Inevitably, success of such mammoth proportions is attended by a few complications. In this case, a spate of multi-million-dollar lawsuits filed against Epic Games for the alleged infringement of intellectual property rights.
While the basic game itself is ostensibly free-to-play, various additional accessories can be purchased via the game’s item shop using virtual currency, including emotes. The item shop earns Epic Games hundreds of millions of dollars each month, making Fortnite one of the most profitable video games in history.
The emotes often make reference to videos which have gone viral on YouTube. An example is the "Swipe It" emote, allegedly drawn from rap artists 2 Milly’s video for the single Milly Rock, in which he performs the move.
Incensed by the inclusion of this dance move in the game, Terrence Ferguson (the artist behind the 2 Milly persona) filed a suit against Epic Games in the US, alleging copyright infringement of the choreographed dance routine, unauthorised exploitation and violation of publicity rights as well as unfair competition.
Various other artists and individuals have filed complaints against Epic games for the infringement of intellectual property rights by way of inclusion of their dance moves as emotes in the game, including Fresh Prince of Bel-Air star Alfonso Ribeiro, Russell "Backpack Kid" Horning, and rapper James "BlocBoyJB" Baker.
What would the position be under South African law?
Under the South African Copyright Act, choreographic works and entertainment in dumbshow (dramatic mime) are protected as a subcategory of dramatic works.
Provided that certain preconditions are met, copyright will automatically subsist in a copyright work. These preconditions include, amongst others, that the work is original (not copied) and has been reduced to material form.
In principle, a choreographed dance or even a single dance move may potentially qualify as a work eligible for copyright. However, our courts have held in a number of cases that in order to qualify as a work, the matter in question needs to have sufficient substance to warrant protection. A work which is too simple, such as the name of a song of a simple drawing of a circle, would not qualify. It is consequently debatable whether such rudimentary movements as the Milly Rock would have the requisite substance to qualify as a protectable choreographic work.
The originality standard would also potentially be a tough hurdle to overcome. The plaintiff (in this case 2 Milly) would need to show that the move was indeed originated by him, and not copied from another source. Given the history of dancing throughout the world, this would likely be a difficult argument to make.
Provided the plaintiff is able to prove the elements of copyright and ownership of the work, he would be entitled to object to any unauthorised reproduction or adaption of the work, or a substantial part thereof. If the plaintiff was however able to substantiate these claims, are there any defences to copyright infringement that Epic Games could rely on?
The exceptions to infringement of copyright in our Copyright Act largely relate to use of protected works for non-commercial reasons, for example research or private study, or personal or private use. As the use of the emotes is plainly for large-scale economic gain, it is unlikely that Epic Games would be able to avail themselves to such defences once the plaintiff has proved that copyright subsists in the work.
2. Image rights
Another area of the law that may potentially provide respite to artists distressed by the inclusion of their dances in the game is the law of image rights (identity rights). In South Africa, we follow a common law approach to image rights.
The right to identity relates to an individual’s collection of unique and distinguishing attributes. When these attributes are used without consent in a way that conflicts with the individual’s true image, or when such attributes are used without consent for commercial gain, the right to identity can be violated.
In O’Keeffe v Argus Printing and Publishing Co Ltd, a seminal case on image rights, the plaintiff succeeded with a claim where the respondent, had, without consent, used a photo of the plaintiff in an advertisement. The court held that that publication of the photograph for the purposes of advertising constituted a violation of that plaintiffs’ identity, for which a delictual claim arose, even in the absence of any or derision or insult.
Therefore, damage in this sense can result from the unauthorised use of the unique attributes comprising a person’s identity for commercial gain even if the plaintiff is not necessarily insulted or portrayed in an unsavoury light. In this case, if the artist could show that the dance move forms parts of the collection of unique attributes comprising their identity (i.e. that the dance move itself is a recognisable image feature), they may have a claim. The fact that the use of the Milly Rock as an emote served to publicise the artist and may even have led to patrimonial gain (revenue resulting from increased hits on the artists video on YouTube) would not necessarily mean that such use could not amount to an actionable violation of the artists image rights under South African law.
3. Unlawful competition
Unlawful competition refers to the rules that govern the competitive process between traders. It is generally accepted that liability on the basis of unlawful competition is delictual in nature and entitles an aggrieved person to prevent another person from conducting their business or activities in a manner which harms the plaintiff illegally in the conduct of his own business activities. Unlawful competition protects the trader’s right to goodwill, and competition is typically held to be unlawful if this right is unlawfully impinged on (What is unlawful Competition?; Wim Alberts; De Rebus). Certain recognised categories of behaviour by competitors are categorised as unlawful, including, for example, trading in contravention of a statute (in this case, the Copyright Act).
Passing off is another recognised category of unlawful competition. This refers to the situation where a trader makes a misrepresentation that his products or services are somehow associated with those of another trader. In this regard, a plaintiff may potentially be able to argue that the inclusion of their dance move as an emote in the game misrepresents to the public that there is a connection in trade between the plaintiff and the game (i.e. that it was done with the consent of, and for the benefit of, the plaintiff), and therefore that such action constitutes passing off.
A court may be inclined to assist a plaintiff if it is shown that another trader, in this case Epic Games, has derived unjustified financial benefits from the efforts of the plaintiff in a manner which could cause harm to the plaintiffs goodwill, or has passed its product off as being associated with the plaintiff.
4. Trade marks
Could a dance move be a trade mark? People typically perceive trade marks in their traditional form, as being words, logos or slogans. However, the use ‘non-traditional’ marks, including motion/movement marks, is receiving much more attention of late. Progressive trade mark legislation now expressly provide for the registration of such marks, which can be depicted in the registry by submitting a series of images showing the different stages of the movement, together with a written description. The United Kingdom Intellectual Property Office, among others, has recently begun to accept the submission of motion marks for registration in multimedia format.
The South African Trade Marks Act defines a “mark” as “any sign capable of being represented graphically, including a device, name, signature, word, letter, numeral, shape, configuration, pattern, ornamentation, colour or container for goods or any combination of the aforementioned”’, which definition is certainly broad enough to encompass motion and multimedia marks.
In addition, our registry’s Guidelines on the Examination of Trade Mark Applications expressly provide procedures for satisfying the graphic representation element for filing of trade marks insofar as motion or multimedia marks are concerned. An artist or performer wishing to protect a coined dance move could therefore conceivably attempt to register it as motion trade mark by filing a depiction of the move as either a combination of still images, or a multimedia file, accompanied by a description of the mark and the sequencing of the images. Of course, the other requirements for registration of a trade mark will still need to be met, notably that the mark is distinctive.
It follows that, provided they are able to prove the necessary elements, there are several legal avenues under South African law by which an artist such as 2 Milly may potentially be able to protect their coined dance move, and obtain remedy for harm caused by the unauthorised use of said move in a video game, particularly if such use was made for commercial gain.
Game developers and other business would do well to remember that the adage ‘imitation is the sincerest form of flattery’ rarely finds application in the intellectual property sphere.
Recent developments in the lawsuits against Epic Games:
It appears that 2 Milly’s complaint, along with a number of other complaints filed against Epic games for the infringement of intellectual property rights by way of inclusion of dance moves as emotes in the game, have been temporarily withdrawn. This is due to a recent Supreme Court decision, Fourth Estate Public Benefit Corp. v. Wall-Street.com, 586 U.S. (2019), which has altered the way US courts process copyright lawsuits, requiring that claimants first register the copyright work with the US Copyright Office before suing over an application they’ve submitted. The lawsuits have been put on hold until the Copyright Office’s review of the dances involved is complete.