Jewel-Osco Can’t “Be Like Mike”: Seventh Circuit Holds Grocery Chain’s Congratulatory Advertisement Constitutes Commercial Use

Michael-Jordan-Jewel-Kosco-A-SHOE-IN-ad-via-LIKELIHOOD-OF-CONFUSION-blogBy Amanda Brings

Want to take out an advertisement spread to congratulate Michael Jordan on his induction into the Naismith Memorial Basketball Hall of Fame? According to the Seventh Circuit’s recent decision in Jordan v. Jewel Food Stores, Inc., you better have the NBA legend’s permission before you do.

In 2009, grocery chain Jewel-Osco placed a congratulatory advertisement in a Sports Illustrated special edition issue commemorating Michael Jordan’s career and his induction into the Hall of Fame.  The advertisement featured a pair of basketball shoes bearing Jordan’s famous number 23 and the headline “A Shoe In!” with the following text:

“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.”

The advertisement also included Jewel-Osco’s logo and slogan, “Good things are just around the corner.”

As the Seventh Circuit stated in its opinion, “To Jordan the ad was not a welcome celebratory gesture but a misappropriation of his identity for the supermarket chain’s commercial benefit.” Jordan sued Jewel-Osco alleging state law violations under the Illinois Right of Publicity Act, the Illinois Consumer Fraud and Deceptive Business Practices Act, the Illinois common law of unfair competition, and federal violations under the Lanham Act. Jewel-Osco denied liability and argued its advertisement constituted “noncommercial” speech and thus had full protection and blanket immunity under the First Amendment. The district court agreed with Jewel-Osco and held that Jordan’s claims were defeated by the grocery chain’s First Amendment defense because the ad was not truly commercial speech—readers of the advertisement “would be at a loss to explain what they had been invited to buy.”

The Seventh Circuit disagreed and found the advertisement did amount to commercial speech. In reversing the district court’s decision, the Seventh Circuit noted that the boundaries of commercial speech are not limited by the Supreme Court’s core definition—“speech that proposes a commercial transaction”—and that the district court placed too much weight on this definition.  Rather, when speech, like the advertisement at issue, has both commercial (e.g., Jewel-Osco’s logo and slogan) and noncommercial (e.g., the Michael Jordan tribute) elements, a court should apply the Supreme Court’s test outlined in Bolger v. Youngs Drug Products.

In Bolger, the Supreme Court found the following factors to be determinative: “whether (1) the speech is an advertisement; (2) the speech refers to a specific product; and (3) the speaker has an economic motivation for the speech.” For the first factor, the Seventh Circuit found the speech constituted an advertisement because it “was aimed at promoting goodwill for the Jewel-Osco brand by exploiting public affection for Jordan at an auspicious moment in his career.” As to the second and third factors, the court found the advertisement promoted patronage at Jewel-Osco stores and served the economic function of enhancing the Jewel-Osco brand and consumer goodwill.

Notably, the Seventh Circuit looked to the overall context and content of this specific advertisement in making its determination. The court stated that, “nothing we say here is meant to suggest that a company cannot use its graphic logo or slogan in an otherwise noncommercial way . . . our holding is tied to the particular content and context of Jewel’s ad.” From a policy perspective, the court also noted that a contrary ruling would have “sweeping and troublesome implications for athletes, actors, celebrities, and other trademark holders seeking to protect the use of their identities or marks.” This ruling indicates that a company’s otherwise noncommercial advertisement may be deemed commercial speech if its context and content appears to serve the economic function of enhancing the company brand or consumer goodwill.

The merits of Jordan’s state and federal claims will be reached by the district court on remand. Jordan’s lawyers have stated that any damages he receives will be donated to charity.

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