Case 2:19-cv-01806-JP Document 28 Filed 03/31/20 Page 1 of 25
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF PENNSYLVANIA
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`CIVIL ACTION
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`NO. 19-1806
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`MEMORANDUM
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` March 31, 2020
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`v.
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`LEO PELLEGRINO
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`EPIC GAMES, INC.
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`Padova, J.
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`Plaintiff Leo Pellegrino commenced this action against Defendant Epic Games, Inc.
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`(“Epic”) asserting that Epic misappropriated his likeness and trademark, i.e., his “Signature
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`Move.” 1 The Complaint asserts that Epic’s misappropriation violated Pellegrino’s right to
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`publicity and infringed and diluted his trademark. Epic has filed a Motion to Dismiss the
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`Complaint in its entirety pursuant to Federal Rule of Civil Procedure 12(b)(6). We held a hearing
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`on the Motion on March 3, 2020. For the reasons that follow, we grant Epic’s Motion in part and
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`deny it in part.
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`I.
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`BACKGROUND
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`The Complaint alleges that Leo Pellegrino “is a professional baritone saxophone player
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`and member of the ‘brass house’ group ‘Too Many Zooz.’” (Compl. ¶ 2.) Using his unique
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`anatomy—specifically his externally rotatable feet—Pellegrino was able to create the Signature
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`Move, a series of movements that express his own unique dancing style. (Id. ¶ 17.) Pellegrino
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`incorporates and “executes the Signature Move [in] every one of his musical performances.” (Id.
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`¶ 24.) By executing the Signature Move in concert and festival performances in front of hundreds
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`1 Pellegrino’s Signature Move is a series of dance moves executed while holding a
`saxophone. Pellegrino attaches a video clip of his Signature Move as Exhibit 1 to the Complaint.
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`of thousands of people and in online videos with millions of views, his Signature Move has grown
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`in popularity and has become inextricably linked to his identity. (Id. ¶¶ 3, 24.)
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`Epic Games, Inc. is a video game developer who created the game “Fortnite Battle Royale.”
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`(Id. ¶¶ 10, 28.) Fortnite was released in September 2017 and since then has become one of the
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`most popular video games ever. (Id. ¶ 7.) In fact, because of Fortnite’s success, Epic’s value has
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`grown from approximately $825 million to approximately $15 billion. (Id. ¶ 38.) Fortnite is a
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`battle royale video game, a “genre that blends the survival, exploration and scavenging elements
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`of a survival game with last-man-standing gameplay.” (Id. ¶ 28.) In this format, “up to 100
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`players, alone, in pairs or in groups, compete to be the last player or group alive” by using weapons
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`and other forms of violence to eliminate other players. (Id. ¶ 29.)
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`Epic does not charge players money to purchase Fortnite; instead, players can download
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`and play Fortnite for free. (Id. ¶ 30.) Fortnite generates revenue using its in-game electronic
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`storefront where it sells virtual content that players can use while playing Fortnite. (Id.) This
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`buyable virtual content includes customizations for the Fortnite digital avatars like “‘emotes’” that
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`enable the Fortnite avatars to perform dances or movements. (Id.)
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`Epic creates these “emotes by copying and coding dances and movements directly from
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`popular videos, movies, and television shows without consent.” (Id. ¶ 34.) Emotes are popular
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`among players because emotes allow players to personalize their Fortnite experience. (Id. ¶ 33.)
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`Emotes have become popular even outside of Fortnite. (Id.) For example, professional athletes
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`perform celebrations based on Fortnite emotes and other people post social media videos of
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`themselves executing the emotes. (Id.)
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`One of these emotes, the “‘Phone It In’” emote, “is identical to Pellegrino’s Signature
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`Move.” (Id. ¶ 41.) The name “‘Phone It In’” is a reference “to Pellegrino’s appearance in a Google
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`2
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`Pixel 2 phone commercial in 2017.” (Id. ¶ 5.) Without Pellegrino’s consent, Epic sells the Phone
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`It In emote for 800 V-Bucks (Fortnite’s virtual currency), which is worth approximately $8. (Id.
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`¶¶ 30, 40.) Once a player buys this emote and equips his or her avatar with it, “the player’s avatar
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`can execute the Signature Move during Fortnite gameplay.” (Id. ¶ 41.) Many Fortnite players
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`worldwide immediately recognized the Phone It In emote in Fortnite as Pellegrino’s Signature
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`Move. (Id.) Epic thus uses Pellegrino’s Signature Move embodied in the Phone It In emote to
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`create the false impression that Pellegrino is endorsing the game. (Id. ¶ 47.) Other players,
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`however, have the false impression that the Phone It In emote was Epic’s original creation because
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`Epic does not credit Pellegrino as the Signature Move’s creator and owner. (Id. ¶¶ 41, 47.)
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`The Complaint asserts eight causes of action under state and federal law. The first cause
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`of action asserts a claim for unauthorized use of Pellegrino’s name or likeness in violation of 42
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`Pa. Cons. Stat. Ann. § 8316. (Id. ¶¶ 50-60.) The second cause of action asserts a claim for
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`misappropriation of publicity under Pennsylvania common law. (Id. ¶¶ 61-71.) The third cause
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`of action asserts a claim for invasion of privacy by misappropriation of identity under Pennsylvania
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`common law. (Id. ¶¶ 72-74.) The fourth cause of action asserts a claim for unjust enrichment
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`under Pennsylvania common law for using Pellegrino’s likeness and trademark. (Id. ¶¶ 75-77.)
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`The fifth cause of action asserts a claim for unfair competition under Pennsylvania common law
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`for using Pellegrino’s likeness and trademark. (Id. ¶¶ 78-83.) The sixth cause of action asserts a
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`claim for trademark infringement under the Lanham Act, 15 U.S.C. § 1125(a). (Id. ¶¶ 84-92.) The
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`seventh cause of action asserts a claim for trademark infringement under Pennsylvania common
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`law. (Id. ¶¶ 93-100.) The eighth cause of action asserts a claim for trademark dilution under the
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`Lanham Act, 15 U.S.C. § 1125(c). (Id. ¶¶ 101-108.)2
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`II.
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`LEGAL STANDARD
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`When deciding a motion to dismiss pursuant to Rule 12(b)(6), we “consider only the
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`complaint, exhibits attached to the complaint, [and] matters of public record, as well as
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`undisputedly authentic documents if the complainant’s claims are based upon these documents.”
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`Mayer v. Belichick, 605 F.3d 223, 230 (3d Cir. 2010) (citing Pension Benefit Guar. Corp. v. White
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`Consol. Indus., Inc., 998 F.2d 1192, 1196 (3d Cir. 1993)). We take the factual allegations of the
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`complaint as true and “construe the complaint in the light most favorable to the plaintiff.” DelRio-
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`Mocci v. Connolly Props., Inc., 672 F.3d 241, 245 (3d Cir. 2012) (citing Warren Gen. Hosp. v.
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`Amgen, Inc., 643 F.3d 77, 84 (3d Cir. 2011)). Legal conclusions, however, receive no deference,
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`as we are “‘not bound to accept as true a legal conclusion couched as a factual allegation.’” Wood
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`v. Moss, 572 U.S. 744, 755 n.5 (2014) (quoting Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)).
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`A plaintiff’s pleading obligation is to set forth “a short and plain statement of the claim,”
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`Fed. R. Civ. P. 8(a)(2), which gives the defendant “‘fair notice of what the . . . claim is and the
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`grounds upon which it rests.’” Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007) (alteration
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`in original) (quoting Conley v. Gibson, 355 U.S. 41, 47 (1957)). The complaint must contain
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`“‘sufficient factual matter to show that the claim is facially plausible,’ thus enabling ‘the court to
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`draw the reasonable inference that the defendant is liable for [the] misconduct alleged.’” Warren
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`Gen. Hosp., 643 F.3d at 84 (quoting Fowler v. UPMC Shadyside, 578 F.3d 203, 210 (3d Cir.
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`2009)). “The plausibility standard is not akin to a ‘probability requirement,’ but it asks for more
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`2 For ease of reference, we will refer to each “cause of action” as a “Count.” For example,
`the first cause of action will be “Count I.”
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`than a sheer possibility that a defendant has acted unlawfully.” Iqbal, 556 U.S. at 678 (citing
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`Twombly, 550 U.S. at 556). In the end, we will grant a motion to dismiss brought pursuant to
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`Rule 12(b)(6) if the factual allegations in the complaint are not sufficient “‘to raise a right to relief
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`above the speculative level.’” W. Run Student Hous. Assocs., LLC v. Huntington Nat’l Bank, 712
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`F.3d 165, 169 (3d Cir. 2013) (quoting Twombly, 550 U.S. at 555) (add’l citation omitted).
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`III. DISCUSSION
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`Epic argues in its Motion that: (1) Counts I-III must be dismissed because the First
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`Amendment protects Fortnite as an expressive work; (2) Counts IV-V must be dismissed because
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`the Complaint fails to allege the essential elements of these claims; (3) Count VI is barred by the
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`Supreme Court of the United States decision in Dastar Corporation. v. Twentieth Century Fox Film
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`Corporation, 539 U.S. 23 (2003); (4) Count VII must be dismissed because it is preempted by the
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`Copyright Act; and (5) Count VIII must be dismissed because the Complaint fails to allege an
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`essential element of the claim.
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`A. Right of Publicity and Privacy Claims (Counts I-III)
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`Pellegrino’s right of publicity and privacy claims assert that Epic, by using Pellegrino’s
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`Signature Move in Fortnite, has misappropriated his likeness. Epic has moved to dismiss these
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`claims on First Amendment grounds. As a preliminary matter, because Fortnite is a video game,
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`the First Amendment protects it as an expressive work. See Hart v. Elec. Arts, Inc., 717 F.3d 141,
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`148 (3d Cir. 2013) (“[V]ideo games are protected as expressive speech under the First
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`Amendment.” (citing Brown v. Entm’t Merchants Ass’n, 564 U.S. 786, 789 (2011))). Where a
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`plaintiff alleges that an expressive work violates his right of publicity and privacy, we must
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`determine whether the First Amendment protections afforded to the expressive work outweigh the
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`plaintiff’s publicity and privacy rights. See id. at 148-49. If they do, we must dismiss the
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`plaintiff’s publicity and privacy claims. See id. at 149-50.
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`In Hart v. Electronic Arts, Incorporated, the United States Court of Appeals for the Third
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`Circuit directed that, in balancing First Amendment protections against publicity and privacy
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`rights, we are to utilize the Transformative Use Test. Id. at 165 (concluding that “the
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`Transformative Use Test is the proper analytical framework to apply to cases” balancing the First
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`Amendment and publicity rights). Under the Transformative Use Test, the First Amendment
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`protections enjoyed by an expressive work will outweigh a celebrity plaintiff’s interests in his
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`likeness if “‘the product containing [the] celebrity’s likeness is so transformed that it has become
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`primarily the defendant’s own expression rather than the celebrity’s likeness.’” Id. at 160
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`(emphasis omitted) (quoting Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d 797, 809 (Cal.
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`2001)).
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`The Third Circuit applied the Transformative Use Test in Hart under circumstances similar
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`to those in the case at hand. In Hart, a college football player, Ryan Hart, brought suit against the
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`video game developer Electronic Arts (“EA”) for violating his right of publicity by using his
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`likeness in EA’s NCAA Football series of videogames. Id. at 147. At issue was whether EA’s
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`use of Hart’s likeness on a digital avatar in NCAA Football was sufficiently transformative such
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`that the First Amendment barred Hart’s right of publicity claim. Id. at 165. To make this
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`determination, the Third Circuit conducted two central inquiries. It first considered whether Hart’s
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`“identity” was sufficiently transformed and defined “identity” as encompassing both Hart’s
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`appearance and his biographical information. Id. at 165-66. The Third Circuit thus analyzed how
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`closely the digital avatar in NCAA Football embodying Hart’s likeness “resemble[d] the genuine
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`article.” Id.; see also Mitchell v. Cartoon Network, Inc., Civ. A. No. 15-5668, 2015 WL 12839135,
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`at *5 (D.N.J. Nov. 20, 2015) (comparing appearances of a television character and the plaintiff to
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`determine whether the defendant’s use of the plaintiff’s likeness was transformative); see also
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`Kirby v. Sega of Am., Inc., 50 Cal. Rptr. 3d 607, 616 (Cal. Ct. App. 2006) (comparing appearances
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`of a video game avatar and the plaintiff to determine whether the defendant’s use of the plaintiff’s
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`likeness was transformative). The court then considered the manner in which Hart’s identity was
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`“incorporated into and transformed by” the expressive work. Hart, 717 F.3d at 166 (quotation
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`omitted). Specifically, the Third Circuit looked at “the context within which the digital avatar
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`exist[ed],” and asked whether the digital avatar that was alleged to possess Hart’s likeness, did in
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`the game what Hart did in real life. Id.; see also Mitchell, 2015 WL 12839135, at *5 (concluding
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`that the defendant’s use of the plaintiff’s likeness was sufficiently transformative where the
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`defendant’s television character did not do “exactly what [the] [p]laintiff [did] in real life”).
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`In the instant case, Epic argues that its use of Pellegrino’s likeness in Fortnite (allowing
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`Fortnite avatars to be equipped with the Signature Move a.k.a. the Phone It In emote)3 is so
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`transformative that the likeness has become primarily Epic’s own expression rather than
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`Pellegrino’s likeness. Applying the test as articulated in Hart, we observe that the Complaint does
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`not allege that the Fortnite avatars equipped with the Phone It In emote, i.e., Pellegrino’s likeness,
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`share Pellegrino’s appearance or biographical information. Indeed, the Complaint contains a
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`picture of a Fortnite avatar equipped with the Phone It In emote, and the avatar does not bear a
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`strong resemblance to Pellegrino. (See Compl. ¶ 4 & Ex. 1.) The Complaint also alleges that
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`Fortnite players can customize their avatars with “new characters” and a variety of emotes
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`mimicking celebrities other than Pellegrino. (Id. ¶¶ 30, 35.) The Complaint further alleges that
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`3 The Complaint alleges that the “‘Phone It In’ emote is identical to Pellegrino’s Signature
`Move.” (Compl. ¶ 41.)
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`the avatars fight in a battle royale and can execute emotes like Phone It In “while in the Fortnite
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`Universe,” amidst “us[ing] weapons and violence to eliminate the competition” (id. ¶¶ 4, 29),
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`whereas Pellegrino is alleged to be a musical performer who executes his Signature Move at
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`musical performances (see id. ¶¶ 18-24). These allegations establish that the avatars in Fortnite
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`do not share Pellegrino’s identity nor do what Pellegrino does in real life. We therefore conclude
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`that Epic’s use of Pellegrino’s likeness is sufficiently transformative under the Transformative Use
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`Test to provide it with First Amendment protections that are not outweighed by Pellegrino’s
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`interests in his likeness. Accordingly, we grant Epic’s Motion to Dismiss as to Pellegrino’s right
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`to publicity and privacy claims asserted in Counts I-III, concluding that the First Amendment bars
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`these claims.
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`B. Unjust Enrichment (Count IV)
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`Pellegrino’s unjust enrichment claim asserts that Epic, by using Pellegrino’s Signature
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`Move in Fortnite, has been “unjustly enriched to the substantial detriment of Pellegrino.” (Compl.
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`¶ 76.) Epic has moved to dismiss Pellegrino’s unjust enrichment for failing to state a claim upon
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`which relief can be granted. To plead a claim for unjust enrichment under Pennsylvania law, “a
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`[complaint] must allege facts sufficient to establish ‘benefits conferred on defendant by plaintiff,
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`appreciation of such benefits by defendant, and acceptance and retention of such benefits under
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`such circumstances that it would be inequitable for defendant to retain the benefit without payment
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`of value.’” Boring v. Google Inc., 362 F. App’x 273, 281 (3d Cir. 2010) (quoting Lackner v.
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`Glosser, 892 A.2d 21, 34 (Pa. Super. Ct. 2006)).
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`Epic argues that the Complaint does not plausibly allege an unjust enrichment claim
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`because it does not contain allegations of a relationship between the parties that can be construed
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`as contractual, i.e., that there were benefits conferred on defendant by plaintiff. As Epic contends,
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`to plausibly allege an unjust enrichment claim, the Complaint must allege not just that Epic
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`received a benefit unjustly, or that a benefit was unjustly conferred on Epic; rather, it must allege
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`that Pellegrino directly conferred a benefit on Epic. See Gabriel v. Giant Eagle, Inc., 124 F. Supp.
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`3d 550, 568 (W.D. Pa. 2015) (emphasizing that “‘benefits conferred on defendant’” must be made
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`“‘by Plaintiff’” (quoting Sovereign Bank v. BJ’s Wholesale Club, Inc., 533 F.3d 162, 180 (3d Cir.
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`2008))). “Plaintiff's actions are core to the cause of action.” Id. at 569. Indeed, the doctrine of
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`unjust enrichment “‘does not apply simply because the defendant may have benefitted as a result
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`of the actions of the Plaintiff.’” Id. (quoting Ne. Fence & Iron Works, Inc. v. Murphy Quigley
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`Co., 933 A.2d 664, 668-69 (2007)).
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`Here, the Complaint alleges that Epic “misappropriate[d] Pellegrino’s likeness and the
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`Signature Move” and that Pellegrino “d[id] not consent to or approve Epic’s use of his likeness
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`and the Signature Move for the Phone It In emote.” (Compl. ¶¶ 47-48.) Because Pellegrino alleges
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`that Epic misappropriated his likeness without his permission, Pellegrino cannot have conferred
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`anything on Epic. Accord Hart v. Elec. Arts, Inc., 740 F. Supp. 2d 658, 670 (D.N.J. 2010)
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`(“[B]ecause Plaintiff alleges in his . . . Complaint that Defendant did not seek his permission before
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`using his likeness . . . , Plaintiff clearly did not confer any benefit upon Defendant.”). Indeed,
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`“[t]he entire thrust of [Pellegrino’s] allegations is that [Epic] took something from [Pellegrino]
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`without [his] consent, and should be held liable for having done so. There is, therefore, no basis
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`for applying a quasi-contractual remedy [for unjust enrichment].” Boring v. Google, Inc., 598 F.
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`Supp. 2d 695, 703 (W.D. Pa. 2009), aff’d in part, rev’d in part on other grounds, 362 F. App’x 273
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`(3d Cir. 2010). We therefore conclude that the Complaint fails to state a claim for unjust
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`enrichment upon which relief can be granted. Accordingly, we grant Epic’s Motion to Dismiss as
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`to Pellegrino’s unjust enrichment claim in Count IV.
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`C. Unfair Competition (Count V)
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`Pellegrino’s unfair competition claim asserts that Epic, by using Pellegrino’s Signature
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`Move in Fortnite, has misappropriated his likeness and trademark. Epic has moved to dismiss
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`Pellegrino’s unfair competition claim for failing to state a claim upon which relief can be granted.
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`To plead a claim for unfair competition under Pennsylvania common law, “a [complaint] must
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`allege that [the plaintiff] is in competition with the defendant—that is, that the plaintiff and the
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`defendant ‘supply similar goods or services.’” Am. Bd. of Internal Med. v. Von Muller, Civ. A.
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`No. 10-2680, 2011 WL 857337, at *11 (E.D. Pa. Mar. 10, 2011) (quoting Giordano v. Claudio,
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`714 F. Supp. 2d 508, 523 (E.D. Pa. 2010)), aff’d, 540 F. App’x 103 (3d Cir. 2013).
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`Epic argues that Pellegrino’s unfair competition claim should be dismissed because the
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`Complaint does not allege that Epic and Pellegrino are in competition, i.e., that they supply similar
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`goods or services. Specifically, Epic maintains that the Complaint alleges that Epic is a video
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`game publisher and that Pellegrino is a saxophone player, and thus, the parties supply different
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`goods. Indeed, the Complaint alleges that Pellegrino is a saxophone player, a member of “two
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`brass-based musical groups” and performs music at musical performances. (Compl. ¶¶ 15-24.) In
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`contrast, the Complaint alleges that Epic develops and sells video games. (Id. ¶¶ 26-28.) Based
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`on these allegations, it is plain that the parties do not supply similar goods or services. Pellegrino
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`nevertheless maintains that the parties are competitors “in the field of selling dance performances”
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`because Epic sells emotes that are “virtual dance performances.” (See Pl.’s Opp. Mem. at 32-33.)
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`Pellegrino, however, provides no case law, and we are aware of no case law, that would support
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`such a broad construction of “competitor.” We therefore conclude that the Complaint does not
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`plausibly allege that Epic and Pellegrino are competitors and thus, fails to state a claim for unfair
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`competition upon which relief can be granted. Accordingly, we grant Epic’s Motion to Dismiss
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`as to Pellegrino’s unfair competition claim in Count V.
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`D. False Designation of Origin and False Endorsement (Count VI)
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`Pellegrino’s Lanham Act claim asserts that Epic, by using Pellegrino’s Signature Move in
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`Fortnite, has misappropriated his likeness and trademark. Epic has moved to dismiss Pellegrino’s
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`Lanham Act claim as barred by the United States Supreme Court’s decision in Dastar Corporation
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`v. Twentieth Century Fox Film Corporation, 539 U.S. 23 (2003). As a preliminary matter,
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`Pellegrino appears to bring his Lanham Act claim under two theories. Under the first theory, the
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`Complaint asserts a Lanham Act claim for false designation of origin. This claim is based on
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`allegations that Epic committed trademark infringement by using “the Signature Move . . . to create
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`the false impression that Epic created [it].” (Compl. ¶ 47.) Under the second theory, the Complaint
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`asserts a Lanham Act claim for false endorsement. This claim is based on allegations that “Epic
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`used Pellegrino’s . . . Signature Move to generate significant income by . . . creating the false
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`impression that Pellegrino endorsed Fortnite.” (Id. ¶ 86.)4
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`1. False Designation of Origin
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`A facially plausible false designation of origin claim under the Lanham Act requires
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`allegations of fact that would establish that the defendant’s use of the plaintiff’s mark to identify
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`its goods or services is “likely to create confusion concerning the origin of the goods or services.”
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`Flynn v. Health Advocate, Inc., 169 F. App’x 99, 100-01 (3d Cir. 2006) (emphasis added) (citing
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`Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 472 (3d Cir. 1994)); see also 15
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`U.S.C. § 1125(a)(1)(A). The Supreme Court in Dastar analyzed the meaning of the phrase “origin
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`4 Although the Complaint merely identifies Count VI as asserting “Trademark
`Infringement,” the Complaint references the statute prohibiting false designation of origin and
`false endorsement. (See Compl. at 17.)
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`of goods” for purposes of the Lanham Act in order to distinguish between trademark claims that
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`could be brought under the Lanham Act and claims that were governed exclusively by the
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`Copyright Act.
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`In Dastar, Twentieth Century Fox Film (“Fox”) brought a Lanham Act claim against Dastar
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`Corporation (“Dastar”) claiming that Dastar copied and repackaged a television series for which
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`Fox held the distribution rights. See 539 U.S. at 25-27. “[T]he gravamen of [Fox’s] claim [was]
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`that, in marketing and selling [Dastar’s product] as its own product without acknowledging its
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`nearly wholesale reliance on [Fox’s work], Dastar ha[d] made a ‘false designation of origin . . . ,
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`which . . . [was] likely to cause confusion . . . as to the origin . . . of his or her goods.’” Id. at 31
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`(eighth, tenth, and eleventh alterations in original). On the one hand, the Court said, “[i]f ‘origin’
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`refer[red] only to the manufacturer or producer of the physical ‘goods’ that are made available to
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`the public . . . , Dastar was the origin,” and thus, Dastar would not be liable under the Lanham Act
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`because Fox had not brought allegations that the public was confused as to whether Dastar was the
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`origin of Dastar’s physical goods. Id. On the other hand, if “‘origin’ include[d] the creator of the
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`underlying work that Dastar copied, then . . . (perhaps Fox) was the origin of Dastar’s product,”
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`and thus, Dastar could be liable under the Lanham Act because Fox had brought allegations that
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`the public was confused as to whether Dastar was the origin of the creative content underlying
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`Dastar’s physical goods. Id. The Dastar Court concluded that the phrase “origin of goods,” for
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`purposes of the Lanham Act, refers to “the producer of the tangible goods that are offered for sale,
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`and not to the author of any idea, concept, or communication embodied in those goods,” the latter
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`of which would fall under copyright law. 539 U.S. at 37. The Court stated that “[t]o hold otherwise
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`would be akin to finding that [15 U.S.C. § 1125(a)(1)(A)] created a species of perpetual patent and
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`copyright, which Congress may not do.” Id. (citing Eldred v. Ashcroft, 537 U.S. 186, 208 (2003)).
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`Case 2:19-cv-01806-JP Document 28 Filed 03/31/20 Page 13 of 25
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`Consequently, Dastar permits a cause of action for false designation of origin under the Lanham
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`Act where a defendant’s alleged use of a plaintiff’s mark is likely to cause confusion as to “the
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`producer of the tangible product sold in the marketplace,” but not where the defendant’s alleged
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`use is likely to cause confusion as to “the person . . . that originated the ideas or communications
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`that ‘goods’ embody or contain.” 539 U.S. at 31-32.
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`Epic contends that Dastar bars Pellegrino’s false designation of origin claim because the
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`Complaint alleges that Epic created the false impression that Epic originated the Signature Move,
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`which is the creative expression underlying Epic’s Phone It In emote. According to Epic, Dastar
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`established that this type of allegation is governed by the Copyright Act and thus, cannot be
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`brought under the Lanham Act. We agree. The Complaint alleges the following: Pellegrino
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`created the Signature Move, which was a product of “his own unique dancing style and his
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`signature and original movements” (Compl. ¶ 17); Epic created the Phone It In emote by capturing
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`and digitally copying Pellegrino executing the Signature Move (id. ¶¶ 51, 63); the Phone It In
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`emote “embod[ies] the Signature Move” (id. ¶ 41); Epic “sell[s] the infringing Phone It In emote
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`directly to players” (id. ¶ 46); and Epic misappropriated the Signature Move “to create the false
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`impression that Epic created [the Signature Move]” (id. ¶ 47).
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`These allegations establish that the Signature Move is the creative idea underlying Epic’s
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`tangible good, the Phone It In emote. Furthermore, the Complaint does not plausibly allege that
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`there was or could be any confusion as to who produced the Phone It In emote. At best, the
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`Complaint alleges that there is confusion over who originated the Signature Move embodied in the
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`Phone It In emote because Epic does not “credit[] Pellegrino as the dance’s creator and owner.”
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`(Id. ¶ 47.) Under Dastar, a claim that concerns the origin of an idea embodied in a tangible good
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`is governed by copyright law, not the Lanham Act. See Dastar, 539 U.S. at 32 (“[T]he phrase
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`Case 2:19-cv-01806-JP Document 28 Filed 03/31/20 Page 14 of 25
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`‘origin of goods’ is in our view incapable of connoting the person or entity that originated the ideas
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`or communications that ‘goods’ embody or contain. Such an extension would not only stretch the
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`text, but it would be out of accord with the history and purpose of the Lanham Act and inconsistent
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`with precedent.”); Maule v. Philadelphia Media Holdings, LLC, 710 F. Supp. 2d 511, 518-19 (E.D.
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`Pa. 2008) (dismissing Lanham Act claim under Dastar because “[w]hile [the defendant] may not
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`have been the originator of the photographs contained in its newspaper, it was the originator of the
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`newspaper itself, the actual good being offered for sale to the public”; “the protections of the
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`Lanham Act do not reach to the underlying expressions embodied in goods”). We therefore
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`conclude that Dastar bars Pellegrino’s claim for false designation of origin. Accordingly, we grant
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`Epic’s Motion to Dismiss as to Pellegrino’s Lanham Act claim in Count VI to the extent that it is
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`based on a false designation of origin theory.
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`2. False Endorsement
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`A facially plausible false endorsement claim under the Lanham Act must allege that “‘the
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`defendant’s use of [the plaintiff’s] mark to identify its goods or services is likely to create
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`confusion concerning the plaintiff’s sponsorship or approval of those good[s] or services.’” Dille
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`Family Tr. v. Nowlan Family Tr., 207 F. Supp. 3d 535, 546 (E.D. Pa. 2016) (emphasis added)
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`(quoting Facenda v. N.F.L. Films, Inc., 542 F.3d 1007, 1014 (3d Cir. 2008)); see also 15 U.S.C. §
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`1125(a)(1)(A).
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`Epic argues that Dastar not only bars Pellegrino’s false designation of origin claim, but
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`also bars his false endorsement claim. However, we do not agree that Dastar necessarily bars
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`Pellegrino’s false endorsement claim. Dastar specifically considered only a claim for false
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`designation of origin based on allegations that Dastar’s alleged use of Fox’s mark was likely to
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`cause confusion as to the origin of the creative expression underlying Dastar’s goods, not a claim
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`Case 2:19-cv-01806-JP Document 28 Filed 03/31/20 Page 15 of 25
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`for false endorsement. 539 U.S. at 31. Thus, “nothing in the Supreme Court’s opinion in Dastar
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`bars prospective plaintiffs from bringing a false endorsement . . . claim under the Lanham Act.”
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`Henley v. Devore, Civ. A. No. 09-481, 2009 WL 10697982, at *7 (C.D. Cal. Jul. 8, 2009).
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`Moreover, courts have allowed a plaintiff’s false endorsement claim to proceed notwithstanding
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`Dastar where a complaint alleges that the defendant used the plaintiff’s identity or likeness to
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`deceive the public into believing that the plaintiff endorsed the defendant’s product. See Beastie
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`Boys v. Monster Energy Co., 66 F. Supp. 3d 424, 448 (S.D.N.Y. 2014) (noting that courts “have
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`found viable false endorsement claims where, for example, [a product] bore a celebrity’s name
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`and likeness, . . . included an image of a celebrity, [or] featured [a] character dressed in a celebrity’s
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`signature costume” (citing Bruce Lee Enter., LLC v. A.V.E.L.A., Inc., Civ. A. No. 10-2333, 2013
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`WL 822173, at *19–22 (S.D.N.Y. Mar. 6, 2013); Jackson v. Odenat, 9 F. Supp. 3d 342, 361
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`(S.D.N.Y. 2014); Burck v. Mars, Inc., 571 F. Supp. 2d 446, 455–56 (S.D.N.Y. 2008))); see also
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`Lions Gate Entm’t Inc. v. TD Ameritrade Servs. Co., 170 F. Supp. 3d 1249, 1269 (C.D. Cal. 2016)
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`(noting that Dastar does not necessarily bar a plaintiff’s false endorsement claim where the mark
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`that the defendant allegedly infringed “is [the plaintiff’s] celebrity identity”).
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`Here, the Complaint alleges the following: “Pellegrino has depicted his Signature Move .
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`. . in front of hundreds of thousands of fans” and “[v]ideos . . . in which he displays his Signature
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`Move have . . . garnered millions of views” (Compl. ¶ 18); thus, “Pellegrino is unanimously
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`credited with creating the Signature Move and exploiting it as his personal mark to identify himself
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`and his performances as a saxophone player” (id. ¶ 24); Epic “developed the Phone It In emote to
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`intentionally mimic Pellegrino performing the Signature Move” (id. ¶ 42); Epic named the emote
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`“‘Phone It In’” to “allude[] to Pellegrino’s appearance in a Google Pixel 2 phone commercial in
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`2017” (id. ¶ 5); “[t]he reaction from many players worldwide was immediate recognition of the
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`Case 2:19-cv-01806-JP Document 28 Filed 03/31/20 Page 16 of 25
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`emote as embodying the Signature Move” (id. ¶¶ 41); and, as a result of Epic’s allege