By Lee S. Brenner and Andreas Becker, of Kelley Drye & Warren LLP
After Michael Jordan was inducted into the Basketball Hall of Fame in September of 2009, Sports Illustrated ran a special issue to commemorate Jordan’s achievement and celebrate his career. The issue was to be sold in stores, rather than through subscriptions, and certain stores were offered space in the issue in exchange for offering copies of the magazine for sale. In turn, Chicago-area grocery store chains Jewel-Osco and Dominick’s Finer Foods each created their own one-page insert in the Sports Illustrated issue congratulating Jordan, a fellow Chicagoan.
He sued both.
According to Jordan, the problem was that the grocery chains had used his identity — without his permission — as a means of advertising. Right of publicity claims have previously been addressed on this blog: Part 1, Part 2, and Part 3, and by our Kelley Drye colleagues at the Ad Law Access blog.
The one-page inserts appeared as follows:
Click here to view the image. The Jewel-Osco advertisement (left) and Dominick’s advertisement (right).
The Jewel-Osco insert read “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.” In the center, it contained the Jewel-Osco logo, with its slogan “Good things are just around the corner.” The page does not contain a single word about the specific products that Jewel-Osco sells, and does not reference any specific product sold by Jewell-Osco (which does not sell basketball shoes).
The Dominick’s insert, meanwhile, featured a large 23 (Jordan’s jersey number) and said “You Are A Cut Above.” The page also displayed a picture of a Dominick’s house brand steak and included a two dollar coupon.
Both cases ended up in the Northern District of Illinois. In the Dominick’s lawsuit, the court granted summary judgment in Jordan’s favor on his right of publicity claim based on an agreement of the parties. The case proceeded to a jury trial on the issues of damages on August 11, 2015, and on August 25, 2015, the court entered judgment in Jordan’s favor for $8.9 million.
The Jewel-Osco lawsuit, on the other hand, reached the Seventh Circuit after the trial court granted summary judgment in Jewel-Osco’s favor and against Jordan. The Seventh Circuit reversed.
At the trial level, Jordan had argued that the one-page magazine insert was a form of commercial speech. Notably, Jordan focused on (1) the placement of Jewel-Osco logo in the center of the image and (2) the repeated use of Jewel-Osco’s “Good things are just around the corner” slogan — printed below the Jewel-Osco logo as well as in the congratulatory text to describe Jordan, a Chicago native, as having been “just around the corner.”
The trial court rejected Jordan’s arguments, determining that nothing on the page proposed a commercial transaction and, thus, it was non-commercial speech. It found that the placement of the logo did not render the page commercial speech, as it simply served as “the most effective way to identify Jewel as the speaker.” It also found that the repeated use of the slogan “serve[d] the congratulatory theme” and reinforced the notion that Jordan was a fellow Chicagoan and a source of pride for Jewel-Osco and other Chicagoans. The court ultimately granted summary judgment in Jewel-Osco’s favor and closed the case.
The Seventh Circuit disagreed with the district court, apparently wholeheartedly. The appellate court noted that although commercial speech encompasses speech that proposes a commercial transaction, which is merely the starting point. Indeed, other forms of communications may constitute commercial speech even if they touch on important public issues. For example, advertising that links a product to a current public debate is not entitled to the same Constitutional protection as non-commercial speech.
The appellate court explained that “[m]odern commercial advertising is enormously varied in form and style.” In essence, although the Jewel-Osco page was not telling consumers to purchase any particular good, it was still advertising in the sense that it was promoting brand awareness and loyalty, and was encouraging readers to patronize their local Jewel-Osco store. As the appellate court saw it, the function of the page was to enhance the Jewel-Osco brand in the minds of consumers — the logo appeared in the middle of the page, was in a font size larger than any other on the page, and was set off in terms of style, size and color from the rest of the text. The court noted: “The ad is a form of image advertising aimed at promoting goodwill for the Jewel-Osco brand by exploiting public affection for Jordan at an auspicious moment in his career.” In essence, where the district court saw the magazine insert as a benign tribute to a basketball legend, the appeals court saw a direct form of advertising that used Jordan’s publicity without his consent. Accordingly, the Seventh Circuit held that the page constituted commercial speech, and remanded the case so that Jordan’s claims could go forward.
Although the Seventh Circuit determined that the magazine insert was commercial speech, other issues remain pending in the Jewel-Osco case. On August 20, 2015, Jordan was granted leave to file his third amended complaint, and a jury trial is scheduled to begin on December 8, 2015.
Nevertheless, this case — as well as the Dominick’s case — highlight some key issues in modern advertising, where the lines between traditional speech and commercial speech have become increasingly blurred. The rise of native advertising and proposed commercial transactions on social media are good examples of this blurring. Both cases serve as cautionary tales for anyone seeking to use a celebrity’s image or personality without their permission. In Jewel-Osco’s case, the court found that it was engaged in commercial speech because it was creating brand awareness and goodwill, and Jewel-Osco potentially faces millions of dollars in damages. In Dominick’s case, a one-page magazine insert containing a $2 coupon ended up costing Dominick’s $8.9 million. Lesson learned.
Lee Brenner is a partner and chair of Kelley Drye’s Entertainment and Media practice group. Mr. Brenner serves as counsel for individuals, television networks, production companies, corporations and partnerships in business, media, entertainment, employment and commercial lawsuits. He lectures regularly to clients on the subjects of right of publicity, copyright, idea submission and trademark law. If you have any questions about this article, please contact Lee @ lbrenner@kelleydrye.com | 310.712-6125
Andreas Becker is an associate at Kelley Drye. His practice focuses on several aspects of complex business litigation including contract disputes, intellectual property law, and information and privacy law. abecker@kelleydrye.com | 310.712-6145
