Jordan v. Jewel Food Stores, Inc., No. 12–1992, 2014 WL 627603 (7th Cir. Feb. 19, 2014).

The Seventh Circuit reversed the Northern District of Illinois’s grant of partial summary judgment to the defendant in basketball legend Michael Jordan’s trademark and right of publicity action.

In 2009, Michael Jordan was inducted into the Basketball Hall of Fame. For this occasion,Sports Illustrated magazine produced a special commemorative issue of Sports Illustrated Presents that exclusively featured Jordan’s career. The issue, titled “Jordan: Celebrating a Hall of Fame Career,” was not distributed to Sports Illustrated subscribers, but was instead sold separately in stores.

The defendant Jewel Food Stores, Inc., operator of Chicago area grocery chain Jewel-Osco, was given the opportunity to place an advertisement for free in the commemorative issue, in exchange for stocking and selling the issue in its stores. Jewel agreed, and a full-page “congratulatory” ad was placed on the inside back cover of the magazine. The ad contained an image of a pair of sneakers featuring Jordan’s number “23,” and text that 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.

Under this text, the ad also featured the Jewel–Osco logo and its marketing slogan, “Good things are just around the corner.”

Unfortunately, Jordan did not welcome this congratulatory gesture from Jewel, and filed suit against Jewel for trademark infringement and misappropriation of his identity for Jewel’s commercial benefit. Jewel raised the affirmative defense that the First Amendment protected the ad, arguing that it was “noncommercial” speech. The lower court agreed with Jewel and asked the parties to provide further briefing on whether this noncommercial classification meant that Jordan’s claims were defeated. Jewel argued that it did, and Jordan agreed. The lower court granted Jewel’s motion for summary judgment.

Jordan appealed the holding that Jewel’s ad qualified as noncommercial speech. The Seventh Circuit first noted that even if the ad qualified as noncommercial speech, “it’s far from clear that Jordan’s trademark and right-of-publicity claims fail without further ado.” The court pointed out the lack of judicial consensus on how to resolve conflicts between intellectual-property rights and free-speech rights, but left the issue for another day given that Jordan had conceded the point to the lower court.

After a discussion of the First Amendment landscape, the Seventh Circuit concluded that Jewel’s speech did not qualify as noncommercial speech. While it was clear that the text of the ad was indeed “a congratulatory salute to Jordan,” the context of the ad, which included Jewel’s own graphic logo and slogan, served to promote Jewel’s supermarkets. The court rejected Jewel’s argument that this ad was similar to others that Jewel had released in the past which celebrated the work of local civic groups.

Because Jordan is a world famous sports icon whose celebrity endorsement is highly sought after, his identity has commercial value, and Jewel’s ad was commercial speech that “exploit[ed] public affection for Jordan at an auspicious moment in his career.” From a policy perspective, “[a] contrary holding would have sweeping and troublesome implications for athletes, actors, celebrities, and other trademark holders seeking to protect the use of their identities or marks.”

The Seventh Circuit reversed the lower court, giving Jordan the green light to resume pursuing his trademark and right of publicity claims, which seek $5 million in damages. Evidently it is quite costly to “be like Mike.”