In a recent decision, the recent Seventh Circuit evaluated the inherent conflict between an athlete’s right of publicity and the protections of the First Amendment in evaluating an advertiser’s liability for congratulatory advertising honoring Michael Jordon’s induction into the Basketball Hall of Fame.Michael Jordan v. Jewel Food Stores, No. 12-1992 (7th Cir. February 19, 2014).

In response to an offer of free advertising space in a commemorative issue of Sports Illustrated honoring the event, Jewel-Osco─a supermarket chain with stores in and around Chicago─created an advertisement for the magazine’s back cover featuring the store’s logo and slogan above a photo of basketball shoes labeled with Jordan’s number “23” and the following text:

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.

The basketball legend responded with a $5 million lawsuit alleging violations of the Federal Lanham Act, common law unfair competition, the Illinois Right of Publicity Act and the Illinois deceptive-practices statute.

Jewel maintained that its ad was “noncommercial” speech entitled to First Amendment protection because it did not propose a commercial transaction as suggested in Bolger v.Youngs Drug Prods. Corp., 463 U.S. 60 (1983). On appeal, the Seventh Circuit emphasized that commercial speech is not limited to speech that directly or indirectly proposes a commercial transaction. Where, as here, the advertisement had the unmistakable function to “enhance[e] the Jewel-Osco brand in the minds of consumers,” the ad was entitled to reduced constitutional protection and thus was susceptible of liability. Thus, the Seventh Circuit ruled:  “. . . [A]n ad congratulating a famous athlete can only be understood as a promotional device for the advertiser. Unlike a community group, the athlete needs no gratuitous promotion and his identity has commercial value.”

Future advertisers should be aware that even a claim of good intentions and the absence of an “outright sales pitch” will likely be an inadequate defense to an infringement claim where the advertisement can be shown to have any economic motivation.