Defense Counsel Discuss Outcome in Dance Steps Case

Q: What was at stake for Epic Games and Take-Two in these cases?

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.

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.

Simmons: 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, [implied] license and fair use. Solid Oak Sketches LLC v. 2K Games Inc., 16-CV-724 (S.D.N.Y. 2020).

Q: Ten cases, across the country, for two sets of clients is a lot to juggle.

Cendali: 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 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.

Simmons: Perhaps recognizing that their copyright claims were unlikely to succeed, the plaintiffs also brought right of publicity, unfair competition and unjust enrichment 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.

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 [875 F.2d 994 (2d Cir. 1989)] test because the dance steps were artistically relevant to the video games and there was no evidence of explicitly misleading statements by our clients.

Sadtler Conway: 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.

Q: The first eight cases were voluntarily dismissed after you moved to dismiss. What happened?

Cendali: 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.

Sadtler Conway: We also had the benefit of the Supreme Court issuing its decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC [139 S. Ct. 881 (2019)], 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.

Q: After these cases, is any dance protected by intellectual property?

Simmons:  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.