Michael Jordan Takes Congratulatory Smack-Down to Seventh Circuit after Right of Publicity Claim Fails

When somebody talks you up, what's the best way to thank them? Offer them a bouquet of flowers? Send them a card? Take them to court?

The third option - a warm "thank you" via complaint -  isn't as unlikely as you might suspect. Take for instance Michael Jordan, who this week filed an appeal with the Seventh Circuit, seeking to revive his right of publicity claim against Jewel Food.

The Dangers of Saying "Well Done"

In 2009, when Michael Jordan was inducted into the Basketball Hall of Fame, Time published a Sports Illustrated commemorative issue devoted to celebrating Jordan's career. Jewel Food designed a page for that issue, paying nothing for the opportunity but agreeing to stock and sell the issue. Jewel produced the following advertisement, the text of which reads:

A Shoe In! After six NBA championships, scores of rewritten record books and numerous buzzer beaters, Michael Jordan's elevation in the Basketball Hall of Fame was never in doubt! Jewel-Osco salutes #23 on his many accomplishments as we honor a fellow Chicagoan who was "just around the corner" for so many years. 

Beneath the text is Jewel's logo, which features its registered trade name "Jewel-Osco" in large, underlined print. Beneath the logo, in smaller font, is Jewel's slogan: "Good things are just around the corner."

Jordan sued claiming that Jewel had improperly used his identity without authorization. However, before reaching the merits, the district court determined that Jewel's page was "noncommercial speech" entitled to First Amendment protection. Jordan v. Jewel Food Stores, Inc., 2012 U.S. Dist. LEXIS 18664 (N.D. Ill. Feb. 15, 2012) [enhanced version available to lexis.com subscribers].

A Pat on the Back Isn't Necessarily about Commercialism

The court held that the speech did not propose a commercial transaction and, thus, was not commercial speech. At the most basic level, the text, which recounted Jordan's accomplishments and congratulated him, did not propose any kind of commercial transaction (readers being at a loss to explain what they had been invited to buy). Moreover, in light of the context (the Sports Illustrated commemorative issue), placement of the slogan ("Good things are just around the corner") under Jewel's logo and its deployment in the congratulatory text could not be viewed as proposing a commercial transaction. As the court noted:

It is highly unlikely that the slogan's presence would lead a reasonable reader to conclude that Jewel was linking itself to Jordan in order to propose a commercial transaction. And even if the slogan's presence somehow could be viewed as introducing some minimal element of commercialism, that element is intertwined with and overwhelmed by the message's noncommercial aspects, rendering the page noncommercial as a whole.

The court went on to examine the three subsidiary considerations that the Supreme Court and the Seventh Circuit had consulted when determining whether speech was commercial or noncommercial. These considerations  - whether (1) the speech was an advertisement; (2) the speech referred to a specific product or service; and (3) the speaker had an economic motivation for the speech - were answered as follows:

(1) the speech was not an "advertisement" because:

a. the slogan, by means of a pun, was put to work in service of honoring and congratulating Jordan;

b. reference to the page as an "ad" (a convenient shorthand) did not make the page an advertisement;

c. Jewel paid no money for the page; and

d. Jewel's page did not focus on or praise any product or service; rather, the praise was directed towards Jordan.

(2) the speech did not refer to a specific product or service. While the name and slogan evoked Jewel's products/services in general, the Jewel page did not refer to a specific product or service, which was the relevant inquiry.

(3) Jewel's economic motivation for producing and placing its page in the commemorative issue did not render the page commercial speech. Here, the court cited Bolger v. Youngs Drug Prods. Corp., 463 U.S. 60 (U.S. 1983) [enhanced version available to lexis.com subscribers], where the Supreme Court ruled that "the fact that [the speaker] has an economic motivation for mailing the pamphlets would clearly be insufficient by itself to turn the materials into commercial speech."

Jordan failed on his motion for reconsideration, and on Tuesday, he filed an appeal with the Seventh Circuit (12-1992).

But Wait, There's More

As Jewel Food moves on to the appellate level, Dominick's Finer Foods continues to battle Jordan in the district court. Like Jewel, Domminick's placed a congratulatory ad in the Sports Illustrated commemorative issue. This is the Domminick's page:

In his amended complaint against Dominick's (10-00407, N.D. Ill. June 8, 2010), Jordan alleges:

Although the Dominick's advertisement congratulates Jordan on his induction into the Basketball Hall of Fame, it goes beyond that by appropriating Jordan's name and persona and infringing the registered MICHAEL JORDAN trademark in order to promote Dominick's goods and services.

....

Jordan and Jump 23 have been damaged by Defendants, whose unauthorized advertisement infringes the MICHAEL JORDAN trademark, infringes Jordan's right of publicity and falsely implies Jordan's endorsement of Dominick's goods and services. The advertisement, which equates Jordan with a cut of beef and includes a coupon for a discount off a Dominick's and Safeway branded steak, damages Jordan and Jump 23 by diminishing the value of the MICHAEL JORDAN trademark and reducing Jordan's endorsement value.

Though the district court has yet to issue an opinion, the Jewel Food court offered a peek at how the two cases differ. In examining the "advertisement" question, the Jewel Food court had this to say:

One other fact weighs against finding the Jewel page to be an advertisement. Pending in another courtroom in this District is a lawsuit brought by Jordan against Dominick's Finer Foods LLC regarding a page that it placed in the same commemorative issue. The Dominick's page ... says "Congratulations Michael Jordan[:] You Are a Cut Above"; beneath that message is a picture of a Rancher's Reserve steak and a coupon for said steak. The fact that Jewel and Dominick's, fierce competitors in the Chicago grocery market, both placed pages in the commemorative issue is significant because anybody inclined to be swayed by Jordan's appearance in an advertisement knows that he does not play on two or more sides of the same fence, commercially speaking. Jordan is Hanes, not Jockey or Fruit of the Loom; Nike, not Adidas or Reebok; Chevrolet, not Ford or Chrysler; McDonald's, not Burger King or Wendy's. A reader who purchased the commemorative issue and saw the Jewel and Dominick's pages would know, instinctively, that the Jewel page was not an advertisement. This is particularly so because the Dominick's page pictures a steak and offers a coupon; if somebody were to view one of the pages as an advertisement, it would be the Dominick's page. (Dominick's has not sought judgment on the ground that it engaged in noncommercial speech.) The reader would see the Jewel page for precisely what it is-a tribute by an established Chicago business to Chicago's most accomplished athlete.

(citations omitted) 

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