On Tuesday, March 31, 2020, Judge John Padova, U.S. District Court for the Eastern District of Pennsylvania, ruled mostly in favor of Epic Games, Inc. in a lawsuit involving the Fortnite dance emote “Phone It In.” Judge Padova granted Epic Games, Inc.’s motion to dismiss concerning plaintiff Leo Pellegrino’s causes of action concerning the following claims: (1) unauthorized use of name or likeness; (2) misappropriation of publicity; (3) invasion of privacy by misappropriation of identity; (4) unjust enrichment; (5) unfair competition; (6) trademark infringement under Pennsylvania common law; and (7) trademark dilution under the Lanham Act. However, Judge Padova ruled that plaintiff’s claim for trademark infringement under the Lanham Act could proceed.
Leo Pellegrino is a professional baritone saxophone player in the group “Too Many Zooz.” Pellegrino created the “Signature Move” by externally rotating his feet and performing the dance in all his musical performances. He was included in a Google Pixel 2 commercial showcasing his dance in 2017. Epic Games, Inc.’s video game, Fortnite Battle Royale, includes a dance emote called “Phone It In,” which Pellegrino claims “is identical to Pellegrino’s Signature Move.”
As to the claims concerning right of publicity and privacy, Judge Padova ruled that “Epic’s use of Pellegrino’s likeness is sufficiently transformative under the Transformative Use Test” so as to afford the use First Amendment protections. Pellegrino’s complaint did not allege that the Fortnite player avatars equipped with the emote share Pellegrino’s appearance or biographical information. The transformative use did not outweigh Pellegrino’s interest in his likeness.
On the claim for unjust enrichment, Judge Padova ruled that the complaint did not sufficiently state a claim for unjust enrichment because there were no allegations of a relationship between Epic and Pellegrino which could be construed as contractual. Regarding the unfair competition claim, Judge Padova found that the complaint did not “plausibly allege that Epic and Pellegrino are competitors,” since Epic is a video game publisher and Pellegrino is a professional saxophone player. Judge Padova dismissed Pellegrino’s claim for trademark dilution because Pellegrino’s position in the complaint essentially argued that the Signature Move itself could serve as its own trademark. “[T]he law is clear that a trademark cannot serve as a trademark for itself.”
Further, Pellegrino’s claim for state trademark infringement was dismissed by Judge Padova on copyright preemption grounds. Specifically, Judge Padova ruled that a dance falls within the subject matter of the copyright category “choreographic works,” and not trademark. Because the subject matter is alleged to be a dance, Judge Padova ruled that the claim was preempted by copyright law.
Judge Padova ruled in favor of Pellegrino, however, regarding his claim for trademark infringement under the Lanham Act. Specifically, Judge Padova found the complaint sufficient to support a Lanham Act claim based on a false endorsement theory, where “defendant’s use of [the plaintiff’s mark] to identify its goods or services is likely to create confusion concerning the plaintiff’s sponsorship or approval of those good[s] or services.”
Additional Reading
Epic mostly wins Fortnite saxophone lawsuit, but judge lets one claim go forward, The Verge (April 2, 2020)
Pellegrino v. Epic Games, Inc. (Case No. 2:2019cv01806)
Memorandum in Pellegrino v. Epic Games, Inc. (Case No. 2:2019cv01806)
Photo credit: Pryimak Anastasiia / Shutterstock.com
