UK: Bandersnatch, The Case For Trade Mark Infringement: Whose Right Was It To Let You Choose Your Own Adventure?

Last Updated: 20 February 2019
Article by Rayyan Mughal and Gina Lodge

Chooseco LLC, creator of the well-known series of "Choose Your Own Adventure" interactive books, is suing Netflix in the US over Netflix's own interactive film, Black Mirror: Bandersnatch. Surprisingly, rather than alleging copyright infringement due to some similarity between the Netflix film and Chooseco's books,  Chooseco's principle claim is for trade mark infringement.

Background

According to Chooseco, the "Choose Your Own Adventure" books are one of the most beloved and well-known series in the world with more than 265 million books sold in 40 languages worldwide. Chooseco has registered a trade mark for "Choose Your Own Adventure" in connection with books, movies and other types of media.

Bandersnatch is an interactive film with multiple potential endings depending on the choices made by the viewer during the film. The premise of the film involves the adaptation of a dark fantasy novel, entitled "Bandersnatch", into a video game. Throughout the film, the protagonist mentions that the fictional Bandersnatch book requires the reader to be "always flicking backwards and forwards", at one point even describing the fictional Bandersnatch as a "Choose Your Own Adventure" book. Chooseco claims this "flipping back and forth" feature is a hallmark of their books and gives the example that early on in the film "the viewer is given two options to select the protagonist's breakfast cereal".

The lawsuit

The lawsuit, filed in January of this year, alleges that Netflix does not have permission to use Chooseco's trade mark in the film and complains that Netflix's unauthorised use of the mark is in order to "wilfully and intentionally capitalize on viewers' nostalgia for the original book series from the 1980s and 1990s".

Chooseco claims that "depending on the choices the viewer makes, [the film] can include references to and depictions of a demonic presence, violent fighting, drug use, murder, mutilation of a corpse, decapitation, and other upsetting imagery."

Ultimately, the issue appears to be that these "dark and violent themes" are too mature for the target audience of Chooseco's books and that "the film's dark and, at times, disturbing content dilutes the goodwill for and positive associations with Chooseco's mark and tarnishes its products".

Interestingly, Chooseco also claims that, beginning in 2016, Netflix actively sought to obtain a licence from Chooseco. However, despite extensive negotiations no licence was ultimately granted. Moreover, Chooseco made it expressly clear that they did not consent to the use of their trade mark in the film by sending Netflix a cease and desist letter in advance of the film's release. Together with injunctive relief, Chooseco is seeking its legal fees and either damages of at least $25 million or an account of Netflix's profits, whichever is greater.

Points to consider

While the concept of a book which requires the reader to flip back and forth has been around for some time, the concept is not necessarily unique to Chooseco's range of books, nor has it been widely incorporated within a film. It could be a high hurdle for Chooseco to prove that people associate this feature solely with Chooseco's "Choose Your Own Adventure" books (if indeed this is what they are aiming to do).

It is also interesting to note that Twentieth Century Fox currently holds an option contract with Chooseco to develop an interactive film series based on the "Choose Your Own Adventure" books. Existing option holders are something potential licensees (as well as licensors) should always be aware of when looking to acquire a licence of intellectual property; should the option holder decide to exercise such an option, the licensor may be in breach if, during the option period, it granted a licence to someone else. Granting options may therefore create the danger of limiting other prospects and should be considered carefully

What can you do?

Although the process involved in obtaining an IP licence can be lengthy and potentially expensive, the risks involved in using any such IP without permission are high and could ultimately far outweigh the costs of the former, as shown in this instance by Chooseco's claim for a minimum of $25 million plus legal costs.

Having a strategy in mind when approaching situations such as this is invaluable, though the strategy may differ depending on the precise circumstances in which you find yourself. For example, should:

  1. you find yourself uncertain as to whether you will be infringing somebody else's trade mark (or any other IP right), you could involve a trade mark or patent attorney or a solicitor at an early stage to conduct a clearance search to assess what third party rights exist and your risk of infringing such rights;
  2. there be an existing trade mark (or other IP right), there are various options:

    1. Obtain legal advice to ascertain whether your proposed use of the third party right would be likely to infringe;
    2. Change direction;
    3. Seek to obtain a licence;
    4. Insofar as the trade mark owner is not interested in the same market as you, you could seek to enter into a coexistence agreement whereby the parties consent to each other's use of their respective trade marks to the extent they stick to their respective markets.
  3. this all be too late in the sense that the owner of the third party right has already alleged infringement, you could seek to settle the claim by coming to some kind of commercial arrangement.

Conclusion

Chooseco's claim against Netflix is a reminder of the importance of IP awareness and licensing; whether this takes the form of ensuring your proposed activities do not infringe somebody else's trade mark (as the case is here) or whether you are looking to license your own IP to prevent its unauthorised use by a third party.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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