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`UNITED STATES DISTRICT COURT
`FOR THE
`DISTRICT OF VERMONT
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`CHOOSECO LLC,
`Plaintiff,
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`NETFLIX, INC.,
` Defendant.
`
`Case No. 2:19-cv-08
`)
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`)
`OPINION AND ORDER
`Plaintiff Chooseco, a Vermont-based publishing company, has
`brought multiple claims against Defendant Netflix for its alleged
`use of Chooseco’s word mark CHOOSE YOUR OWN ADVENTURE in the
`dialogue of its film Black Mirror: Bandersnatch. Chooseco’s
`Amended Complaint includes actions for trademark infringement,
`unfair competition, false designation of origin, dilution under
`the Lanham Act and unfair competition under Vermont common law.
`Now before the Court is Netflix’s motion to dismiss Chooseco’s
`complaint for failure to state a claim upon which relief can be
`granted. For the reasons set forth below, Defendant’s motion to
`dismiss is denied.
`
`I.
`
`Factual Background
`Chooseco’s Books and Trademarks
`Chooseco is the current publisher of CHOOSE YOUR OWN
`ADVENTURE books. ECF No. 14 at ¶ 11. The book series employs an
`interactive narrative structure that allows “the reader [to]
`act[] as the story’s protagonist and make[] choices to determine
`
`
`
`UNITED STATES DISTRICT COURT
`FOR THE
`DISTRICT OF VERMONT
`
`
`))
`
`))
`
`CHOOSECO LLC,
`Plaintiff,
`
`NETFLIX, INC.,
` Defendant.
`
`Case No. 2:19-cv-08
`)
`
`))
`
`)
`OPINION AND ORDER
`Plaintiff Chooseco, a Vermont-based publishing company, has
`brought multiple claims against Defendant Netflix for its alleged
`use of Chooseco’s word mark CHOOSE YOUR OWN ADVENTURE in the
`dialogue of its film Black Mirror: Bandersnatch. Chooseco’s
`Amended Complaint includes actions for trademark infringement,
`unfair competition, false designation of origin, dilution under
`the Lanham Act and unfair competition under Vermont common law.
`Now before the Court is Netflix’s motion to dismiss Chooseco’s
`complaint for failure to state a claim upon which relief can be
`granted. For the reasons set forth below, Defendant’s motion to
`dismiss is denied.
`
`I.
`
`Factual Background
`Chooseco’s Books and Trademarks
`Chooseco is the current publisher of CHOOSE YOUR OWN
`ADVENTURE books. ECF No. 14 at ¶ 11. The book series employs an
`interactive narrative structure that allows “the reader [to]
`act[] as the story’s protagonist and make[] choices to determine
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`the narrative’s plot and ending.” Id. at ¶ 13. Each choice the
`reader makes leads to a different page in the book, creating
`“multiple potential endings at various points.” Id.
`CHOOSE YOUR OWN ADVENTURE books “are one of the bestselling
`children’s series of all time,” with over 265 million copies
`sold, and were “widely read in the 1980s and 1990s.” Id. at ¶
`14. Their popularity remains, with more than 620,000 copies
`printed for distribution in the United States within the last
`year alone. Id. Currently, Chooseco’s target demographic for
`these books “is primarily children and young adults between seven
`and fourteen years old.” Id. As one of its main marketing
`strategies, Chooseco attempts to tap into the nostalgia of
`“adults who read the books when they were young” to entice them
`into buying CHOOSE YOUR OWN ADVENUTRE books for their children.
`Id.
`
`Chooseco owns a federally registered trademark for the word
`mark CHOOSE YOUR OWN ADVENTURE. Id. at ¶ 1. This mark covers
`various types of media including books and movies. Id. at ¶ 16.
`For example, Chooseco has licensed the mark for a board game and
`currently has an option contract with Twentieth Century Fox to
`develop an interactive film series based on the books. Id. at ¶
`18. In addition, Chooseco owns and operates a website that
`provides interactive games and has partnered with Audible to
`release interactive audiobooks. Id. at ¶¶ 19-20.
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`Chooseco has also consistently used certain elements in its
`trade dress for CHOOSE YOUR OWN ADVENTURE books. Id. at ¶ 12.
`Historically, the books featured an illustration surrounded by a
`double frame with two separate colors. Id. The books now in
`print display a frame with only one color but retain the same
`shape. Id. However, Chooseco has not registered its trade
`dress.
`Beginning in 2016, Netflix attempted to purchase a license
`to use the word mark CHOOSE YOUR OWN ADVETURE in connection with
`various films and cartoons. Id. at ¶ 21. Netflix and Chooseco
`never reached an agreement regarding the license. Id. In fact,
`“[o]n at least one occasion before the release of Bandersnatch,
`Chooseco sent a written cease and desist request to Netflix
`asking Netflix to stop using the CHOOSE YOUR OWN ADVENTURE mark
`in its marketing efforts for a different program.” Id. at ¶ 22.
`II. Netflix and Black Mirror: Bandersnatch
`“Netflix is a popular media . . . company that primarily
`offers subscription-based digital video streaming services.” Id.
`at ¶ 23. Its streaming library includes Black Mirror — “a
`speculative fiction anthology series that examines the
`relationship between humans and technology.” Id. at ¶ 25. On
`December 28, 2018, Netflix released Bandersnatch as a part of
`this series. Id. at ¶ 26. Both Black Mirror as a whole and
`Bandersnatch itself contain “dark and violent themes” and are
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`intended for mature audiences. Id. at ¶ 35.
`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.” Id. at ¶ 26. Viewers
`essentially control the protagonist, Stefan Butler. ECF 18-1 at
`4. Bandersnatch chronicles Butler’s attempts to develop a
`videogame based on a fictitious book, also titled “Bandersnatch.”
`Id.
`
`The pivotal scene at issue in this litigation occurs near
`the beginning of the film. ECF No. 14 at ¶ 33. Butler’s 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.” Id. at ¶ 31. Butler
`responds: “No, it’s a ‘Choose Your Own Adventure’ book. You
`decide what your character does.” Id. at ¶ 31-32. Of note, the
`subtitles for the film couch the phrase in quotation marks and
`capitalize the first letter of each word. Id. at ¶ 31. Chooseco
`claims that Netflix “provides its own closed-captioning and
`subtitle services.” Id. at ¶ 33. Netflix neither confirms nor
`denies this point in either its motion to dismiss or its reply
`memorandum. See ECF Nos. 18-1, 25.
`To promote Bandersnatch, Netflix employed a similar,
`although not exact, trade dress as that used by CHOOSE YOUR OWN
`ADVENTURE books in multiple marketing campaigns. ECF No. 14 at ¶
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`42. For example, Netflix created a website for Tuckersoft, the
`fictional videogame company where Butler developed his videogame.
`Id. at ¶ 43. This website displays multiple fictional videogame
`covers that have a “double rounded border element.” Id. at ¶ 44.
`A few of these fictional video game covers also appear in the
`film itself. Id. at ¶ 45. In addition, Netflix used images of
`the videogame covers while promoting Bandersnatch in the United
`Kingdom. Id. at ¶ 47. It created “several ‘pop up’ storefronts
`that were designed to resemble a 1980's videogame store that
`appears in the film.” Id. Netflix used images of the covers in
`these stores and on posters hung “on public streets around the
`same time that the pop up storefronts were viewable.” Id.
`Finally, Netflix used the cover for the Bandersnatch videogame as
`one of a few thumbnails for the film on its website. Id. at ¶
`46.
`III. Chooseco’s Claims and Netflix’s Motion to Dismiss
`Chooseco’s Amended Complaint contains four claims for relief
`based on Netflix’s alleged use of the word mark CHOOSE YOUR OWN
`ADVENTURE. Its first cause of action is for federal trademark
`infringement under 15 U.S.C. § 1114. Chooseco alleges that
`“Netflix has adopted and is using CHOOSE YOUR OWN ADVENTURE and
`an element of its trade dress in a manner that is likely to cause
`confusion, and is causing confusion . . . among the general
`purchasing public as to the origin and affiliation of Netflix
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`with Chooseco.” ECF No. 14 at ¶ 58. Chooseco continues:
`“Netflix is likely to deceive the public into believing that the
`reference to a “Choose Your Own Adventure” book in the film Black
`Mirror: Bandersnatch originates from, is associated with, or is
`otherwise authorized by Chooseco.” Id. at ¶ 59. Chooseco
`asserts that this confusion has damaged its “reputation, good
`will, and profits.” Id.
`Chooseco’s second claim involves federal trademark dilution
`under 15 U.S.C. § 1125(c). Chooseco argues that its trademark is
`famous within the meaning of Section 43(c) of the Lanham Act and
`that Netflix’s use of the mark harms the reputation and dilutes
`the distinctive quality of the mark. Id. at ¶¶ 66-67. The third
`claim is for unfair competition and false designation of origin
`under 15 U.S.C. § 1125(a). Here, Chooseco states that Netflix
`has unlawfully offered for sale a product containing Chooseco’s
`trademark—creating an “express and implied representation that
`the product originates from, is associated with, or is otherwise
`authorized or endorsed by Chooseco.” Id. at ¶¶ 74, 76. It
`argues that “Netflix has consciously and deliberately sought to
`capitalize on the distinctive quality and fame of Chooseco’s
`trademark and [the] consumer confusion that it has created.” Id.
`at ¶ 75. Chooseco’s fourth claim is for unfair competition under
`Vermont common law. Chooseco contends that Netflix “intended to
`and did trade upon the goodwill associated with Chooseco’s
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`trademark” by “misle[ading] the public into assuming a connection
`exists between Chooseco and Netflix.” Id. at ¶ 84. It argues
`that “Netflix’s actions amount to deception and misappropriation
`of the exclusive property owned by Chooseco” and “tarnish[] the
`desirable reputation and image associated with Chooseco and
`Chooseco’s trademark.” Id. at ¶¶ 85-86.
`Standard of Review
`When reviewing Rule 12(b)(6) motions to dismiss, courts must
`determine whether a complaint pleads “sufficient factual matter .
`. . to ‘state a claim to relief that is plausible on its face.’”
`Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell
`Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). To be
`facially plausible, a complaint must contain “well-pleaded facts”
`that “allow[] the court to draw the reasonable inference that the
`defendant is liable for the misconduct alleged.” Id. at 678,
`679. A complaint “does not need detailed factual allegations”
`but “[t]hreadbare recitals of the elements of a cause of action,
`supported by mere conclusory statements, do not suffice.”
`Twombly, 550 U.S. at 555; see Iqbal, 556 U.S. at 678.
`In determining the plausibility of a claim, courts assume
`that all the factual allegations in the complaint are true.
`Iqbal, 556 U.S. at 678. Moreover, courts view the facts in the
`light most favorable to the plaintiff, drawing all inferences in
`its favor. Cohen v. S.A.C. Trading Corp., 711 F.3d 353, 359 (2d
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`Cir. 2013). However, “pleadings that . . . are no more than
`conclusions are not entitled to the assumption of truth.” Iqbal,
`556 U.S. at 679.
`
`I.
`
`Discussion
`First Amendment Protection From The Lanham Act
`Netflix argues that the First Amendment insulates its use of
`Chooseco’s mark from Lanham Act claims because Bandersnatch is an
`artistic work. In Rogers v. Grimaldi, the Second Circuit crafted
`a two-part balancing test that addresses unauthorized uses of
`trademarks in artistically expressive works. 875 F.2d 994, 999
`(2d Cir. 1989). The Rogers test weighs the public interest in
`avoiding consumer confusion against the public interest in free
`artistic expression. Id. Generally, the scales will not tip in
`favor of applying the Lanham Act to an expressive work unless: 1)
`the disputed use has no artistic relevance to the underlying
`work, or 2) if it has some artistic relevance, the use explicitly
`misleads as to the source or the content of the work. Id.
`A.
`Bandersnatch is an artistic work
`As a preliminary matter, Chooseco argues that Bandersnatch
`is not a purely artistic work. ECF No. 24 at 19. Chooseco
`asserts that “[d]iscovery is needed to determine whether
`Bandersnatch is, at least in part, a marketing tool designed to
`collect behavioral information on its viewers.” Id. It claims
`that “Netflix collects data on its viewers’ choices within
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`Bandersnatch, which it may sell in the future or use in its own
`marketing of other content to its subscribers or potential
`subscribers.” Id.; ECF No. 14 at ¶¶ 49-51. It further alleges
`that “Netflix may have sold product placement opportunities as a
`form of advertisement, which would also suggest the film is not
`purely artistic.” ECF No. 24 at 19. Ultimately, Chooseco
`suggests that the Court should “put a slight thumb on the
`trademark owner’s side of the scale when the work at issue is
`artistic in part and commercial in part.” Id. at 20.
`Courts addressing this issue have found that the First
`Amendment equally protects works with mixed purposes as those
`that are “purely artistic.” For example, as the Supreme Court
`held in Joseph Burstyn, Inc. v. Wilson: “That books, newspapers,
`and magazines are published and sold for profit does not prevent
`them from being a form of expression whose liberty is safeguarded
`by the First Amendment. We fail to see why operation for profit
`should have any different effect in the case of motion pictures.”
`343 U.S. 495, 501-02 (1952). The Court recognized that films are
`“a significant medium for the communication of ideas” and their
`importance “as an organ of public opinion is not lessened by the
`fact” that “their production, distribution, and exhibition is a
`large-scale business conducted for private profit.” Id. Most
`importantly, the Second Circuit developed the Rogers test with
`mixed-motive artistic works in mind. 875 F.2d at 997-98
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`(“Titles, like the artistic works they identify, are of a hybrid
`nature, combining artistic expression and commercial
`promotion.”).
`Chooseco has failed to show that Netflix’s means of deriving
`profit from its artistic works should change this analysis and
`reduce the First Amendment protections afforded to Bandersnatch.
`Nor has Chooseco shown that an artistic work with some commercial
`purposes increases the likelihood of consumer confusion. Thus,
`the Rogers test applies to this case and no tinkering with the
`ledger is needed.
`B.
`Netflix’s Use Has Artistic Relevance
`Under Rogers, “[t]he threshold for ‘artistic relevance’ is
`purposely low and will be satisfied unless the use ‘has no
`artistic relevance to the underlying work whatsoever.’” Louis
`Vuitton Malletier S.A. v. Warner Bros. Entm’t Inc., 868 F. Supp.
`2d 172, 178 (S.D.N.Y. 2012) (quoting Rogers, 875 F.2d at 999)
`(emphasis in original); see also E.S.S. Entm’t 2000, Inc. v. Rock
`Star Videos, Inc., 547 F.3d 1095, 1100 (9th Cir. 2008) (“the
`level of relevance merely must be above zero”). “[I]t is not the
`role of the Court to determine how meaningful the relationship
`between a trademark and the content of a literary work must be;
`consistent with Rogers, any connection whatsoever is enough for
`the Court to determine that the mark’s use meets ‘the
`appropriately low threshold of minimal artistic relevance.’”
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`Dillinger, LLC v. Elec. Arts Inc., No. 1:09-cv-1236-JMS-DKL, 2011
`WL 2457678, at *6 (S.D. Ind. June 6, 2011) (quoting Rogers, 875
`F.2d at 999). Given this low bar, Netflix’s use of Chooseco’s
`mark satisfies the artistic relevance prong of the Rogers test.
`The protagonist of Bandersnatch uses CHOOSE YOUR OWN
`ADVENTURE to describe the fictitious book he intends to convert
`into a videogame. Both the videogame and the book in the film
`have interactive narrative structures that allow the reader or
`player to make choices that alter the storyline. Likewise,
`Bandersnatch employs a branching narrative technique that allows
`the viewer to make choices throughout the film that directly
`affect its plot. The use of CHOOSE YOUR OWN ADVENTURE has
`artistic relevance because it connects the narrative techniques
`used by the book, the videogame, and the film itself. In
`addition, taking a broader view of the film reveals that the main
`premise of Bandersnatch and Black Mirror is to comment on the
`continually-mounting influence technology has on society. To
`this end, Bandersnatch seemingly intends for the viewer’s control
`over the protagonist to parallel the ways technology controls
`modern day life. This expands the use’s artistic relevance
`because it anchors the fractalized interactive narrative
`structure that comprises the film’s overarching theme.
`Netflix’s use of the mark could also have artistic relevance
`because the mental imagery associated with the book series
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`promotes the retro, 1980s aesthetic Bandersnatch seeks to elicit.
`As Chooseco states, the books were popular and widely read in the
`era the film is set. Netflix’s use of the mark adds to the
`setting by referencing a real book series that was popular at the
`time. Courts have found similar arguments persuasive in other
`trademark cases applying the Rogers test. See, e.g., E.S.S.
`Entm’t, 547 F.3d at 1097 (stating that using the name of a Los
`Angeles strip club had at least some artistic relevance to a
`videogame whose goal was to “mimic the look and feel of actual
`Los Angeles neighborhoods”); Roxbury Entm’t v. Penthouse Media
`Group, Inc., 669 F. Supp. 2d 1170, 1176 (C.D. Cal. 2009)
`(“Defendants have . . . demonstrate[ed] at least some
`relationship between the mental imagery associated with the term
`‘Route 66,’ e.g., road trips, cross-country travel, and the
`content of Defendants’ [pornographic] movie.”); Dillinger, 2011
`WL 2457678, at *5 (holding that the use of the “Dillinger”
`trademark in “The Godfather Games” had “more than zero relevance”
`to the videogames because of the gangster era mental imagery
`associated with the Dillinger name).
`Chooseco claims that the “mark’s only role in context can be
`exploiting the publicity value of associating the film with
`Chooseco’s iconic brand.” ECF No. 24 at 17. It reiterates
`Netflix’s argument that the use “is artistically relevant to the
`film because its plot involves the protagonist’s efforts to
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`convert the book ‘Bandersnatch’ into a videogame, and the
`storytelling structure of the film mirrors the fictional
`storytelling structure of the book and videogame.” Id. at 17-18.
`Chooseco argues that “[t]his explanation confirms why the
`protagonist refers to the fictional book in that scene, but does
`not explain why Chooseco’s unique brand has any artistic
`relevance to that scene or the film as a whole.” Id. In support
`of this contention, Chooseco lists numerous alternative phrases
`that Netflix could have used “to convey the concept of an
`interactive story without referencing the mark itself.” Id. at
`18-19. Chooseco concludes that, given these alternatives,
`Netflix’s use of its mark adds nothing other than “marketing
`power.” Id. at 19.
`The Second Circuit specifically addressed, and dismissed,
`the “alternative avenues” analysis in Rogers. 875 F.2d at 999;
`see also Parks v. LaFace Records, 329 F.3d 437, 450-52 (6th Cir.
`2003) (finding that the Second Circuit rejected the alternative
`avenues test in Rogers). Emphasizing the detrimental impact of
`restricting the use of words, the court stated “[w]e cannot
`indulge the facile assumption that one can forbid particular
`words without running a substantial risk of suppressing ideas in
`the process.” Rogers, 875 F.2d at 999 (quoting Chen v.
`California, 403 U.S. 15, 26 (1971)). The court found that the
`“‘no alternative avenues’ test does not sufficiently accommodate
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`the public’s interest in free expression.” Rogers, 875 F.2d at
`999. Thus, the existence of alternative phrases does not provide
`evidence as to whether the use of Chooseco’s mark has artistic
`relevance to Bandersnatch.
`In addition, Chooseco analogizes this case to Parks v.
`LaFace Records as support for its contention that Netflix’s use
`of its mark holds no artistic relevance. ECF No. 24 at 11, 19.
`Parks involved a song by the rap group OutKast titled “Rosa
`Parks.” 329 F.3d at 441. In this song, OutKast made repeated
`references to the phrase “move to the back of the bus” and
`claimed that the use of Rosa Parks’ name was metaphorical or
`symbolic of that phrase. Id. at 452. Rosa Parks sued OutKast
`for false advertising under the Lanham Act. Id. The district
`court applied the Rogers test and granted summary judgment to
`OutKast. Id. at 442. The Sixth Circuit reversed the district
`court’s decision, finding “that the relationship between the
`title and the content of the song [was] certainly not obvious
`and, indeed, [was] open to reasonable debate.” Id. at 452
`(internal quotation marks omitted).
`Parks seemingly supports Chooseco’s claims. However, the
`tone of the decision suggests that the Sixth Circuit may have
`focused more on its aversion to including a civil rights icon in
`a rap song with vulgar language than on the purposely low
`threshold of the Rogers test’s artistic relevance prong. See id.
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`at 454 (“[C]rying ‘artist’ does not confer carte blanche
`authority to appropriate a celebrity’s name” and “crying ‘symbol’
`does not change that proposition.”); id. at 453 (“While
`Defendants’ lyrics contain profanity and a great deal of
`‘explicit’ language, . . . they contain absolutely nothing that
`could conceivably, by any stretch of the imagination, be
`considered, explicitly or implicitly, a reference to courage, to
`sacrifice, to the civil rights movement or to any other quality
`with which Rosa Parks is identified.”); id. (“In lyrics that are
`laced with profanity and in a ‘hook’ or chorus that is pure
`egomania, many reasonable people could find that this is a song
`that is clearly antithetical to the qualities identified with
`Rosa Parks.”) (emphasis in original). This observation erodes
`some of Parks’ persuasiveness as applied to the case at bar.
`In addition, cases with more similar facts support finding
`that Netflix’s use of Chooseco’s mark satisfies this prong of
`Rogers. For example, in Louis Vuitton, the Southern District of
`New York dismissed a Lanham Act claim involving The Hangover:
`Part II. 868 F. Supp. 2d at 174. In the scene at issue, Alan,
`one of the characters, is seen carrying a Diophy bag that “looks
`confusingly similar” to a Louis Vuitton bag. Id. at 178. Alan
`hands this bag to another character and says “[be] [c]areful
`[its] a Lewis Vuitton.” Id. The court found that Alan’s “remark
`to Teddy . . . comes across as snobbish only because the public
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`signifies Louis Vuitton . . . with luxury and a high society
`lifestyle.” Id. The court continued: “His remark also comes
`across as funny because he mispronounces the French ‘Louis’ like
`the English ‘Lewis,’ and ironic because he cannot correctly
`pronounce the brand name of one of his expensive possessions,
`adding to the image of Alan as a socially inept and comically
`misinformed character.” Id. The court held that these
`explanations, coupled with the fact there was no indication the
`use was commercially motivated, satisfied Rogers’ artistic
`relevance prong. Id. at 178-79.
`Likely the most factually-analogous case similarly supports
`a finding of artistic relevance. In Fortres Grand Corp. v.
`Warner Bros. Entm’t Inc., 947 F. Supp. 2d 922 (N.D. Ind. 2013),
`the court dismissed an action under the Lanham against The Dark
`Knight Rises. Id. at 924. Fortres involved the use of the
`plaintiff’s trademark “Clean Slate” in both the movie The Dark
`Knight Rises and on fantasy websites created to promote the film.
`Id. The court spent little time on the artistic relevance prong,
`stating “[p]art of the plot of The Dark Knight Rises involves
`Batman’s promise to another character . . . to procure a software
`program called CLEAN SLATE that will erase a person’s criminal
`history from every computer database in the world.” Id. at 932.
`(internal quotations removed). The court found that “there can
`be little doubt” this use satisfied the first prong of Rogers.
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`Id.
`
`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. 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.
`C.
`Discovery To Determine Explicitly Misleading
`Because the Court has found that there is some artistic
`relevance in Netflix’s use of Chooseco’s mark, the First
`Amendment will protect the use unless it explicitly misleads as
`to the source of the work. Rogers, 875 F.2d at 999. Under the
`second prong of Rogers, 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)).
`“This approach takes into account the ultimate test in trademark
`law, namely, the likelihood of confusion.” Cliffs Notes, Inc. v.
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`Bantam Doubleplay Dell Publ’g. Group, Inc., 886 F.2d 490, 495 (2d
`Cir. 1989).
`“[T]he finding of likelihood of confusion must be
`particularly compelling to outweigh the First Amendment interests
`recognized in Rogers.” Twin Peaks Prods., 996 F.2d at 1379.
`“[T]he deception or confusion must be relatively obvious and
`express, not subtle or implied.” 6 J. THOMAS MCCARTHY, MCCARTHY
`ON TRADEMARKS AND UNFAIR COMPETITION § 31:144.50 (5th ed. Supp.
`2019). This requirement makes the explicitly misleading prong “a
`more exacting version of the likelihood-of-confusion test.”
`Gordon v. Drape Creative, Inc., 909 F.3d 257, 265, n.7 (9th Cir.
`2018); see also Fortres, 947 F. Supp. 2d at 932 (“[T]he fact that
`it has to be explicitly misleading makes this a high bar.”)
`(emphasis in original). “Not 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).
`As an initial matter, the parties dispute whether it is
`appropriate for courts to grant a motion to dismiss based on a
`Rogers defense. Chooseco claims that “consideration of a Rogers
`
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`Case 2:19-cv-00008-wks Document 31 Filed 02/11/20 Page 19 of 30
`
`defense on a motion to dismiss is generally disfavored.” ECF No.
`24 at 10 (citing Sapieyevski v. Live Nation Worldwide, Inc., No.
`18-830 (TJK), 2019 WL 1284302, at *4 (D.D.C. Mar. 20, 2019)
`(“[C]onsideration of the Rogers defense on a motion to dismiss
`appears to be the exception, not the rule.”)). On the other
`hand, Netflix argues that “[c]ourts . . . routinely apply Rogers
`and its progeny to grant motions to dismiss Lanham Act claims.”
`ECF No. 18-1 at 18 (collecting cases). The court in Louis
`Vuitton directly addressed this issue, finding that “[a]lthough
`many courts have considered the Rogers test on a summary judgment
`motion, not a motion to dismiss, the circuit has never stated
`that a court cannot properly apply the Rogers test . . . on a
`motion to dismiss.” 868 F. Supp. at 183. The court continued:
`“In the context of a motion to dismiss, courts have disposed of
`trademark claims where simply looking at the work itself, and the
`context in which it appears, demonstrates how implausible it is
`that a viewer will be confused into believing that the plaintiff
`endorsed the defendant's work.” Id. (collecting cases).
`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. 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
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`Case 2:19-cv-00008-wks Document 31 Filed 02/11/20 Page 20 of 30
`
`film itself all employ the same type of interactivity as
`Chooseco’s products. The similarity between Chooseco’s products,
`Netflix’s film, and the fictious book Netflix described as a
`“Choose Your Own Adventure” book increases the likelihood of
`consumer confusion. See Gordon v. Drape Creative, Inc., 909 F.3d
`257, 268 (9th Cir. 2018) (“[T]he potential for explicitly
`misleading usage is especially strong when the senior user and
`the junior user both use the mark in similar artistic
`expressions.”).
`In addition, 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. Moreover, the
`complaint alleges that Netflix appropriated aspects of Chooseco’s
`trade dress “both in the film and its promotion and marketing of
`Bandersnatch.” ECF 14 No. at ¶ 41. While the link between
`Chooseco and the aspects of its trade dress that Netflix
`purportedly usurped is not particularly strong, this
`consideration adds to a context which may create confusion.
`Ultimately, the parties’ arguments regarding the explicitly
`misleading prong present a factual dispute, the disposition of
`which is premature without the benefit of discovery.
`II. Descriptive Fair Use
`Netflix raises a descriptive fair use defense in addition to
`its claims to First Amendment protections. Descriptive fair use
`
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`Case 2:19-cv-00008-wks Document 31 Filed 02/11/20 Page 21 of 30
`
`is an affirmative defense that requires a defendant show “that
`the use was made (1) other than as a mark, (2) in a descriptive
`sense, and (3) in good faith.” Kelly-Brown v. Winfrey, 717 F.3d
`295, 308 (2d Cir. 2013). To grant a motion to dismiss based on
`descriptive fair use, the Court must find that “the facts
`necessary to establish the defense are evident on the face of the
`complaint.” Id. However, the Second Circuit has warned that
`generally “fair use . . . requires consideration of facts outside
`of the complaint and thus is inappropriate to resolve on a motion
`to dismiss.” Id.; see also 2 J. THOMAS MCCARTHY, MCCARTHY ON
`TRADEMARKS AND UNFAIR COMPETITION § 11:49 (5th ed. Supp. 2019)
`(“Because classic fair use is an affirmative defense, it is
`normally not appropriate for consideration on a . . . motion to
`dismiss for failure to state a claim.”). In this case, the Court
`lacks sufficient facts at this stage of the litigation to dismiss
`Chooseco’s claims.
`A.
`Use Other Than As a Mark
`To “determin[e] whether a particular use is made ‘as a
`mark,’ [courts] ask whether the defendant is using the ‘term as a
`symbol to attract public attention.’” Kelly-Brown, 717 F.3d at
`306 (quoting JA Apparel Corp. v. Abboud, 568 F.3d 390, 400 (2d
`Cir. 2009)). Courts consider the physical nature and context of
`a use to make this determination. JA Apparel, 568 F.3d at 401;
`see also RESTATEMENT (THIRD) OF UNFAIR COMPETITION § 28 cmt. c
`
`21
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`Case 2:19-cv-00008-wks Document 31 Filed 02/11/20 Page 22 of 30
`
`(1995) (recognizing the relevance of the “physical nature of the
`use in terms of size, location, and other characteristics in
`comparison with the appearance of other descriptive matter or
`other trademarks.”). Here, the character in Bandersnatch held up
`a book and stated, “it’s a ‘Choose Your Own Adventure Book.’”
`ECF No. 14 at ¶ 31. Importantly, the subtitles cabined the
`phrase in quotation marks and capitalized the first letter of
`each word. 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.
`B.
`Descriptive Sense
`In addition, the Court cannot yet determine whether Netflix
`used Chooseco’s mark in a descriptive sense. Generally, when
`courts find that the defendant’s use is descriptive, the phrase
`at issue is in common usage. Kelly-Brown, 717 F.3d at 311.
`However, “there is no requirement that a usage be immediately
`recognizable as a popular phrase for it to be descriptive” so
`long as it describes a characteristic of the defendant’s product.
`Id. at 311-12. That said, courts distinguish betwe
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