451 F.Supp.3d 373
E.D. Pa.2020Background
- Plaintiff Leo Pellegrino, a professional baritone saxophonist, developed a widely recognized "Signature Move" (a dance performed with his saxophone) that appears in online videos and live performances.
- Defendant Epic Games sells Fortnite, which offers purchasable in‑game "emotes" (avatar dances). One emote, "Phone It In," is alleged to be identical to Pellegrino’s Signature Move and is sold for virtual currency.
- Pellegrino sued asserting eight counts: statutory and common‑law right of publicity/privacy (Counts I–III), unjust enrichment (IV), unfair competition (V), Lanham Act claims (false designation of origin and false endorsement) (VI), state trademark infringement (VII), and trademark dilution (VIII).
- Epic moved to dismiss under Rule 12(b)(6), arguing First Amendment protection for Fortnite, Dastar and copyright preemption, and failure to plead required elements for several claims.
- The court dismissed Counts I–V, Count VII, Count VIII, and Count VI to the extent it alleged false designation of origin, but allowed Pellegrino to proceed only on his Lanham Act false‑endorsement theory (Count VI). Leave to amend was denied as futile; dismissed claims were with prejudice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Right of publicity/privacy (Counts I–III) | Epic copied Pellegrino’s Signature Move and used it without consent, misappropriating his likeness. | Fortnite is an expressive work entitled to First Amendment protection; use is transformative. | Dismissed: court applied the Transformative Use Test (Hart) and found Epic’s use sufficiently transformative; First Amendment bars these claims. |
| Unjust enrichment (Count IV) | Epic unjustly profited by using Pellegrino’s move; equity relief warranted. | No benefit was directly conferred by Pellegrino to Epic; unjust enrichment requires plaintiff conferred benefit. | Dismissed: Plaintiff’s allegations of unauthorized taking negate a direct conferment; claim fails. |
| Unfair competition (Count V) | Epic competed in selling "dance performances" (emotes); thus unfair competition. | Parties are not competitors: Epic sells video game content; Pellegrino is a performing musician. | Dismissed: Complaint fails to allege the parties supply similar goods/services (no competitor relationship). |
| Lanham Act — False designation of origin (Count VI, theory 1) | Epic’s use creates the false impression Epic created the move (origin confusion). | Dastar bars using Lanham Act to protect the origin of creative expression embodied in goods. | Dismissed: Dastar governs and precludes Lanham Act claims that seek to protect authorship/origin of underlying creative expression. |
| Lanham Act — False endorsement (Count VI, theory 2) | Epic’s emote creates the false impression that Pellegrino endorsed Fortnite. | Dastar likewise bars Lanham Act misuse; defendant argues preclusion. | Survives: Court distinguishes false endorsement from Dastar’s false origin theory and permits plaintiff to proceed on false‑endorsement theory. |
| Copyright preemption of state trademark claim (Count VII) | State trademark claim protects Pellegrino’s mark/identity distinct from copyright. | Claim is grounded solely on unauthorized copying of a choreographic/dance work and thus is preempted. | Dismissed: Signature Move falls within copyright subject matter (choreography) and complaint alleges only copying—no extra element—so state claim is preempted. |
| Trademark dilution (Count VIII) | Epic’s use lessens distinctiveness of Pellegrino’s mark/identity. | Plaintiff fails to allege Epic made trademark use (used the move to identify Epic’s goods/services). | Dismissed: Complaint does not plausibly allege defendant used the mark "as" its own trademark; a product cannot serve as its own trademark. |
Key Cases Cited
- Hart v. Electronic Arts, Inc., 717 F.3d 141 (3d Cir. 2013) (applies Transformative Use Test to right‑of‑publicity claims involving video games)
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003) (Lanham Act "origin" covers producer of tangible goods, not author of underlying ideas)
- Brown v. Entertainment Merchants Ass'n, 564 U.S. 786 (2011) (video games are protected expressive speech)
- Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) (pleading must be facially plausible)
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (court need not accept legal conclusions as true)
- Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d 797 (Cal. 2001) (discusses transformation standard for celebrity likenesses)