By Andrew Quinn, Georgetown Law 3L
In the past few months, Epic Games, Inc., the creator of the massively popular video game Fortnite, sought dismissal of two separate suits against it for allegedly copying dance moves and incorporating them into “emotes.” Emotes are movements that players of Fornite can command their avatars to perform and are sold as an in-game purchase in the Fortnite electronic storefront. In the more recent suit decided in May, Brantley v. Epic Games, Inc., No. 8:19-CV-594-PWG, 2020 WL 2794016 (D. Md. May 29, 2020), two former University of Maryland basketball players, Jaylen Brantley and Jared Nickens, alleged that Epic Games intentionally copied the movements of a dance they popularized, the “Running Man,” and incorporated them as an emote. Brantley and Nickens claimed that the popularity of the Running Man exploded after a live performance by the two on the Ellen DeGeneres Show. Brantley and Nickens asserted causes of action under common law and the Lanham Act for invasion of the right of privacy/publicity, unfair competition, unjust enrichment, trademark infringement, trademark dilution, and false designation of origin. The U.S. District Court for the District of Maryland dismissed all eight claims.
The court first held that the common law privacy, unfair competition, and unjust enrichment claims were preempted by the Copyright Act because the “scope of copyright preemption is broader than that of copyright protection” and the Running Man was “within the ‘general subject matter’ of copyright under a choreographic work.” Further, the rights provided by the common law actions were equivalent to the rights protected by the Copyright Act, and therefore, the common law claims were preempted by the Copyright Act.
Next, the court found that Brantley and Nickens failed to adequately allege Lanham Act unfair competition and false designation of origin claims because they simply reincorporated their copyright allegations, whereas the Lanham Act is designed to prevent customer confusion as to the source of goods, not originality or creativity. The court then quickly dismissed the trademark infringement and dilution claims under the Lanham Act and common law because while Brantley and Nickens argued their trademark was in the Running Man likeness, likenesses and images do not function as trademarks, and the plaintiffs did not allege how the dance was used to identify a unique good or service.
Finally, Brantley and Nickens alleged that Epic Games “creat[ed] the false impression that Plaintiffs endorsed Fortnite” as part of their unfair competition and trademark claims, which the court nevertheless analyzed as an additional, separate cause of action for false endorsement. The court cited Dastar Corporation v. Twentieth Century Fox Film Corporation, 539 U.S. 23 (2003) and found that because Plaintiffs’ false endorsement claims were based on the “conclusory allegation that Epic Games used their likeness” for the Running Man Emote, “these allegations would lead to the type of conflict between the Lanham Act and the copyright law that the Supreme Court sought to avoid in Dastar.”
This case followed a nearly identical case against Epic Games that was decided in March, Pellegrino v. Epic Games, Inc., No. CV 19-1806, 2020 WL 1531867 (E.D. Pa. Mar. 31, 2020). There, Plaintiff Leo Pellegrino, a professional baritone and saxophone player, sued Epic Games for using Pellegrino’s “Signature Move” for the Fortnite emote “Phone It In.” Pellegrino claimed he performs his Signature Move in all of his live performances, which hundreds of thousands have viewed, and Epic Games copied the move after it was featured in a Google Pixel 2 commercial. Notably, the plaintiffs in Brantley plead nearly the same causes of action that Pellegrinoasserted in his action: invasion of the right of privacy/publicity, unfair competition, unjust enrichment, trademark infringement, trademark dilution, false designation of origin, and false endorsement.
Despite the similarities between the cases, the court in Pellegrino dismissed the right of publicity and privacy claims on different grounds than those in Brantley and declined to dismiss the false endorsement claim. First, for the right of publicity and privacy claims, the court employed the Transformative Use Test to weigh Pellegrino’s publicity and privacy rights against Epic Games’ First Amendment protections afforded to expressive works, which include video games. The court concluded that because the avatars in Fortnite do not resemble Pellegrino or otherwise share his identity nor do what Pellegrino does in real life, Epic Games’ use of Pellegrino’s likeness was sufficiently transformative to provide it with First Amendment protection that was not outweighed by Pellegrino’s interest in his likeness.
Second, for the false endorsement claim under the Lanham Act, the court noted that other courts have allowed a plaintiff’s false endorsement claim “to proceed notwithstanding Dastar where a complaint alleges that the defendant used the plaintiff’s identity or likeness to deceive the public into believing that the plaintiff endorsed the defendant’s product.” Here, Pellegrino alleged Epic Games used Pellegrino’s Signature Move to generate significant income by creating the false impression that Pellegrino endorsed Fortnite. Specifically, Pellegrino argued that Epic Games had copied his Signature Move and named the emote “Phone It In” to allude to Pellegrino’s appearance in the Google Pixel 2 commercial, that the reaction from many players of Fortnite was immediate recognition of Pellegrino’s Signature Move, and this created the false impression that Pellegrino endorsed Fortnite. The court found that these allegations “relate to Epic’s use of Pellegrino’s likeness and trademark to create the impression that Pellegrino endorses Fortnite and do not relate to the alleged confusion over the origin of the Signature Move” and, unlike the allegations in Brantley, Pellegrino’s false endorsement claim “is distinct from his false designation of origin claim and thus, is not barred by Dastar.”
The distinction between the opposite false endorsement holdings in Brantley and Pellegrino could be due to how Pellegrino plead the cause of action. Brantley and Nickens alleged their false endorsement claim not as a distinct theory of liability under the Lanham Act, but as part of their general trademark infringement claims based on the “conclusory allegation that Epic Games used their likeness.” Conversely, Pellegrino separately alleged that: (1) Epic Games committed trademark infringement by using the Signature Move to create the false impression that Epic created it (false designation of origin), and (2) Epic Games used Pellegrino’s Signature Move to generate income by creating the false impression that Pellegrino endorsed Fortnite (false endorsement). While the distinction may be slight, it allowed the court in Pellegrino to find that Pellegrino’s false endorsement claim based on Epic Games’ use of his likeness in “Phone It In” did not depend on the authorship or origin of Pellegrino’s Signature Move.
What is more likely, however, is that Brantley and Nickens failed to establish that the Emote Running Man was based specifically on their likeness, whereas Pellegrino successfully alleged that “Phone It In” was based on his Signature Move, and therefore, his likeness. Brantley and Nickens relied on their performance on the Ellen DeGeneres Show to allege that Epic Games used their likeness for the Running Man, but in the very same clip admitted they had not created the dance move. Indeed, the court in Brantley noted this inconsistency and repeatedly characterized Plaintiffs’ allegation that Epic Games used their likeness in Running Man as “conclusory.” Conversely, the court in Pellegrino accepted Pellegrino’s allegations that the sale of the “Phone It In” on Fortnite’s storefront followed his performance of the Signature Move in the Google Pixel 2 commercial, and therefore, “Phone It In” was distinctly based on Pellegrino’s likeness.
In any event, both Pellegrino and Brantley illustrate the difficulties faced by plaintiffs seeking to sue Epic Games or other video game creators for allegedly incorporating their dance moves into emotes. With Player Unknown’s Battlegrounds, Call of Duty: Warzone, and other popular videogames incorporating emotes as in-game purchases, one may expect more plaintiffs filing suits like those in Pellegrino and Brantley, but successfully recovering on these claims will certainly prove difficult based on the rationale set forth in the two cases.
