Netflix wants the court to genericize the Choose Your Own Adventure trademark

Cal Jeffrey

TS Evangelist
Staff member

Earlier this week, Netflix revealed the premiere date for its second choose-your-own-adventure-style movie. This time it is based on its Carmen Sandiego series.

Last year, the streaming giant got into hot water with its previous interactive show Black Mirror: Bandersnatch. Chooseco filed an infringement lawsuit against the company for using the phrase "choose your own adventure" in the Bandersnatch script. Chooseco claimed that that use violated its Choose Your Own Adventure trademark.

Netflix's initial defense was to ask the court to dismiss the case because it did not meet the standards set by the Lanham Act. The judge agreed that Bandersnatch was an expressive work and that the use of the phrase had relevance to the artistic work. However, Chooseco also alleged the use of the trademark could confuse consumers into thinking the film was related to the company. The judge agreed and denied dismissal.

"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," wrote Vermont federal judge William Sessions in his opinion.

Now Netflix is going on the offensive. The streaming service is asking the court to cancel Chooseco's trademark because the phrase has become generic.

Under the doctrine of genericide, a trademark can become invalid if its general use becomes generic to the point that it is used to describe a whole class of products. Soft soap is an example of a brand that is no longer protected by trademark law because of this doctrine.

Netflix argues that Chooseco's series of books are not the only stories using interactive narratives, nor was it the first. Indeed, the first Choose Your Own Adventure book, The Cave of Time, was published in 1979, while the company behind Dungeons and Dragons, TSR, had been using a similar format to tell stories since 1972. Later works, including early computer text adventures like Zork, and even more recent titles like those from Telltale, used the same formula. There are even apps that can help users write stories in this style.

"The phrase 'Choose Your Own Adventure' has become generic in its current use within the United States," writes Netflix attorney Seth Berlin in his counter claim filing (above). "In contemporary parlance, any situation that requires making a series of unguided choices, or that provides an opportunity to go back and re-make a series of choices that turned out badly, is referred to as a 'Choose Your Own Adventure.'... Thus, in its current usage, the phrase 'Choose Your Own Adventure' encompasses the entire genre of interactive-narrative fiction, a genus of media of which Chooseco's book series is just one species."

The filing goes on to ask that the court rule that Netflix has not violated Chooseco's trademark, and to cancel or genericize it. It also requests restitution for costs related to the litigation.

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m4a4

TS Evangelist
TechSpot Elite
I actually support this. The phrase has indeed become too generic (as I can't even think of an easy alternative way of describing it).

And from what I've seen over the years, you can't even claim or mention your piece of media is a "choose your own adventure style" style (implying it's the same format, but not claiming it is licensed). Which has led it to become a borderline troll trademark.
 
"Band-Aid" is used casually by almost everyone but it's still a registered trademark of J&J. Nobody else can just use the name wherever they see fit to make money. Same goes for "Choose Your Own Adventure."

However Netflix can pound Chooseco's lawyers into the ground as they can spend whatever they need to get the outcome they want. The expensive lawyers almost always win.
 

m4a4

TS Evangelist
TechSpot Elite
"Band-Aid" is used casually by almost everyone but it's still a registered trademark of J&J. Nobody else can just use the name wherever they see fit to make money. Same goes for "Choose Your Own Adventure."

However Netflix can pound Chooseco's lawyers into the ground as they can spend whatever they need to get the outcome they want. The expensive lawyers almost always win.
There is a big difference though, they refer to their products as "BAND-AID® Brand Adhesive Bandages", not just "Band-Aid".

You can't say the same for "choose your own adventure".
 

Evernessince

地獄らしい人間動物園
There is a big difference though, they refer to their products as "BAND-AID® Brand Adhesive Bandages", not just "Band-Aid".

You can't say the same for "choose your own adventure".
In other words:

Band-Aid is a type of bandage and is specific to a product made by the company

Choose your own adventure is very general and can cover a wide swatch of media not made by the company.

I'd have to agree, I really don't think a company should have control over an entire genre name.
 

Uncle Al

TS Evangelist
The entire idea of trademarking or patenting words and phrases is ludicrous to me. A company name like Xerox makes sense but the use of that name to mean making electrostatic copies is not only a compliment to the company, it's free advertising on a gigantic scale; otherwise it is just a febrile attempt to call attention to oneself by controlling language and it's use and any court that entertains legal action on it only adds to the ludicrousness. Companies and services should take note of the Xerox situation and recognize the value of flattery.

In an age where verbs and adverbs only seem to be useful when they are used the extreme, it is a wonder that there is anything left of spoken language ....
 
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Cal Jeffrey

TS Evangelist
Staff member
We were discussing this and other cases in the newsroom as I was working on this story. A while back, Hello Games was sued by the UK's Sky Broadcasting Group for using the word "Sky" in the title of No Man's Sky because they have a trademark on the word. This is a prime example IMO of a trademark trolling case, and HG should not have settled out of court with it. But as someone else mentioned the more expensive lawyers...

This is another case that feels like a troll. Chooseco did not even own the original trademark -- Bantam Books did. Bantam let the TM lapse and Chooseco re-trademarked the phrase. I'm only speculating, but Bantam probably let the brand lapse because it was no longer relevant. Choose Your Own Adventures books died out in the 90s. The last book in the series was written in 1998, so it's not even an active brand anymore except for in reprints. Bantam may have also let go of the TM because it saw that it had become a generic brand. A company does not have to give up a trademark if its brand has become generic, but it can.

Someone else mentioned Band-Aid. Band-Aid indeed has become a generic term for any adhesive bandage. Band-Aid is not required to give up its TM for this reason, but Band-Aid is also not going around suing every TV show that happens to use the term. The doctrine of genericide is used primarily in court battles like Chooseco v. Netflix, where a company is trying to assert a TM that has become generic, but it is ultimately up to the courts to decide whether the term has become generic and voids the TM.

It's also worth mentioning that Chooseco also sued DaimlerChrysler in 2007 for using just part of the phrase. The car maker ran an ad campaign for Jeep Patriot that had a tag line -- "Choose Your Adventure." If this is not trolling, I don't know what is. That case was settled too, by the way, which is the whole point of patent/TM trolling. Slap a big company with a lawsuit and hope they pay you. So it's good that Netflix is standing up to the troll and filing a counter suit so that they can't do it again -- that is if Netflix wins, which is not certain.

Personally I think Netflix has a good case for genericide. The only thing that might get in the way is the fact that it was in talks with Chooseco over the use of the term before they made Bandersnatch. These talks fell apart and Netflix used the term anyway. The judge may view this as a deliberate attempt to infringe the TM before it had been legally genericized. So it really depends on how Judge Sessions views it. He could just as easily have the viewpoint that Netflix was in the right by using it since the TM was already generic at the time. It will be interesting to see it play out.
 

Evernessince

地獄らしい人間動物園
Copyrights, patents and trademarks have to be protected to keep them. The 'Hypercard' Apple made was copied and improved upon by outside parties until it became genericized.

While this is true, in some cases doing so restricts free speech where the company would have received no ill effect. Given that the people are the one's who granted these companies protection in the first place, I think that needs to be changed.

Protection of IP is a social contract between the people and the company. In exchange for providing protection of the aforementioned, said material would eventually go into public domain. As it stands right now, that isn't happening like it used to.
 
Just to be clear, Sky objected to the NMS trade mark at the EU registry, it didn't "sue" in the normally understood sense of the word. When you object to a registration, it's not possible to pursue damages. Since getting money out of a defendant is the prime motivation of a troll, it's not fair to describe this case as "trolling". SF
We were discussing this and other cases in the newsroom as I was working on this story. A while back, Hello Games was sued by the UK's Sky Broadcasting Group for using the word "Sky" in the title of No Man's Sky because they have a trademark on the word. This is a prime example IMO of a trademark trolling case, and HG should not have settled out of court with it. But as someone else mentioned the more expensive lawyers...

This is another case that feels like a troll. Chooseco did not even own the original trademark -- Bantam Books did. Bantam let the TM lapse and Chooseco re-trademarked the phrase. I'm only speculating, but Bantam probably let the brand lapse because it was no longer relevant. Choose Your Own Adventures books died out in the 90s. The last book in the series was written in 1998, so it's not even an active brand anymore except for in reprints. Bantam may have also let go of the TM because it saw that it had become a generic brand. A company does not have to give up a trademark if its brand has become generic, but it can.

Someone else mentioned Band-Aid. Band-Aid indeed has become a generic term for any adhesive bandage. Band-Aid is not required to give up its TM for this reason, but Band-Aid is also not going around suing every TV show that happens to use the term. The doctrine of genericide is used primarily in court battles like Chooseco v. Netflix, where a company is trying to assert a TM that has become generic, but it is ultimately up to the courts to decide whether the term has become generic and voids the TM.

It's also worth mentioning that Chooseco also sued DaimlerChrysler in 2007 for using just part of the phrase. The car maker ran an ad campaign for Jeep Patriot that had a tag line -- "Choose Your Adventure." If this is not trolling, I don't know what is. That case was settled too, by the way, which is the whole point of patent/TM trolling. Slap a big company with a lawsuit and hope they pay you. So it's good that Netflix is standing up to the troll and filing a counter suit so that they can't do it again -- that is if Netflix wins, which is not certain.

Personally I think Netflix has a good case for genericide. The only thing that might get in the way is the fact that it was in talks with Chooseco over the use of the term before they made Bandersnatch. These talks fell apart and Netflix used the term anyway. The judge may view this as a deliberate attempt to infringe the TM before it had been legally genericized. So it really depends on how Judge Sessions views it. He could just as easily have the viewpoint that Netflix was in the right by using it since the TM was already generic at the time. It will be interesting to see it play out.
 

Cal Jeffrey

TS Evangelist
Staff member
Just to be clear, Sky objected to the NMS trade mark at the EU registry, it didn't "sue" in the normally understood sense of the word. When you object to a registration, it's not possible to pursue damages. Since getting money out of a defendant is the prime motivation of a troll, it's not fair to describe this case as "trolling". SF
I guess I (https://bit.ly/2TGCRER) and others (https://bit.ly/2Ii8CyB) just misunderstood the case. Easy mistake since details were not really released.