23 January, 2019
Ever since its launch in the last days of 2018, hundreds of thousands of television fans have been hooked on the phenomenon created by 'Bandersnatch', the latest episode of hit TV show 'Black Mirror'.
For those somehow unaware, 'Bandersnatch' deviates from the standard television format by allowing viewers to make active choices to influence the characters and change the outcome of the show. Needless to say, the show's signature eerie atmosphere and psychological thrills are present in abundance.
Yet now it appears that the Netflix spectacular is facing a dilemma of its own; how to react to the threat of multi-million dollar litigation from a company claiming they have had their trade marks and branding hijacked.
The claim is being brought by 'Chooseco LLC', the company responsible for the publication of numerous books and board games under the familiar branding of 'Choose Your Own Adventure', a phrase over which they have trade mark protection. Netflix have used the phrase in both the episode itself and in the promotional materials advertising the show. On top of unlicensed use of their phrase, Chooseco are claiming that that the 'disturbing and violent imagery' of Bandersnatch has damaged their brand, as people will wrongly associate their products with the Netflix hit.
Sadly, the case has been filed in Vermont, USA, so, unlike the viewers of Bandersnatch itself, the laws of England will have little ability to impact this particular decision. It is nevertheless interesting to theorise what points could be raised in Netflix' defence.
The most interesting point would be to explore the issue of 'Genericide' - an originally American idea that describes losing a trade mark's protection because your brand has become so popular its name has turned into common parlance. This has been a fascinating pitfall that many massive companies have fallen victim to. It is the reason some would say that you can damage your frisbee whilst hoovering your jacuzzi and fix it up with sellotape and velcro without having too much to fear from IP litigation. It is also why Google are so keen for people to use the rather clunky phrase 'trying searching for it using the search engine Google'.
Applying this same principle, it would be fascinating to know how many people were actually aware that 'Choose You Own Adventure' was in fact a specific line of published books and not just the name given to the entire genre. It is arguable at least that the brand has become so synonymous with the format that it can no longer expect specific legal recognition.
It is a great shame that the 'Bandersnatch' case will not reach UK courts, as the concept of 'genericide' still lacks any solid legal authority from either legislation or case law, mostly because trade mark holders, and their solicitors, are becoming increasingly efficient at promoting their products and enforcing their rights whenever they are under threat. The position is far clearer in the US, thanks in part to last year's high profile case that saw the retailer Costco get in massive trouble for trying to sell a line of 'Tiffany' engagement rings, claiming the brand had become a generic term.
Like Bandersnatch itself, the 'Choose Your Own' case could go one of many ways, and we will be watching intently.
Forbes regularly advises on all matters relating to trade marks and IP law. Contact us at John Pickervance, or 0332071130 to discuss any issues further.