TRADEMARK LAW--LOOKING OUT FOR THE BIG GUYS: OUTDATED PRECEDENT REVEALS THE NEED FOR NEW LEGAL TEST IN FORTNITE LIKENESS CASE--PELLEGRINO V. EPIC GAMES, INC., 451 F. SUPP. 3D 373 (E.D. PA. 2020).

AuthorLe, Nam

States have an interest in both protecting an individual's right of publicity and safeguarding the proprietary interest in their acts and likeness. (1) In a world of viral videos and overnight fame, issues have arisen regarding the extent to which public figures have ownership over their image and signature moves, and whether third parties, like video game developers, can profit off them. (2) In Pellegrino v. Epic Games, Inc., (3) the United States District Court for the Eastern District of Pennsylvania considered whether Epic Games, Inc. ("Epic") misappropriated Leo Pellegrino's ("Pellegrino") likeness and signature move when creating the "Phone It In" emote for its game Fortnite Battle Royale ("Fortnite") (4) The court ultimately dismissed Pellegrino's right of publicity claims and found that Epic's use of Pellegrino's likeness in creating the "Phone It In" emote satisfied the Transformative Use Test ("Test"), granting the emote First Amendment protection. (5)

Pellegrino is a professional baritone saxophone player and member of the "brass house" group Too Many Zooz. (6) At concerts and festivals, Pellegrino performs his signature move: a series of movements that "express his own unique dancing style." (7) Pellegrino performs his signature move so frequently and in front of so many people that "it has become inextricably linked to his identity." (8) Epic is a video game developer that created Fortnite, one of the most popular video games ever. (9) It is described as "a battle royale video game that blends survival, exploration, and scavenging elements with last-man-standing gameplay." (10) Within its free-to-play game, Epic generates revenue through in-game purchases, such as customizable outfits and content for player avatars; this content includes their popular "emotes," which allow players to cause their Fortnite avatar to perform certain dances, movements, or acts. (11) By copying moves from popular celebrities and viral videos, Epic promotes the purchase of these emotes because it allows players to mimic their favorite idols in-game. (12)

One of the emotes Epic created and currently profits from is the "Phone It In" emote, which is identical to Pellegrino's signature move. (13) While many Fortnite players recognized the emote as Pellegrino's signature move, some players were under the false impression that it was Epic's original creation. (14) As a result, Pellegrino brought suit against Epic and asserted that it used his name or likeness without consent in violation of Pennsylvania statute [section] 8316. (15) The district court ultimately dismissed Pellegrino's [section] 8316 claim because he was unable to prove that the "Phone It In" emote resembled his appearance or biographical information. (16) Moreover, in applying the Transformative Use Test, the court emphasized that Fortnite players can customize their characters with various emotes that mimic celebrities other than Pellegrino. (17) The court further reasoned that emotes are utilized in a battle royale setting--whereas Pellegrino executes his signature move at musical performances and festivals--thereby making Epic's "Phone It In" emote sufficiently transformative to be granted First Amendment protections. (18)

The right of publicity grants famous figures the ability to control and profit from certain uses of their identities. (19) In an effort to protect this right, courts have utilized different balancing tests to limit others from copying a famous figure's signature moves. (20) One such test came from the United States Court of Appeals for the Second Circuit decision Rogers v. Grimaldi; here, the court created a two-prong test to determine whether a work is protected under the First Amendment. (21) The first prong examines the title of the work and the second prong states that no protection will be granted if the work clearly misleads consumers as to the source or content of the work. (22) This test has been met with criticism, however, as it is ill-suited for application to video games. (23) Another test is the Predominant Use Test, as applied by the Missouri Supreme Court in Doe v. TCI Cablevision (24); there, the court examined the creative intent behind the work and held that protection will only be granted where there is intent to make a distinct creative work. (25) The Predominant Use Test is not immune from criticism either, as it fails to properly examine works that seek to make an expressive comment while directly imitating a famous figure's likeness. (26)

Finally, courts utilize the Transformative Use Test, which the United States Court of Appeals for the Third Circuit expanded upon in Hart v. Electronic Arts, Inc. (27) The Transformative Use Test asks if the imitation is so transformed that it mainly becomes a defendant's own expression rather than the celebrity's likeness. (28) Like the Rogers and Predominant Use Tests, the Transformative Use Test has not escaped criticism because it lacks clear, objective guidelines and essentially allows judges to base decisions on external factors. (29) The Transformative Use Test has been used in a myriad of cases and continues to be used even as it is met with changing circumstances, such as the video game industry's continued incorporation of pop culture figures. (30)

A notable invocation of the Transformative Use Test came with Winter v. DC Comics, where the Supreme Court of California found that using the likeness of two musicians to create two half-worm, half-human comic book characters was sufficiently transformative and therefore protected by the First Amendment. (31) A few years later, the California Court of Appeal addressed a singer's claim against a video game producer in Kirby v. Sega of America, Inc., where the singer claimed a video game character used her persona. (32) The court in Kirby held that Sega of America was protected because the character in the game, Ulala, was not a literal depiction of the plaintiff, American musician Kirby, but was instead based on a Japanese "anime" style character with a different storyline and background from Kirby. (33) In contrast, the California court found in favor of the plaintiff in No Doubt v. Activision Publishing, Inc., ruling that there was insufficient transformation where avatars, based on the musicians of a popular rock band, performed in outer space venues in a video game, because the game still involved the plaintiff band members doing what they typically do--singing and performing music. (34) In two important Electronic Arts ("EA") cases, Hart v. Electronic Arts, Inc., and Keller v. Electronic Arts, Inc., two different federal courts examined video games focused on collegiate sports and held that there was insufficient transformative use of student-athletes to provide First Amendment protection. (35) Most recently, in Mitchell v. Cartoon Network, Inc., a court examined the likeness of a television character to the plaintiff, Billy Mitchell, a figure in the video gaming community well-known for his world record high scores in famous arcade games, and found the defendant's use of the plaintiff's likeness was sufficiently transformative under the Test. (36)

In Pellegrino, the District Court for the Eastern District of Pennsylvania dismissed Pellegrino's right of publicity and privacy claims, finding that Epic's use of Pellegrino's likeness was sufficiently transformative under the Transformative Use Test. (37) First, the court established that the First Amendment protects Fortnite as an expressive work because it is a video game. (38) Then, following the precedent set by the Third Circuit in Hart, the court applied the Transformative Use Test when balancing Epic's First Amendment protections against Pellegrino's publicity and privacy rights. (39) The Transformative Use Test provides that an expressive work that overcomes a celebrity plaintiff's interest in their likeness is granted First Amendment protections as long as "the product containing [the] celebrity's likeness is so transformed that it has become primarily the defendant's own expression rather than the celebrity's likeness." (40)

When applying the Transformative Use Test, the court found that Fortnite avatars using the "Phone It In" emote did not resemble Pellegrino in appearance or biographical information. (41) Additionally, Fortnite avatars fight in a battle royale environment and can perform emotes like "Phone It In" while wielding weapons and using violence to eliminate other avatars. (42) On the other hand, Pellegrino is a musical performer who performs his signature move at concerts and festivals. (43) The court found that, because Fortnite avatars did not share Pellegrino's identity or his profession, Epic's use of Pellegrino's likeness was sufficiently transformative under the Transformative Use Test. (44) Accordingly, the court dismissed Pellegrino's claim of right to publicity and privacy because Epic's use of Pellegrino's likeness was provided First Amendment protections under the Transformative Use Test that are not outweighed by Pellegrino's interests in his likeness. (45)

While the Pellegrino court correctly followed precedent in utilizing the Transformative Use Test, the Test itself is not immune to criticism. (46) A frequently raised...

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