Written by Adé Jackson and Gabriella Nourafchan

On Friday, May 29, 2020, the United States District Court for the District of Maryland granted Epic Games’ motion to dismiss in Brantley et al. v. Epic Games, Inc., Case No. 8:19-cv-594, one of several lawsuits filed against the videogame creator regarding the use of “emote” dance moves in its popular videogame Fortnite.[1]

The Plaintiffs—two former University of Maryland basketball players—claimed to have created, named, and popularized the “Running Man” dance. They alleged that Epic Games intentionally copied the movements of the dance as an “emote” in Fortnite.  The Plaintiffs asserted eight causes of actions against Epic Games: (1) invasion of the right of privacy/publicity; (2) common law unfair competition; (3) common law unjust enrichment; (4) federal unfair competition; (5) trademark infringement under the Lanham Act; (6) common law trademark infringement; (7) trademark dilution; and (8) false designation of origin.

The Court first analyzed the Plaintiffs’ common law publicity/privacy, unfair competition and unjust enrichment claims, and determined that they were preempted by the Copyright Act, 17 U.S.C. § 301.  In order for a state-law claim to be preempted, two criteria must be satisfied.  First, the work at issue, here the “Running Man” dance, must fall within the subject matter of copyright.  Second, to be preempted, the claim must be equivalent to the exclusive rights protected by section 106 of the Copyright Act.  Under this second factor, if the claim at issue has an “extra element” that makes it qualitatively different from a copyright claim, it is not equivalent to an exclusive right and is not preempted.

The Court found that the “Running Man” dance fell within the “general subject matter of copyright” due to its similarities to choreographic works.  In coming to this conclusion, the Court emphasized that it did not need to determine whether the “Running Man” dance is actually protectable under the Copyright Act, since the scope of copyright preemption is broader than the scope of copyright protection.  In other words, copyright preemption can apply even if a work is not necessarily protectable under copyright law.  The Court found that the second requirement for copyright preemption was also satisfied because each of the common law claims were based on the alleged misappropriation (i.e. unauthorized copying) of the “Running Man” dance.  The Court recognized that while some prior decisions declined to dismiss right of publicity claims on preemption grounds, the Plaintiffs’ right of publicity claim was nonetheless preempted due to their failure to allege any facts supporting their claim.

The Court also dismissed the Plaintiffs’ remaining Lanham Act claims for trademark infringement, trademark dilution, federal unfair competition, and false designation of origin.  Relying on a long line of prior cases, the Court concluded that the Plaintiffs’ federal unfair competition and false designation of origin claims failed because the Plaintiffs did not allege that there was confusion as to the producer of the product sold in the marketplace (which is required to properly assert these claims), and only alleged that there was confusion as to the person who originated the ideas that the goods or services embody or contain.  As several prior cases have recognized, the Lanham Act does not protect against copying of an idea or concept.  See, e.g., Dastar Corporation v. Twentieth Century Fox Film Corporation, 539 U.S. 23, 32 (2003); Pellegrino v. Epic Games, Inc., 2020 WL 1531867, at *6 (E.D. Pa. Mar. 31, 2020); Lions Gate Entm’t Inc. v. TD Ameritrade Servs. Co., 170 F. Supp. 3d 1249 (C.D. Cal 2016).

The Plaintiffs’ two remaining claims—for trademark infringement and trademark dilution—failed because the Plaintiffs did not plausibly allege that the “Running Man” dance is a valid trademark.  The Court rejected the Plaintiffs’ circular argument that the “Running Man” dance is a trademark for their performances of the dance, emphasizing that trademarks themselves are not goods or services, but rather are instruments to identify goods or services.

Finally, the Court rejected the Plaintiffs’ alternate theory of liability that the use of the “Running Man” dance created the false impression that the Plaintiffs endorsed Fortnite, because a false endorsement claim based on the Plaintiffs’ allegations would lead to conflicts between the Lanham Act and copyright law.

The Court dismissed all of the Plaintiffs’ claims with prejudice, recognizing that the Plaintiffs “seek to place the same square peg into eight round holes in search of a cause of action against Epic Games[.]”  Since the Plaintiffs had already amended their complaint once as a matter of right after Epic Games had raised these deficiencies, the Court found that further amendment would be futile and dismissed the Plaintiffs’ claims with prejudice.  

This decision is a cautionary tale to future intellectual property plaintiffs regarding the important differences between protectability under copyright and trademark law, and the differing scopes of copyright preemption and copyright protection.  

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[1] An “emote” is a programmed movement performed by a player’s online avatar to express the player’s emotions in the game.  “Emotes” are one of various in-game purchases that players can use to customize their Fortnite experience.