Gaming emote litigation: plaintiffs test different causes of action as battle ensues over Fortnite emotes

Introduction

Fortnite: Battle Royale (Fortnite), the highest-earning game in 2019 at $1.8 billion, continues to drive the world of e-sports.(1) Epic Games, its development company, provided $100 million in cash winnings for its summer world cup, the finals for which took place at Arthur Ashe Stadium in July 2020. The Sunday finale of the event was, according to Epic Games, the most-watched competitive gaming event (excluding China) of all time.(2) Part of Fortnite‘s success is due to its creative and memorable celebratory dances known as emotes. Many of these emotes – often inspired by real-world examples from movies, TV series and social media – enjoy a life beyond the game, as celebrities perform them and athletes use them to celebrate goals and victories.

This high level of success and popularity has inevitably also made the game an inviting target for litigation. In the past 18 months, several cases have been brought against Epic Games regarding some of the game’s most popular emotes. These cases provide insight for gamers and game developers into potential claims that they may face and how to appropriately clear rights and avoid claims.

First wave of copyright infringement and right of publicity claims

The first wave of litigation regarding the emotes involved a series of five cases filed in late 2018 in the Central District of California. The five suits, filed on behalf of Fresh Prince of Bel-Air star Alfonso Ribeiro, Russell ‘Backpack Kid’ Horning, an anonymous Fortnite fan known as ‘Orange Shirt Kid’ and rappers Terrence ‘2 Milly’ Ferguson and James ‘BlocBoyJB’ Baker, all sought compensation for dances that they claimed to have created. The two most popularly recognisable dances are likely Ribeiro’s ‘the Carlton’ and Horning’s ‘the Floss’.

Each of the lawsuits alleged copyright infringement and right of publicity. All five lawsuits were subsequently withdrawn after the Supreme Court’s decision in Fourth Estate Pub Benefit Corp v Wall-Street.com LLC,(3) which held that before a copyright infringement suit may be brought, the Copyright Office must have either registered or rejected a copyright application for registration. In each of those cases, the registrations were still pending and the Copyright Office had not yet reached its determination.

The Copyright Office has since determined registerability for each of the dances, but none of the suits have been refiled, as of the time of writing. The Copyright Office refused registration for three of the dances: the ‘Carlton’, ‘2Milly’ and ‘BlocBoyJb’. Presumably, the dances described in the applications were too simple and did not rise to the level of choreography under the standard set by Section 805.5 of the Compendium of US Copyright Office Practices (3d ed 2017) (2017 Compendium), discussed below in more detail. However, the office did grant the registration for a slightly longer form of the ‘Floss’ (Reg PA0002147439 / 2018-07-30 (FLOSSIN DANCE)) for choreography and for Orange Shirt Kid’s ‘the Random’ (Reg PA0002147017 / 2019-01-10 (The Random by Orange Shirt Kid)) as a motion picture. Both registrations included a note from the office that “[r]egistration does not extend to individual dance steps”.

As with most works, the Copyright Office appears to maintain a fairly stringent view of what is copyrightable about dance and choreography. The compendium includes a series of factors that help differentiate between social dances and simple routines, which are not eligible for registration, and choreography, which may be eligible (Section 805.1 of the 2017 Compendium). These factors, not all of which are required for a performance to constitute choreography, include:

  • whether it constitutes a defined sequence in a defined space (Section 805.2(A));
  • its compositional arrangement (Section 805.2(B));
  • whether it includes musical or textual accompaniment (Section 805.2(C));
  • dramatic content (Section 805.2(D);
  • whether it is presented before an audience (Section 805.2(E)); and
  • whether it requires a skilled performer for the dance to be performed (Section 805.2(F)).(4)

The extended-length Floss apparently met enough of these criteria, but the other four dances now represented in Fortnite emotes did not, presumably because they were too short or too simple, or did not require particularly skilled performers to execute them.

Follow-on claims based on popularisation of a dance or signature move

In a twist on the facts of the other five connected cases, two University of Maryland basketball players, Jaylen Brantley and Jared Nickens, sued Epic Games on related Fortnite claims. Brantley and Nickens alleged that they popularised (as opposed to created) the ‘Running Man’ and therefore were entitled to copyright protection, which Epic Games infringed by incorporating the Running Man emote.(5) In providing background for the claims, the complaint also referenced other dance moves (the ‘Carlton’ and dances by Snoop Dogg and Donald Faison, among others) created or popularised by prominent African Americans that they allege have been appropriated in Fortnite without credit or financial compensation to their originators.(6) As with the prior cases, Brantley and Nickens had not registered the copyright in their dance, and so, after the Supreme Court’s decision in Fourth Estate, Brantley’s legal team amended their claims to omit copyright and instead rely on claims of right of publicity, unfair competition, unjust enrichment and trademark infringement. This seems like it was inevitable in any event, because simply popularising a dance would not entitle the plaintiffs to copyright in that dance. Epic Games moved to dismiss on the grounds that the complaint failed to state a claim and that the claims are pre-empted by the Copyright Act and most are barred by the First Amendment. That motion to dismiss remains pending.

A federal court recently ruled on similar claims brought by Leo Pellegrino. He filed a complaint against Epic Games to seek compensation for its use of his ‘Signature Move’, a series of dance moves made possible by his externally rotatable feet that he executes while holding a saxophone.(7) He invoked publicity and privacy rights for a misappropriation of his likeness, and brought claims for unjust enrichment, unfair competition, false designation of origin, trademark dilution, state trademark infringement and false endorsement. The judge allowed only the last claim to survive a motion to dismiss, throwing out the rest on First Amendment, copyright pre-emption and lack of contract or competition grounds. The false endorsement claim survived because the court found it credible that use of his ‘Signature Move’ creates the impression that Pellegrino endorses Fortnite.

Epic Games takes more aggressive stance against copyrightability of a character

At the end of 2019, Epic Games sought to get ahead of another infringement allegation and filed a complaint for declaratory judgment in the Southern District of New York against Sick Picnic Media, Matthew Geiler’s licensing company.(8) Geiler originated a character called ‘Dancing Pumpkin Man’. Fortnite made a dance available for one night around Halloween in which the character does a similar set of arm waving and turns and called it ‘Pump It Up’. After receiving a demand letter from Geiler, Epic Games filed the complaint for declaratory judgment, arguing that Geiler’s character was not protectable because he did not create any of the attributes (ie, the jack-o’-lantern head or black unitard) and, even if protectable, its ‘Pump It Up’ dance was not substantially similar to Geiler’s dancing character. That case settled before the judge could make a determination on its merits.

In March 2020 the Ninth Circuit created a more stringent copyright test for characters in Daniels v The Walt Disney Company.(9) The Ninth Circuit affirmed the district court’s dismissal of claims alleging copyright infringement by the Disney movie Inside Out of the plaintiff’s characters called ‘The Moodsters’. The panel held that The Moodsters, colourful anthropomorphised characters representing various human emotions, were not “sufficiently delineated” characters to be eligible for copyright protection and, therefore, Disney could not be found liable for copyright infringement for their use. According to a 2015 case regarding the Batmobile,(10) a character is copyrightable if it:

  • has “physical as well as conceptual qualities”;
  • is “sufficiently delineated to be recognizable as the same character whenever it appears” and “display[s] consistent, identifiable character traits and attributes”; and
  • is “especially distinctive” and “contain[s] some unique elements of expression”.

Although The Moodsters had physical qualities, because they shifted shape and personality over the course of the movie, they were insufficiently recognisable on a consistent basis to merit protection as characters

What’s next in the rush of gaming litigation?

As e-sports and gaming grow, litigation will surely grow with them. It is likely that while Fortnite remains so incredibly lucrative – a point that a few of its challengers did not hesitate to raise – litigation will also continue to emerge against Epic Games and other successful developers and publishers. However, whether the plaintiffs will be able to find any claims that can truly survive the test of litigation remains to be seen. As the litigation relating to emotes continues, if the plaintiffs begin to see success, gamers and other developers may well face litigation. For example, use of the emotes by game players, some of whom stream their play and find it extremely lucrative and use the emotes upon victory, could be next in the litigation crosshairs.

Endnotes

(1) “Fortnite made $1.8 billion in 2019, retains title as highest-earning game“, Aaron Mamiit, Digital Trends.

(2) “The Fortnite World Cup: A Record-Setting Tournament“.

(3) 586 US ___, 139 S Ct 881 (2019).

(4) See 2017 Compendium at § 805.4(A) explaining that “[t]hese elements are found in most choreographic works, although the presence or absence of a particular element may not be determinative”.

(5) Brantley v Epic Games, Inc, 8:19-cv-00594-PWG, ECF 1 (D Md 26 Feb 2019).

(6) Id at 8-9.

(7) Pelligrino v Epic Games, 2:19-cv-01806, ECF 28 (ED Pa 31 Mar 2020).

(8) Epic Games, Inc v Sick Picnic Media, LLC, 19-cv-11215, ECF 1 (SDNY 6 Dec 2019).

(9) Daniels v The Walt Disney Company, 18-55635 (9th Cir 16 Mar 2020).

(10) DC Comics v Towle, 802 F3d 1012, 1021 (9th Cir 2015).

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