They chose unwisely: court blows another hole in Rogers by refusing to say that explicit means explicit

Chooseco LLC v. Netflix, Inc., No. 2:19-cv-08 (D. Vt. Feb. 11, 2020)

Explicit doesn’t mean explicit in yet another sign of the pressure the Rogers test is under.  Chooseco sued Netflix for infringement (etc.) of its rights in Choose Your Own Adventure in the dialogue (!!) of its film Black Mirror: Bandersnatch.

Chooseco’s registration covers various types of media including books and movies. Netflix’s Bandersnatch “is an interactive film that employs a branching narrative technique allowing its viewers to make choices that affect the ‘plot and ending of the film.’” You know there’s a problem when the opinion says “[t]he pivotal scene at issue in this litigation occurs near the beginning of the film.”  The main character is trying to develop his own videogame based on a book also called Bandersnatch. His father remarks that Jerome F. Davies, the author of the fictitious book in the film, must not be a very good writer because Butler keeps “flicking backwards and forwards.” The character responds: “No, it’s a ‘Choose Your Own Adventure’ book. You decide what your character does.” “Of note, the subtitles for the film couch the phrase in quotation marks and capitalize the first letter of each word,” allegedly provided by Netflix.

The complaint alleged that Netflix promoted Bandersnatch with a similar trade dress as that used by CHOOSE YOUR OWN ADVENTURE books in multiple marketing campaigns. Chooseco is claiming the “rounded double frame” as a trade dress. (Its exemplar seems to have a problem in that most of those look like foreign, not US versions, on which you couldn’t base a US trademark claim, but good news for Chooseco: the court doesn’t care.)

Thus, the complaint alleges, Netflix created a website for Tuckersoft, the fictional videogame company where the main character developed his videogame, displaying multiple fictional videogame covers that have a “double rounded border element,” a few of which also appear in the film itself.

Netflix also allegedly used images of the videogame covers while promoting Bandersnatch in the United Kingdom, and used the cover for the Bandersnatch videogame as one of a few thumbnails for the film on its website.

Chooseco argued that Bandersnatch wasn’t a purely artistic work, but was also a data collecting device for Netflix, and that “Netflix may have sold product placement opportunities as a form of advertisement, which would also suggest the film is not purely artistic.” This argument, at least, fails. You get to sell art for money and it’s still art.  Furthermore, the use had artistic relevance. “Choose Your Own Adventure” had artistic relevance “because it connects the narrative techniques used by the book, the videogame, and the film itself.” It was also relevant because the viewer’s control over the protagonist “parallel[ed] the ways technology controls modern day life,” so the reference “anchors the fractalized interactive narrative structure that comprises the film’s overarching theme.” And further, “the mental imagery associated with the book series promotes the retro, 1980s aesthetic Bandersnatch seeks to elicit.” Chooseco suggested alternative phrases that Netflix could have used, but that’s not the right analysis.

So, was the use explicitly misleading? The court proceeds to reinterpret “explicitly” to mean not explicitly, quoting subsequent cases that don’t apply Rogers that say that the relevant question is whether the use “‘induces members of the public to believe [the work] was prepared or otherwise authorized’ by the plaintiff.” Louis Vuitton, 868 F. Supp. 2d at 179 (quoting Twin Peaks Prods., Inc v. Publ’ns Int’l Ltd., 996 F.2d 1366, 1379 (2d Cir. 1993)) (a title v. title and thus a non-Rogers case, because in the Second Circuit Rogers doesn’t apply to title v. title claims; the court also quotes Cliffs Notes, Inc. v. Bantam Doubleplay Dell Publ’g. Group, Inc., 886 F.2d 490, 495 (2d Cir. 1989), another non-Rogers title v. title case).  

Then the court says that likely confusion must be “particularly compelling” to outweigh the First Amendment interests at stake, and that “the deception or confusion must be relatively obvious and express, not subtle or implied” (quoting McCarthy, and then the odious Gordon v. Drape Creative, Inc., 909 F.3d 257 (9th Cir. 2018)). The court acknowledges that, “[n]ot surprisingly, in most cases in which a disputed mark was used in the content rather than the title of an expressive work . . . the results favored the alleged infringer, on the basis that the use was not explicitly misleading.” Michael A. Rosenhouse, Annotation, Protection of Artistic Expression from Lanham Act Claims Under Rogers v.

Grimaldi, 875 F.2d 994 (2d Cir. 1989), 22 A.L.R. Fed. 3d Art. 4 (2017).

Nonetheless, Netflix doesn’t win its motion to dismiss, because Chooseco “sufficiently alleged that consumers associate its mark with interactive books and that the mark covers other forms of interactive media, including films.” 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.  [That’s not the same thing as explicitly, extradiegetically stating there’s a connection with the film—the court considers the Fortres Grand case to be almost on all fours, but there Catwoman “explicitly” says that the program she’s after is called “Clean Slate.”]  Also, the book, the videogame, and the film itself “all employ the same type of interactivity as Chooseco’s products.” The similarity between the parties’ products increases the likelihood of consumer confusion. [Citing Gordon v. Drape, so you can see the kind of damage it’s doing.]  And Bandersnatch “was set in an era when Chooseco’s books were popular—potentially amplifying the association between the film and Chooseco in the minds of consumers.”  And Netflix allegedly used a similar trade dress for the film and its promotion; though the court didn’t think this was “particularly strong,” it “adds to a context which may create confusion.” How any of this is “explicit” is left as an exercise for the reader. Implied or contextual confusion is not explicit falsehood.

The court decided to allow discovery.  Question: Discovery about what?  What evidence is relevant to whether the film is “explicitly” misleading about its connection with Chooseco?

Unsurprisingly, Netflix’s descriptive fair use defense was also not amenable to a motion to dismiss. Here, the character in Bandersnatch held up a book and stated, “it’s a ‘Choose Your Own Adventure Book.’”  “The physical characteristics and context of the use demonstrate that it is at least plausible Netflix used the term to attract public attention by associating the film with Chooseco’s book series.” There were allegations that Netflix knew of the mark and used the mark to market for a different program until Chooseco sent a cease and desist letter. That could support “a reasonable inference that Netflix intended to trade on the good will of Chooseco’s brand,” as could intentional copying of “aspects” [protectable aspects?] of Chooseco’s trade dress.  And Netflix could have used numerous other phrases to describe the fictitious book’s interactive narrative technique, making bad faith plausible.

That holding makes sense, given the doctrine.  But worse is to come.  Netflix argued, quite correctly, that dilution requires (1) that the defendant use the term as a mark for its own goods or services, and (2) commercial speech, which the film is not. The court rejects both arguments.

The court quoted the federal definition of dilution by tarnishment as an “association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark,” but didn’t explain why Netflix was plausibly using the term as a mark, as opposed to using it to label the book in the film. Netflix correctly pointed out that “[t]he Second Circuit does not recognize an action for dilution where the defendant uses the plaintiff’s mark not to denote the defendant’s good or services, but rather to identify goods or services as those of the plaintiff,” but the court thought that didn’t apply here because Netflix used the mark to refer to a fictitious book.  But the important part here is the first half: it wasn’t using Choose Your Own Adventure to brand its own goods or services; it was using it as part of a fictional work.  The implication—and it is not a good one—is that if, in my work of fiction, my character disparages a Choose Your Own Adventure book that doesn’t actually exist, I may have tarnished the CYOA mark. This is defamation without any of the limits on defamation that the First Amendment has imposed. Nonetheless, the court found that “Netflix’s use of Chooseco’s mark implicates the core purposes of the anti-dilution provision” (citing Hormel, which is not a federal dilution case and which has been treated as superseded by federal dilution law, see Tiffany v. eBay).  

Netflix then, correctly, pointed out that “the Lanham Act expressly exempts dilution claims based on a ‘noncommercial use of a mark’ of the type at issue here.” Despite the fact that in discussing Rogers the court correctly noted that profit-motivated speech is often noncommercial and Bandersnatch is noncommercial speech, the court still stated that “Netflix’s use of Chooseco’s mark may qualify as commercial speech” (emphasis added), which is not the test. And it so reasoned because Chooseco’s complaint alleged that “Netflix’s motivations in including its mark in the film were purely economic,” that Chooseco’s product is popular, and that Netflix used “elements” [protectable elements?] of Chooseco’s trade dress in promotion and marketing.  More discovery!