— Jessica Gutierrez Alm, Attorney
No one does the Carlton quite like Carlton Banks. (Queue Tom Jones’s It’s Not Unusual.) Since actor Alfonso Ribeiro first performed the unique dance on The Fresh Prince of Bel-Air, it has been readily associated with him. When the dance move recently appeared as a purchasable avatar dance in the popular video game, Fortnite, players quickly recognized Carlton’s signature move.
Fortnite is a battle royale-style combat game in which players, through their avatars, fight to the finish. In-game purchases allow players to download character skins, clothing, and emotes (dances) for their avatars to perform on the battlefield. In January 2018, the makers of Fortnite introduced a new emote available for purchase: a Carlton-esque dance called the Fresh. When a player purchases and downloads the Fresh emote, the player’s avatar can perform the dance move on command.
Ribeiro filed suit against Fortnite creator, Epic Games, last month in a California federal district court. The suit has been widely reported as a copyright case, prompting many to analyze whether short dance moves like the Carlton are eligible for copyright protections. Their collective answer: probably not.
While choreographic works are eligible for copyright, the US Copyright Office states that it will not register for copyright “short dance routines consisting of only a few movement or steps with minor linear or spatial variations, even if a routine is novel or distinctive.” Individual steps or movements, such as the Waltz step, hustle step and grapevine are not copyrightable, according to the Copyright Office’s guidance in Circular 52. Social dances are similarly not eligible for copyright registration. “[U]ncopyrightable social dances are generally intended to be performed by members of the public for the enjoyment of the dancers themselves,” as opposed to registrable choreographic works, which are “intended to be executed by skilled performers before an audience.” At most, it is unclear whether the Carlton is complex enough, or includes enough movements or length, to be eligible for copyright protections. Of course even if the Carlton dance is copyrightable, NBC Productions might have something to say about ownership of the copyright.
But Ribeiro’s suit against the makers of Fortnite alleges more than mere copyright infringement. In addition, Ribeiro is suing Epic Games for violation of his statutory and common law right of publicity.
Vanna White-bot, Here’s Johnny Toilets, and the Right of Publicity
In general, the right of publicity protects an individual’s right to control the commercial use of her name and likeness. In California, courts have defined a broad right of publicity.
Federal courts have determined that the California common law right of publicity is not strictly limited to an individual’s name and likeness. In White v. Samsung Electronics, Vanna White sued Samsung for its depiction of a robot adorned with blond wig, gown, and jewelry in a VCR ad. 971 F.2d 1395 (9th Cir. 1992). The familiar robot was posed next to a gameshow letter board reminiscent of the Wheel of Fortune. The caption read, “Longest-running game show. 2012 A.D.” Notably, the case is from 1992, and the ad was part of a campaign depicting use of various Samsung products in a futuristic setting. Recognizing that although the defendants did not actually use White’s name or image, the court determined that the ad was clearly intended to depict White and presented colorable right of publicity claim.
In another case, the Ninth Circuit held that Ford Motor’s use of a Bette Midler sound-alike voice was a violation of Midler’s right of publicity, even without any use of Midler’s name or image. Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988). And in Carson v. Here’s Johnny Portable Toilets, the Sixth Circuit held that the defendant’s use of the phrase “Here’s Johnny” to market portable toilets was a misappropriation of Carson’s persona. 810 F.2nd 104 (6th Cir. 1987)
In light of this precedent, Ribeiro’s right of publicity claims seem stronger than his copyright claims. The complaint also includes claims under the Lanham Act and California statutes for unfair competition. Ribeiro alleges that the company’s use of the dance move creates a false impression that either Epic Games created the dance move or that Ribeiro provided sponsorship.
What are your thoughts on these unfair competition claims? Are they stronger than the copyright infringement claims?
The Vanna White case also included a Lanham Act unfair competition claim. The court in that case recognized a celebrity’s ability to bring such claims to protect her persona. The court permitted the Lanham Act claim to proceed to a jury along with White’s right of publicity claim. Ultimately, the jury found for White and awarded over $400,000.
Others Join the Fight
Ribeiro is not the only artist to challenge Epic Games on the IP battlefield. Rapper 2 Milly (Terrance Ferguson) sued Epic Games for creating an emote based on his Milly Rock dance. And most recently, Backpack Kid (Russell Horning) sued Epic Games for introducing an emote modeled after his viral Floss dance. Both complaints include claims for copyright infringement, violation of right of publicity, and unfair competition claims.