Can you trademark a book title? CHOOSECO v. NETFLIX

A trademark is something that tells consumers who produced a product. A trademark is traditionally thought of as a word, phrase or symbol but anything that signals to consumers who produced a product can be granted trademark protection. In the United States a trademark owner can register their trademark to gain additional protections for their trademark, but registration is not required to begin using a trademark. Being the first person to use a trademark in commerce is more important in United States trademark law than being the first person to register the trademark. If a second person starts using a trademark in a way that causes consumer confusion, that can be considered trademark infringement. The senior user of a trademark can file a lawsuit to stop trademark infringement with an injunction and get monetary damages for infringement which has occurred.

Books pose a unique challenge to intellectual property law. The contents of a books can be protected by copyright law, but the title of the book itself would not be considered unique enough to be copyrighted itself. This means that multiple authors could have books with similar titles without infringing on another’s copyright. Trademark law will also not protect the title of a single book because the title would be considered descriptive. The United States Patent and Trademark Office will refuse to register a book title as a trademark if the book is a single work. Single creative works include works in which the content does not change significantly, whether that work is in printed, recorded, or electronic form.

However, if a book is one of a series of works, the common title of the series can be protected as a trademark. A creative work will not be considered a single work if evidence exists that it is part of a series or is a type of work in which the content changes significantly with each edition, issue, or performance. For instance, if Harry Potter was a single book, the title could not be trademarked, but because Harry Potter is a series of books the title can be registered as a trademark.

A case which deals with book title trademarks is Chooseco LLC v. Netflix, Inc., 2:19-cv-00008 (D.VT. 2019). The plaintiff in this case is a book publisher. The books produced by the plaintiff have several different possible endings depending on choices the reader makes while reading the book. For instance, at the end of a chapter the protagonist might be presented with a choice to go left or right at a fork in the road. Depending on which path the reader chooses, the reader will turn to different pages of the book and the outcome of the story will be different. This style of book is popular among certain readers and the plaintiff sells several thousands of copies of books a year. The plaintiff brands its books under the title CHOOSE YOUR OWN ADVENTURE which is a registered trademark.

The defendant is Netflix, an online media streaming service. Netflix makes movies available to customer over the internet for a monthly fee. In December 2018 Netflix released and interactive film called Black Mirror: Bandersnatch. In the beginning of the movie the protagonist refers to his life as a “Choose Your Own Adventure” book. During the course of the movie, watchers are prompted to make choices which changes the outcome of the movie.

The movie has dark themes appropriate for a mature audience, while the plaintiffs books were more light and appropriate for adolescents. Since the release of the movie the plaintiff claims that it has been contacted by consumers several times about the film. Consumers that contacted the plaintiff because they believed that the plaintiff was involved with the production of the movie. The consumers were upset about the dark themes of the movie. The plaintiff claims that the movie has damaged the reputation of its CHOOSE YOUR OWN ADVENTURE trademark.

The plaintiff filed a complaint for trademark infringement, trademark dilution and unfair competition. The plaintiff has a strong case, it was using the trademark first and the defendant’s use of the trademark seems to have lead to consumer confusion. The defendant will have an opportunity to respond to the complaint when it files its answer.

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