Rachel McCumbers v. Epic Games, Inc. et al
United States District Court for the Central District of California
Filed January 11, 2019, CACD-2-19-cv-00260

Yet another person has filed a lawsuit against Epic Games over a dance emote in Fortnite, this time the mother on behalf of the child known as “Orange Shirt Kid.”  This is the fourth lawsuit filed against Epic claiming a Fortnite dance emote constitutes infringement. You can read our earlier coverage here. The same law firm that filed the previous lawsuits also filed this new complaint. However, there are a few key differences between the Orange Shirt Kid’s case and the other cases.

A significant difference is the fact that Orange Shirt Kid submitted his dance, the Random, to a contest run by Epic, specifically for inclusion in the game. Epic held the BoogieDown contest in March 2018, in which Epic would select a player submitted dance routine to put into Fortnite. One of the rules for the competition is a contestant grants Epic a royalty-free, perpetual, and irrevocable license to use the dance routine. Orange Shirt Kid submitted his dance to the contest, but Epic did not select his dance . One possible reason Epic did not select Orange Shirt Kid’s dance is because he was a minor at the time and the contest was only open to adults.  A group of Fortnite players upset that the Random was not selected petitioned Epic to include the dance in the game. Epic eventually relented and added Orange Shirt Kid’s dance, which he celebrated by tweeting. Those celebratory tweets have now been deleted. Orange Shirt Kid’s complaint does not mention the dance contest or tweets but instead alleges Epic did not seek permission to use the routine.

Orange Shirt Kid’s claims appear to be in a more difficult position than the other similar lawsuits. Each plaintiff has to show their routine is protectable under copyright law, which could be difficult to prove on its own. However, Orange Shirt Kid must also show he did not grant Epic a license to use his dance. Epic will likely argue there is an express license created by the rules of the contest or an implied license created from the child’s behavior. Orange Shirt Kid will likely argue that, as a minor, he is unable to grant such a license.

The complaint also claims Epic has unlawfully used Orange Shirt Kid’s catchphrase, “It’s also a great exercise move!” The other lawsuits only involve a dance routine. The complaint alleges Epic violated Orange Shirt Kid’s right of publicity and trademark by using the phrase. A defendant can violate a person’s right of publicity even if the defendant does not use the person’s name or image. See Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831 (6th Cir. 1983). A defendant’s use of a catchphrase which is closely associated with a person is enough to violate the right of publicity. See, e.g., Id. It is questionable how closely associated the plaintiff is with the phrase “It’s also a great exercise move!” The phrase itself is not unique, but considering the way in which Epic included the dance into Fortnite, there is a connection between Epic’s use and Orange Shirt Kid. Again, there is also the question of whether Epic was licensed to use the material submitted by Orange Shirt Kid.

Under trademark law, the trademark owner must use the mark as a source identifier for a good or service within interstate commerce. See 15 U.S.C. § 1051(a); see also Id. § 1127. It is unclear at this point if Orange Shirt Kid is using his catchphrase as a source identifier for any goods or services. The complaint only alleges how Epic is using the catchphrase and how that will cause confusion as to its origin.  Also, there are questions regarding the strength of the mark. The complaint claims the catchphrase has reached secondary meaning, but that is a factual question that the plaintiff will need to prove in court.Epic may also be covered by the contest rules again regarding the catchphrase. The contest rules state Epic has the right to use the contestant’s publicity during or after the contest. Also, the catchphrase appears in the Orange Shirt Kid’s video submission, which may mean Epic has a non-exclusive license to use the catchphrase based on terms of the contest rules.

While there is intellectual property involved, this case could also turn on contract law due to the contest rules. We will continue to monitor all the Epic dancing cases and provide updates when available.