Judge Allows Single Claim in Subway Musician’s Suit Over ‘Fortnite’ Dance Moves

Maybe it's the fact that many judges are stuck at home and bored just like the rest of us during this viral pandemic, but a flurry of legal decisions continues to drip on the more diverting side of intellectual property. From "Stairway to Heaven" to tattoos to dance routines now, the nation's judiciary is cracking the vexing mysteries of our times. At least, the nonmedical ones.

Leo Pellegrino, a professional baritone saxophone player, was among the throngs of individuals who filed suit against Epic Games for allegedly lifting dance moves for Fortnite. On Tuesday, he became the one who provoked a judge into a 25-page decision. Epic Games beats Pellegrino's claim of misappropriating his likeness. The game maker similarly triumphs over a claim of unjust enrichment, a claim of unfair competition, a claim of false designation of origin, a claim of infringing state trademarks and a claim of diluting trademarks. But Pellegrino does survive on one claim. Skip to the last few paragraphs for that reveal.

First, a fuller account of the losses for Pellegrino, a member of the group Too Many Zooz.

Pellegrino (known professionally as Leo P) sought to protect his signature move of rotating his feet outward. A video of him performing in a New York subway became popular in 2014. He alleges Epic then created an emote known as "Phone It In" that was both identical and a reference to his appearance in a Google Pixel 2 phone commercial in 2017. Fortnite players can buy that emote for about $8 and execute the dance move in the game. Here's a look at the comparison:

The first question for Pennsylvania federal judge John Padova is whether Epic had misappropriated Pellegrino's likeness and violated his publicity and privacy rights. The judge turns to a test that was adopted by the Third Circuit Court of Appeals in 2013 in response to a former college athlete's suit over a video game. Given the First Amendment, a plaintiff's interest in likeness can be outweighed if the likeness is so transformed that it becomes the defendant's own expression rather than the celebrity's likeness.

Judge Padova notes that the Fortnite avatars don't bear a strong resemblance to Pellegrino and that the ones in the game fight using weapons while Pellegrino himself uses the moves for musical performances.

"These allegations establish that the avatars in Fortnite do not share Pellegrino's identity nor do what Pellegrino does in real life," states the opinion (read in full here). "We therefore conclude that Epic's use of Pellegrino's likeness is sufficiently transformative…."

The judge dispenses with the unjust enrichment claim because there's no word of any contractual relationship between the parties and rejects the unfair competition claim because saxophone players hardly compete with video game makers.

Then, there's Pellegrino's claim of false designation of origin, which pretty much amounts to the musician's gripe of not being properly credited with conceiving the dance move. That's foreclosed by the Supreme Court's Dastar ruling. "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," writes the judge, meaning that in most instances, copyright claims can't be dressed up as trademark ones.

Pellegrino had no copyright claim. Represented by the law firm of Pierce Bainbridge, which represented others against Epic over dance moves, it's possible that registration had something to do with this. Other suits were paused for lack of registration.

Interestingly, it was Epic (and attorney Dale Cendali) that took the position that Pellegrino's signature move fell within the scope of copyright. That's because the plaintiff attempted to assert trademark under state law whereas Epic contended such a claim was preempted by federal copyright law. The judge agrees with Epic, finding that dance falls within the ambit of the copyright category "choreographic works" and that Pellegrino's signature move potentially fits. The judge also concludes that Pellegrino hasn't alleged any extra element that would save his state trademark infringement claim from preemption.

So what survives?

Judge Padova will allow Pellegrino to move forward on a false endorsement claim. That's one that may dodge the Dastar bar…barely, but still hasn't been very successful traditionally for plaintiffs. (See 12 Years a Slave, for instance.)

Here, the judge nods to Pellegrino's allegation that Epic developed its emote intentionally to mimic his performing his signature move and named the emote "Phone It In" to allude to Pellegrino's appearance in a Google Pixel 2 commercial. The complaint further alleged that players worldwide recognized the allusion and consequently created the impression that Pellegrino endorsed Fortnite.

"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," writes the judge. "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."

This article was originally published by The Hollywood Reporter.

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