Pellegrino v. Epic Games, Inc.

• Decision Date: 31 March 2020
• Docket Number: CIVIL ACTION NO. 19-1806
• Citation: 451 F.Supp.3d 373
• Parties: Leo PELLEGRINO v. EPIC GAMES, INC.
• Court: U.S. District Court — Eastern District of Pennsylvania

451 F.Supp.3d 373

Leo PELLEGRINO

v.EPIC GAMES, INC.

CIVIL ACTION NO. 19-1806

United States District Court, E.D. Pennsylvania.

Filed March 31, 2020

Andrew J. Lorin, Yi Wen Wu, Pierce Bainbridge Beck Price & Hecht LLP, David L. Hecht, Hecht Partners LLP, New York, NY, for Leo Pellegrino.

Dale M. Cendali, Joshua L. Simmons, Shanti Sadtler Conway, Kirkland & Ellis LLP, New York, NY, Megan L. McKeown, Kirkland & Ellis LLP, Houston, TX, Patrick J. Loftus, Duane Morris LLP, Philadelphia, PA, for Epic Games, Inc.

MEMORANDUM

Padova, J.

Plaintiff Leo Pellegrino commenced this action against Defendant Epic Games, Inc. ("Epic") asserting that Epic misappropriated his likeness and trademark, i.e., his "Signature Move."¹ The Complaint asserts that Epic's misappropriation violated Pellegrino's right to publicity and infringed and diluted his trademark. Epic has filed a Motion to Dismiss the Complaint in its entirety pursuant to Federal Rule of Civil Procedure 12(b)(6). We held a hearing on the Motion on March 3, 2020. For the reasons that follow, we grant Epic's Motion in part and deny it in part.

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. (Id. )

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 avatar with it, "the player's avatar can execute the Signature Move during Fortnite gameplay." (Id. ¶ 41.) Many Fortnite players worldwide immediately recognized the Phone It In emote in Fortnite as Pellegrino's Signature Move. (Id. ) 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. (Id. ¶ 47.) 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. (Id. ¶¶ 41, 47.)

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 42 Pa. Cons. Stat. Ann. § 8316. (Id. ¶¶ 50-60.) The second cause of action asserts a claim for misappropriation of publicity under Pennsylvania common law. (Id. ¶¶ 61-71.) The third cause of action asserts a claim for invasion of privacy by misappropriation of identity under Pennsylvania common law. (Id. ¶¶ 72-74.) The fourth cause of action asserts a claim for unjust enrichment under Pennsylvania common law for using Pellegrino's likeness and trademark. (Id. ¶¶ 75-77.) The fifth cause of action asserts a claim for unfair competition under Pennsylvania common law for using Pellegrino's likeness and trademark. (Id. ¶¶ 78-83.) The sixth cause of action asserts a claim for trademark infringement under the Lanham Act, 15 U.S.C. § 1125(a). (Id. ¶¶ 84-92.) The seventh cause of action asserts a claim for trademark infringement under Pennsylvania common law. (Id. ¶¶ 93-100.) The eighth cause of action asserts a claim for trademark dilution under the Lanham Act, 15 U.S.C. § 1125(c). (Id. ¶¶ 101-108.)²

II. LEGAL STANDARD

When deciding a motion to dismiss pursuant to Rule 12(b)(6), we "consider only the complaint, exhibits attached to the complaint, [and] matters of public record, as well as undisputedly authentic documents if the complainant's claims are based upon these documents." Mayer v. Belichick, 605 F.3d 223, 230 (3d Cir. 2010) (citing Pension Benefit Guar. Corp. v. White Consol. Indus., Inc., 998 F.2d 1192, 1196 (3d Cir. 1993) ). We take the factual allegations of the complaint as true and "construe the complaint in the light most favorable to the plaintiff." DelRio-Mocci v. Connolly Props., Inc., 672 F.3d 241, 245 (3d Cir. 2012) (citing Warren Gen. Hosp. v. Amgen, Inc., 643 F.3d 77, 84 (3d Cir. 2011) ). Legal conclusions, however, receive no deference, as we are " ‘not bound to accept as true a legal conclusion couched as a factual allegation.’ " Wood v. Moss, 572 U.S. 744, 755 n.5, 134 S.Ct. 2056, 188 L.Ed.2d 1039 (2014) (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S.Ct. 1937, 173 L.Ed.2d 868 (2009) ).

A plaintiff's pleading obligation is to set forth "a short and plain statement of the claim," Fed. R. Civ. P. 8(a)(2), which gives the defendant " ‘fair notice of what the ... claim is and the grounds upon which it rests.’ " Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555, 127 S.Ct. 1955, 167 L.Ed.2d 929 (2007) (alteration in original) (quoting Conley v. Gibson, 355 U.S. 41, 47, 78 S.Ct. 99, 2 L.Ed.2d 80 (1957) ). The complaint must contain " ‘sufficient factual matter to show that the claim is facially plausible,’ thus enabling ‘the court to draw the reasonable inference that the defendant is liable for [the] misconduct alleged.’ " Warren Gen. Hosp., 643 F.3d at 84 (quoting Fowler v. UPMC Shadyside, 578 F.3d 203, 210 (3d Cir. 2009) ). "The plausibility standard is not akin to a ‘probability requirement,’ but it asks for more than a sheer possibility that a defendant has acted unlawfully." Iqbal, 556 U.S. at 678, 129 S.Ct. 1937 (citing Twombly, 550 U.S. at 556, 127 S.Ct. 1955 ). In the end, we will grant a motion to dismiss brought pursuant to Rule 12(b)(6) if the factual allegations in the complaint are not sufficient " ‘to raise a right to relief above the speculative level.’ " W. Run Student Hous. Assocs., LLC v. Huntington Nat'l Bank, 712 F.3d 165, 169 (3d Cir. 2013) (quoting Twombly, 550 U.S. at 555, 127 S.Ct. 1955 ) (add'l citation omitted).

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, 123 S.Ct. 2041, 156 L.Ed.2d 18 (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, 131 S.Ct. 2729, 180 L.Ed.2d 708 (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...