12 October, 2019
What you need to know
- Epic Games, the developer of the online video game Fortnite, was sued by a number of high profile individuals for copyright infringement in the US. The individuals alleged that Epic Games had exploited certain dance moves they claim to have created without permission.
- In the US copyright can be registered, including copyright in choreography. The US Supreme Court recently clarified that copyright owners must obtain copyright registration prior to bringing an infringement suit. Two of the plaintiffs failed in their applications to register their dance moves on the ground that the dance moves were only simple routines that did not qualify as choreographic works. As a result all of the plaintiffs withdrew their suits against Epic Games.
- There is no copyright registration system in Australia but should similar proceedings be brought here, it is likely to be difficult for the claimed creators of simple dance moves to establish the requisite originality for them to be afforded copyright protection under the Australian copyright regime.
In 2018 Fortnite was a phenomenon. At the height of its popularity, the game attracted millions of players who engaged in an online fight for survival known as Battle Royale. But, after a bumper year of profits (US$3 billion plus change), the developers, Epic Games, found themselves in a battle of a different kind. Several celebrities alleged that their dance moves had been animated into the game without permission, amounting to copyright infringement and warranting a massive damages payout. Eight months' later, and after a knock-out US Supreme Court decision on copyright registration, each lawsuit has all but collapsed. In this article we report on why Epic is the last player standing.
What is 'Fortnite'?
Fortnite: Battle Royale is an online video game that was released by developer Epic Games in October 2017. The game's 'Battle Royale' mode pits up to 100 players against each-other in a fight for survival, with the last player standing being declared the winner. Since its release, Fortnite gained immense popularity worldwide and brought in more than US $1 billion in revenue. In 2018, Epic reported a profit of US $3 billion dollars, largely earned off the game's success.
Today the company is worth around US $15 billion.
A key to Epic's financial success is the "freemium" business model adopted for Fortnite. Epic allows players to download the game for free, but monetises optional extras that players can purchase at their discretion by converting their money into "V-bucks". These optional extras include weapons and a number of cosmetic extras that allow players to express themselves, including outfits for characters known as "skins" and dances and gestures known as "emotes". Emotes can be performed by characters within the game when cued by a player (e.g. upon victory). To encourage players to make purchases, emotes are marketed as replicating well-known or popular celebrity dance moves.
Epic's strategy of referencing popular dance moves in Fortnite has become extremely lucrative for the company. It is reported that 69% of all Fortnite players have spent money within the game, with the average annual spend coming in at $85 per player. It is estimated that money spent by players on emotes accounts for roughly 10% of their annual spend.
The money involved adds up quickly when you consider that, at the peak of its popularity, over 40 million people around the world logged in to play Fortnite monthly.
Who was suing and why?
In December 2018, Terrence Ferguson (rapper known as 2 Milly), Alfonso Ribeiro (of Fresh Prince fame) and Anita Redd (on behalf of her son Russell Horning, better known as the Backpack Kid) each filed individual claims against Epic Games in the District Court of California for the use of certain dance moves as emotes without their permission. These claims were followed by an additional suit by Rachel McCumbers on behalf of her son, known as the "Orange Shirt Kid", whose dance moves were submitted to Epic Games as part of a competition being run by the company to select a new emote for the game.
The dance moves in issue are the Milly Rock dance (known as "Swipe It"), the Carlton Dance (known as "Fresh"), the Floss dance (known as "Floss") and The Random (known as "Orange Justice") (collectively Dances) – they are all worth viewing on YouTube.
Copyright Law in the US
The Law
Section 102(a) of the Copyright Act of 1976 (the US Act) provides that copyright protection subsists in original works of
authorship fixed in any tangible medium of expression, now known or later developed, from which the work can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. There are a number of categories of original works of authorship including literary works, musical works, dramatic works and pictorial, graphic and sculptural works.
Section 102(a)(4) of the US Act provides that copyright can subsist in choreographic works. Although choreographic works are not defined by the US Act, a Circular has been issued by the US Copyright Office that defines choreography as the composition and arrangement of a related series of dance movements and patterns organised into an integrated, coherent, and expressive whole (think the dance progressions from West Side Story).
It follows that where choreography includes a defined and organised sequence of movements that are expressive or tell a narrative, it is possible for copyright to subsist in a dance and registration will ordinarily be granted. However, the Circular also states that social dances (e.g. dances not ordinarily performed by skilled professionals, such as line dancing, square dancing and folk dancing), are not ordinarily protected by copyright.
There is no express provision in the US Act that provides copyright protection for discrete dance moves (like "the lawnmower", a disco classic). The Copyright Office Circular states:
"Individual movements or dance steps by themselves are not copyrightable, such as the basic waltz step, the hustle step, the grapevine, or the second position in classical ballet. The U.S. Copyright Office cannot register short dance routines consisting of only a few movements or steps with minor linear or spatial variations, even if a routine is novel or distinctive".
Whilst copyright subsists upon creation of the work, in the United States an author's rights are strengthened upon registration with the Copyright Office. For example, a recent US Supreme Court decision has clarified that copyright owners must obtain copyright registration prior to bringing an infringement suit. A party who is refused a copyright registration can also bring proceedings pursuant to s 411(a) of the US Act.
Application to Dances
The Supreme Court decision was all but fatal to the Fortnite litigation. At the time that the suits were filed by Ferguson & Co, none of the plaintiffs had actually registered the copyright in their respective dance moves with the US Copyright Office. They had, however, filed applications. The Backpack Kid and his company RH Performer LLC submitted applications for copyright registration on 30 July 2018 and 22 October 2018. Ferguson submitted his application immediately before he commenced proceedings, on 4 December 2018, and Ribeiro submitted his application even later, on 15 December 2018.
Both Ferguson and Ribeiro's applications have been rejected by the Copyright Office. With respect to Ribeiro's dance, the Copyright Office stated that "[T]he work submitted for registration with this application consists of a simple routine made up of three dance steps…[T]he combination of these three dance steps is a simple routine that is not registrable as a choreographic work," (i.e. it lacked the requisite elements for protection).
The Backpack Kid has managed to successfully register a longer version of his Floss Dance, because it contains more of the characteristics of a choreographic work, as opposed to an individual dance move. However the version used by Epic in Fortnite has not been registered. Registration of the Orange Shirt Kid's dance is still pending.
In light of the attitude of the US Copyright Office toward registering discrete dance sequences and the recent US Supreme Court decision, all of the plaintiffs have since withdrawn their suits and it is uncertain whether or not they intend to revive them. For the time being at least, Epic has survived the fight (and is no doubt emoting about it).
Copyright law in Australia
The Law
In Australia there is no system for copyright registration and, therefore, no requirement for copyright to be registered before commencing an infringement proceeding. Many of the procedural difficulties faced by the plaintiffs in the US following the Supreme Court decision would not be encountered if the Fortnite litigation was conducted in Australia.
Whether or not copyright subsists is a question of law determined by reference to the categories of protected subject matter under the Copyright Act 1968 (Cth) (the AU Act).
There are two categories of protected subject matter under the AU Act:
- Works – comprising literary, dramatic, musical and artistic works; and
- Subject matter other than works – including sound recordings, films and broadcasts.
Although, dances themselves do not expressly fall within the categories of protected subject matter under the AU Act, dramatic works, including choreographic shows, are protected. The phrase "choreographic show" is not defined in the AU Act and no specific guidance has been issued on what is intended to be covered. The use of the word "show" however connotes something more substantial than a "twerk" or two.
To be a dramatic work, the work must be original and in a material form in the sense that it can be documented or performed. Thus, as in the US, dance performances that communicate a narrative or form part of a musical or show are likely to be protected by copyright, whilst copyright is unlikely to subsist in individual dance steps or moves.
Would copyright subsist in the Dances?
It's likely that if the Fortnite litigation was to have occurred in Australia many of the same considerations would have applied with respect to determining subsistence, particularly given the simplicity of the Dances and inevitable questions about their originality.
In Australia, it is not necessary for subject matter to be novel, complex or possess a certain level of artistic merit in order to gain copyright protection. However, the matter to be protected must be original. In order to establish originality a party must ordinarily establish that the work originates from the author as a result of their "independent intellectual effort" in expressing the work into the relevant material form. Whether or not work is original is a factual inquiry based on the particular circumstances of that case.
There is evidence that the plaintiffs would have had trouble in demonstrating the originality of the Dances. There is footage of people performing the Backpack Kid's "Floss Dance" in videos as early as 2011, despite Mr Horning claiming to have invented the dance in 2016. Similarly, Ribeiro has stated that the "Carlton Dance" was inspired by merging two other dances that had been performed by Courteney Cox and Eddie Murphy. Whilst a work that is based on a previous work is not denied protection on that basis alone, in these circumstances it may be difficult to establish the Dances were the result of independent intellectual effort. In that sense, it would have been an uphill battle for the plaintiffs to prove that the Dances were deserving of protection under copyright law.
The work must also be of sufficient substance to attract copyright protection in Australia. In this sense, while there is no language in Australian copyright law or copyright guidance that expressly disqualifies individual dance movements or dance steps from copyright protection, they are nonetheless unlikely to be of sufficient substance to attract protection.
Future
It is unlikely that the drafters of US and Australian copyright legislation ever imagined that celebrity dance moves could attain viral recognition through the internet and be subsequently appropriated and monetised by videogame developers for millions of dollars. Even if they had, it is doubtful that they would have considered copyright law to be an appropriate vehicle to protect visual masterpieces such as the Floss Dance.
It may be that so called personality rights, where available, should be of greater prominence in litigation of this kind and might be a reason for the plaintiffs in the Fortnite litigation to continue to prosecute their claims. In jurisdictions without legislated personality rights, such as Australia, the law of defamation, passing off or misleading or deceptive conduct might need to be augmented to fit the reality of an increasingly diverse media content landscape (where "visual sampling" of individuals through memes and "deep fakes" are prevalent).
Whatever the future holds for Fortnite, this storm certainly comes with ample warning.
For further information, please contact:
Lisa Ritson, Partner, Ashurst
Lisa.ritson@ashurst.com
