportunity for Chooseco.

And that's often the point when we talk about intellectual property lawsuits. There are often other ways to look at what is being sued over, with the relinquishing of a bit of control actually resulting in free promotion, free advertising, and the kind of word of mouth buzz that simply can't be bought as part of a media campaign. It would be immensely interesting to be on the inside at Chooseco, in order to get a sense of the sequence of events in which all of this occurred.

Regardless, it seems Chooseco at least had the option of choosing to be less litigious.

Filed Under: bandersnatch, choose your own adventure, licensing, publicity, trademark
Companies: amazon, chooseco, netflix

The 'Choose Your Own Adventure' People Are Suing Netflix Over 'Bandersnatch'

from the ip-adventure dept

As you may have already heard, the latest iteration of the Black Mirror franchise on Netflix, titled Bandersnatch, is an absolute hit. You likely also have heard that it allows the viewer to influence the plot by making choices within the story's many inflection points. And, hey, perhaps you even heard that Netflix is facing legal action by Chooseco LLC, the company behind the "Choose Your Own Adventure" series that were popular in the '80s and '90s.

But if you haven't dug into the details, both in terms of why Chooseco states the Netflix series violates its trademark and the damages it is asking for in court, you may not realize just how bonkers all of this is.

Chooseco LLC is suing Netflix for trademark infringement and dilution over the streaming service’s new hit, claiming that Netflix is “willfully and intentionally” using its trademark “to capitalize on viewers’ nostalgia for the original book series from the 1980s and 1990s.”

Bandersnatch is an interactive film that allows viewers to make choices that drive the plot and decide the ending. Early on, the main character informs his father that “Bandersnatch is a ‘Choose Your Own Adventure’ book” and holds up a copy by fictional author Jerome F. Davies.

Now, it should be noted that this entire claim appears to rest on two things. First, there is very brief nod to the book series at one point in the film. Second, Netflix at one point had spoken with Chooseco about officially licensing their trademark for a Choose Your Own Adventure series that doesn't appear to have anything to do with Bandersnatch. But it's important to make something clear: at no point has Netflix ever referred to its own Banderstatch as "choose your own adventure," or anything close to that. It is true that many people may have compared the two because, duh, but that's not on Netflix (one might argue it's on Chooseco for picking a name that is so easily genericized). From there, Chooseco claims that there will be public confusion about the origin and/or affiliation of Bandersnatch having something to do with Chooseco, and it claims that the film's use dilutes the positive warm-and-fuzzies people have for the book series. On that front:

Overall, Bandersnatch is a dark film and the videogame that Butler creates in it based on its fictional inspiration is equally dark. Nearly every narrative fork includes disturbing and violent imagery. The movie has a rating of TV-MA, which means the content is specifically designed to be viewed by adults. Depending on the choices the viewer makes, it can include references to and depictions of a demonic presence, violent fighting, drug use, murder, mutilation of a corpse, decapitation, and other upsetting imagery. These dark and violent themes are too mature for the target audience of Chooseco's CHOOSE YOUR OWN ADVENTURE BOOKS. Association with this grim content tarnishes Chooseco' s famous trademark.

This, as should be plainly evident, is absurd on many levels. Fans of Bandersnatch aren't going to think less of the Choose book series because Bandersnatch is dark. Dark is the whole point of Netflix's series. Aside from that, a throwaway line in the beginning of the film serving as a simple nod to the book series doesn't exactly create the lasting impression that there is any affiliation here. Bandersnatch regularly does commentary on popular culture by turning it dark. It's kind of the point.

And, again, there's nothing in here that's going to cause people to somehow think Chooseco is involved in this film at all. The trademark claims ought to fail on the lack of any real concern over public confusion. And yet...

The real legal adventure, though, could come in its request for $25 million in damages or Netflix’s profits, whichever is greater, and that the damages be tripled because of the alleged willful nature of Netflix’s conduct.

Supporting the company’s claim that it deserves treble damages is its allegation that the two parties had been in "extensive negotiations" over the use of the trademark in 2016 but that Netflix never obtained a license. Also, Chooseco claims it sent Netflix at least one cease-and-desist letter regarding its unauthorized use of the "Choose Your Own Adventure" trademark in another program.

Every piece of evidence here is weaker than the last, which makes a $25 Million price tag seem a bit too much. Perhaps this is a lawsuit fishing for a settlement to make it go away, but I would hope Netflix digs its heels in instead.

Filed Under: bandersnatch, black mirror, choose your own adventure, trademark
Companies: chooseco, netflix