In 2009, Michael Jordan was inducted into the Basketball Hall of Fame. To commemorate Jordan’s career, Time Inc. published a special Sports Illustrated Presents issue that included congratulatory “advertisements” from several businesses, including Jewel Food Stores, Inc. Rather than pay Time Inc. for the ad, Jewel agreed to stock and sell the magazine in its stores. Jewel’s one-page ad included its Jewel-Osco logo and a reference to its marketing slogan, “Good things are just around the corner.” The logo and slogan – both registered trademarks – were positioned in the ad above a photo of a pair of basketball shoes, each bearing Jordan’s number “23.” The ad, a copy of which is set forth below, read:

                                        A Shoe In!

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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.

Soon after the magazine was released, Jordan filed suit against Jewel alleging violations of the Illinois Right of Publicity Act (IRPA), 765 ILCS 1075/1, et seq.; the Lanham Act, 15 U.S.C. 1125(a); the Illinois Consumer Fraud and Deceptive Trade Practices Act, 815 ILCS 505/2, et seq.; and the common law of unfair competition. Jewel denied liability and asserted various defenses, including that its ad was protected by the First Amendment to the U.S. Constitution, was fair use, and was a noncommercial use of Jordan’s name and number. Jewel also filed third-party claims for contribution and indemnity against Time Inc. and the ad’s graphic designer. The claims against Time Inc. were dismissed and the claims against the graphic designer have been stayed due to its bankruptcy filing.

In 2012, the District Court found that Jewel’s ad was noncommercial speech and entitled to full First Amendment protection because the ad did not propose a commercial transaction between the speaker and customer. Jordan v. Jewel Food Stores, Inc., 851 F. Supp. 2d 1101 (N.D. Ill. 2012). Jordan appealed and in 2014, the Seventh Circuit reversed and remanded for consideration of the merits of Jordan’s claims. 743 F.3d 509 (7th Cir. 2014). On remand, Jordan filed a second amended complaint, dropping all causes of action except for his IRPA claim, and seeking at least $5 million compensatory damages, punitive damages, attorneys’ fees and costs, and injunctive relief.

On March 12, 2015, the District Court denied Jordan’s motion for partial summary judgment on liability as to his IRPA claim. 2015 U.S. Dist. LEXIS 30334 (N.D. Ill. Mar. 12, 2015). The IRPA prohibits use of “an individual’s identity for commercial purposes … without having obtained previous written consent…” 765 ILCS 1075/30(a). The court noted that essentially the same three elements of a common law claim for appropriation-of-likeness (or right-of-publicity) must be proved to sustain a statutory claim under the IRPA: “(1) an appropriation of one’s name or likeness (2) without one’s consent and (3) for another’s commercial benefit.” Id. at 6-7 (citation and internal quotes omitted). Jewel conceded the first and second elements. Instead, Jewel contended that its ad was not for a “commercial purpose,” which the IRPA defines as “the public use or holding out of an individual’s identity (i) on or in connection with the offering for sale or sale of a product, merchandise, goods, or services; (ii) for purposes of advertising or promoting products, merchandise, goods, or services; or (iii) for the purpose of fundraising.” 765 ILCS 1075/5 (emphasis added).

In denying Jordan’s motion, the District Court first noted that while the Seventh Circuit had concluded the ad was commercial speech for purposes of Jewel’s First Amendment defense because it promoted Jewel’s brand, the appellate court specifically offered no opinion on “whether the Supreme Court’s commercial-speech doctrine should be used to define the commercial element” of Jordan’s Lanham Act and state law claims. 2015 U.S. Dist. LEXIS 30334, 8-9 (quoting 743 F.3d at 514 n. 4) (internal quotes omitted). The Seventh Circuit also had noted that it previously has cautioned against using the First Amendment commercial speech doctrine to interpret the scope of the Lanham Act. 743 F.3d at 514 n. 4. (citing First Health Grp. Corp. v. BCE Emergis Corp., 269 F.3d 800, 803 (7th Cir.2001)).

In light of the Seventh Circuit’s decision, the District Court found that Jordan failed to develop and squarely address the central issue in the case: whether the term “commercial purpose” in the IRPA “encompasses brand advertising as well as the advertising of specific products, merchandise, goods, or services, and thus whether and, if so, to what extent the term is coextensive with ‘commercial speech’ under the First Amendment.” Id. at 10 (emphasis added). Insofar as the Seventh Circuit refused to address whether the commercial speech doctrine should be used to define the “commercial” element of the IRPA claim and Jordan failed to address the argument other than to claim it was resolved by the Seventh Circuit, the District Court refused to research and construct the legal arguments for Jordan.

The court also distinguished a similar action that Jordan had brought against another grocer, Dominick’s Finer Foods, LLC, where Dominick’s ad in the same Sports Illustrated issue showed its house-brand steak and included a $2 coupon, noting that there was no question that Dominick’s ad served a “commercial purpose” under the IRPA because it offered for sale and advertised “a product, merchandise [or] goods.” Id. at 14 n. “*”.

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Following the dismissal of the Lanham Act claim, only state law claims remained. The District Court had to decide whether to remand the case to State Court following the dismissal of all claims of original jurisdiction. As provided by 28 U.S.C. 1367(c)(3), district courts may decline to exercise supplemental jurisdiction over a claim if all other claims of original jurisdiction are dismissed. Since the Lanham Act claim was dismissed, there was no basis for original federal jurisdiction. However, using an exception that permits the court to retain jurisdiction when substantial judicial resources have already been expended on the state claims, the District Court retained jurisdiction.

The case will now proceed to trial, with an anticipated trial date of December 8, 2015. We will continue to monitor this case to see what the next steps are and whether Jordan can prove that the brand advertising by Jewel served a commercial purpose in violation of the Illinois Right of Publicity Act.