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!

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