“Fortnite” IP Case Mostly Dismissed

The Pennsylvania Eastern District Court has issued a memorandum and opinion in musician Leo Pellegrino’s lawsuit against Epic Games. He alleged that Epic Games “misappropriated his likeness and trademark” for his “Signature Move” by depicting it in the video game “Fortnite” Pellegrino stated this violated his “right to publicity and infringed and diluted his trademark.” Epic Games filed a motion to dismiss, which the court partially granted.

Pellegrino “is a professional baritone saxophone player and member of the ‘brass house’ group ‘Too Many Zooz.’” Pellegrino has created a “Signature Move, a series of movements that express his own unique dancing style,” which he incorporates into his musical performances. Through performing this in front of audiences, it has become popular and linked with his identity, he alleges.

In the defendant’s video game, “Fortnite Battle Royale,” players can customize their avatars, by purchasing “emotes” which “enable the Fortnite avatars to perform dances or movements.” The plaintiff claims that Epic makes the “emotes by copying and coding dances and movements directly from popular videos, movies, and television shows without consent.” Pellegrino alleges the “Phone It In” emote “is identical to [Plaintiff] Pellegrino’s Signature Move.” Further, the “‘Phone It In’ is a reference ‘to Pellegrino’s appearance in a Google Pixel 2 phone commercial in 2017.”

Plaintiff alleges that “[m]any Fortnite players worldwide immediately recognized the Phone It In emote in Fortnite as Pellegrino’s Signature Move…Epic thus uses Pellegrino’s Signature Move embodied in the Phone It In emote to create the false impression that Pellegrino is endorsing the game. Other players, however, have the false impression that the Phone It In emote was Epic’s original creation because Epic does not credit Pellegrino as the Signature Move’s creator and owner.”

Epic Games has sought dismissal on First Amendment grounds, stating that because Fortnite is a video game it is an expressive work and protected by the First Amendment. Epic claims that “its use of Pellegrino’s likeness in Fortnite…is so transformative that the likeness has become primarily Epic’s own expression rather than Pellegrino’s likeness.”

The court states that the complaint does not state that the avatars with the Phone It In emote “share Pellegrino’s appearance or biographical information.” Additionally, players “can customize their avatars with ‘new characters’ and a variety of emotes mimicking celebrities other than Pellegrino.” The context that the move is performed differs from each party’s use; in the game, it occurs within a battlefield, as opposed to a musical performance. The court agreed with Epid, stating that the “allegations establish that the avatars in Fortnite do not share Pellegrino’s identity nor do what Pellegrino does in real like. We, therefore, conclude that Epic’s use of Pellegrino’s likeness is sufficiently transformative …to provide it with First Amendment protections.” As a result, the Court grants Epic’s motion to dismiss in relation to Pellegrino’s right to publicity and privacy claims because the First Amendment prevents these claims.

Pellegrino’s false endorsement claim survived dismissal. Pellegrino has performed his Signature Move in front of thousands of fans and in videos, thus he 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.” Meanwhile, Epic developed the emote that copies this Signature Move, and the emote name alludes to its originator and his likeness. This could create the false impression that Epic endorses Fortnite and the emote. The court stated that this false endorsement claim is separate from the false designation of origin claims.

Under the court’s ruling, Pellegrino may only proceed as to the false endorsement claim. The plaintiff is represented by Pierce Bainbridge Beck Price & Hecht, while the defendant is represented by Kirkland & Ellis.