By Shane Wax
What do a TV star, a Brooklyn rapper, a New York City subway busker and some college basketball players have in common? They got moves! And not just any moves – enviable dance moves that are now appearing in video games left and right, often without any acknowledgement of their creators. Unfortunately, intellectual property laws may not protect them.
New Yorkers might recognize Leo Pellegrino aka “Leo P” from the subway – he and his bandmates in Too Many Zoos could often be found busking in Union Square or Herald Square to large crowds, where cell phone videos of them performing their unique “brass house,” flourished by Leo’s fancy footwork, helped them achieved viral fame. Since 2017, they’ve appeared in a Google Pixel 2 phone commercial, Leo P has made solo guest appearances, and their last staged performance in New York City before the pandemic was at Brooklyn Bowl, an 800-person capacity venue (but they’ve been spotted in the subway, too, as recently as this past winter).
Then there are Jaylen Brantley and Jared Nickens, who you may recognize from their “run” to the NCAA Sweet Sixteen in 2016 with the University of Maryland basketball team; or from their viral Vine campaign which unleashed the “Running Man” dance onto the world and earned them, along with the dance’s co-creators, an appearance on The Ellen Show.
What do they have in common? Their dances were among many featured in the video game Fortnite, without their permission and without any acknowledgement of their creative role. Unhappy about it, they each sued Epic Games, the video game’s creators, with each of their lawsuit meeting nearly identical fates this spring, in test cases that will likely foreshadow several others. Indeed, the creators of Fortnite are no stranger to infringement suits over claims they misappropriated famous dance moves.
Fortnite debuted in July 2017 to heavy fanfare, available for free download to all potential gamers, who would then have the option to make myriad in-game purchases. Within a year, the video game had been downloaded and played by over 100 million players, became the world’s most popular game, and brought in revenue to Epic Games to the tune of nearly $3 billion. Among available in-game purchases are “emotes” – computer programs that enabled the user’s in-game avatar to adopt and perform famous real-life dances and body movements, such as face palming, dabbing, the worm, Elaine’s dance of jubilation from Seinfeld, or “The Carlton” from Fresh Prince of Bel-Air.
While Fornite players could instantly recognize the dance moves performed by their avatars as famous dances, none of the dances are attributed to their respective creators, whose consent was never obtained, and it was not long before the lawsuits began. On December 5, 2018, the first lawsuit was filed in California on behalf of Brooklyn rapper Terrence Ferguson aka “2 Milly,” whose “Milly Rock” dance is replicated by an emote named “Swipe It.” Two weeks later, more lawsuits were filed in California, one on behalf of Alfonso Ribeiro,  currently the host of America’s Funniest Videos, but most famous for playing Carlton in 90s sitcom The Fresh Prince of Bel-Air. His character’s corny dance moves to Tom Jones’ “It’s Not Unusual” became an indelible, cultural mark of the 90s, and can be purchased as a Fortnite emote named “Fresh” – a clear nod to the TV series’ title. Another lawsuit was filed on behalf of Russell Horning aka “The Backpack Kid,” who claims ownership over the viral dance phenomenon known as “flossing,” which appears in the game as “The Floss.”
However, each of those lawsuits were quickly derailed by a Supreme Court decision. The problem was that each of the cases against Epic Games were filed in the Ninth Circuit, which, at the time, permitted infringement suits concerning unregistered works to be commenced as long as an application had been filed with the U.S. Copyright Office. But on March 4, 2019, the Supreme Court issued a unanimous decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, holding that the Copyright Office must first act upon an application – either registering the work or refusing registration – before a copyright infringement suit could be commenced, thus overruling the Ninth Circuit’s procedure in copyright cases. Days later, each of the early Fortnite cases was voluntarily dismissed.
Meanwhile, the Copyright Office was reviewing the applications for each of the respective dances, and it was not going well for the Fortnite plaintiffs. Between October 2018 and January 2019, the Copyright Office refused registration for both “The Carlton” dance created by Ribeiro and the “Milly Rock” dance created by Ferguson. The Copyright Office’s basis for refusing registration was that “the work submitted for registration is a simple dance routine,” which “is not registrable as a choreographic work.” The Copyright Office noted that “the term ‘choreography’ is not synonymous with ‘dance,’” and that “individual movements or dance steps by themselves are not copyrightable.” Additionally, “Milly Rock” was denied on the grounds that “social dances, such as ballroom dances, line dances and similar movements are not created for professional dancers,” but are “to be performed by the general public for their own enjoyment,” and that the inclusion of 2 Milly’s own “improvisational dance movements . . . do not represent an integrated, coherent and expressive compositional whole.” While Horning fared slightly better – a “long variation” of his flossing dance was approved for registration – his registration “does not extend to individual dance steps.
In light of these and others hurdles, including legitimate questions of ownership, none of the original Fortnite plaintiffs have refiled their claims against Epic Games, perhaps unwilling to test the copyrightability of their dance moves in court. What’s more, Epic Games has since gone on the offense, having commenced an action against at least one viral dancer seeking a declaratory judgment of non-infringement of copyright. But if an individual’s unique and creatives dances moves are not protected under U.S. copyright laws, does that leave them wholly unprotected? Enter Leo P and Jaylen Brantley and Jared Nickens.
On February 25, 2019, Brantley and Nickens sued Epic Games in Maryland, claiming the creators of Fortnite misappropriated their copyrights in their “Running Man” dance, engaged in unfair competition, and violated their common law publicity rights. Leo P’s complaint filed two months later in Pennsylvania contained eight causes of action, but eschewed copyright claims altogether in favor of causes of action under the Lanham Act – including trademark infringement, trademark dilution, and false affiliation or endorsement – as well unfair competition and several claims grounded in privacy and publicity rights. In each of these new cases, Epic Games filed a pre-answer motion to dismiss, and both motions were recently decided, largely in favor of Epic Games.
In March, the Pennsylvania court mostly granted Epic Games’ motion to dismiss, tossing seven of Leo P’s eight claims and eviscerating his alternate theories of liability. After dismissed each of his state and common law claims, the court dismantled Leo P’s claims alleging False Designation of Origin, Trademark Infringement and Dilution under the Lanham Act. The court held that Leo P’s false designation claims were barred under the Supreme Court’s decision in Dastar, which held that a false designation claim can only be brought with respect to a tangible product, not ideas or communications embodied in the product, and there was no claim that Leo was the originator of the Fortnite video games or the in-game emotes coded by Epic Games.
Next, the court dismissed the trademark infringement claim on the grounds that it was pre-empted by copyright law. Noting that “the scope of the Copyright Act’s subject matter is broader than the scope of the Act’s protections,” that a “dance falls within the ambit of the copyright category ‘choreographic works,’ and that the crux of Leo P’s cause of action was based solely on Epic Games’ acts in copying and reproducing the dance moves, the court held that, in this case, Leo P’s infringement claim could only be brought under copyright law, even if his dance steps were not protected under the Copyright Act.
Finally, the court dismissed Leo P’s trademark dilution claims, espousing language that arguably exemplified the ultimate weakness in his trademark case: Leo P’s claim his dance moves were both his product and his trademark, despite the general rule “that a trademark cannot serve as a trademark for itself,” since the purpose of a trademark is to identify the source of goods not to prevent the aesthetic appearance of the actual good from being copied, which is the province of copyright law. Indeed, since a dilution claim requires proof “that the defendant used the plaintiff’s mark as its own mark to identify its own goods or service,” and Leo P did not allege that his dances moves were used by Epic Games as a source-identifier for the Fortnite video game, the dilution claim was also dismissed.
Ultimately, the only claim that survived was Leo P’s “false endorsement” claim under the Lanham Act, which alleged that, by incorporating Leo P’s dance moves into the video game, Epic Games “created the false impression that Pellegrino endorses Fortnite.”
Almost exactly two months later, a federal judge in Maryland dismissed the complaint brought by Maryland’s dancing b-ballers in its entirety, on similar grounds and even citing the Pellegrino decision. The court held that their common law privacy, unfair competition and unjust enrichment claims were all preempted by the Copyright Act because each of these claims was “based on the alleged copying and use of the Running Man dance,” noting, as the Pellegrino Court had, that “the scope of copyright preemption is broader than the scope of copyright protection,” and that the mere question of whether the Running Man dance was copyrightable prevented Brantley and Nickens from interposing any other claims based on the alleged copying and reproducing their dance moves.
Likewise, the Maryland court dismissed Brantley and Nickens’ Lanham Act claims on similar grounds as Pellegrino, noting that (1) Dastar requires the dismissal of False Designation of Origin claims pertaining to copying ideas or concepts, (2) “Plaintiffs fail to allege that the Running Man dance is a valid trademark and it does not identify a good or service,” and (3) “[t]he Running Man dance cannot be a trademark for performances of the Running Man dance,” because a trademark law strictly distinguishes between goods and their source identifiers.
However, unlike the Pennsylvania court, which permitted Pellegrino to pursue a False Endorsement theory, the Maryland court disagreed and dismissed this theory of liability as being pre-empted under Dastar, noting that the basketballer’s claims were based on their claims of being the authors or originators of the Running Man dance, whereas Pellegrino’s False Endorsement claim was based on Epic Games’ alleged use of his likeness.
To recap, the vast majority of dance moves allegedly copied and reproduced in Fortnite are not protected under trademark law not because they are too simple – akin to the rule against copyrighting words and short phrases – but because they are dance moves, which are not being used to market a product or service, they fall outside the scope of trademark law. Moral of the story: Unless you’re using a dance as a marketing tool for promoting and selling goods and services, no, your smooth moves are not trademarked.
 See, e.g. Jake Dietrich, Too Many Zooz rocks Union Square (Jan. 24, 2014), https://www.youtube.com/watch?v=FZu097wb8wU; Too Many Zooz, Bedford (June 29, 2017), https://www.youtube.com/watch?v=IMyqasy2Lco.
 Google Pixel 2 “Warriors” commercial, https://www.youtube.com/watch?v=vbBa1cVj36U
 University of Maryland, Maryland Men’s Basketball – 2015-16 Roster , available at https://www.nmnathletics.com/SportSelect.dbml?DB_OEM_ID=29700&SPID=120728&SPSID=716396&KEY=&Q_SEASON=2015.
 Pellegrino v. Epic Games, Inc., Case No. 19-cv-1806 (E.D. Pa. Mar. 31, 2020); Brantley et al. v. Epic Games, Inc., Case No. 8:19-cv-594 (D. Md. May 29, 2020)
 Jon Russell, TechCrunch, Epic Games, the creator of Fortnite, banked a $3 billion profit in 2018, Dec. 27, 2018, https://techcrunch.com/2018/12/27/epic-fortnite-3-billion-profit/.
 Ferguson v. Epic Games, Inc., Case No. 2:18-cv-10110-CJC-RAO (C.D. Cal.).
 Ribeiro v. Epic Games, Inc., Case No. 2:18-cv-10412-CJC-RAO (C.D. Cal.). Ferguson and Ribeiro each also sued Two-Take Interactive Software and 2K Sports, the developers of the NBA 2K video game franchise, over similar claims that the video game misappropriated the plaintiffs’ dance moves. See Ferguson v. Take-Two Interactive Software, Inc., Case No. 2:18-cv-10425-FMO-DFM (C.D. Cal.); Ribeiro v. Take-Two Interactive Software, Inc., Case No. 2:18-cv-10417-FMO-DFM (C.D. Cal.).
 Redd v. Epic Games, Inc., Case No. 2:18-cv-10444-R-MAA (C.D. Cal.). Additional, similar lawsuits were also filed against Epic Games. See James Baker et al v. Epic Games, Inc., Case No. 2:19-cv-00505-PA-GJS (C.D. Cal.); Rachel McCumbers v. Epic Games, Inc., Case No. 2:19-cv-00260-CJC-RAO (C.D. Cal.).
 Fourth Estate Public Benefit Corp. v. Wall-Street.com, 586 U.S. ___, 139 S. Ct. 881 (2019).
 See Elizabeth A. Harris, Carlton Dance Not Eligible for Copyright, Government Says, N.Y. Times, Feb. 15, 2019, https://www.nytimes.com/2019/02/15/arts/dance/carlton-dance.html; supra, n.9, Doc. No. 49-16 (U.S. Copyright Office Refusal Letter dated January 22, 2019).
 See Ferguson, supra, n.8, Doc. No. 59-3 (U.S. Copyright Office Refusal Letter dated December 19, 2018); Harris, supra n.12.
 Russel Horning, FLOSSIN DANCE, Copyright Registration No. PA0002147439; See Harris, supra n.12.
 For example, does Ribeiro himself own “The Carlton,” or is it property of NBC as a work-for-hire? Does Ribeiro even have an ownership claim in light of his admission that the dance is based off of actress Courtney Cox’s dance moves at the end of the music video for Bruce Springsteen’s “Dancing in the Dark”? See K.c.Blumm, Alfonso Ribeiro Reveals the Inspiration for the Carlton on Fresh Prince, People, July 22, 2013, https://people.com/tv/alfonso-ribeiro-reveals-the-inspiration-for-the-carlton-on-fresh-prince/; Bruce Springsteen, Dancing In the Dark (Official Video), https://www.youtube.com/watch?v=129kuDCQtHs.
 See Epic Games, Inc. v. Sick Picnic Media, LLC, Case No. 19-CV-11215 (S.D.N.Y.).
 See Brantley, supra, n.6, Document No. 1.
 See Pellegrino, supra, n.6, Document No. 1.
 See supra, n.6.
 See Pellegrino, supra, n.6, Document No. 28 (memorandum).
 The court dismissed Claims I-III, each of which alleged violations of Leo P’s rights to publicity and privacy, finding any use of his likeness protected by the First Amendment, and in any case, that a Fornite avatar equipped with the “Swipe It” emote – including both Leo P’s dance moves and a saxophone as an accessory – “does not bear a strong resemblance to Pellegrino,” and was transformative. The court also dismissed Leo P’s Unjust Enrichment and Unfair Competition claims finding no relationship nor competition between the parties. See Id. pp. 5-10.
 See id. pp. 12-13 (citing Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 31-32 (2003)).
 Id. pp. 17-21.
 Id. pp. 22-24.
 Unsurprisingly, this last claim was voluntarily dismissed one month after Leo P’s other claims were dismissed by the court, likely as a result of an undisclosed settlement. See Pellegrino, supra, n.6, Document No. 34.
 See Brantley, supra, n.6, Document No. 31 (memorandum).
 Id. pp. 5-15.
 Id. pp. 16-20.
 Id. pp. 20-22.