Copyright v. Trademark - Maryland District Court Applies Dastar in Dismissing Trademark Claims in yet another Fortnite Dance Case - Brantley v. Epic Games PART II
Brantley v. Epic Games, Inc., No. 8:19-CV-594-PWG, 2020 WL 2794016, at *12 (D. Md. May 29, 2020)
This post is a Part II/II of a discussion of Brantley v. Epic Games. Part I discusses the Plaintiffs' Copyright claims, Part II addresses Plaintiffs Trademark claims.
Plaintiffs Jaylen Brantley and Jared Nickens bring this action against Defendant Epic Games, Inc. for the alleged unauthorized appropriation of the dance the “Running Man” that they allegedly created, named, and popularized. Plaintiffs claim that Epic Games intentionally copied the movements of the “Running Man” dance and incorporated them as a feature of its highly popular online video game Fortnite. They bring eight causes of action under common law and the federal Lanham Act for invasion of the right of privacy/publicity, unfair competition, unjust enrichment, trademark infringement, trademark dilution, and false designation of origin. Plaintiffs seek both compensatory and injunctive relief. Epic Games now moves to dismiss the claims against it.
Epic Games argues that the Copyright Act preempts Brantley and Nickens’ claims for invasion of the right of privacy/publicity (Count I), common law unfair competition (Count III) and unjust enrichment (Count IV). Similarly, Epic Games argues that Brantley and Nickens’ claims for Lanham Act unfair competition (Count II) and false designation of origin (Count VII) are precluded by the Copyright Act. Finally, Epic Games argues that Plaintiffs failed to plausibly allege a valid trademark for their claims for Lanham Act trademark infringement (Count V), common law trademark infringement (Count VI), and Lanham Act trademark dilution (Count VII).
Brantley and Nickens bring Lanham Act and trademark-related claims for unfair competition (Count II), trademark infringement (Count V), trademark dilution (Count VII) and false designation of origin (Count VII). Plaintiffs also add a common law trademark claim (Count VI). For the Lanham Act unfair competition claim, Plaintiffs do not point to a particular section of the Lanham Act, but cite generally to 15 U.S.C. § 1051 et seq. However, based on their allegations of misappropriation and confusion by the public in support of this claim, Am. Compl. ¶¶ 45–46, it will be evaluated under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Cf. Dastar Corporation v. Twentieth Century Fox Film Corporation, 539 U.S. 23, 32 (2003) (evaluating Lanham Act unfair competition claim under Section 43(a)); Mays & Assocs., Inc. v. Euler, 370 F. Supp. 2d 362 (D. Md. 2005) (same); Slep-Tone Entm't Corp. v. Wired for Sound Karaoke & DJ Servs., LLC, 845 F.3d 1246, 1250 (9th Cir. 2017) (same).
Plaintiffs remaining Lanham Act claims are also brought under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). That section provides as follows:
15 U.S.C. § 1125(a).
For the reasons discussed below, Plaintiffs’ Lanham Act unfair competition and false designation of origin claims are dismissed because the allegations are properly the subject of copyright, not Lanham Act, protection. The Lanham Act trademark infringement and trademark dilution claims are dismissed because Plaintiffs fail to allege a trademark. Plaintiffs’ common law trademark claim fails for the same reason.
I begin with the Lanham Act unfair competition and false designation of origin claims. As the basis for the unfair competition claim, Plaintiffs allege that Defendants “exploit[ed] and misappropriate[ed] Plaintiffs’ likenesses through the improper use of the Running Man” and that Defendants’ use of the Running Man “has caused and will continue to cause confusion and mistake by leading the public to erroneously associate the Emote offered by Epic with the Running Man, as executed and associated with Plaintiffs, as exemplified in their online video.” As to the false designation of origin, claim, Plaintiffs simply reincorporate their prior allegations and allege that “Defendants conduct constitutes a false designation, description or representation in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).”
Although the Copyright Act does not expressly preempt the Lanham Act as another federal statute, similar principles apply based on the areas that Congress designated for each. See Lions Gate Entm't Inc. v. TD Ameritrade Servs. Co., Inc., 170 F. Supp. 3d 1249, 1265 (C.D. Cal. 2016) (“The same kind of [copyright] preemption principle applies for federal Lanham Act causes of action as for state and common-law causes of action.”) In Dastar Corporation v. Twentieth Century Fox Film Corporation, the Supreme Court discussed the delineation between Lanham Act and copyright claims. The Court explained that “origin of goods” provision of § 43(a) of the Lanham Act was designed to prevent consumer confusion as to the source of goods and not “originality or creativity” which is protected by copyright and patent law. Dastar Corporation v. Twentieth Century Fox Film Corporation, 539 U.S. 23, 32 (2003). The Court held that the phrase “origin of goods” refers only 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.” Id. Dastar therefore instructs that causes of action under § 43(a) of the Lanham Act based on misappropriation and confusion can proceed only where there is confusion as to “the producer of the [ ] product sold in the marketplace” not the “person or entity that originated the ideas or communications that ‘goods [or services]’ embody or contain.” Id. at 32.
Following Dastar, courts have dismissed Lanham Act claims where the allegations pertain to copying ideas or concepts. For example, as particularly relevant here, the court in Pellegrino dismissed Plaintiff’s false designation of origin claim under the Lanham Act based on Epic allegedly copying Plaintiff’s signature move to create the “Phone It In” emote. The court explained:
Pellegrino v. Epic Games, Inc., No. CV 19-1806, 2020 WL 1531867, at *6 (E.D. Pa. Mar. 31, 2020). See also Mays & Assocs., Inc. v. Euler, 370 F. Supp. 2d 362 (D. Md. 2005) (dismissing unfair competition claim under § 43(a) of the Lanham Act where images posted on website were not for sale and distribution and embodied only creative work); Slep-Tone Entm't Corp. v. Wired for Sound Karaoke & DJ Servs., LLC, 845 F.3d 1246, 1250 (9th Cir. 2017) (affirming dismissal of Lanham Act § 43(a) claims for unfair competition and trademark infringement where Defendant did not use Plaintiff’s marks to sell its karaoke files, but allegedly used the content of Plaintiff’s karaoke tracks without authorization); Lions Gate Entm't Inc. v. TD Ameritrade Servs. Co.,170 F. Supp. 3d 1249 (C.D. Cal 2016) (dismissing Lanham Act § 43(a) claims for unfair competition and false designation of origin, finding allegations Defendant’s use of elements from the film Dirty Dancing including the famous “dance lift,” did not cause confusion over source of tangible goods offered for sale, but only the ideas and concepts embodied in those goods).
Here, like in Pellegrino, Plaintiffs do not allege facts that suggest there is confusion regarding the producer of a tangible product sold in the marketplace. At best the allegations indicate that each Plaintiff might be a “person or entity that originated the ideas or communications that ‘goods [or services]’ embody or contain,” but this fails to establish a Lanham Act claim. Dastar, 539 U.S. at 32. Therefore, these claims are dismissed.
Next, I address Plaintiffs’ trademark infringement and trademark dilution claims under the Lanham Act. These claims are dismissed because Plaintiffs fail to allege that the Running Man dance is a valid trademark and it does not identify a good or service. Federal trademark law defines the term “trademark” to include any “word, name, symbol, or device, or any combination thereof” that is used to identify and distinguish unique goods or services. 15 U.S.C. § 1127. Accordingly, there are two requirements for a trademark, first that the object in dispute meets the definition of a “word, name, symbol, or device” and second, that it be used to identify and distinguish a unique good or service. Additionally, trademarks themselves are not goods or services, but rather “instruments to identify goods and services.” Radiance Found., Inc. v. N.A.A.C.P., 786 F.3d 316, 327 (4th Cir. 2015).
Plaintiffs allege that their trademark is the Running Man and that it has become distinct and immediately recognizable. This trademark is allegedly based on Plaintiffs’ “likeness.” To the extent this is more than a conclusory allegation, as a general rule images and likenesses do not function as trademarks. ETW Corp. v. Jireh Publ'g, 322 F. 3d 915, at 922-923 (6th Cir. 2003) (“Images and likenesses [ ] are not protectable as a trademark because they do not perform the trademark function of designation.”).
Moreover, Brantley and Nickens have not adequately alleged how the Running Man dance is used to identify a unique good or service. In its brief in opposition, Brantley and Nickens argue that the Running Man dance is a trademark for performances by Plaintiffs. This argument is too clever by half. The Running Man dance cannot be a trademark for performances of the Running Man dance. See Radiance Found., Inc., 786 F.3d 316, 327 (4th Cir. 2015) (explaining that a trademark cannot be in itself a “good[ ] or service,” but is rather an “instrument to identify a good[ ] [or] service[ ].”) Therefore, Brantley and Nickens’ Lanham Act trademark infringement and trademark dilution and common law trademark infringement claims are dismissed for failure to allege a trademark.
Finally, Plaintiffs allege as part of their Lanham Act unfair competition and trademark infringement claims that Defendants actions have “creat[ed] the false impression that Plaintiffs endorsed Fortnite.” Although Plaintiffs did not plead this as a separate cause of action, I address it as an alternative theory of liability.
“In an action for false endorsement, the plaintiff must prove the likelihood of consumer confusion as to the origin, approval or endorsement of the product.” Comins v. Discovery Commc'ns, Inc., 200 F. Supp. 2d 512, 522 (D. Md. 2002) (citing Waits v. Frito–Lay, Inc., 978 F.2d 1093, 1110 n.9 (9th Cir. 1992)). Several other courts have dismissed false endorsement claims based on the principles of Dastar. For example, in Rudovsky v. W. Publ'g. Corp., No. 09 Civ. 00727, 2010 WL 2804844, at *1–2 (E.D. Pa. July 15, 2010), the court held that claims under the Lanham act for false endorsement were precluded by Dastar. In that case, plaintiffs were two law professors that sued West publishing company after it published a supplement to a treatise authored by the plaintiffs without their knowledge and with their names listed as authors. Id. The Rudovsky court explained that allowing a false endorsement claim would lead to the very conflict between Lanham Act and copyright liability that the Supreme Court was seeking to avoid in Dastar:
The Court held that:
In other words, while Dastar dealt with an unfair competition claim under the Lanham Act, the same principles applied to claims for false endorsement. See also Romantics v. Activision Publ'g, Inc., 532 F. Supp. 2d 884, 889 (E.D. Mich. 2008) (false endorsement claim for use of song in video game barred by Dastar); Lions Gate Entm't v. TD Ameritrade Servs. Co., Inc., 170 F. Supp. 3d 1249, 1266 (C.D. Cal 2016) (false association claim based on “dance lift” barred by Dastar).
In Pellegrino, the court declined to dismiss a claim for false endorsement, finding that such claims were not necessarily barred by Dastar. In that case, the court distinguished Rudokvosky and found that Plaintiff’s allegations that Epic Games used his likeness did not depend on the authorship or origin of his signature move and therefore stated a distinct claim for false endorsement. Pellegrino v. Epic Games, Inc., No. CV 19-1806, 2020 WL 1531867, at *7 n.5 (E.D. Pa. Mar. 31, 2020).
Even if the allegations in that case supported such a distinction, here they do not. Plaintiffs allegations regarding false endorsement are based on copying the Running Man dance and the conclusory allegation that Epic Games used their likeness. A false endorsement claim based on these allegations would lead to the type of conflict between the Lanham Act and the copyright law that the Supreme Court sought to avoid in Dastar. Therefore, Plaintiffs’ Lanham Act claims based on false endorsement are dismissed.
Plaintiffs seek to place the same square peg into eight round holes in search of a cause of action against Epic Games for its use of the Running Man dance in its game Fortnite. But Plaintiffs’ claims that Epic Games copied the dance do not support any of their theories. Plaintiffs’ common law causes of action for invasion of the right of privacy/publicity, unfair competition, and unjust enrichment are dismissed based on preemption under the Copyright Act. Similarly, their claims for unfair competition and false designation of origin under the Lanham Act are dismissed because their allegations are in the domain of copyright law and not the Lanham Act. Finally, Plaintiffs remaining Lanham Act and common law trademark claims are dismissed for failure to plausibly allege a valid trademark. Because Plaintiffs already amended their complaint once in light of these deficiencies, further amendment would be futile and Plaintiffs’ claims are dismissed with prejudice.
This post is a Part II/II of a discussion of Brantley v. Epic Games. Part I discusses the Plaintiffs' Copyright claims, Part II addresses Plaintiffs Trademark claims.
Topic: Copyright Preemption of the Lanham Act, Trademark Infringement, Dilution, False Endorsement, Dastar
Takeaways:
- Alleging confusion as to the "person or entity that originated the ideas or communications that ‘goods [or services]’ embody or contain" rather than confusion as to the "producer of the product sold" fails to establish a Lanham Act claim under Dastar.
- A trademark must identify a unique good or service, therefore a trademark cannot be in itself a good or service, (i.e. the Running Man Dance cannot be a trademark for performances of the Running Man Dance.)
- Unlike the other Fortnite dance case, Pellegrino, Plaintiffs claim of false endorsement based on conclusory allegation would create a conflict between the Lanham Act and copyright law as contemplated by Dastar.
Plaintiffs Jaylen Brantley and Jared Nickens bring this action against Defendant Epic Games, Inc. for the alleged unauthorized appropriation of the dance the “Running Man” that they allegedly created, named, and popularized. Plaintiffs claim that Epic Games intentionally copied the movements of the “Running Man” dance and incorporated them as a feature of its highly popular online video game Fortnite. They bring eight causes of action under common law and the federal Lanham Act for invasion of the right of privacy/publicity, unfair competition, unjust enrichment, trademark infringement, trademark dilution, and false designation of origin. Plaintiffs seek both compensatory and injunctive relief. Epic Games now moves to dismiss the claims against it.
For a more in-depth discussion of the background of the "Running Man" dance, see Part I.
II. Plaintiffs Fail to Adequately Allege Lanham Act and Common Law Trademark Claims
Brantley and Nickens bring Lanham Act and trademark-related claims for unfair competition (Count II), trademark infringement (Count V), trademark dilution (Count VII) and false designation of origin (Count VII). Plaintiffs also add a common law trademark claim (Count VI). For the Lanham Act unfair competition claim, Plaintiffs do not point to a particular section of the Lanham Act, but cite generally to 15 U.S.C. § 1051 et seq. However, based on their allegations of misappropriation and confusion by the public in support of this claim, Am. Compl. ¶¶ 45–46, it will be evaluated under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Cf. Dastar Corporation v. Twentieth Century Fox Film Corporation, 539 U.S. 23, 32 (2003) (evaluating Lanham Act unfair competition claim under Section 43(a)); Mays & Assocs., Inc. v. Euler, 370 F. Supp. 2d 362 (D. Md. 2005) (same); Slep-Tone Entm't Corp. v. Wired for Sound Karaoke & DJ Servs., LLC, 845 F.3d 1246, 1250 (9th Cir. 2017) (same).
Plaintiffs remaining Lanham Act claims are also brought under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). That section provides as follows:
(a) Civil action
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
15 U.S.C. § 1125(a).
For the reasons discussed below, Plaintiffs’ Lanham Act unfair competition and false designation of origin claims are dismissed because the allegations are properly the subject of copyright, not Lanham Act, protection. The Lanham Act trademark infringement and trademark dilution claims are dismissed because Plaintiffs fail to allege a trademark. Plaintiffs’ common law trademark claim fails for the same reason.
I begin with the Lanham Act unfair competition and false designation of origin claims. As the basis for the unfair competition claim, Plaintiffs allege that Defendants “exploit[ed] and misappropriate[ed] Plaintiffs’ likenesses through the improper use of the Running Man” and that Defendants’ use of the Running Man “has caused and will continue to cause confusion and mistake by leading the public to erroneously associate the Emote offered by Epic with the Running Man, as executed and associated with Plaintiffs, as exemplified in their online video.” As to the false designation of origin, claim, Plaintiffs simply reincorporate their prior allegations and allege that “Defendants conduct constitutes a false designation, description or representation in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).”
Although the Copyright Act does not expressly preempt the Lanham Act as another federal statute, similar principles apply based on the areas that Congress designated for each. See Lions Gate Entm't Inc. v. TD Ameritrade Servs. Co., Inc., 170 F. Supp. 3d 1249, 1265 (C.D. Cal. 2016) (“The same kind of [copyright] preemption principle applies for federal Lanham Act causes of action as for state and common-law causes of action.”) In Dastar Corporation v. Twentieth Century Fox Film Corporation, the Supreme Court discussed the delineation between Lanham Act and copyright claims. The Court explained that “origin of goods” provision of § 43(a) of the Lanham Act was designed to prevent consumer confusion as to the source of goods and not “originality or creativity” which is protected by copyright and patent law. Dastar Corporation v. Twentieth Century Fox Film Corporation, 539 U.S. 23, 32 (2003). The Court held that the phrase “origin of goods” refers only 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.” Id. Dastar therefore instructs that causes of action under § 43(a) of the Lanham Act based on misappropriation and confusion can proceed only where there is confusion as to “the producer of the [ ] product sold in the marketplace” not the “person or entity that originated the ideas or communications that ‘goods [or services]’ embody or contain.” Id. at 32.
Following Dastar, courts have dismissed Lanham Act claims where the allegations pertain to copying ideas or concepts. For example, as particularly relevant here, the court in Pellegrino dismissed Plaintiff’s false designation of origin claim under the Lanham Act based on Epic allegedly copying Plaintiff’s signature move to create the “Phone It In” emote. The court explained:
The[ ] 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.
Pellegrino v. Epic Games, Inc., No. CV 19-1806, 2020 WL 1531867, at *6 (E.D. Pa. Mar. 31, 2020). See also Mays & Assocs., Inc. v. Euler, 370 F. Supp. 2d 362 (D. Md. 2005) (dismissing unfair competition claim under § 43(a) of the Lanham Act where images posted on website were not for sale and distribution and embodied only creative work); Slep-Tone Entm't Corp. v. Wired for Sound Karaoke & DJ Servs., LLC, 845 F.3d 1246, 1250 (9th Cir. 2017) (affirming dismissal of Lanham Act § 43(a) claims for unfair competition and trademark infringement where Defendant did not use Plaintiff’s marks to sell its karaoke files, but allegedly used the content of Plaintiff’s karaoke tracks without authorization); Lions Gate Entm't Inc. v. TD Ameritrade Servs. Co.,170 F. Supp. 3d 1249 (C.D. Cal 2016) (dismissing Lanham Act § 43(a) claims for unfair competition and false designation of origin, finding allegations Defendant’s use of elements from the film Dirty Dancing including the famous “dance lift,” did not cause confusion over source of tangible goods offered for sale, but only the ideas and concepts embodied in those goods).
Here, like in Pellegrino, Plaintiffs do not allege facts that suggest there is confusion regarding the producer of a tangible product sold in the marketplace. At best the allegations indicate that each Plaintiff might be a “person or entity that originated the ideas or communications that ‘goods [or services]’ embody or contain,” but this fails to establish a Lanham Act claim. Dastar, 539 U.S. at 32. Therefore, these claims are dismissed.
Next, I address Plaintiffs’ trademark infringement and trademark dilution claims under the Lanham Act. These claims are dismissed because Plaintiffs fail to allege that the Running Man dance is a valid trademark and it does not identify a good or service. Federal trademark law defines the term “trademark” to include any “word, name, symbol, or device, or any combination thereof” that is used to identify and distinguish unique goods or services. 15 U.S.C. § 1127. Accordingly, there are two requirements for a trademark, first that the object in dispute meets the definition of a “word, name, symbol, or device” and second, that it be used to identify and distinguish a unique good or service. Additionally, trademarks themselves are not goods or services, but rather “instruments to identify goods and services.” Radiance Found., Inc. v. N.A.A.C.P., 786 F.3d 316, 327 (4th Cir. 2015).
Plaintiffs allege that their trademark is the Running Man and that it has become distinct and immediately recognizable. This trademark is allegedly based on Plaintiffs’ “likeness.” To the extent this is more than a conclusory allegation, as a general rule images and likenesses do not function as trademarks. ETW Corp. v. Jireh Publ'g, 322 F. 3d 915, at 922-923 (6th Cir. 2003) (“Images and likenesses [ ] are not protectable as a trademark because they do not perform the trademark function of designation.”).
Moreover, Brantley and Nickens have not adequately alleged how the Running Man dance is used to identify a unique good or service. In its brief in opposition, Brantley and Nickens argue that the Running Man dance is a trademark for performances by Plaintiffs. This argument is too clever by half. The Running Man dance cannot be a trademark for performances of the Running Man dance. See Radiance Found., Inc., 786 F.3d 316, 327 (4th Cir. 2015) (explaining that a trademark cannot be in itself a “good[ ] or service,” but is rather an “instrument to identify a good[ ] [or] service[ ].”) Therefore, Brantley and Nickens’ Lanham Act trademark infringement and trademark dilution and common law trademark infringement claims are dismissed for failure to allege a trademark.
Finally, Plaintiffs allege as part of their Lanham Act unfair competition and trademark infringement claims that Defendants actions have “creat[ed] the false impression that Plaintiffs endorsed Fortnite.” Although Plaintiffs did not plead this as a separate cause of action, I address it as an alternative theory of liability.
“In an action for false endorsement, the plaintiff must prove the likelihood of consumer confusion as to the origin, approval or endorsement of the product.” Comins v. Discovery Commc'ns, Inc., 200 F. Supp. 2d 512, 522 (D. Md. 2002) (citing Waits v. Frito–Lay, Inc., 978 F.2d 1093, 1110 n.9 (9th Cir. 1992)). Several other courts have dismissed false endorsement claims based on the principles of Dastar. For example, in Rudovsky v. W. Publ'g. Corp., No. 09 Civ. 00727, 2010 WL 2804844, at *1–2 (E.D. Pa. July 15, 2010), the court held that claims under the Lanham act for false endorsement were precluded by Dastar. In that case, plaintiffs were two law professors that sued West publishing company after it published a supplement to a treatise authored by the plaintiffs without their knowledge and with their names listed as authors. Id. The Rudovsky court explained that allowing a false endorsement claim would lead to the very conflict between Lanham Act and copyright liability that the Supreme Court was seeking to avoid in Dastar:
[T]o accord “special treatment” to “communicative products” - that is, to read the word “origin” in the Lanham Act to cover the authors of communicative products - would “cause[ ] the Lanham Act to conflict with the law of copyright, which addresses that subject specifically.” [Dastar, 539 U.S. at 33.]
The Court held that:
Another practical difficulty of adopting a special definition of “origin” for communicative products is that it places the manufacturers of those products in a difficult position. On the one hand, they would face Lanham Act liability for failing to credit the creator of a work on which their lawful copies are based; and on the other hand they could face Lanham Act liability for crediting the creator if that should be regarded as implying the creator's “sponsorship or approval” of the copy, 15 U.S.C. § 1125(a)(1)(A). The defendants here would be placed in precisely this position if the Lanham Act claims, particularly the false endorsement claim, were permitted to go forward.
In other words, while Dastar dealt with an unfair competition claim under the Lanham Act, the same principles applied to claims for false endorsement. See also Romantics v. Activision Publ'g, Inc., 532 F. Supp. 2d 884, 889 (E.D. Mich. 2008) (false endorsement claim for use of song in video game barred by Dastar); Lions Gate Entm't v. TD Ameritrade Servs. Co., Inc., 170 F. Supp. 3d 1249, 1266 (C.D. Cal 2016) (false association claim based on “dance lift” barred by Dastar).
In Pellegrino, the court declined to dismiss a claim for false endorsement, finding that such claims were not necessarily barred by Dastar. In that case, the court distinguished Rudokvosky and found that Plaintiff’s allegations that Epic Games used his likeness did not depend on the authorship or origin of his signature move and therefore stated a distinct claim for false endorsement. Pellegrino v. Epic Games, Inc., No. CV 19-1806, 2020 WL 1531867, at *7 n.5 (E.D. Pa. Mar. 31, 2020).
Even if the allegations in that case supported such a distinction, here they do not. Plaintiffs allegations regarding false endorsement are based on copying the Running Man dance and the conclusory allegation that Epic Games used their likeness. A false endorsement claim based on these allegations would lead to the type of conflict between the Lanham Act and the copyright law that the Supreme Court sought to avoid in Dastar. Therefore, Plaintiffs’ Lanham Act claims based on false endorsement are dismissed.
Conclusion
Plaintiffs seek to place the same square peg into eight round holes in search of a cause of action against Epic Games for its use of the Running Man dance in its game Fortnite. But Plaintiffs’ claims that Epic Games copied the dance do not support any of their theories. Plaintiffs’ common law causes of action for invasion of the right of privacy/publicity, unfair competition, and unjust enrichment are dismissed based on preemption under the Copyright Act. Similarly, their claims for unfair competition and false designation of origin under the Lanham Act are dismissed because their allegations are in the domain of copyright law and not the Lanham Act. Finally, Plaintiffs remaining Lanham Act and common law trademark claims are dismissed for failure to plausibly allege a valid trademark. Because Plaintiffs already amended their complaint once in light of these deficiencies, further amendment would be futile and Plaintiffs’ claims are dismissed with prejudice.
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