Legal battles over Epic Games, Inc.'s Fortnite Battle Royale dance emotes have become prevalent over the past couple of years, including at least four individual suits filed in the Central District of California by Terrance Ferguson (aka the rapper 2 Milly), actor Alfonso Ribeiro, viral performer Russell Horning (aka Backpack Kid), and James Baker (aka the rapper BlocBoy JB).  Last year, Leo Pellegrino (also known as Leo P), filed suit against Epic claiming that it misappropriated his likeness and his Signature Move trademark.  The Eastern District of Pennsylvania recently dismissed seven of Pellegrino's eight claims.

Pellegrino is a professional baritone saxophone player and member of the "brass house" group Too Many Zooz.  Pellegrino's alleged Signature Move incorporates a series of dance movements that are performed while holding a saxophone.  He performs his Signature Move in concerts, festival performances, and in online videos having millions of views.

Fortnite is a third-person-shooter video game that is free to download and play.  Virtual currency (known as V-Bucks) can be purchased and allows players to buy one or more customizations, including avatar skins, pickax upgrades, and emotes.  Emotes are particularly popular because they allow the players' avatars to portray various dances and movements. Through the purchase of emotes and other in-game customizations, Fortnite has generated a substantial amount of revenue.

In this case, the Fortnite emote at issue is known as the Phone It In emote. According to Pellegrino, the Phone It In emote is a reference to his appearance in a Google Pixel 2 phone commercial in 2017.  Without Pellegrino's consent, the emote is sold on Fortnite for 800 V-Bucks, or approximately $8.

Pellegrino's complaint asserted eight federal and state law causes of action for unauthorized use of name or likeness, misappropriation of publicity, invasion of privacy, unjust enrichment, unfair competition, trademark infringement (under the Lanham Act and state common law), and trademark dilution. There was no copyright claim for the Signature Move, despite it being described as a dance.  Epic subsequently moved to dismiss the complaint in its entirety, and successfully defeated all claims except for Pellegrino's trademark infringement claim under the theory of false endorsement.

Right of Publicity and Privacy Claims

Epic moved to dismiss Pellegrino's right of publicity and privacy claims on First Amendment grounds.  In particular, because Fortnite is a video game, and thus an expressive work, it is protected under the First Amendment as expressive speech.  The court looked to the Transformative Use Test used by the Third Circuit Court of Appeals in Hart v. Electronic Arts, Inc., 717 F.3d 141 (3d Cir. 2013).  Under the Transformative Use Test, the expressive work is protected by the First Amendment if "'the product containing [the] celebrity's likeness is so transformed that it has become primarily the defendant's own expression rather than the celebrity's likeness.'"  In the instant case, the court found that Epic's use of Pellegrino's likeness is sufficiently transformative, and thus protected by the First Amendment, because (1) Pellegrino did not allege that the Fortnite avatars equipped with the Phone It In emote share Pellegrino's appearance or biographical information; (2) Fortnite players can customize their characters with various emotes that mimic celebrities other than Pellegrino; and (3) the emotes are executed while "us[ing] weapons and violence to eliminate the competition," whereas Pellegrino executes his Signature Move at musical performances.

Lanham Act Claims: False Designation of Origin, False Endorsement, and Trademark Dilution

Pellegrino's Lanham Act claim was brought under three theories: (1) false designation of origin; i.e., Epic's use of the Signature Move created a false impression that Epic created it; (2) false endorsement; i.e., Epic's use of the Signature Move generated significant revenue by creating the false impression that Pellegrino endorsed Fortnite; and (3) trademark dilution. 

With respect to the false designation of origin claim, the court looked to the holding in Dastar Corporation v. Twentieth Century Fox Film Corporation, 539 U.S. 23 (2003), where the Supreme Court found that the phrase "origin of goods," for purposes of the Lanham Act, refers to "the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods."  Accordingly, because Pellegrino did not and could not allege that there was any confusion as to who produced the Phone It In emote, Pellegrino's false designation of origin claim necessarily failed. 

In contrast, Pellegrino's false endorsement theory survived the Dastar test because the complaint sufficiently alleged that Epic used Pellegrino's likeness and Signature Move to deceive the public into believing that Pellegrino endorsed Fortnite.

As for trademark dilution, the court was not persuaded by Pellegrino's argument that Epic made trademark use of Pellegrino's Signature Move; specifically, that Epic used the Signature Move to identify the Phone It In emote.  The court noted that Pellegrino's argument is "'tantamount to saying that [the] product itself—in this case, the [Signature Move] —can serve as its own trademark,'" and "the law is clear that a trademark cannot serve as a trademark for itself."  Given that "the Complaint d[id] not plausibly allege that Epic made trademark use of the Signature Move as is required to state a cognizable Lanham Act claim for trademark dilution," the dilution claim was dismissed.

State Unfair Competition & Trademark Claims

To plead a claim of unfair competition under Pennsylvania common law, the plaintiff must allege that s/he supplies similar goods or services as the defendant.  The court dismissed Pellegrino's argument that both parties are competitors "in the field of selling dance performances" and agreed with Epic that the parties supply different goods given that Epic is a video game publisher and Pellegrino is a saxophone player.

With respect to Pellegrino's state trademark infringement claim, the Court agreed with Epic that the claim was preempted by the Copyright Act.  The test for copyright preemption is (1) whether the work falls within the subject matter of a copyright, and (2) whether the state law provides equivalent rights as those protected by the Copyright Act.  The court reasoned that (1) Pellegrino's Signature Move, alleged to be a dance, falls within the subject matter of copyright under the category of "choreographic works"; and (2) the allegations that Epic misappropriated Pellegrino's dance moves without consent or compensation do not describe conduct that goes "beyond mere copying, preparation of derivative works, performance, distribution or display."  As such, Pellegrino's state trademark infringement claim created rights equivalent to those protected by the Copyright Act, and thus was preempted by the Copyright Act.

Unjust Enrichment Claim

Finally, with respect to unjust enrichment, Epic argued that the complaint failed to allege a contractual relationship between the parties where benefits were conferred onto Epic by Pellegrino. The court noted that "the Complaint must allege not just that Epic received a benefit unjustly, or that a benefit was unjustly conferred on Epic; rather, it must allege that Pellegrino directly conferred a benefit on Epic." Instead, the complaint alleged that Epic misappropriated Pellegrino's likeness without his consent. Thus, nothing was conferred from Pellegrino onto Epic, and unjust enrichment didn't apply.

The case is Pellegrino v. Epic Games, Inc., No. 19-1806 (E.D. Pa. March 31, 2020).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.