(CN) – Netflix must face a lawsuit from the publisher of the “Choose Your Own Adventure” children’s books over a plot device in one of the streaming company’s “Black Mirror” films, a federal judge ruled Tuesday.
Chooseco, a Vermont-based publisher, sued Netflix last year for trademark violation and unfair competition. U.S. District Judge William K. Sessions III in Burlington denied Netflix’s motion to dismiss.
In the “Choose Your Own Adventure” books, which were most popular in the 1980s and 1990s, young readers make choices on how they want the story to proceed. The reader turns to different pages based on those choices, resulting in a variety of outcomes.
“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 Adventure books for their children,” Sessions noted.
He added that Chooseco’s trademark on the phrase extends beyond books to movies and board games.
“Black Mirror” is a series of science fiction programs on Netflix that includes the film “Black Mirror: Bandersnatch.” The story is similar to the “Choose Your Own Adventure” books, as viewers “essentially control the protagonist, Stefan Butler,” Sessions wrote.
At the beginning of the film, Butler’s father comments that the author of the book Butler is reading must not be good, because Butler keeps flipping the pages back and forth.
“No, it’s a ‘Choose Your Own Adventure’ book. You decide what the character does,” Butler replied.
The character intends to adapt the book, called “Bandersnatch,” into an interactive video game.
Sessions also noted that some promotional material for the Bandersnatch film included the same “double rounded border element” as the Chooseco books.
Netflix argued that the First Amendment protects it from trademark claims under the Lanham Act because “Bandersnatch” is an artistic work. Chooseco disagreed, but Sessions sided with Netflix on that point.
“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,” the judge wrote.
Sessions then examined whether Netflix explicitly misled viewers about the source of the work. If so, Netflix would not be covered by the First Amendment.
“The similarity between Chooseco’s products, Netflix’s film, and the fictitious book Netflix described as a ‘Choose Your Own Adventure’ book increases the likelihood of consumer confusion,” the judge stated.
“Ultimately, the parties’ arguments regarding the explicitly misleading prong present a factual dispute, the disposition of which is premature without the benefit of discovery,” he added.
Netflix also presented a “descriptive fair use” argument in which it would have to prove that its use was in good faith, descriptive and not as a mark.
Citing Butler’s statement in the film, Sessions wrote, “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.”
He added that Chooseco’s trademark dilution because it alleges that the “association between Chooseco’s mark and Bandersnatch dilutes the goodwill and marketing value of the mark because of Bandersnatch’s dark and disturbing content.”
Attorney Kendall Hoechst of the Burlington, Vermont, law firm Dinse, Knapp & McAndrew is representing Chooseco. Catherine Seibel of Ballard Spahr is representing Netflix. Neither attorney could be reached for comment Tuesday.