NO. 19-1806
IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF PENNSYLVANIA
March 31, 2020
Padova, J.
MEMORANDUM
Padova, J.
March 31, 2020
Plaintiff Leo Pellegrino commenced this action against Defendant Epic Games, Inc.
I. BACKGROUND
The Complaint alleges that Leo Pellegrino “is a professional baritone saxophone player and member of the ‘brass house’ group ‘Too Many Zooz.‘” (Compl. ¶ 2.) Using his unique anatomy—specifically his externally rotatable feet—Pellegrino was able to create the Signature Move, a series of movements that express his own unique dancing style. (Id. ¶ 17.) Pellegrino incorporates and “executes the Signature Move [in] every one of his musical performances.” (Id. ¶ 24.) By executing the Signature Move in concert and festival performances in front of hundreds of thousands of people and in online videos with millions of views, his Signature Move has grown in popularity and has become inextricably linked to his identity. (Id. ¶¶ 3, 24.)
Epic Games, Inc. is a video game developer who created the game “Fortnite Battle Royale.” (Id. ¶¶ 10, 28.) Fortnite was released in September 2017 and since then has become one of the most popular video games ever. (Id. ¶ 7.) In fact, because of Fortnite‘s success, Epic‘s value has grown from approximately $825 million to approximately $15 billion. (Id. ¶ 38.) Fortnite is a battle royale video game, a “genre that blends the survival, exploration and scavenging elements of a survival game with last-man-standing gameplay.” (Id. ¶ 28.) In this format, “up to 100 players, alone, in pairs or in groups, compete to be the last player or group alive” by using weapons and other forms of violence to eliminate other players. (Id. ¶ 29.)
Epic does not charge players money to purchase Fortnite; instead, players can download and play Fortnite for free. (Id. ¶ 30.) Fortnite generates revenue using its in-game electronic storefront where it sells virtual content that players can use while playing Fortnite. (Id.) This buyable virtual content includes customizations for the Fortnite digital avatars like “emotes” that enable the Fortnite avatars to perform dances or movements.
Epic creates these “emotes by copying and coding dances and movements directly from popular videos, movies, and television shows without consent.” (Id. ¶ 34.) Emotes are popular among players because emotes allow players to personalize their Fortnite experience. (Id. ¶ 33.) Emotes have become popular even outside of Fortnite. (Id.) For example, professional athletes perform celebrations based on Fortnite emotes and other people post social media videos of themselves executing the emotes. (Id.)
One of these emotes, the “Phone It In” emote, “is identical to Pellegrino‘s Signature Move.” (Id. ¶ 41.) The name “Phone It In” is a reference “to Pellegrino‘s appearance in a Google Pixel 2 phone commercial in 2017.” (Id. ¶ 5.) Without Pellegrino‘s consent, Epic sells the Phone It In emote for 800 V-Bucks (Fortnite‘s virtual currency), which is worth approximately $8. (Id. ¶¶ 30, 40.) Once a player buys this emote and equips his or her
The Complaint asserts eight causes of action under state and federal law. The first cause of action asserts a claim for unauthorized use of Pellegrino‘s name or likeness in violation of
II. LEGAL STANDARD
When deciding a motion to dismiss pursuant to
A plaintiff‘s pleading obligation is to set forth “a short and plain statement of the claim,”
III. DISCUSSION
Epic argues in its Motion that: (1) Counts I-III must be dismissed because the First Amendment protects Fortnite as an expressive work; (2) Counts IV-V must be dismissed because the Complaint fails to allege the essential elements of these claims; (3) Count VI is barred by the Supreme Court of the United States decision in Dastar Corporation. v. Twentieth Century Fox Film Corporation, 539 U.S. 23 (2003); (4) Count VII must be dismissed because it is preempted by the Copyright Act; and (5) Count VIII must be dismissed because the Complaint fails to allege an essential element of the claim.
A. Right of Publicity and Privacy Claims (Counts I-III)
Pellegrino‘s right of publicity and privacy claims assert that Epic, by using Pellegrino‘s Signature Move in Fortnite, has misappropriated his likeness. Epic has moved to dismiss these claims on First Amendment grounds. As a preliminary matter, because Fortnite is a video game, the First Amendment protects it as an expressive work. See Hart v. Elec. Arts, Inc., 717 F.3d 141, 148 (3d Cir. 2013) (“[V]ideo games are protected as expressive speech under the First Amendment.” (citing Brown v. Entm‘t Merchants Ass‘n, 564 U.S. 786, 789 (2011))). Where a plaintiff alleges that an expressive work violates his right of publicity and privacy, we must determine whether the First Amendment protections afforded to the expressive work outweigh the plaintiff‘s publicity and privacy rights. See id. at 148-49. If they do, we must dismiss the plaintiff‘s publicity and privacy claims. See id. at 149-50.
In Hart v. Electronic Arts, Incorporated, the United States Court of Appeals for the Third Circuit directed that, in balancing First Amendment protections against publicity and privacy rights, we are to utilize the Transformative Use Test. Id. at 165 (concluding that “the Transformative Use Test is the proper analytical framework to apply to cases” balancing the First Amendment and publicity rights). Under the Transformative Use Test, the First Amendment protections enjoyed by an expressive work will outweigh a celebrity plaintiff‘s interests in his likeness if “‘the product containing [the] celebrity‘s likeness is so transformed that it has become primarily the defendant‘s own expression rather than the celebrity‘s likeness.‘” Id. at 160 (emphasis omitted) (quoting Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d 797, 809 (Cal. 2001)).
The Third Circuit applied the Transformative Use Test in Hart under circumstances similar to those in the case at hand. In Hart, a college football player, Ryan Hart, brought suit against the video game developer Electronic Arts (“EA“) for violating his right of publicity by using his
In the instant case, Epic argues that its use of Pellegrino‘s likeness in Fortnite (allowing Fortnite avatars to be equipped with the Signature Move a.k.a. the Phone It In emote)3 is so transformative that the likeness has become primarily Epic‘s own expression rather than Pellegrino‘s likeness. Applying the test as articulated in Hart, we observe that the Complaint does not allege that the Fortnite avatars equipped with the Phone It In emote, i.e., Pellegrino‘s likeness, share Pellegrino‘s appearance or biographical information. Indeed, the Complaint contains a picture of a Fortnite avatar equipped with the Phone It In emote, and the avatar does not bear a strong resemblance to Pellegrino. (See Compl. ¶ 4 & Ex. 1.) The Complaint also alleges that Fortnite players can customize their avatars with “new characters” and a variety of emotes mimicking celebrities other than Pellegrino. (Id. ¶¶ 30, 35.) The Complaint further alleges that the avatars fight in a battle royale and can execute emotes like Phone It In “while in the Fortnite Universe,” amidst “us[ing] weapons and violence to eliminate the competition” (id. ¶¶ 4, 29), whereas Pellegrino is alleged to be a musical performer who executes his Signature Move at musical performances (see id. ¶¶ 18-24). These allegations establish that the avatars in Fortnite do not share Pellegrino‘s identity nor do what Pellegrino does in real life. We therefore conclude that Epic‘s use of Pellegrino‘s likeness is sufficiently transformative under the Transformative Use Test to provide it with First Amendment protections that are not outweighed by Pellegrino‘s interests in his likeness. Accordingly, we grant Epic‘s Motion
B. Unjust Enrichment (Count IV)
Pellegrino‘s unjust enrichment claim asserts that Epic, by using Pellegrino‘s Signature Move in Fortnite, has been “unjustly enriched to the substantial detriment of Pellegrino.” (Compl. ¶ 76.) Epic has moved to dismiss Pellegrino‘s unjust enrichment for failing to state a claim upon which relief can be granted. To plead a claim for unjust enrichment under Pennsylvania law, “a [complaint] must allege facts sufficient to establish ‘benefits conferred on defendant by plaintiff, appreciation of such benefits by defendant, and acceptance and retention of such benefits under such circumstances that it would be inequitable for defendant to retain the benefit without payment of value.‘” Boring v. Google Inc., 362 F. App‘x 273, 281 (3d Cir. 2010) (quoting Lackner v. Glosser, 892 A.2d 21, 34 (Pa. Super. Ct. 2006)).
Epic argues that the Complaint does not plausibly allege an unjust enrichment claim because it does not contain allegations of a relationship between the parties that can be construed as contractual, i.e., that there were benefits conferred on defendant by plaintiff. As Epic contends, to plausibly allege an unjust enrichment claim, the Complaint must allege not just that Epic received a benefit unjustly, or that a benefit was unjustly conferred on Epic; rather, it must allege that Pellegrino directly conferred a benefit on Epic. See Gabriel v. Giant Eagle, Inc., 124 F. Supp. 3d 550, 568 (W.D. Pa. 2015) (emphasizing that “‘benefits conferred on defendant‘” must be made “’by Plaintiff‘” (quoting Sovereign Bank v. BJ‘s Wholesale Club, Inc., 533 F.3d 162, 180 (3d Cir. 2008))). “Plaintiff‘s actions are core to the cause of action.” Id. at 569. Indeed, the doctrine of unjust enrichment “‘does not apply simply because the defendant may have benefitted as a result of the actions of the Plaintiff.‘” Id. (quoting Ne. Fence & Iron Works, Inc. v. Murphy Quigley Co., 933 A.2d 664, 668-69 (2007)).
Here, the Complaint alleges that Epic “misappropriate[d] Pellegrino‘s likeness and the Signature Move” and that Pellegrino “d[id] not consent to or approve Epic‘s use of his likeness and the Signature Move for the Phone It In emote.” (Compl. ¶¶ 47-48.) Because Pellegrino alleges that Epic misappropriated his likeness without his permission, Pellegrino cannot have conferred anything on Epic. Accord Hart v. Elec. Arts, Inc., 740 F. Supp. 2d 658, 670 (D.N.J. 2010) (“[B]ecause Plaintiff alleges in his . . . Complaint that Defendant did not seek his permission before using his likeness . . . , Plaintiff clearly did not confer any benefit upon Defendant.“). Indeed, “[t]he entire thrust of [Pellegrino‘s] allegations is that [Epic] took something from [Pellegrino] without [his] consent, and should be held liable for having done so. There is, therefore, no basis for applying a quasi-contractual remedy [for unjust enrichment].” Boring v. Google, Inc., 598 F. Supp. 2d 695, 703 (W.D. Pa. 2009), aff‘d in part, rev‘d in part on other grounds, 362 F. App‘x 273 (3d Cir. 2010). We therefore conclude that the Complaint fails to state a claim for unjust enrichment upon which relief can be granted. Accordingly, we grant Epic‘s Motion to Dismiss as to Pellegrino‘s unjust enrichment claim in Count IV.
C. Unfair Competition (Count V)
Pellegrino‘s unfair competition claim asserts that Epic, by using Pellegrino‘s Signature Move in Fortnite, has misappropriated his likeness and trademark. Epic has moved to dismiss Pellegrino‘s
Epic argues that Pellegrino‘s unfair competition claim should be dismissed because the Complaint does not allege that Epic and Pellegrino are in competition, i.e., that they supply similar goods or services. Specifically, Epic maintains that the Complaint alleges that Epic is a video game publisher and that Pellegrino is a saxophone player, and thus, the parties supply different goods. Indeed, the Complaint alleges that Pellegrino is a saxophone player, a member of “two brass-based musical groups” and performs music at musical performances. (Compl. ¶¶ 15-24.) In contrast, the Complaint alleges that Epic develops and sells video games. (Id. ¶¶ 26-28.) Based on these allegations, it is plain that the parties do not supply similar goods or services. Pellegrino nevertheless maintains that the parties are competitors “in the field of selling dance performances” because Epic sells emotes that are “virtual dance performances.” (See Pl.‘s Opp. Mem. at 32-33.) Pellegrino, however, provides no case law, and we are aware of no case law, that would support such a broad construction of “competitor.” We therefore conclude that the Complaint does not plausibly allege that Epic and Pellegrino are competitors and thus, fails to state a claim for unfair competition upon which relief can be granted. Accordingly, we grant Epic‘s Motion to Dismiss as to Pellegrino‘s unfair competition claim in Count V.
D. False Designation of Origin and False Endorsement (Count VI)
Pellegrino‘s Lanham Act claim asserts that Epic, by using Pellegrino‘s Signature Move in Fortnite, has misappropriated his likeness and trademark. Epic has moved to dismiss Pellegrino‘s Lanham Act claim as barred by the United States Supreme Court‘s decision in Dastar Corporation v. Twentieth Century Fox Film Corporation, 539 U.S. 23 (2003). As a preliminary matter, Pellegrino appears to bring his Lanham Act claim under two theories. Under the first theory, the Complaint asserts a Lanham Act claim for false designation of origin. This claim is based on allegations that Epic committed trademark infringement by using “the Signature Move . . . to create the false impression that Epic created [it].” (Compl. ¶ 47.) Under the second theory, the Complaint asserts a Lanham Act claim for false endorsement. This claim is based on allegations that “Epic used Pellegrino‘s . . . Signature Move to generate significant income by . . . creating the false impression that Pellegrino endorsed Fortnite.” (Id. ¶ 86.)4
1. False Designation of Origin
A facially plausible false designation of origin claim under the Lanham Act requires allegations of fact that would establish that the defendant‘s use of the plaintiff‘s mark to identify its goods or services is “likely to create confusion concerning the origin of the goods or services.” Flynn v. Health Advocate, Inc., 169 F. App‘x 99, 100-01 (3d Cir. 2006) (emphasis added) (citing Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 472 (3d Cir. 1994)); see also
In Dastar, Twentieth Century Fox Film (“Fox“) brought a Lanham Act claim against Dastar Corporation (“Dastar“) claiming that Dastar copied and repackaged a television series for which Fox held the distribution rights. See 539 U.S. at 25-27. “[T]he gravamen of [Fox‘s] claim [was] that, in marketing and selling [Dastar‘s product] as its own product without acknowledging its nearly wholesale reliance on [Fox‘s work], Dastar ha[d] made a ‘false designation of origin . . . , which . . . [was] likely to cause confusion . . . as to the origin . . . of his or her goods.‘” Id. at 31 (eighth, tenth, and eleventh alterations in original). On the one hand, the Court said, “[i]f ‘origin’ refer[red] only to the manufacturer or producer of the physical ‘goods’ that are made available to the public . . . , Dastar was the origin,” and thus, Dastar would not be liable under the Lanham Act because Fox had not brought allegations that the public was confused as to whether Dastar was the origin of Dastar‘s physical goods. Id. On the other hand, if “‘origin’ include[d] the creator of the underlying work that Dastar copied, then . . . (perhaps Fox) was the origin of Dastar‘s product,” and thus, Dastar could be liable under the Lanham Act because Fox had brought allegations that the public was confused as to whether Dastar was the origin of the creative content underlying Dastar‘s physical goods. Id. The Dastar Court concluded that the phrase “origin of goods,” for purposes of the Lanham Act, refers to “the producer of the tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods,” the latter of which would fall under copyright law. 539 U.S. at 37. The Court stated that “[t]o hold otherwise would be akin to finding that [
Consequently, Dastar permits a cause of action for false designation of origin under the Lanham Act where a defendant‘s alleged use of a plaintiff‘s mark is likely to cause confusion as to “the producer of the tangible product sold in the marketplace,” but not where the defendant‘s alleged use is likely to cause confusion as to “the person . . . that originated the ideas or communications that ‘goods’ embody or contain.” 539 U.S. at 31-32.
Epic contends that Dastar bars Pellegrino‘s false designation of origin claim because the Complaint alleges that Epic created the false impression that Epic originated the Signature Move, which is the creative expression underlying Epic‘s Phone It In emote. According to Epic, Dastar established that this type of allegation is governed by the Copyright Act and thus, cannot be brought under the Lanham Act. We agree. The Complaint alleges the following: Pellegrino created the Signature Move, which was a product of “his own unique dancing style and his signature and original movements” (Compl. ¶ 17); Epic created the Phone It In emote by capturing and digitally copying Pellegrino executing the Signature Move (id. ¶¶ 51, 63); the Phone It In emote
These allegations establish that the Signature Move is the creative idea underlying Epic‘s tangible good, the Phone It In emote. Furthermore, the Complaint does not plausibly allege that there was or could be any confusion as to who produced the Phone It In emote. At best, the Complaint alleges that there is confusion over who originated the Signature Move embodied in the Phone It In emote because Epic does not “credit[] Pellegrino as the dance‘s creator and owner.” (Id. ¶ 47.) Under Dastar, a claim that concerns the origin of an idea embodied in a tangible good is governed by copyright law, not the Lanham Act. See Dastar, 539 U.S. at 32 (“[T]he phrase ‘origin of goods’ is in our view incapable of connoting the person or entity that originated the ideas or communications that ‘goods’ embody or contain. Such an extension would not only stretch the text, but it would be out of accord with the history and purpose of the Lanham Act and inconsistent with precedent.“); Maule v. Philadelphia Media Holdings, LLC, 710 F. Supp. 2d 511, 518-19 (E.D. Pa. 2008) (dismissing Lanham Act claim under Dastar because “[w]hile [the defendant] may not have been the originator of the photographs contained in its newspaper, it was the originator of the newspaper itself, the actual good being offered for sale to the public“; “the protections of the Lanham Act do not reach to the underlying expressions embodied in goods“). We therefore conclude that Dastar bars Pellegrino‘s claim for false designation of origin. Accordingly, we grant Epic‘s Motion to Dismiss as to Pellegrino‘s Lanham Act claim in Count VI to the extent that it is based on a false designation of origin theory.
2. False Endorsement
A facially plausible false endorsement claim under the Lanham Act must allege that “the 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.” Dille Family Tr. v. Nowlan Family Tr., 207 F. Supp. 3d 535, 546 (E.D. Pa. 2016) (emphasis added) (quoting Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1014 (3d Cir. 2008)); see also
Epic argues that Dastar not only bars Pellegrino‘s false designation of origin claim, but also bars his false endorsement claim. However, we do not agree that Dastar necessarily bars Pellegrino‘s false endorsement claim. Dastar specifically considered only a claim for false designation of origin based on allegations that Dastar‘s alleged use of Fox‘s mark was likely to cause confusion as to the origin of the creative expression underlying Dastar‘s goods, not a claim for false endorsement. 539 U.S. at 31. Thus, “nothing in the Supreme Court‘s opinion in Dastar bars prospective plaintiffs from bringing a false endorsement . . . claim under the Lanham Act.” Henley v. Devore, Civ. A. No. 09-481, 2009 WL 10697982, at *7 (C.D. Cal. Jul. 8, 2009). Moreover, courts have allowed a plaintiff‘s false endorsement claim to proceed notwithstanding Dastar where a complaint alleges that the defendant used the plaintiff‘s identity or likeness to deceive the public into believing that the plaintiff endorsed the defendant‘s product. See Beastie Boys v. Monster Energy Co., 66 F. Supp. 3d 424, 448 (S.D.N.Y. 2014) (noting that courts “have found viable false endorsement claims where, for example, [a product] bore a celebrity‘s
Here, the Complaint alleges the following: “Pellegrino has depicted his Signature Move . . . in front of hundreds of thousands of fans” and “[v]ideos . . . in which he displays his Signature Move have . . . garnered millions of views” (Compl. ¶ 18); thus, “Pellegrino is unanimously credited with creating the Signature Move and exploiting it as his personal mark to identify himself and his performances as a saxophone player” (id. ¶ 24); Epic “developed the Phone It In emote to intentionally mimic Pellegrino performing the Signature Move” (id. ¶ 42); Epic named the emote “‘Phone It In’ to ‘allude[] to Pellegrino‘s appearance in a Google Pixel 2 phone commercial in 2017” (id. ¶ 5); “[t]he reaction from many players worldwide was immediate recognition of the emote as embodying the Signature Move” (id. ¶ 41); and, as a result of Epic‘s alleged use of “Pellegrino‘s likeness and the Signature Move,” Epic has “creat[ed] the false impression that Pellegrino endorse[s] Fortnite” (id. ¶¶ 46-47). These allegations relate to Epic‘s use of Pellegrino‘s likeness and trademark to create the impression that Pellegrino endorses Fortnite and do not relate to the alleged confusion over the origin of the Signature Move. We therefore conclude that Pellegrino‘s false endorsement claim is distinct from his false designation of origin claim and thus, is not barred by Dastar.5 Accordingly, we deny Epic‘s Motion to Dismiss as to Pellegrino‘s Lanham Act claim in Count VI to the
E. Copyright Preemption (Count VII)
Pellegrino‘s state trademark infringement claim asserts that Epic, by using Pellegrino‘s Signature Move in Fortnite, has misappropriated his trademark. Epic has moved to dismiss Pellegrino‘s trademark infringement claim on copyright preemption grounds.
all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103 are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.
1. Subject Matter Requirement
“The subject matter requirement is satisfied if the claim applies to a work of authorship fixed in a tangible medium of expression and falling within the ambit of one of the categories of copyrightable works.” Briarpatch Ltd., L.P. v. Phoenix Pictures, Inc., 373 F.3d 296, 305 (2d Cir. 2004) (citing Nat‘l Basketball Ass‘n v. Motorola, Inc., 105 F.3d 841, 848-49 (2d Cir. 1997)). “A work . . . need only fit into one of the copyrightable categories in a broad sense.” Id. (citing Nat‘l Basketball Ass‘n, 105 F.3d at 848-50). This is because “the scope of the Copyright Act‘s subject matter is broader than the scope of the Act‘s protections.” Fedex Ground Package Sys., Inc. v. Applications Int‘l Corp., Civ. A. No. 03-1512, 2005 WL 2921633, at *2 (W.D. Pa. Nov. 4, 2005) (quoting Wrench LLC v. Taco Bell Corp., 256 F.3d 446, 455 (6th Cir. 2001)) (citing Nat‘l Basketball Ass‘n, 105 F.3d at 848; United States ex rel. Pamela Birge v. Bd. of Trs. of the Univ. of Ala., 104 F.3d 1453, 1463 (4th Cir. 1997); ProCD, Inc. v. Zeidenberg, 86 F.3d 1447, 1453 (7th Cir. 1996)); see also Nat‘l Basketball Ass‘n, 105 F.3d at 850 (noting that the “‘subject matter of copyright’ includes all works of a type covered by sections 102 and 103, even if federal law does not afford protection to them” (quoting ProCD, 86 F.3d at 1453)); but see Dunlap v. G&L Holding Grp., Inc., 381 F.3d 1285, 1296 (11th Cir. 2004) (stating that “the preemptive effect of the Copyright Act extends only to those elements substantively capable of receiving federal copyright protection“).
Epic argues that Pellegrino‘s Signature Move falls within the subject matter of copyright. Epic contends that because “choreographic works” are expressly a subject matter of copyright under
2. Equivalency Requirement
To determine whether Pellegrino‘s state trademark infringement claim asserts rights equivalent to those protected by the Copyright Act, we must determine whether the Complaint has alleged “‘an extra element‘” for his state claim “‘beyond mere copying, preparation of derivative works, performance, distribution or display’ such that the claim is ‘qualitatively different from . . . a copyright infringement claim.‘” Nicassio v. Viacom Int‘l, Inc., 309 F. Supp. 3d 381, 396 (W.D. Pa. 2018) (quoting Dun & Bradstreet Software Servs., Inc. v. Grace Consulting, Inc., 307 F.3d 197, 217 (3d Cir. 2002)), aff‘d, 776 F. App‘x 761 (3d Cir. 2019); Quadratec, Inc. v. Turn 5, Inc., Civ. A. No. 13-6384, 2015 WL 4876314, at *11 (E.D. Pa. Aug. 13, 2015). If the Complaint does not allege an extra element, federal law will preempt his state claim. Nicassio, 309 F. Supp. 3d at 396 (quotation omitted).7
Epic argues that because Pellegrino‘s state trademark infringement claim relies solely on allegations that Epic copied Pellegrino‘s Signature Move without his permission, i.e., unauthorized copying, the Complaint does not allege any extra element, and thus, the state claim is preempted. The following allegations support Pellegrino‘s state trademark infringement claim: Pellegrino created his Signature Move, which was a product of “his own unique dancing style and his signature and original movements” (Compl. ¶ 17); Epic “misappropriate[d] Pellegrino‘s highly popular [Signature Move],” by “copying and coding [his] dances and movements” without Pellegrino‘s “express or implied consent” and without compensation (id. ¶¶ 1, 34, 44); “Epic uses the Signature Move . . . to create the false impression that Epic created [the Signature Move]” (id. ¶ 47; see also id. ¶ 41); and “players . . . [are] executing the ‘Phone It In’ emote . . . without referencing the Signature
As Epic contends, these allegations do not describe conduct that goes “beyond mere copying, preparation of derivative works, performance, distribution or display.” Nicassio, 309 F. Supp. 3d at 397 (quotation omitted). Rather, the crux of these allegations is that Epic copied Pellegrino‘s intellectual property without his permission and claims its contents as its own. As a result, we conclude that the Complaint has not alleged an extra element that would save Pellegrino‘s state trademark infringement claim from preemption. See Info. Handling Servs., Inc. v. LRP Publ‘ns, Civ. A. No. 00-1859, 2000 WL 433998, at *2 (E.D. Pa. Apr. 18, 2000) (stating that “the vast weight of authority holds that state law misappropriation and unfair competition claims that are really claims for unauthorized copying are preempted” (citations omitted)); Daley v. Firetree, Ltd., Civ. A. No. 04-2213, 2006 WL 148879, at *4 (M.D. Pa. Jan. 19, 2006) (stating that when state unfair competition claims are based solely on allegations that “‘A’ copies ‘B‘s’ work without permission and claims it as ‘A‘s’ own,” they fail the extra element test and are thus preempted); Quadratec, 2015 WL 4876314, at *12 (dismissing state unfair competition claim as preempted by the Copyright Act where the claim was based on nothing more than allegations of “unauthorized copying“); Franklin v. X Gear 101, LLC, Civ. A. No. 17-6452, 2018 WL 3528731, at *15 (S.D.N.Y. July 23, 2018) (“Common law trademark infringement claims and unfair competition claims may be preempted where the claims are ‘grounded solely in the copying of a plaintiff‘s protected expression.‘” (quoting Kregos v. Associated Press, 3 F.3d 656, 666 (2d Cir. 1993))).8 We therefore further conclude that Pellegrino‘s state trademark infringement claim
F. Trademark Dilution (Count VIII)
Pellegrino‘s Lanham Act claim for trademark dilution asserts that Epic, by using Pellegrino‘s Signature Move in Fortnite, has “diluted the distinctive quality” of his trademark. (Compl. ¶ 103.) Epic has moved to dismiss Pellegrino‘s trademark dilution claim for failing to state a claim upon which relief can be granted, arguing that the Complaint fails to allege a necessary element of this claim. To state a claim for trademark dilution under the Federal Dilution Act (“TDRA“), a complaint must plausibly allege that: “(1) the plaintiff is the owner of a mark that qualifies as a ‘famous’ mark in light of the totality of the eight factors listed in [
Epic argues that the Complaint fails to state a claim for trademark dilution because it does not plausibly allege facts that establish that Epic made trademark use of Pellegrino‘s Signature Move—that Epic used the Signature Move as Epic‘s own trademark to identify its own good, Fortnite. As an initial matter, the parties do not dispute that a trademark dilution claim requires that a complaint plausibly allege, in connection with the second element of the claim, that a defendant made trademark use of a plaintiff‘s mark, i.e., that the defendant used the plaintiff‘s mark as its own mark to identify its own goods or services. See 4 McCarthy on Trademarks and Unfair Competition § 24:122 (5th ed.) (stating that a complaint must allege that the defendant used the plaintiff‘s trademark “as its own trademark,” to identify the defendant‘s “own goods or services“); Lions Gate, 170 F. Supp. 3d at 1270 (dismissing trademark dilution claim because the complaint failed to allege that “Defendants used the allegedly famous mark as Defendants’ own mark or to identify Defendants’ services“); Tiffany (NJ) Inc. v. eBay, Inc., 576 F. Supp. 2d 463, 524 (S.D.N.Y. 2008) (finding
Significantly, Pellegrino concedes that the Complaint does not allege that Epic used his Signature Move as Epic‘s own trademark to identify Fortnite. (See Pl.‘s Opp. Mem. at 32.) Rather, he argues that the Complaint alleges that Epic made trademark use of his Signature Move by using it to identify the Phone It In emote. At the same time, the Complaint alleges that the “‘Phone It In emote’ is identical to Pellegrino‘s Signature Move.” (Compl. ¶ 41 (emphasis added).) Pellegrino‘s position is therefore “tantamount to saying that [the] product itself—in this case, the [Signature Move]—can serve as its own trademark.” EMI Catalogue P‘ship v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 63 (2d Cir. 2000). However, the law is clear that a trademark cannot serve as a trademark for itself. See RDF Media Ltd. v. Fox Broad. Co., 372 F. Supp. 2d 556, 563 (C.D. Cal. 2005) (concluding that “‘the product itself . . . can[not] serve as its own trademark‘” (quoting EMI Catalogue, 228 F.3d at 63); Id. at 64 (“Concluding that a song can serve as an identifying mark of the song itself would stretch the definition of trademark . . . too far and give trademark law a role in protecting the very essence of the song, an unwarranted extension into an area already protected by copyright law.“); Whitehead v. CBS/Viacom, Inc., 315 F. Supp. 2d 1, 13 (D.D.C. 2004) (“[T]he Lanham Act protects the distinctive source-distinguishing mark, not the work as a whole.“). Therefore, under these circumstances, we conclude that the Complaint does not plausibly allege that Epic made trademark use of the Signature Move as is required to state a cognizable Lanham Act claim for trademark dilution. Accordingly, we grant Epic‘s Motion to Dismiss as to Pellegrino‘s Lanham Act claim for trademark dilution in Count VIII.
IV. CONCLUSION
For the reasons stated above, we grant Epic‘s Motion to Dismiss as to Counts I-V, Counts VII-VIII, and Count VI insofar as it based on a false designation of origin theory. However, we deny Epic‘s Motion as to Count VI insofar as Count VI is based on a false endorsement theory, and we therefore permit Pellegrino to proceed on this claim alone.
Pellegrino has requested that, in the event that we dismiss any claims, we grant him leave to amend those claims. ”
In this case, we conclude that amendment of the claims that we are dismissing would be futile because Counts I-III are barred by the First Amendment, Count VI is barred by Dastar insofar as it is based on a false designation of origin theory, Count VII is preempted by the Copyright Act, and the Complaint fails to allege facts that are necessary to support the claims in Counts IV, V, and VIII and additional allegations of fact would not save these claims. We therefore deny Pellegrino‘s request for leave to amend and dismiss these claims with prejudice.
An appropriate Order follows.
BY THE COURT:
/s/ John R. Padova
John R. Padova, J.