UNITED STATES DISTRICT COURT 

FOR THE SOUTHERN DISTRICT OF FLORIDA 

CORAL CASTLE, INC., 

Plaintiff, 

v. 

EPIC GAMES, INC., 

Defendant. 

CASE NO. 1:20-cv-23381-UU 

DEFENDANT EPIC GAMES, INC.’S MOTION TO DISMISS AND 

INCORPORATED MEMORANDUM F LAW 

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TABLE OF CONTENTS 

PRELIMINARY STATEMENT ................................................................................................. 1

STATEMENT OF ALLEGED FACTS ...................................................................................... 3

MEMORANDUM OF LAW ........................................................................................................ 6

I. THE FIRST AMENDMENT BARS PLAINTIFF’S CLAIMS .............................. 8

II. NAMING A CORAL-ADORNED CASTLE THE “CORAL CASTLE” IS 

A PROTECTED DESCRIPTIVE FAIR USE ...................................................... 13

III. PLAINTIFF’S CLAIMS ALSO SUFFER FROM PLEADING 

FAILURES ........................................................................................................... 17

A. Plaintiff Does Not Allege Trademark Use By Epic Games ...................... 18

B. Plaintiff’s FDUTPA Claims Fail As Plaintiff Does Not Allege 

Actual Damages ........................................................................................ 18

CONCLUSION ........................................................................................................................... 20

 

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TABLE OF AUTHORITIES 

 Page(s) 

Cases 

ADT LLC v. Alarm Prot. Tech. Fla., LLC, 

No. 12 Civ. 80898, 2013 WL 11276119 (S.D. Fla. Apr. 18, 2013).........................................20 

ADT LLC v. Vivint, Inc., 

No. 17 Civ. 80432, 2017 WL 5640725 (S.D. Fla. Aug. 3, 2017) ..................................7, 19, 20 

Apotex Corp. v. Hospira Healthcare India Priv. Ltd., 

No. 18 Civ. 4903, 2019 WL 3802096 (S.D.N.Y. Aug. 13, 2019) ...........................................20 

Arnold v. ABC, Inc., 

No. 06 Civ. 1747, 2007 WL 210330 (S.D.N.Y. Jan. 29, 2007) ...............................................16 

Ashcroft v. Iqbal, 

556 U.S. 662 (2009) ...................................................................................................................6 

Bell Atl. Corp. v. Twombly, 

550 U.S. 544 (2007) ...................................................................................................................6 

BPI Sports, LLC v. Labdoor, Inc., 

No. 15 Civ. 62212, 2016 WL 739652 (S.D. Fla. Feb. 25, 2016) .............................................20 

Brown v. Elec. Arts, Inc., 

724 F.3d 1235 (9th Cir. 2013) ...................................................................................7, 9, 11, 13 

Brown v. Ent. Merchs. Ass’n, 

564 U.S. 786 (2011) ...................................................................................................................8 

Car-Freshner Corp. v. S.C. Johnson & Son, Inc., 

70 F.3d 267 (2d Cir. 1995).................................................................................................15, 16 

Caribbean Cruise Line, Inc. v. Better Bus. Bureau of Palm Beach Cnty., Inc., 

169 So. 3d 164 (Fla. 4th DCA 2015) .......................................................................................19 

Cosmetically Sealed Indus., Inc. v. Chesebrough-Pond’s USA Co., 

125 F.3d 28 (2d Cir. 1997)...........................................................................................14, 15, 16

Cummings v. Soul Train Holdings LLC, 

67 F. Supp. 3d 599 (S.D.N.Y. 2014)..........................................................................................7 

Dessert Beauty, Inc. v. Fox, 

568 F. Supp. 2d 416 (S.D.N.Y. 2008)......................................................................................16 

Case 1:20-cv-23381-UU Document 17 Entered on FLSD Docket 10/09/2020 Page 3 of 28
- iii - 

Dillinger, LLC v. Elec. Arts Inc., 

No. 1:09 Civ. 1236, 2011 WL 2457678 (S.D. Ind. June 16, 2011) .........................9, 10, 11, 13 

Diversified Mgmt. Sols., Inc. v. Control Sys. Rsch., Inc., 

No. 15 Civ. 81062, 2016 WL 4256916 (S.D. Fla. May 16, 2016) ..........................................20 

Dorestin v. Hollywood Imps., Inc., 

45 So. 3d 819 (Fla. 4th DCA 2010) .........................................................................................19 

In re Dual-Deck Video Cassette Recorder Antitrust Litig., 

11 F.3d 1460 (9th Cir. 1993) .........................................................................................7, 16, 17

E.S.S. Ent. 2000, Inc. v. Rock Star Videos, Inc., 

547 F.3d 1095 (9th Cir. 2008) ......................................................................................... passim

Eclipse Med., Inc. v. Am. Hydro-Surgical Instruments, Inc., 

262 F. Supp. 2d 1334 (S.D. Fla. 1999) ....................................................................................19 

Five for Ent. S.A. v. Rodriguez, 

877 F. Supp. 2d 1321, 1331 (S.D. Fla. 2012); .........................................................................19 

Fla. Int’l Univ. Bd. of Trs. v. Fla. Nat’l Univ., Inc., 

830 F.3d 1242 (11th Cir. 2016) .................................................................................................7 

Fort Lauderdale Lincoln Mercury, Inc. v. Corgnati, 

715 So. 2d 311 (Fla. 4th DCA 1998) .......................................................................................20 

Hard Candy, LLC v. Anastasia Beverly Hills, Inc., 

921 F.3d 1343 (11th Cir. 2019) .........................................................................................15, 16 

Hensley Mfg. v. ProPride, Inc., 

579 F.3d 603 (6th Cir. 2009) ...............................................................................................7, 17 

Int’l Stamp Art, Inc. v. U.S. Postal Serv., 

456 F.3d 1270 (11th Cir. 2006) ...............................................................................2, 14, 16, 17 

Kassa v. Detroit Metro Convention & Visitors Bureau, 

150 F. Supp. 3d 831 (E.D. Mich. 2015) ...................................................................................15 

Kent v. Universal Studios, Inc., 

No. 08 Civ. 2704, 2008 WL 11338293 (C.D. Cal. Aug. 15, 2008) ...................................10, 13 

KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 

543 U.S. 111 (2004) .......................................................................................................2, 13, 14 

Leader Glob. Sols., LLC v. Tradeco Infraestructura, S.A. DE C.V., 

155 F. Supp. 3d 1310 (S.D. Fla. 2016) (Ungaro, J.) ..................................................................6 

Case 1:20-cv-23381-UU Document 17 Entered on FLSD Docket 10/09/2020 Page 4 of 28
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Lions Gate Ent. Inc. v. TD Ameritrade Servs. Co., 

170 F. Supp. 3d 1249, 1270 (C.D. Cal 2016) .........................................................................18 

Louis Vuitton Malletier v. Warner Bros. Ent. Inc., 

868 F. Supp. 2d 172, 178 (S.D.N.Y. 2012) .............................................................................10 

Metrano v. Twentieth Century Fox Film Corp., 

No. 08 Civ. 6314, 2009 WL 10672576 (C.D. Cal. July 16, 2009) ................................9, 10, 13 

Mil-Spec Monkey, Inc. v. Activision Blizzard, Inc., 

74 F. Supp. 3d 1134 (N.D. Cal. 2014) ...............................................................................10, 12 

N.Y. Mercantile Exch., Inc. v. IntercontinentalExchange, Inc., 

389 F. Supp. 2d 527 (S.D.N.Y. 2005), aff’d, 497 F.3d 109 (2d Cir. 2007) .............................13 

Nat’l Bus. Forms & Printing, Inc. v. Ford Motor Co., 

671 F.3d 526 (5th Cir. 2012) ...................................................................................................18 

Novalogic, Inc. v. Activision Blizzard, 

41 F. Supp. 3d 885 (C.D. Cal. 2013) .............................................................................8, 10, 12 

Nyquist v. Randall, 

819 F.2d 1014 (11th Cir. 1987) ...............................................................................................19 

Oaklawn Jockey Club, Inc. v. Kentucky Downs, LLC, 

184 F. Supp. 3d 572 (W.D. Ky. 2016) .....................................................................7, 15, 16, 17 

Orkin Exterminating Co. v. DelGuidice, 

790 So. 2d 1158 (Fla. 5th DCA 2001) .....................................................................................20 

Outhouse PR, LLC v. Northstar Travel Media, LLC ̧ 

No. 19 Civ. 5979, 2020 WL 2512092 (S.D.N.Y. May 15, 2020) ............................7, 14, 15, 17 

Pellegrino v. Epic Games, Inc., 

No. 19 Civ. 1806, 2020 WL 1531867 (E.D. Pa. Mar. 31, 2020) .............................................18 

Rebellion Devs. Ltd. v. Stardock Ent., Inc., 

No. 12 Civ. 12805, 2013 WL 1944888, at *4 (E.D. Mich. May 9, 2013) ..............7, 10, 11, 13 

Rodriguez v. Recovery Performance & Marine, LLC, 

38 So. 3d 178 (Fla. 3d DCA 2010) ....................................................................................19, 20 

Rogers v. Grimaldi, 

875 F.2d 994 (2d Cir. 1989).......................................................................................................8 

Rollins, Inc. v. Heller, 

454 So. 2d 580 (Fla. 3d DCA 1984) ........................................................................................20 

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Roxbury Ent. v. Penthouse Media Grp., Inc., 

669 F. Supp. 2d 1170, 1173, 1176 (C.D. Cal. 2009) ( ...............................................................9 

Se. Clinical Nutrition Ctrs., Inc. v. Mayo Found. for Med. Educ. & Rsch., 

135 F. Supp. 3d 1267 (N.D. Ga. 2013) ..................................................................14, 15, 16, 17 

Smith v. 2001 S. Dixie Highway, Inc., 

872 So. 2d 992 (Fla. 4th DCA 2004) .......................................................................................20 

SportFuel, Inc. v. PepsiCo, Inc., 

932 F.3d 589 (7th Cir. 2019) ...................................................................................................16 

Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 

64 F.3d 1055 (7th Cir. 1995) ...................................................................................................16 

Tiffany (NJ) Inc. v. eBay, Inc., 

576 F. Supp. 2d 463 (S.D.N.Y. 2008), aff’d, 600 F.3d 93 (2d Cir. 2010) ...............................18 

Univ. of Ala. Bd. of Trs. v. New Life Art, Inc., 

683 F.3d 1266 (11th Cir. 2012) .......................................................................................1, 8, 11 

Urling v. Helms Exterminators, Inc., 

468 So. 2d 451 (Fla. 1st DCA 1985) .......................................................................................20 

Valencia v. Universal City Studios LLC, 

No. 1:14 Civ. 528, 2014 WL 7240526 (N.D. Ga. Dec. 18, 2014) ...............................10, 12, 13 

Vallejo v. Narcos Prods., LLC, 

No. 18 Civ. 23462, 2019 WL 5884513 (S.D. Fla. May 24, 2019) ..........................7, 10, 12, 13 

VIRAG, S.R.L. v. Sony Comput. Ent. Am. LLC, 

699 F. App’x 667, 668 (9th Cir. 2017), .....................................................................8, 9, 12, 13 

Statutes 

15 U.S.C. § 1115 ............................................................................................................................13 

15 U.S.C. § 1125 ............................................................................................................................13 

§ 501.211(2), Fla. Stat....................................................................................................................19 

Lanham Act ........................................................................................................................1, 7, 8, 11 

Rules 

Fed. R. Civ. P. 12 ................................................................................................................... passim

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Other Authorities 

McCarthy on Trademarks and Unfair Competition § 24:122 (5th ed.) .........................................18 

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Pursuant to Federal Rule of Civil Procedure 12(b)(6), Defendant Epic Games, Inc. (“Epic 

Games” or “Defendant”), hereby submits this motion to dismiss the Complaint (D.E. 1) filed by 

Plaintiff Coral Castle, Inc. (“Coral Castle” or “Plaintiff”), and in support hereof states: 

PRELIMINARY STATEMENT 

Through its Complaint, Plaintiff seeks to use its limited trademark rights to monopolize 

use of the descriptive phrase “Coral Castle” and prevent its use in a fictional work to describe a 

castle adorned with coral. Although Plaintiff asserts ownership of a CORAL CASTLE 

trademark, that mark is registered for only museum and online-retail services related to a onestory, limestone structure located in Florida. Nevertheless, Plaintiff is attempting to leverage 

those narrow rights to prevent Epic Games from calling a multi-story castle adorned with coral 

“Coral Castle” in a flooded world, ocean-themed Season of its world-famous fictional video 

game Fortnite. Plaintiff’s claims should be dismissed for multiple reasons. 

First, the Complaint should be dismissed because Plaintiff’s claims are barred by the 

First Amendment. In University of Alabama Board of Trustees v. New Life Art, Inc., the 

Eleventh Circuit held that the use of a trademark in an expressive work does not violate the 

Lanham Act unless (1) “the use of the mark has no artistic relevance to the underlying work 

whatsoever,” or (2) “it explicitly misleads as to the source or the content of the work.” 683 F.3d 

1266, 1278 (11th Cir. 2012). Here, there is no question that video games, like Fortnite, are 

expressive works, particularly as Fortnite, which is incorporated by reference, takes place in a 

massive, fictional world where players encounter elements of a long-term, evolving narrative. 

As to the first prong, “artistic relevance,” all that is required is relevance that is “above zero,” 

which is easily established here as the “Coral Castle” name is but one of a number of alliterative 

names for elements of the Fortnite storyline that begin with the word “Coral.” The “Coral 

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Castle” name followed that existing naming convention to evoke nautical themes in the game’s 

flooded world narrative to describe a relevant story element: a castle adorned with coral. As to 

the second prong, far from being “explicitly misleading,” Epic Games has made clear it is the 

source of Fortnite through its repeated and prominent use of its EPIC GAMES and FORTNITE 

trademarks and logos on its game box disc, and installation screens, and throughout every stage 

of playing the game. The Complaint does not allege any overt statement to the contrary. Indeed, 

the fact that the “Coral Castle” location is only one of many locations, deep within the game, in 

the context of a story about a flooded world underscores that Epic Games has not attempted to 

suggest a relationship with Plaintiff. Thus, the Complaint should be dismissed for this reason 

alone. 

Second, in KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., the Supreme 

Court made clear that one cannot monopolize descriptive terms and that it is not trademark 

infringement to use them in their ordinary, descriptive sense. 543 U.S. 111, 122 (2004). 

Consequently, descriptive fair use is expressly permitted by the Lanham Act, 15 U.S.C. §§ 

1115(b)(4), 1125(c)(3)(A), and is established in this Circuit by three factors: use “(1) other than 

as a mark, (2) in a descriptive sense, and (3) in good faith,” Int’l Stamp Art, Inc. v. U.S. Postal 

Serv., 456 F.3d 1270, 1274 (11th Cir. 2006). Here, Epic Games’ use of the name “Coral Castle” 

is a descriptive fair use based on the Complaint’s allegations and the Fortnite game itself. As to 

the first factor, use “other than as a mark,” Epic Games makes clear that it is the source of 

Fortnite. As to the second factor, use “in a descriptive sense,” the “Coral Castle” name is used 

in the game to describe a castle adorned with coral as part of a storyline that is ocean-themed. 

Moreover, the use is consistent with other alliterative location names in Fortnite—such as 

“Sweaty Sands,” “Dirty Docks,” and “Misty Meadows”—as well as other names that begin with 

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the word “Coral”—such as “Coral Cove,” “Coral Cruiser,” “Coral Chorus,” “Coral Cowl,” and 

“Coral Commandos”—all of which describe characteristics of the Fortnite video game and its 

flooded world storyline. As to the third factor, use “in good faith,” Epic Games’ repeated use of 

its own trademarks and descriptive use of the “Coral Castle” name evidence its good faith as a 

matter of law. Good faith also is clear from the differences between Plaintiff’s museum—a onestory tourist attraction where members of the public come to view monotone slabs of 

limestone—and Epic Games’ location—an actual, multi-story castle on an island in the middle of 

the ocean with brightly-colored coral adorning it. Epic Games’ location is not a museum, does 

not look like Plaintiff’s museum, and does not use Plaintiff’s logo. Thus, the Complaint should 

be dismissed on the basis of fair use as well. 

Finally, the Complaint also suffers from two fundamental pleading failures. As to 

Plaintiff’s dilution claim (Count II), Plaintiff has not alleged that Epic Games used the “Coral 

Castle” name as a trademark for Epic Games’ goods or services, which is a required element of a 

dilution claim. As to Plaintiff’s Florida Deceptive and Unfair Trade Practices (“FDUTPA”) 

claims (Counts V and VI), Plaintiff has not alleged “actual damages” as required by the statute. 

Instead, it has alleged lost sales, which is a classic form of consequential damages, not actual 

damages under FDUTPA. Thus, Plaintiff’s allegations are not sufficient to state a claim. 

For these reasons, Epic Games respectfully requests that the Court grant its motion and 

dismiss Plaintiff’s Complaint in its entirety. Moreover, as amendment would be futile, Epic 

Games requests that the Court dismiss the Complaint with prejudice. 

STATEMENT OF ALLEGED FACTS 

Plaintiff alleges that it owns a “structure” that “comprises numerous megalithic stones, 

mostly limestone formed from coral” (the “Structure”). Compl. ¶¶ 12, 15. The Structure is “a 

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privately-operated tourist attraction,” originally named “Rock Gate” and then renamed “Coral 

Castle.” Id. ¶¶ 14–15. As depicted in the Complaint, rather than being an actual castle, 

Plaintiff’s structure consists of various monotone rock formations close to the ground that 

patrons walk around: 

Id. ¶ 17. Plaintiff does not hold any trademark registrations for video games. Instead, Plaintiff 

asserts in this case two federal trademark registrations for different services (the “Marks”): 

• One is for a CORAL CASTLE mark for “museum services” and for “on-line retail 

store services featuring hats, shirts, books, DVDs, replicas of museum attractions, 

collectible spoons, thimbles, lapel pins, tie tacks, mints, Christmas ornaments, 

souvenir patches, shot glasses, bumper stickers, toys, mugs, plates, cups, souvenir tins 

sold empty, magnets.” Id. Ex. A, at 2. 

• The other registration is not for the words “Coral Castle,” but for the 

design shown to the right for “museum services.” Id. at 4. It reads 

CORAL CASTLE MUSEUM EST. 1923 ~ MIAMI, FL. 

Plaintiff alleges that Epic Games has used Plaintiff’s registered and common law 

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trademarks in its Fortnite video game. Compl. ¶ 58. In Fortnite’s Battle Royale mode, up to 

100 players, alone, in pairs, or groups, compete to be the last player or group alive on “a virtual 

island.” Id. ¶ 26. The game features an extensive world in which players explore, build, and 

destroy, as well as battle against each other via player-to-player combat. See Exhibit 1, 

Declaration of Joshua L. Simmons, dated October 9, 2020 (“Simmons Decl.”) Ex. A (copy of 

Fortnite video game). 

After Fortnite’s release in 2017, Epic Games continued to make new content available as 

part of different “Chapters” and “Seasons.” Compl. ¶ 36. They include an overarching narrative 

that engages the players, furthers the overarching storyline, and introduces new characters, 

locations, and features. Simmons Decl. Ex. A. At the end of Chapter 2, Season 2, a disaster 

causes a wall of water to come crashing across the island on which the game is set. As a result, 

Chapter 2, Season 3 of Fortnite involves a flooded map and is ocean-themed, including elements 

such as sharks, whirlpools, and a playable character outfit based on DC Comics’ Aquaman 

character. Compl. ¶¶ 38, 49. 

In Fortnite, players may visit different parts of the island, which have fanciful, thematic, 

and often alliterative names. As a result, Chapter 2, Season 3’s locations included “Sweaty 

Sands” for a beach town with sand, “Dirty Docks” for docks with dirty factories, and “Misty 

Meadows” for a town in a large meadow. Id. ¶¶ 39–40; Simmons Decl. Ex. A. It also included a 

number of locations and items with alliterative names that begin with the word “Coral,” such as 

“Coral Cove” for a cove in the ocean, “Coral Cruiser” for a glider made of coral, “Coral Chorus” 

for a music reward, “Coral Cowl” for a coral-themed outfit, and “Coral Commandos” for coralthemed fighters. Simmons Decl. ¶¶ 7–8. 

In addition to these alliterative, ocean-themed locations and other names that begin with 

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the word “Coral,” Epic Games named a castle location in the flooded world the “Coral Castle” 

(the “Location”). Compl. ¶ 5. As shown below, unlike Plaintiff’s Structure, the Coral Castle in 

Fortnite is an actual, multi-level castle adorned with coral, located on an island in the middle of 

the ocean, into which Fortnite players can enter and explore: 

Simmons Decl. ¶ 9. Indeed, Plaintiff alleges that it appears in a “beach area, including islands, 

sandbars, and water features.” Compl. ¶ 44. Plaintiff claims that the Location—which was not 

included in Fortnite until Chapter 2, Season 3 in August 2020—infringes the Marks. Id. ¶ 52. 

MEMORANDUM OF LAW 

To survive a Rule 12(b)(6) motion to dismiss, the Complaint “must contain sufficient 

factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft 

v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 

(2007)). Plaintiff must plead “factual content that allows the court to draw the reasonable 

inference that the defendant is liable for the misconduct alleged.” Ashcroft, 556 U.S. at 678. As 

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this Court has held, “[c]onclusory allegations will not suffice to state a claim,” and “a court may 

dismiss a complaint on a dispositive issue of law.” Leader Glob. Sols., LLC v. Tradeco 

Infraestructura, S.A. DE C.V., 155 F. Supp. 3d 1310, 1315 (S.D. Fla. 2016) (Ungaro, J.). 

Moreover, on a Rule 12(b)(6) motion, “a district court may consider a document attached to a 

motion to dismiss if it is (1) central to the party’s claim, and (2) its authenticity is not 

challenged.” Id. Accordingly, this Court may consider the copy of Fortnite attached as an 

exhibit to the Simmons Declaration as Plaintiff’s claims are based on the use of the name “Coral 

Castle” for the Location in Fortnite, and there can be no issue as to the authenticity of the game.

As all that is necessary to grant Epic Games’ motion is before the Court, dismissal is 

appropriate. See Brown v. Elec. Arts, Inc., 724 F.3d 1235, 1248 (9th Cir. 2013) (affirming grant 

of motion to dismiss trademark claims on Rogers grounds); Hensley Mfg. v. ProPride, Inc., 579 

F.3d 603, 612 (6th Cir. 2009) (affirming grant of motion to dismiss trademark claim based on 

descriptive use); In re Dual-Deck Video Cassette Recorder Antitrust Litig., 11 F.3d 1460, 1467 

(9th Cir. 1993) (same); Outhouse PR, LLC v. Northstar Travel Media, LLC ̧ No. 19 Civ. 5979, 

2020 WL 2512092, at *6 (S.D.N.Y. May 15, 2020) (granting motion to dismiss trademark claims 

based on descriptive use); Oaklawn Jockey Club, Inc. v. Kentucky Downs, LLC, 184 F. Supp. 3d 

572, 578–80 (W.D. Ky. 2016) (same); Cummings v. Soul Train Holdings LLC, 67 F. Supp. 3d 

599, 606–07 (S.D.N.Y. 2014) (granting motion to dismiss trademark claims on Rogers grounds); 

Rebellion Devs. Ltd. v. Stardock Ent., Inc., No. 12 Civ. 12805, 2013 WL 1944888, at *4 (E.D. 

Mich. May 9, 2013) (same).1

1

 Moreover, as “common law unfair competition is evaluated using the same legal standard as 

the . . . Lanham Act,” Plaintiff’s claims under Florida law fall with Plaintiff’s federal claims. 

Vallejo v. Narcos Prods., LLC, No. 18 Civ. 23462, 2019 WL 5884513, at *5 (S.D. Fla. May 

24, 2019) (dismissing federal and state claims under Rogers); ADT LLC v. Vivint, Inc., No. 

17 Civ. 80432, 2017 WL 5640725, at *4 (S.D. Fla. Aug. 3, 2017) (“Trademark infringement 

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I. THE FIRST AMENDMENT BARS PLAINTIFF’S CLAIMS 

Epic Games’ use of the name “Coral Castle” is protected by the First Amendment, which 

permits expressive works, like Fortnite,

2

 to use trademarks as part of their artistic message. To 

assess First Amendment protection in this context, the Eleventh Circuit has held that courts 

“should construe the Lanham Act narrowly” and “weigh the public interest in free expression 

against the public interest in avoiding consumer confusion.” Univ. of Ala., 683 F.3d at 1278. To 

do so, they use the approach adopted by the Second Circuit in Rogers v. Grimaldi, id. (citing 875 

F.2d 994, 999 (2d Cir. 1989)), which “is relatively straightforward to apply, and is very 

protective of speech.” Novalogic, Inc. v. Activision Blizzard, 41 F. Supp. 3d 885, 900 (C.D. Cal. 

2013). The approach, which applies to “the use of a trademark in the body of the work,” E.S.S. 

Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1099 (9th Cir. 2008), holds that an 

“artistically expressive use of a trademark will not violate the Lanham Act” unless (1) “the use of 

the mark has no artistic relevance to the underlying work whatsoever,” or (2) “it explicitly 

misleads as to the source or the content of the work.” Univ. of Ala., 683 F.3d at 1278 (quoting 

E.S.S., 547 F.3d at 1099). Moreover, it “applies regardless whether the [plaintiff’s] trademark 

has independent cultural significance . . . or [the defendant’s] use of the trademark within the 

video game serves to communicate a message other than the source of the trademark.” VIRAG, 

S.R.L. v. Sony Comput. Ent. Am. LLC, 699 F. App’x 667, 668 (9th Cir. 2017), aff’g, No. 3:15 

Civ. 1729, 2015 WL 5000102 (N.D. Cal. Aug. 21, 2015).3

 The test applies to both federal and 

is one type of underlying act upon which an unfair competition claim may be based, . . . and 

in such a case, the common law unfair competition claim ‘rise[s] or fall[s] with its federal 

trademark infringement . . . claim.”’ (quoting Fla. Int’l Univ. Bd. of Trs. v. Fla. Nat’l Univ., 

Inc., 830 F.3d 1242, 1267 (11th Cir. 2016))). 

2

 The Supreme Court has held that “video games qualify for First Amendment protection.” 

Brown v. Ent. Merchs. Ass’n, 564 U.S. 786, 790 (2011). 

3

 “In fact, as long as some artistic relevance exists, even a defendant’s intent to use the 

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state unfair competition and trademark claims. See E.S.S., 547 F.3d at 1099, 1101. 

As to the first prong, artistic relevance is a “de minimis requirement,” Metrano v. 

Twentieth Century Fox Film Corp., No. 08 Civ. 6314, 2009 WL 10672576, at *5 (C.D. Cal. July 

16, 2009), that the relevance be “above zero.” VIRAG, 699 F. App’x at 668. Thus, “only the use 

of a trademark with no artistic relevance to the underlying work whatsoever does not merit First 

Amendment protection.” E.S.S., 547 F.3d at 1100 (internal quotation marks omitted; emphasis 

in original). A video game is not required to be “about” the mark to qualify, id., nor does First 

Amendment protection evaporate because the relevance is “attenuated.” Dillinger, LLC v. Elec. 

Arts Inc., No. 1:09 Civ. 1236, 2011 WL 2457678, at *5 (S.D. Ind. June 16, 2011). “This blackand-white rule has the benefit of limiting [courts’] need to engage in artistic analysis in this 

context.” Brown, 724 F.3d at 1243; Dillinger, 2011 WL 2457678, at *6 (“[I]t is not the role of 

the Court to determine how meaningful the relationship between a trademark and the content of a 

literary work must be . . . any connection whatsoever is enough.”). 

Here, naming the Location “Coral Castle” was artistically relevant because it (a) follows 

the naming convention of other locations and items in Season 3’s flooded world, ocean-themed 

map, and (b) was used to describe a castle with brightly-colored coral adornments. See supra 5. 

Moreover, taking Plaintiff’s allegations in the Complaint as true for the purposes of this motion 

only further establishes artistic relevance as Plaintiff asserts that Epic Games’ depiction of the 

Location is an allusion to the Structure, making use of the name relevant under Plaintiff’s own 

theory of the case. Compl. ¶ 46 (“Both include nautical/beach motifs, castle structures, partial 

castle walls, and stone objects” and “evoke the feeling of a centuries old mysterious place.”). 

This is more than sufficient to qualify for First Amendment protection given that even a 

trademark for promotional purposes does not forfeit First Amendment protection or trump 

artistic relevance.” Novalogic, 41 F. Supp. 3d at 900 n.17. 

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“tenuous” association satisfies the first prong. See Roxbury Ent. v. Penthouse Media Grp., Inc., 

669 F. Supp. 2d 1170, 1173, 1176 (C.D. Cal. 2009) (artistically relevant to use ROUTE 66 mark 

in an adult film because the film’s story line, “to the extent there is one” concerned a young 

couple on the run); see Vallejo, 2019 WL 5884513, at *4 (artistically relevant to use character 

allegedly based on plaintiff); Valencia v. Universal City Studios LLC, No. 1:14 Civ. 528, 2014 

WL 7240526, at *8 (N.D. Ga. Dec. 18, 2014) (artistically relevant to name films Honey and 

Honey 2 as first film’s protagonist was named “Honey Daniels” and second film’s protagonist 

“drew inspiration” from her).4

 Indeed, courts routinely find video games’ use of trademarks to 

be artistically relevant. See E.S.S., 547 F.3d at 1100 (artistically relevant for video game to 

include strip club with similar name to plaintiff’s trademark given goal of creating a parody of 

East Los Angeles); Mil-Spec Monkey, Inc. v. Activision Blizzard, Inc., 74 F. Supp. 3d 1134, 1142 

(N.D. Cal. 2014) (artistically relevant to include plaintiff’s “angry monkey” patch in video game 

as it offered “players a feeling of personal identity and authenticity during game play”); 

Novalogic, 41 F. Supp. 3d at 900–01 (artistically relevant where use added “to the enjoyment 

users receive from playing the complicated game”); Rebellion, 2013 WL 1944888, at *5 

(artistically relevant for video game to use REBELLION trademark as “players may choose to 

align with ‘loyalist’ or ‘rebel’ factions in the context of a civil war”); Dillinger, 2011 WL 

2457678, at *5 (artistically relevant to use DILLINGER trademark as it “is closely associated 

with the Tommy Gun,” and Tommy Guns are used in the defendant’s “virtual world”). 

4

 See also Louis Vuitton Malletier v. Warner Bros. Ent. Inc., 868 F. Supp. 2d 172, 178 

(S.D.N.Y. 2012) (artistically relevant to use fake Louis Vuitton bag in a comedy film as one 

of the characters’ mispronunciation of “Louis Vuitton” “comes across as funny”); Metrano, 

2009 WL 10672576, at *1, 5 (artistically relevant to use comedy routine that “pokes fun at 

magic acts” for “joke” about people who believe in “Jesus’s ability to work miracles”); Kent 

v. Universal Studios, Inc., No. 08 Civ. 2704, 2008 WL 11338293, at *3 (C.D. Cal. Aug. 15, 

2008) (artistically relevant to use video as “it aids in furthering the film’s narrative”). 

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As to the second prong, a work can be subject to unfair competition or trademark claims 

only “if the creator uses the mark or material to explicitly mislead consumers as to the source or 

the content of the work.” Brown, 724 F.3d at 1245 (requiring “explicit indication,” “overt 

claim,” or “explicit misstatement”; internal quotation marks and alterations omitted). The “mere 

use of a trademark alone cannot suffice to make such use explicitly misleading.” E.S.S., 547 

F.3d at 1100; Dillinger, 2011 WL 2457678, at *6 (“To be ‘explicitly misleading,’ the 

defendant’s work must make some affirmative statement of the plaintiff’s sponsorship or 

endorsement, beyond the mere use of plaintiff’s name or other characteristic.”). In fact, the 

Eleventh Circuit has held that, “[e]ven if some members of the public would draw the incorrect 

inference that [the plaintiff] had some involvement with [the defendant’s works] that risk of 

misunderstanding, not engendered by an overt . . . claim . . . is so outweighed by the interest in 

artistic expression as to preclude any violation of the Lanham Act.” Univ. of Ala., 683 F.3d at 

1279 (alterations and internal quotation marks omitted).5

Here, Epic Games has not been explicitly misleading for three reasons. First, far from 

being misleading, Epic Games has made clear that it is the source of Fortnite. It is clear from the 

Fortnite game cover (see right) and disc that Epic Games is the source 

of Fortnite as it prominently displays Epic Games’ FORTNITE and 

EPIC GAMES trademarks and logos. Simmons Decl. Ex. A. 

Moreover, at every stage of installing and playing Fortnite, users are 

repeatedly presented with these marks. Id. ¶¶ 3–6. By contrast, the 

5

 See also Rebellion, 2013 WL 1944888, at *6 (granting motion to dismiss despite the 

plaintiff’s argument that the defendants had used its trademark for their video game to 

“willfully attempt[] to capitalize on the [plaintiff’s] reputation” as no “overt 

misrepresentation” was alleged in the complaint). 

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name “Coral Castle” appears only in relation to the Location, deep within the game, and in the 

context of many other locations. As shown in the Complaint and reproduced below, the name 

appears as a location on the Fortnite map (in yellow below), alongside all of the other locations, 

such as Sweaty Sands, Misty Meadows, and Dirty Docks (in orange below). Compl. ¶¶ 39, 45. 

Given Epic Games’ prominent and repeated use of its own trademarks to designate the source of 

Fortnite, this element is established. Mil-Spec, 74 F. Supp. 3d at 1144 (not explicitly misleading 

as video game’s “packaging is very clear as to its origin and source, prominently bearing the title 

. . . identifying its creator . . . and boasting to be ‘the best selling first person action franchise of 

all time’”); Novalogic, 41 F. Supp. 3d at 901–02 (same). 

Second, Plaintiff identifies no misleading conduct by Epic Games other than use of the Marks, 

which does not establish misleading statements. See VIRAG, 699 F. App’x at 668 (affirming 

grant of motion to dismiss as plaintiff “does not allege any ‘explicit indication, overt claim, or 

explicit misstatement’ that would cause consumer confusion”); Vallejo, 2019 WL 5884513, at *4 

(granting motion to dismiss where “Plaintiff does not allege that Defendants were explicitly 

misleading about the source or content of” their film); Valencia, 2014 WL 7240526, at *8 

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(same). Third, the Location is only one of many elements of Fortnite, see supra 5, including 

numerous other alliterative, ocean-themed location names and other names that begin with the 

word “Coral.” See supra 5. This further militates against finding that Epic Games has made 

explicitly misleading statements. See E.S.S., 547 F.3d at 1100 (not explicitly misleading to 

include plaintiff’s mark as it was “quite incidental to the overall story of the Game”); Dillinger, 

2011 WL 2457678, at *8 (not explicitly misleading to use plaintiff’s trademark “to identify one 

of many weapons within a visually complex video game comprised of countless artistic 

elements”); Metrano, 2009 WL 10672576, at *5 (not explicitly misleading to use routine as an 

incidental part of television program). As Fortnite is protected by the First Amendment, 

dismissal is appropriate. See VIRAG, 699 F. App’x at 668 (affirming grant of motion to 

dismiss); Brown, 724 F.3d at 1247–48 (same); Vallejo, 2019 WL 5884513, at *4–5 (granting 

Rule 12(b)(6) motion to dismiss); Valencia, 2014 WL 7240526, at *8 (same); Rebellion, 2013 

WL 1944888, at *6 (same); Metrano, 2009 WL 10672576, at *5 (same); Kent, 2008 WL 

11338293, at *3 (same). 

II. NAMING A CORAL-ADORNED CASTLE THE “CORAL CASTLE” IS A 

PROTECTED DESCRIPTIVE FAIR USE 

In addition to Plaintiff’s claims being barred by the First Amendment, the Lanham Act 

was not designed “to deprive commercial speakers of the ordinary utility of descriptive words,” 

KP Permanent, 543 U.S. at 122, which is why it made clear that descriptive fair use of a 

trademark is not infringement. 15 U.S.C. §§ 1115(b)(4) (fair use is not infringement), 

1125(c)(3)(A) (fair use is not dilution); N.Y. Mercantile Exch., Inc. v. IntercontinentalExchange, 

Inc., 389 F. Supp. 2d 527, 545 (S.D.N.Y. 2005) (unfair competition is “subject to a defense of 

‘fair use’”), aff’d, 497 F.3d 109 (2d Cir. 2007). The Eleventh Circuit has stated that, “in 

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essence,” descriptive fair use is a recognition that a trademark owner is forbidden “to appropriate 

a descriptive term for its exclusive use and so prevent others from accurately describing a 

characteristic of their goods.” Int’l Stamp, 456 F.3d at 1274 (alteration omitted). In raising a fair 

use defense, “the defendant has no independent burden to negate the likelihood of any 

confusion.” KP Permanent, 543 U.S. at 124. That is because “some possibility of consumer 

confusion must be compatible with fair use,” and “[i]f any confusion results, that is a risk the 

plaintiff accepted when it decided to identify its product with a mark that uses a well known 

descriptive phrase.” Id. at 121–22. 

A descriptive fair use exists where the defendant’s use is “(1) other than as a mark, (2) in 

a descriptive sense, and (3) in good faith.” Int’l Stamp, 456 F.3d at 1274. Here, each of those 

elements is established as a matter of law. 

First, as to use other than as a mark, the “relevant question is whether the use of the 

phrase is meant to identify the source of the product.” Southeast Clinical Nutrition Ctrs., Inc. v. 

Mayo Found. for Med. Educ. & Rsch., 135 F. Supp. 3d 1267, 1276 (N.D. Ga. 2013). If the 

alleged infringer “clearly indicat[es] the actual source of its products,” such as through the 

“prominent display of its own trademarks,” the first element is established. Id. at 1276–77; see 

also Cosmetically Sealed Indus., Inc. v. Chesebrough-Pond’s USA Co., 125 F.3d 28, 30 (2d Cir. 

1997). For example, in Southeast, although the plaintiff’s mark appeared as “subchapters within 

the [defendant’s] publications,” the use was not as a trademark as the defendant used its own 

name “up front, on the faces of [its] book covers,” and its logo “near the top of the bindings.” 

135 F. Supp. 3d at 1277. Similarly, in Outhouse, although the defendant used the plaintiff’s 

mark as the title of articles, such use was not as a trademark given that the articles appeared on 

the defendant’s website, “which displayed a sizable and conspicuous . . . masthead,” which was a 

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“clear identification of the articles’ source.” 2020 WL 2512092, at *5. 

Here, just as the Southeast books and Outhouse website indicated their source on their 

cover or masthead, it is clear from Epic Games’ repeated and prominent display of its EPIC 

GAMES and FORTNITE trademarks and logos on the Fortnite game cover and disc, as well as 

installation screens and other parts of the game, that Epic Games is the source of Fortnite. See 

supra 11. Given Epic Games’ prominent and repeated use of its own trademarks to designate the 

source of Fortnite, this element is established. 

Second, as to use in a descriptive sense, a mark is used descriptively when it “identifies a 

characteristic or quality of an article or service as, for example, its color, odor, function, 

dimensions, or ingredients.” Hard Candy, LLC v. Anastasia Beverly Hills, Inc., 921 F.3d 1343, 

1363 (11th Cir. 2019). Courts also have found descriptive use when a mark is used to indicate a 

location. See Oaklawn, 184 F. Supp. 3d at 578 (use of plaintiff’s racetrack name in digital 

gambling system that allowed users to bet on “historical horse racing” was descriptive); Kassa v. 

Detroit Metro Convention & Visitors Bureau, 150 F. Supp. 3d 831, 829–40 (E.D. Mich. 2015) 

(use of the phrase “Welcome to the D . . . as a greeting to the City of Detroit” was descriptive). 

Descriptive use “has not been narrowly confined to words that describe a characteristic of the 

goods, such as size or quality”; instead, it “permits use of words or images that are used . . . in 

their ‘descriptive sense.’” Cosmetically Sealed, 125 F.3d at 30 (quoting Car-Freshner Corp. v. 

S.C. Johnson & Son, Inc., 70 F.3d 267, 269 (2d Cir. 1995)). Thus, the descriptive term need not 

“depict the product itself, but only . . . refer to a characteristic of the product.” Hard Candy, 921 

F.3d at 1363 (alterations omitted; emphasis in original). For example, in Hard Candy the term 

“Hard Candy” was “used to describe the sheen of the makeup shade that the term labeled.” Id. at 

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1364.6

Here, the name “Coral Castle” is descriptive of the Location, which is a castle adorned 

with brightly-colored, flowing coral, on an island in the middle of the ocean, in an ocean-themed 

game set in a flooded world. See supra 6. As a result, Epic Games was entitled to call the 

Location “Coral Castle.” Further, it was not required to avoid the Marks by choosing a different 

name as “[c]ourts have uniformly rejected ‘almost as good’ alternatives regarding descriptive 

use.” Oaklawn, 184 F. Supp. 3d at 578–79 (“[T]he difference between the almost-right word and 

the right word is really a large matter—it’s the difference between the ‘lightning-bug’ and the 

‘lightning.’”). 

Third, as to use in good faith, the standard is “whether the alleged infringer intended to 

trade on the good will of the trademark owner by creating confusion as to the source of the goods 

or services,” and thereby “benefit from the good will associated with the holder of the mark.” 

Int’l Stamp, 456 F.3d at 1271, 1274. Good faith is shown where “the source of the defendants’ 

product is clearly identified by the prominent display of the defendants’ own trademarks.” Id. at 

1275 (quoting Cosmetically Sealed, 125 F.3d at 30). By contrast, knowledge of the plaintiff’s 

mark “is insufficient” to show bad faith. Id. at 1276; Southeast, 135 F. Supp. 3d at 1278. For 

example, the Eleventh Circuit held in International Stamp that, despite the Postal Service’s 

knowledge of the plaintiff’s mark, its use of its “familiar Eagle trademark on the backs of its 

6

 See also SportFuel, Inc. v. PepsiCo, Inc., 932 F.3d 589, 602 (7th Cir. 2019) (“Sports Fuel” 

descriptive of sports drink); Cosmetically Sealed, 125 F.3d at 30 (“Seal it with a Kiss” used 

descriptively with lipstick); Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055, 

1058–59 (7th Cir. 1995) (“sweet-tart” descriptive of cranberry juice); Car-Freshner, 70 F.3d 

at 270 (tree shape and pine scent descriptive of air fresheners); Dual-Deck, 11 F.3d at 1466–

67 (“VCR-2” descriptive as used on videocassette recorders); Dessert Beauty, Inc. v. Fox, 

568 F. Supp. 2d 416, 425 (S.D.N.Y. 2008) (“love potion” descriptive of fragrance products); 

Arnold v. ABC, Inc., No. 06 Civ. 1747, 2007 WL 210330, at *2 (S.D.N.Y. Jan. 29, 2007) 

(“What’s Your Problem?” used descriptively in advertising for legal television program). 

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stamp art products” showed good faith. 456 F.3d at 1275. Similarly, in Southeast, the 

defendant’s “prominent displays of its own . . . name and logo . . . demonstrate[d] a lack of intent 

to capitalize on the good will.” 135 F. Supp. 3d at 1279. Moreover, good faith can be found as a 

matter of law on a motion to dismiss. Outhouse, 2020 WL 2512092, at *7 (granting motion to 

dismiss; good faith as defendant used mark descriptively “accompanied by a conspicuous . . . 

masthead”). 

Here, as discussed above, Epic Games prominently and repeatedly uses its own 

trademarks to indicate the source of Fortnite is Epic Games, see supra 11, and it uses the name 

“Coral Castle” descriptively to describe a coral-adorned castle in its ocean-themed Season, see 

supra 16. Moreover, good faith is evidenced by the fact that the “Coral Castle” name is just 

another ocean-themed, alliterative location name, as well as just one of many names that begin 

with “Coral.” See supra 5. There also is nothing about Epic Games’ Location that resembles the 

Structure, or Plaintiff’s Marks—the Location is a brightly-colored, multi-level castle adorned 

with coral, not a monotone, one-story rock garden. See supra 6. There simply is no indication 

that the Location was intended to reference the Structure or Plaintiff’s Marks. Thus, Epic Games 

has used the “Coral Castle” name in good faith as a matter of law, and Plaintiff’s claims should 

be dismissed for this independent reason. See Hensley, 579 F.3d at 612 (affirming grant of 

motion to dismiss); Dual-Deck, 11 F.3d at 1467 (same); Outhouse, 2020 WL 2512092, at *6–7 

(granting Rule 12(b)(6) motion to dismiss); Oaklawn, 184 F. Supp. 3d at 578–80 (same). 

III. PLAINTIFF’S CLAIMS ALSO SUFFER FROM PLEADING FAILURES 

Although the Court need not consider Plaintiff’s claims individually if it finds that Epic 

Games’ use is fair use or protected by the First Amendment, Plaintiff also has failed to plead 

properly its dilution (Count II) and FDUTPA (Counts V and VI) claims. Each is discussed in 

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turn below. 

A. Plaintiff Does Not Allege Trademark Use By Epic Games 

Plaintiff has not and cannot allege that Epic Games has used the name “Coral Castle” as a 

mark to identify the source of Epic Games’ own goods or services—that is, to identify the source 

of Fortnite. This also dooms Plaintiff’s dilution claim. 

In a closely analogous case, the Eastern District of Pennsylvania dismissed a dilution 

claim based on Epic Games’ alleged use of a dance step. The court explained that an element of 

a dilution claim is “that the defendant used the plaintiff’s mark as its own mark to identify its 

own goods or services.” Pellegrino v. Epic Games, Inc., No. 19 Civ. 1806, 2020 WL 1531867, 

at *10 (E.D. Pa. Mar. 31, 2020) (citing 4 McCarthy on Trademarks and Unfair Competition § 

24:122 (5th ed.) (“The [federal dilution] statute makes it clear that a nontrademark and nontrade 

name use of the accused designation cannot dilute.”), and Lions Gate Ent. Inc. v. TD Ameritrade 

Servs. Co., 170 F. Supp. 3d 1249, 1270 (C.D. Cal 2016) (granting motion to dismiss dilution 

claim as defendant was not alleged to use “the allegedly famous mark as Defendants’ own mark 

or to identify Defendants’ services”)).7

 Because the plaintiff did not allege such use, the claim 

was dismissed. Pellegrino, 2020 WL 1531867, at *10. Similarly, here, Plaintiff does not allege 

that Epic Games is using the “Coral Castle” name as a trademark for Epic Games’ goods or 

services. Thus, Count II should be dismissed for this additional reason. 

B. Plaintiff’s FDUTPA Claims Fail As Plaintiff Does Not Allege Actual 

Damages 

Plaintiff has failed to plead its two claims under FDUTPA as the Complaint does not 

7

 See also Nat’l Bus. Forms & Printing, Inc. v. Ford Motor Co., 671 F.3d 526, 536 (5th Cir. 

2012) (dismissing dilution claim because marks did not identify or distinguish goods or 

services); Tiffany (NJ) Inc. v. eBay, Inc., 576 F. Supp. 2d 463, 524 (S.D.N.Y. 2008) 

(dismissing dilution claim because “[defendant] has not used the Tiffany mark to identify its 

own goods and services”), aff’d, 600 F.3d 93 (2d Cir. 2010). 

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contain any allegations of “actual damages” as required by the Florida statute. § 501.211(2), Fla. 

Stat. Although Plaintiff conclusorily asserts that it is damaged and Epic Games has been 

unjustly enriched, Compl. ¶¶ 108, 112, Plaintiff’s claim seeks monetary damages in the form of 

alleged lost profits, which are the “quintessential example of consequential damages.” See

Nyquist v. Randall, 819 F.2d 1014, 1017 (11th Cir. 1987) (internal quotation marks omitted); see 

also Five for Ent. S.A. v. Rodriguez, 877 F. Supp. 2d 1321, 1331 (S.D. Fla. 2012); Eclipse Med., 

Inc. v. Am. Hydro-Surgical Instruments, Inc., 262 F. Supp. 2d 1334, 1357 (S.D. Fla. 1999), aff’d 

sub nom. Eclipse Med., Inc. v. Am. Hydro-Surgical, 235 F.3d 1344 (11th Cir. 2000). Because 

consequential damages are not cognizable under FDUTPA, Plaintiff’s FDUPTA claims should 

be dismissed. See Dorestin v. Hollywood Imps., Inc., 45 So. 3d 819, 824–25 (Fla. 4th DCA 

2010) (“Proof of actual damages is necessary to sustain a FDUTPA claim. The statute does not 

allow the recovery of other damages, such as consequential damages.” (internal citation 

omitted)). 

A claim for damages under FDUPTA has three elements: “(1) a deceptive act or unfair 

practice; (2) causation; and (3) actual damages.” ADT, 2017 WL 5640725, at *5 (citing 

Caribbean Cruise Line, Inc. v. Better Bus. Bureau of Palm Beach Cnty., Inc., 169 So. 3d 164, 

167 (Fla. 4th DCA 2015)). “‘[A]ctual damages’ under FDUTPA is a term of art.” Eclipse Med., 

262 F. Supp. 2d at 1357. “In the context of FDUTPA,” it means “‘the difference in the market 

value of the product or service in the condition in which it was delivered and its market value in 

the condition in which it should have been delivered according to the contract of the parties.’” 

Rodriguez v. Recovery Performance & Marine, LLC, 38 So. 3d 178, 180 (Fla. 3d DCA 2010) 

(citing Rollins, Inc. v. Heller, 454 So. 2d 580, 585 (Fla. 3d DCA 1984)); Urling v. Helms 

Exterminators, Inc., 468 So. 2d 451, 454 (Fla. 1st DCA 1985)). Critically, “under FDUTPA, the 

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term ‘actual damages’ does not include special or consequential damages.” Rodriguez, 38 So. 3d 

at 180 (citing Smith v. 2001 S. Dixie Highway, Inc., 872 So. 2d 992, 994 (Fla. 4th DCA 2004)); 

see also BPI Sports, LLC v. Labdoor, Inc., No. 15 Civ. 62212, 2016 WL 739652, at *6 (S.D. Fla. 

Feb. 25, 2016) (harm in the manner of competitive harm, diverted or lost sales, and harm to the 

goodwill and reputation of plaintiff are consequential damages); Orkin Exterminating Co. v. 

DelGuidice, 790 So. 2d 1158, 1162 (Fla. 5th DCA 2001); Urling, 468 So. 2d at 454; Fort 

Lauderdale Lincoln Mercury, Inc. v. Corgnati, 715 So. 2d 311, 314–15 (Fla. 4th DCA 1998).8

Here, Plaintiff has failed to allege anything like a difference in the market value of a 

product or service in the condition in which it was delivered and its market value in the condition 

in which it should have been delivered. Although Plaintiff alleges general injury to customers, it 

does not allege any difference in what consumers paid for its services as a result of the alleged 

violation of FDUTPA. Thus, as Plaintiff seeks only consequential monetary damages and fails 

to allege actual damages under FDUTPA, Counts V and VI must be dismissed. See ADT, 2017 

WL 5640725, at *5. 

CONCLUSION 

For the foregoing reasons, Epic Games respectfully requests that its motion to dismiss be 

granted in its entirety and that the Complaint be dismissed. Moreover, as further pleading by 

Plaintiff would be futile, Epic Games requests that the dismissal be with prejudice. 

8

 Although one court has stated that actual damages also may include “actual lost profits,”

ADT LLC v. Alarm Prot. Tech. Fla., LLC, No. 12 Civ. 80898, 2013 WL 11276119, at *5 

(S.D. Fla. Apr. 18, 2013), most courts have rejected that reading of FDUTPA. See 

Diversified Mgmt. Sols., Inc. v. Control Sys. Rsch., Inc., No. 15 Civ. 81062, 2016 WL 

4256916, at *6 (S.D. Fla. May 16, 2016) (summarizing the history of FDUTPA and 

dismissing plaintiff’s claim for failure to state a claim because lost profits are not actual 

damages under the statute); see also Apotex Corp. v. Hospira Healthcare India Priv. Ltd., 

No. 18 Civ. 4903, 2019 WL 3802096, at *1 (S.D.N.Y. Aug. 13, 2019) (rejecting ADT “for 

the reasons set forth in Diversified. . . FDUTPA ‘actual damages’ do not include lost profits 

even when sought by a competitor rather than a consumer.”). 

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Dated: October 9, 2020 Respectfully submitted, 

/s/ Gavin C. Gaukroger

 Gavin C. Gaukroger (Fla. Bar. No. 76489) 

Email: ggaukroger@bergersingerman.com 

Email: DRT@bergersingerman.com 

BERGER SINGERMAN LLP 

350 East Las Olas Boulevard 

Suite 1000 

Fort Lauderdale, FL 33301 

Tel. (954) 525-9900 

 DALE M. CENDALI (admitted pro hac vice) 

Email: dale.cendali@kirkland.com 

JOSHUA L. SIMMONS (admitted pro hac vice) 

Email: joshua.simmons@kirkland.com 

KIRKLAND & ELLIS LLP 

601 Lexington Avenue 

New York, NY 10022 

Tel. (212) 446-4800 

Attorneys for Defendant

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