Protecting “The Carlton” – Is it Possible to Copyright or Trademark a Dance Move?

Protecting “The Carlton” – Is it Possible to Copyright or Trademark a Dance Move?

Fortnite Battle Royale is a wildly popular, free-to-play video game published by Epic Games. In Fortnite, up to 100 online players compete to become the last player (or group of players) alive. Last year alone, Fortnite earned an estimated $2.4 billion in revenue – largely though selling character “skins” and “emotes” to players.

A Fortnite “skin” is a cosmetic improvement to a player’s avatar while an “emote” is a specific upgrade that allows a player’s Fortnite avatar to dance after a victory on the battlefield. One such emote is the “Fresh” emote which, as shown in the side-by-side video below, appears to be an exact rendering of “The Carlton” – a dance developed and popularized by actor Alfonso Ribeiro while portraying the character Carlton Banks in The Fresh Prince of Bel-Air television program. This dance was more recently “resurrected” by Mr. Ribeiro in his performance as a contestant on the hit show Dancing with the Stars.

The fact that the skin was named the “Fresh” emote suggests that Epic Games directly and intentionally copied “The Carlton” dance from Mr. Ribeiro inasmuch as “Fresh” appears to be a reference to The Fresh Prince of Bel-Air.

Mr. Ribeiro similarly alleges that Take-Two Interactive Software – makers of the popular NBA 2K16 video game – copied The Carlton in creating another in-game dance called “So Fresh.”

A common theme in intellectual property litigation is that the more commercially successful a project, the greater the likelihood that third parties will assert claims directed against that project. Fortnite and NBA 2K16 are no exception: on December 17, 2018, lawyers for Alfonso Ribeiro filed separate suits against Epic Games and Take-Two Interactive; alleging six causes of action. These included, inter alia, direct copyright infringement and unfair competition under the Lanham Act.

On December 15, 2018, just prior to filing these suits, Mr. Ribeiro and his attorneys “shored up” his position by filing copyright registration applications for three variations of The Carlton dance – which applications were assigned Copyright Office case numbers 1- 7226013364, 1-7226013290 and 1-7225814191.

While there are a number of important issues in these cases, two of the most important issues concern novel questions of intellectual property law, namely, whether it is possible to protect a dance routine under:

copyright law; and/or
trademark law.

Such issues are of importance to anyone who creates choreography such as dancers, singers and other stage performers. This issue is also of potential importance to others who may not think of themselves as performing choreography – such as football players who may perform a signature touchdown dance.

Both these copyright and trademark issues are explored below.

Copyright Issues:

As readers of this blog already know, Copyright law protects the artistic expression of an idea – which specifically includes “choreographic works” under the Copyright Act, 17 U.S.C. § 102. The question under Copyright law is whether a short dance routine such as The Carlton could be eligible for copyright protection, i.e., “how much” material is needed to constitute a “choreographic work.”

U.S. Copyright Office Examiners review copyright applications using guidelines set forth in the Compendium of US Copyright Office Practices – a manual which is currently in its third edition. According to Compendium (Third) § 805.5(A):

“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. Likewise, 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 the routine is novel or distinctive.” (Internal citations omitted).

Section 805.5(A) goes on to provide the following hypothetical examples:

“Aruna Desai choreographed a music video for a song titled ‘Made in the USA.’ The dance is a complex and intricate work performed by a troupe of professional dancers. During the chorus, the dancers form the letters ‘U, S, A’ with their arms. Although the dance as a whole could be registered as a choreographic work, the Office would reject a claim limited to the ‘U, S, A’ gesture.”

“Butler Beauchamp is a wide receiver for a college football team. Whenever he scores a touchdown, Butler performs a celebratory dance in the endzone. The dance merely consists of a few movements of the legs, shoulders, and arms. The Office would refuse to register this dance as a choreographic work.”

Without having reviewed Mr. Ribeiro’s applications, it seems clear that he will face an uphill battle at the Copyright Office inasmuch as The Carlton appears to be the type of “short dance routine[] consisting of only a few movements or steps with minor linear or spatial variations” as contemplated by Section 805.5(A). Sources have recently reported that the Copyright Office recently denied two of Mr. Ribeiro’s three copyright applications, although the New York Times reports that Mr. Ribeiro’s lawyer plans to ask the Copyright Office to reconsider this decision on the grounds that the arrangement of Mr. Ribeiro’s dance movements should be considered a choreographic work.

In our opinion – as the Copyright Office currently interprets the Copyright Act – it is highly doubtful whether Mr. Ribeiro will prevail in securing a copyright registration since The Carlton is simply too short a routine to qualify as copyright eligible subject matter (i.e., “choreographic works”) under the Copyright Act.

Trademark Issues:

A second issue raised by Mr. Ribeiro’s lawsuits is whether a dance routine could be subject to trademark protection.

Mr. Ribeiro’s lawsuits assert claims for unfair competition under Section 43(a) of the Lanham Act (codified at 15 U.S.C. § 1125(a)). Such unfair competition arguments are predicated upon Mr. Ribeiro’s alleged, unregistered trademark rights in The Carlton – a dance which he alleges “has become synonymous with Ribeiro” and “is a part of Ribeiro’s identity and the dance’s unique movements readily evoke imagery of Ribeiro’s famous performances….”

In order to prove this claim, Mr. Ribeiro will need to show that the use of The Carlton dance within the videogames in question “has caused confusion, deception, and mistake by the creation of the false and misleading impression that [Epic Games and Take-Two] were the creators of [The Carlton] or that Ribeiro was somehow affiliated, connected, or associated with [Epic Games and Take-Two] or provided sponsorship or approval to [Epic Games and Take-Two].” Whether Mr. Ribeiro can meet this burden remains to be seen.

In our opinion, however, Mr. Ribeiro’s position would be far stronger had he took it upon himself to secure a trademark registration with the U.S. PTO prior to filing suit. In fact, this could have given him an additional cause of action for Federal trademark infringement against Epic Games and Take-Two.

In general, we think that it would be a difficult, up-hill battle to register a trademark for a dance or a dance move. This is not to say, however, that it is impossible to secure trademark rights over a dance move. Unlike copyright law – where there is some minimal degree of material required to qualify as copyright eligible subject matter, i.e., a “choreographic work” – trademark law has no such constraint. Rather, the touchstone for trademark analysis is whether a mark – be that a word, symbol, sound or even a dance – functions as an indicia of source for goods or services.

Suppose, hypothetically, that a delivery company had its drivers perform a unique, albeit short, jig every time they delivered a package. Over time, if such a jig became synonymous with that company’s package delivery service, there should be no reason why the jig could not function as a trademark and qualify for trademark registration in connection with such services.

Indeed, many celebrities and private companies have already begun exploring this untraditional source of branding by filing – and in many cases securing – trademark registrations for specific body poses or dance moves. Notable examples of such efforts include:

U.S. Reg. No. 1558100 in Class 25 for Nike’s Air Jordan “Jumpman Logo” (which is generally considered to depict Michael Jordan jumping while performing a slam-dunk) as shown below:

U.S. Reg. No. 5315364 in Class 16 for an image of legendary actor and martial artist Bruce Lee in a flying kick pose as shown below:

U.S. Reg. No. 5072624 in Class 14 for a silhouette (self-evidently of Bruce Lee) in a flying kick pose as shown below:

U.S. Application Serial No. 87488312 in Class 25 for “CP 16” and a silhouette of female soccer player Carson Pickett as shown below:

U.S. Reg. No. 5216830 in Class 25 for a silhouette of dance artist Kento Mori in a dance pose as shown below:

and

U.S. Reg. No. 4709331 in Class 25 for a silhouette of a man jumping into a heel-kick dance position as shown below:

Perhaps the best example of securing trademark protection over a dance move comes from Michael Jackson’s estate which has sought extensive trademark protection over the following stylized mark (self-evidently depicting Michael Jackson’s iconic “toe stand” dance move):

In fact, Mr. Jackson’s estate owns no less than five registered trademarks / pending trademark applications covering the stylized “toe stand” mark shown above, to wit: (i) U.S. Reg. No. 1717652 in Class 9; (ii) U.S. Reg. No. 4392498 in Class 9; (iii) U.S. Reg. No. 4392499 in Class 25; (iv) U.S. Reg. No. 4396413 in Class 16; and (v) U.S. Serial No. 87215129 in Class 41. Such filings make this “toe stand” mark arguably the best protected dance move in the United States with respect to trademark rights.

Had Mr. Ribeiro done more to secure trademark rights in The Carlton, he would now be in a much stronger litigation position against Epic Games and Take-Two. For example, perhaps Mr. Ribeiro could have sought trademark registration for a silhouette of himself performing one of the component “moves” comprising The Carlton. Or, perhaps, he could have even sought trademark registration for a composite logo including multiple silhouette of himself performing several of the component “moves” comprising The Carlton.

If you are a choreographer, dancer, performer or athlete interested in protecting one of your dances, please call us today for a free consultation.