Our Litigators of the Week are Kirkland & Ellis partners Dale Cendali, Joshua Simmons and Shanti Sadtler Conway, who notched another win in cutting-edge litigation that questions the protectability of dance steps, what constitutes choreography and the relationship between copyright and trademark law.
Representing video game makers Epic Games and Take-Two Interactive, the Kirkland trio has fended off a series of 10 lawsuits, including the most recent—a claim by University of Maryland basketball players Jaylen Brantley and Jared Nickens, who asserted that the “Running Man” emote in Epic’s “Fortnite” video game copied their “Running Man” dance.
Cendali, Simmons and Sadtler Conway discussed the cases with Lit Daily.
Lit Daily: What was at stake for Epic Games and Take-Two in these cases?
Dale Cendali: The issue was whether our clients’ video games infringed the copyrights and other intellectual property rights of seven plaintiffs by including dance steps in their video games. Although choreography has been protected by U.S. copyright law in one form or another for over 100 years, individual dance steps and short routines are not copyrightable.
This week, we won a major motion to dismiss in the District of Maryland in one of the 10 cases that the plaintiffs filed. The Brantley decision makes clear that you cannot circumvent copyright law by re-styling deficient copyright claims as state law unfair competition, trademark, or right of publicity claims, as the plaintiffs attempted to do here, safeguarding both video games and by extension other entertainment properties.
How did your team get involved, and who are the key members?
Joshua Simmons: We have a long history of representing video game developers and publishers, as well as being hired for cases of first impression like these. In fact, one of my first cases was on behalf of the makers of the Tetris electronic game, where we won summary judgment on the protectability of Tetris’ well-known game elements.
When the dance cases were filed, Dale and I were litigating a similar set of cutting-edge cases concerning whether, when it simulates real-world basketball, one of our clients’ video games infringed copyrights in tattoos by depicting the NBA players accurately with their tattoos—we actually recently won one of them on a motion for summary judgment in the Southern District of New York, where the court found de minimis use, license, and fair use.
We assume the clients thought we were a natural fit to take on these cases for them, and it didn’t hurt that Shanti has a dance background and had written and given interviews on the interplay between copyright and dance before!
Dale: One of the things you can’t predict is how cases will come to you—you just have to hope your body of work and reputation keeps you top of mind.
Here, full credit goes to in-house counsel at our clients who thought we would be a good choice and that it would be more efficient and consistent for a single firm to handle all of the cases. It’s a great thing about working for a lot of companies in the same industry—they all know each other, and hopefully feel confident enough about your work to recommend you to their friends. Plus, as outside counsel, you can build on your industry expertise from case to case.
Shanti Sadtler Conway: In terms of the team, we try to keep things lean. Dale provided the overall strategic vision and focused in particular on drafting the preliminary statements. Then, Josh and I split up responsibility for doing the first drafts of the motions to dismiss.
Given that I was familiar with dance and how to describe the dance steps in words, I took the lead on our factual narrative, while Josh worked on analyzing the legal claims. Of course, we got great help, at different points, from our amazing associates, Megan McKeown, Ari Lipsitz, and Luke Budiardjo.
Ten cases, across the country, for two sets of clients is a lot to juggle. What was your team’s overall strategic approach?
Dale: We felt the complaints were legally deficient on their face and it was important to try to win the cases right away, especially as they had attracted a lot of press coverage.
The first eight cases were filed one right after the other in the Central District of California; the other two cases were filed later in the District of Maryland and the Eastern District of Pennsylvania. In the California cases, we were able to file not just a motion to dismiss but a motion to strike under California’s anti-SLAPP statute, which shifts the burden to the plaintiff and provides an additional opportunity for attorney’s fees.
In terms of the copyright claim, we argued that although choreographic works are protected by copyright law, individual dance steps are not, both because they are building blocks of creative expression like numbers, notes, or colors that alone cannot be protected, and are merely unprotectable ideas.
In addition, the dance steps in the video games were different from the dance steps that the plaintiffs allegedly created. Thus, we argued that, as a matter of law, the plaintiffs could not establish substantial similarity between the works, which is required to state a claim for copyright infringement.
Shanti and I made a similar argument in Rentmeester v. Nike, Inc., in which the Ninth Circuit held that two photographs of Michael Jordan were not substantially similar, as did Josh and I in Alexander v. Murdoch at the Second Circuit and Wolstenholme v. Hirst in the Southern District of New York.
Josh: Perhaps recognizing that their copyright claims were unlikely to succeed, the plaintiffs also brought right of publicity and trademark claims under state law. For those claims, we had a two-pronged approach. First, we argued that they were preempted by the Copyright Act, because state law cannot vindicate rights akin to copyrights that Congress has chosen not to provide in the Copyright Act. There was a well-reasoned decision on the dance lift in Dirty Dancing that was directly on point, which we happily cited.
Second, we argued that the claims were barred by the First Amendment. We asserted that the right of publicity claims failed because the video games satisfied the Transformative Use test as the games’ avatars did not resemble the plaintiffs and were placed in a setting the plaintiffs had never been in: a battle royale using weapons to eliminate opponents.
Likewise, the trademark claims failed under the Rogers v. Grimaldi test because the dance steps were artistically relevant to the video games and there was no evidence of explicitly misleading statements by our clients.
We were very happy to find that the courts agreed with us. First, a few months ago, the Eastern District of Pennsylvania in the Pellegrino case granted our motion to dismiss on both of those issues, as well as that the plaintiff’s false designation of origin claim was barred by the Supreme Court’s Dastar decision, and his unjust enrichment and unfair competition claims were not pleaded properly. Then, this week, the District of Maryland in the Brantley case also granted our motion.
Shanti: The plaintiffs also were not able to state a claim because the dance steps are not trademarks. In general, someone’s likeness, in the abstract, cannot function as a trademark because it isn’t used consistently on specific goods. Moreover, the plaintiffs were asserting that the dance steps were trademarks for themselves. Trademark law does not permit such circular reasoning: A trademark must identify the source of a product or service. Likewise, neither of our clients were using the dance steps as their trademarks, which is required to bring a dilution claim.
The first eight cases were voluntarily dismissed after you moved to dismiss. What happened?
Dale: We assume that they voluntarily dismissed the cases when they read our various motions to dismiss and realized that they could not counter our arguments. There was also a disclosure issue. When we moved to dismiss the first action, we were unaware at that time that the Copyright Office already had refused to issue copyright registrations to the plaintiffs that would cover the dance steps citing reasoning uncannily similar to the arguments in our motion.
The plaintiffs had not disclosed that information to the courts in any of the cases. I remember we filed our first motion on a Tuesday, and on Thursday, we received the correspondence file that we had requested on an expedited basis from the Copyright Office making clear that the dance steps were not copyrightable. The next morning, I filed a supplemental declaration with the court pointing out that, without our knowing it, the Copyright Office already had weighed in on the protectability issue, agreeing with our position. The plaintiffs voluntarily dismissed all of the California cases shortly thereafter without opposition briefs being filed.
Shanti: We also had the benefit of the Supreme Court issuing its decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, requiring plaintiffs to receive either a registration or a refusal to register from the Copyright Office before a copyright claim is instituted. The plaintiffs said in the press that that was why they were dismissing the cases, but I am not so sure.
Tell us a bit more about the most recent case. What were University of Maryland basketball players Jaylen Brantley and Jared Nickens alleging? Who represented them?
Shanti: Mr. Brantley and Mr. Nickens asserted that an emote in our client’s video game copied their “Running Man” dance step that they allegedly popularized after the dance went viral on social media. Notably, their “Running Man” is not the same as the familiar dance step with the same name.
The pair asserted claims of invasion of privacy, unfair competition, unjust enrichment, trademark infringement, dilution, false designation of origin and unfair competition under the Lanham Act, and common law trademark infringement. They were represented by David Hecht, of Pierce Bainbridge and possibly now also of Hecht Partners LLP, and Richard Jaklitsch of The Jaklitsch Law Group. We had a pre-motion conference with the court last May, which some courts do to see if a motion is a good use of the parties’ and court’s time. Judge Grimm gave us the greenlight, and we filed our motion around a year ago.
Josh: Then, last week, the court issued an order dismissing the lawsuit in its entirety with prejudice. It held that the plaintiffs’ state law claims were preempted by the Copyright Act, and the federal claims were barred by Dastar. It also found that the plaintiffs could not plead that their dance step served as a trademark for the reasons Shanti mentioned earlier.
Given that no case had addressed the protectability of dance steps, how did you approach the defense? Did you have a theme?
Dale: As those who know me are aware, I like to have an overarching theme for our cases!
Josh: Dale is just being modest. She has become so well known for providing courts with catchy guideposts that synthesize the law that it is now the subject of academic literature. World-renowned copyright law professor Jane Ginsburg actually devotes an extended discussion to it in her forthcoming article, “Fair Use in the United States: Transformed, Deformed, Reformed?”
Dale: What can I say, I was honored that Professor Ginsburg thought so highly of our use of themes in our Harry Potter Lexicon case (the defendant “took too much, and did too little” with the copied material), and Josh and my Fox v. TVEyes case (distinguishing “finding content” from “delivering it”). Here, our theme was simpler: “No one can own a dance step.” It just cannot be right that someone infringes copyrights when they perform such a simple step, whether at a wedding or in a video game.
What other unique challenges did the litigation present?
Josh: It was tricky to parse through all the varying state law claims. In particular, one of the hardest things to analyze in intellectual property law is the right of publicity. Each of the 50 states has different common law and/or statutory law, both in terms of what they protect and how they determine whether expressive works have infringed those rights.
Usually we look to the domicile of the plaintiff to determine what right of publicity law to apply, so here we had to analyze the laws of California, Georgia, Maryland, Massachusetts, New Jersey, Pennsylvania, and Tennessee. We work on these issues all of the time, but I was glad to have written an article on this with one of our other associates, Miranda Means, before the cases were filed, which helped.
Shanti: It’s titled, “Split Personality: Constructing a Coherent Right of Publicity Statute.” You should check it out.
Josh: I’d also say that figuring out how to describe the dance steps in words to a court was a unique challenge. Luckily, Shanti was there to do that analysis.
Shanti: That was equal parts fun and difficult. When you discuss traditional choreography, such as classical ballet, you usually can describe each step of the dance with a word: a grand jeté, for example, is a recognized movement people can understand. Here, we needed to actually describe what the body was doing as it performed the dance step so that the court would understand that they were not, in fact, the same.
Josh: By the way, Shanti’s law school note was about dance—it’s titled, “Preservation and Protection in Dance Licensing: How Choreographers Use Contract to Fill in the Gaps of Copyright and Custom”—so she has been thinking through these descriptive issues for a long time.
Dale: As you can see, I am very proud we have built such a strong team!
After these cases, is any dance protected by intellectual property?
Josh: Absolutely. Congress made clear in the Copyright Act that choreographic works are copyrightable, but social dance steps and simple routines are not. According to the Copyright Office, choreography is the “composition and arrangement of a related series of dance movements and patterns organized into a coherent whole.” So it would register a complex and intricate set of dance steps, but individual dance steps and short routines consisting of only a few steps, like these, would not be and were not here registered. In other words, everyone can perform a waltz step, the hustle, or the grapevine to their heart’s content.
Will this decision affect entertainment companies outside of the video game industry?
Dale: I think it will. I know from talking to our clients and others in the entertainment industry that they have been watching these cases closely. As you can imagine, the outcomes of these cases have been very important for those creating video games, but dance steps are appearing in all kinds of films, series, and social media posts where the same legal principles should apply. This is an area that needed clarity and quickly. We are proud to have been chosen to litigate them.
If you were to do a dance to celebrate the win, what would it be?
Dale: If I could, the grand jeté from our Rentmeester case.
Josh: A shuffle ball change.
Shanti: Dale took mine, and a few years ago I could do one pretty well.