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?
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.
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
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].
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:
speech was not an "advertisement" because:
slogan, by means of a pun, was put to work in service of honoring and
to the page as an "ad" (a convenient shorthand) did not make the page an
paid no money for the page; and
page did not focus on or praise any product or service; rather, the praise was
directed towards Jordan.
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.
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).
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.
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