Netflix Requests for Dismissal of ‘Choose Your Own Adventure’ Trademark Amid Lawsuit

Originally published by Cris Feldman.

Intellectual property laws aim to help businesses and creators protect their work from being misappropriated. Trademarks, copyrights, and patents can all be used in different ways to accomplish this. With trademarks, however, in certain cases it can be difficult to achieve this sort of protection when trying to protect a widely used phrase or word. This is true for major streaming platform Netflix, which has found itself in the middle of a trademark lawsuit where it has requested for dismissal of an existing mark.

In January of 2019, the company behind the popular Choose Your Own Adventure book series of the 1980’s and 1990’s – Chooseco, LLC – filed a trademark infringement lawsuit against Netflix for its popular film, “Black Mirror: Bandersnatch.” The film enticed viewers because it was done in a ‘choose your own adventure’ style, where they could determine the decisions of the main character as the show progressed. Chooseco alleged Netflix attempted to make a profit off of the nostalgia connected to the brand’s books without permission, and that a character in the film refers to his own video game creation as a “choose your own adventure” game. Additionally, Chooseco also accused the streaming service of diluting consumers’ goodwill by linking ‘choose your own adventure’ with the “upsetting” images in Bandersnatch.

Netflix filed a motion to dismiss the case entirely, stating the phrase ‘choose your own adventure’ was only used to describe the film. Judge William Sessions III of the U.S. District Court for the District of Vermont rejected Netflix’s request, citing more evidence was needed to evaluate the argument that its use of the phrase was protected by free speech concepts. The trademark infringement litigation remains unresolved, as Netflix has requested dismissal of the existing trademark, because the phrase ‘choose your own adventure’ is a generic term.

Understanding Trademark Infringement

A trademark is a method of branding a product to distinguish it from similar products other companies may produce. Trademarks offer legal protections for words, symbols, phrases, logos, designs, or a combination of those that represents a good or service. For instance, the MGM lion’s roar and the Nike swoosh logo are two easily recognizable trademarks.

Trademark infringement refers to the unauthorized use of an existing trademark, service mark, or a substantially similar mark on goods or services that are related and will likely cause confusion with potential clients or customers. In order to determine if trademark infringement has occurred, the following factors are taken into account:

• The strength of the mark
• The similarity of the trademark holder’s goods or services to the alleged infringer’s
• The similarity of the alleged infringing mark to the trademark being infringed upon
• The similarity of marketing channels used for goods and services
• The degree of care likely exercised by those purchasing goods and services
• The alleged infringer’s intent behind why they selected their mark
• The likelihood of expansion of parties’ products or services into new markets
• Actual evidence of consumer confusion

Texas Trademark Infringement Law

Federal trademark law – called the Lanham Act – authorizes a lawsuit to be brought for infringement of either registered or common law trademark rights. Common law trademark rights are acquired automatically when a business utilizes a name or logo in commerce, and are enforceable in state courts.

Texas trademark law is fairly similar to federal trademark law; however, in Texas, one does not have to register their trademark in order for it to be valid. If the business is using the trademark in commerce in connection with goods and services it provides, that gives rise to common law trademark rights. There are still valuable reasons to register a trademark in Texas, however. For instance, registering a trademark puts other parties in the state on notice that a business has ownership rights to the mark in connection with specific goods and services. Registering a trademark also provides the business with proof it owns the trademark and has the exclusive right to use it.

Texas law also requires the trademark be used by the business prior to registering it. This is because when applying for trademark registration, the business must show it is using the mark in connection with a specific good or service. Once registered, the trademark will remain registered in Texas for up to five years.

Houston Commercial Litigation Attorneys

Protecting a business’ intellectual property can be a complex process. Your company’s ideas should be protected and not infringed upon. At Feldman & Feldman, we have successfully litigated business disputes for over 40 years and will fight for your business’ intellectual property rights. If your business is facing a dispute, contact Feldman & Feldman today to schedule a consultation to discuss your case.

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