Netflix Counterclaims That “Choose Your Own Adventure” is Generic

Netflix has answered Chooseco’s amended complaint and pressed counterclaims. Earlier this month, Chooseco filed suit against Netflix for trademark infringement arising from their use of the phrase “Choose Your Own Adventure” in the film Black Mirror:  Bandersnatch, despite the phrase’s trademark and association with Chooseco’s adventure books. Chooseco argued this was misleading and confusing to consumers. A judge refused to dismiss the case.

Netflix’s answers predominately deny Chooseco’s allegations. Netflix agrees with Chooseco on three points: first, that “Chooseco has asserted claims under the Lanham Act and for unfair competition under the common law of the State of Vermont”; second, that “Chooseco has obtained a federal trademark registration for the word mark CHOOSE YOUR OWN ADVENTURE (the ‘Mark’)”; and third, that “Chooseco has not entered into a license or authorization for Netflix to use the Mark.” Netflix also admits that it released the Black Mirror film and “early in the film, the film’s protagonist uses the words ‘Choose Your Own Adventure’ with reference to a fictitious book he is reading.” Other than these instances, Netflix denies or states it “lacks knowledge or information sufficient to form a belief about the truth of the allegations” or that “no response is required.”

 Netflix also questioned whether some of the items were suitable for trademark protection. Netflix admitted it discussed licensing Chooseco’s mark in 2016 and they reached no such agreement. However, Netflix denies that these discussions were connected to Bandersnatch. Netflix concluded its answer by stating that Chooseco’s statements are either barred or do not state a claim for which relief can be granted, and has sought an award of its attorneys’ fees.

In its counterclaims Netflix explains that Bandersnatch is an interactive film that utilizes a “branching narrative”; as a viewer selects options, the plot adjusts as the film proceeds; consequently, there are multiple options and endings. The film is unique, Netflix explained, because “the viewer does not step into the shoes of the protagonist whose fate the viewer purportedly controls…as an outside force.” For example, the protagonist will occasionally “actively [resist] the commands the viewer gives him, such as when the viewer commands him to ‘pull on his earlobe.’” Additionally, Netflix explained that Bandersnatch differs from other interactive stories because no matter what choice the viewer makes, the protagonist will not be able to successfully complete his task; each choice results in a bad ending.

Netflix countered that the use of the phrase “a ‘Choose Your Own Adventure’ book” was made in “good faith.” The “passage of dialogue was included in the film based on what it adds artistically to the work, and not for purposes of creating confusion as to whether Bandersnatch originates with, or is authorized by, Chooseco.” This is the only time that phrase appears in the film.

Netflix also points out that Chooseco’s books are not the only books to use the interactive narrative style and technique, arguing that Chooseco does not own the interactive narrative technique. For example, Bantam Books published a “Choose Your Own Adventure” series from 1979 to 1999 and it had a trademark for the phrase, ‘Choose Your Own Adventure.” Netflix also argued that the narrative technique is often employed in other media, such as video games, a medium closely interconnected with Bandersnatch. Netflix argues that as a result of these multiple uses, the phrase “has become generic in its current use within the United States.” Netflix states that “[i]n contemporary parlance, 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, is referred to as a ‘Choose Your Own Adventure.’  For instance, judicial opinions routinely use the phrase ‘Choose Your Own Adventure’ in those ways.”

As a result, Netflix realleges and reincorporates noninfringement and nondilution, and moves for the cancellation of Chooseco’s trademarks.

Chooseco is represented by Dinse, Knapp & McAndrew. Netflix is represented by Ballard Spahr, as well as Gravel & Shea. The suit was filed in the Vermont District Court.