Epic Games Defeats Yet Another Dance Emote Case

THE BIG PICTURE

Short dance moves taken from the real world and sold as emotes in popular games like Fortnite still aren’t protected by copyright law — and copyright law still preempts state law claims asserted in an attempt to circumnavigate this bar, absent some “extra element.”

THE DISPUTE

The plaintiffs in this case, Jaylen Brantley and Jared Nickens, alleged that, in 2016, they created, named and/or popularized the “Running Man” dance, which Epic then misappropriated and sold as a dance emote in Fortnite. Brantley and Nickens further alleged that they incorporated the Running Man dance into breaks at University of Maryland basketball games and that the dance went viral on social media as part of their “Running Man Challenge,” where they challenged others to try and imitate the dance and post their performances on social media.

Brantley and Nickens’ popularity skyrocketed after they appeared on the Ellen DeGeneres Show and performed the Running Man. During the show, though, which Brantley and Nickens reference in their complaint, viewers learn that two high school students from New Jersey — Kevin Vincent and Jeremiah Hall — were the ones who actually created the dance. Brantley and Nickens, who appeared later in the show, said that they learned about the dance from Instagram. Nevertheless, Brantley and Nickens claimed that the “Running Man” has become synonymous with them.

At this point, you might be wondering: Why on earth would Brantley and Nickens’ attorneys have referenced this episode of the Ellen show in their complaint if it Brantley and Nickens admitted during the show that they did not create the dance? We’ll come back to this, later.

THE FIRST COMPLAINT

On February 25, 2019, Brantley and Nickens filed a first complaint against Epic. In that complaint, Brantley and Nickens alleged claims for:

(1) copyright infringement;

(2) contributory copyright infringement;

(3) violation of their right of publicity (without specifying which state law applied); and

(4) unfair competition (based on an unspecified Lanham Act violation).

For the copyright claims, Brantley and Nickens alleged that they had applied for a copyright registration on January 7, 2019. (This is important because on March 4, 2019, the Supreme Court decided the Fourth Estate case which held that you can’t commence a copyright infringement lawsuit until you’ve actually received a registration or rejection from the Copyright Office.)

THE PRE-MOTION LETTER

On February 26, 2019, the day after the filing of the complaint, Judge Grimm sent out a form letter to the parties, notifying them that they needed to write a pre-motion letter prior to filing any substantive motions, including motions to dismiss.

On March 25, 2019, in accordance with Judge Grimm’s instructions, Epic’s lawyers sent a letter requesting permission to file a motion to dismiss. In that letter, Epic made six arguments.

First, Epic explained that the plaintiffs did not plausibly allege ownership of any rights in the dance because during the Ellen show, which the plaintiffs themselves referenced in their complaint, the plaintiffs admitted that they learned about it from social media. (This resembles the standing problem that Alfonso Ribeiro faced in his dance moves lawsuit against Epic games since he originated his “Carlton Dance” while employed as an actor working for a TV network.)

Second, the plaintiffs did not satisfy the pre-suit registration requirement established by the Fourth Estate case and, even if they had, their copyright claims would still fail because short dance moves are not protected by Copyright law.

Third, the remaining state law claims should be preempted by the Copyright Act.

Fourth, even if the Copyright Act didn’t preempt the right of publicity claim, it would still fail under the right of publicity statutes in Massachusetts and New Jersey (the states where the plaintiffs resided, respectively) and applicable First Amendment principles.

Fifth, the unfair competition claim should be barred by the First Amendment under the Rogers v. Grimaldi test.

Sixth, the plaintiffs shouldn’t be entitled to “punitive damages” because the Copyright Act doesn’t provide them; or even statutory damages or attorney fees because of when the complaint was filed (i.e., prior to obtaining a registration.) Elementary!

AMENDED COMPLAINT

On March 26, 2019, one day after the pre-motion letter, plaintiffs filed an amended complaint that dropped the copyright claims but upped the total claims to eight, with various types of alleged unfair competition, publicity, and Lanham Act violations. (Since they’re all based on the copying of the Running Man dance, I shall not belabor the details.)

MOTION TO DISMISS

On May 30, 2019, Epic filed its motion to dismiss. In its motion, Epic again pointed out the befuddling aspect of the complaint that acknowledged that the plaintiffs didn’t even originate the dance in question:

Moreover, Plaintiffs' admission during the Ellen segment that they did not create the Dance Step, but rather learned of it after seeing a video of third parties Kevin Vincent and Jeremiah Hall performing the dance on Instagram, Ex. A at 2:30, further undercuts any argument that the performance of the Dance Step alone could make a fanciful avatar “recognizable” as either Brantley or Nickens themselves.

Overall, Epic portrayed the plaintiffs’ lawsuit as an attempt to claim “a monopoly on a basic dance move—crossing and stepping back and forth on each foot while pumping one’s hands up and down in front of the torso….”

As to the actual legal claims, Epic argued that most of the claims were preempted by the Copyright Act and that the remaining trademark claims simply failed to plausibly allege any violation of trademark law. The court agreed.

THE COURT ORDERS THE CASE DISMISSED WITH PREJUDICE

The court begins its discussion by explaining that the Copyright Act expressly preempts a broad array of claims — and that the scope of copyright preemption is broader than the scope of copyright protection. I particularly like the quoted language from U.S. ex rel. Berge v. Bd. of Trustees of the Univ. of Alabama, 104 F.3d 1453, 1463 (4th Cir. 1997):

“the shadow actually cast by the Act’s preemption is notably broader than the wing of its protection.”

The court explains that there’s a two-prong test for preemption: (1) the work must be within the scope of the subject-matter of copyright; and (2) the rights granted under state law must be equivalent to any exclusive rights identified in 17 USC § 106.

For the first prong, after explaining the distinction between protected choreographic works and unprotected simple dance steps, the court points to another Fortnite dance emote question; the recently decided opinion in Pellegrino v. Epic Games, Inc., No. CV 19-1806, 2020 WL 1531867 (E.D. Pa. Mar. 31, 2020). Relying on Pellegrino and guidance from the Copyright Compendium, the court concludes that even though short dance moves aren’t protected by copyright law, they are still within the subject matter of copyright.

For the second prong, the court explains that avoid preemption, the state law claim must have some “extra element that changes the nature of the action so that it is qualitatively different from a copyright infringement claim.” After citing and discussing numerous cases, the court concludes that the privacy, publicity and unfair competition claims are all, at their core, based on copying of the dance and nothing else, so that all of these state claims are preempted.

Finally, the court decided that the plaintiffs failed to adequately allege any Lanham Act or common law trademark claims, relying in part on the recent Pellegrino decision, but also older cases like the Supreme Court’s Dastar decision (explaining that the “origin of goods” provision in section 43(a) of the Lanham Act was designed to prevent consumer confusion as to the source of goods and not “originality or creativity” which is protected by copyright and patent law); and also the “Dirty Dancing” case, Lions Gate Entm’t Inc. v. TD Ameritrade Servs. Co.,170 F. Supp. 3d 1249 (C.D. Cal 2016) (dismissing Lanham Act § 43(a) claims for unfair competition and false designation of origin, finding allegations Defendant’s use of elements from the film Dirty Dancing including the famous “dance lift,” did not cause confusion over source of tangible goods offered for sale, but only the ideas and concepts embodied in those goods). The court points out that there was no alleged consumer confusion here; nor was there any trademark or good or service involved.

It was, instead, all about a dance.

The court did not give the plaintiffs an opportunity to amend because they had already amended the complaint once and the court saw that it “would be futile” to allow further amendment.

Citation: Jaylen BRANTLEY and Jared Nickens, Plaintiffs, v. EPIC GAMES, INC., John and Jane Does 1 through 50, and John Doe Corporations 1 through 10, Defendants., 2019 WL 5783613 (D.Md.)

Special thanks to Stephen McArthur for notifying me about the order and to Docket Navigator for access to the docket and documents.