Jordan v. Jewel Food Stores, Inc.

• Citation: 743 F.3d 509
• Decision Date: 19 February 2014
• Docket Number: No. 12–1992.,12–1992.
• Parties: Michael JORDAN, Plaintiff–Appellant, v. JEWEL FOOD STORES, INC. and SuperValu Inc., Defendants–Appellees.
• Court: United States Courts of Appeals. United States Court of Appeals (7th Circuit)

743 F.3d 509

Michael JORDAN, Plaintiff–Appellant,

v.JEWEL FOOD STORES, INC. and SuperValu Inc., Defendants–Appellees.

No. 12–1992.

United States Court of Appeals,Seventh Circuit.

Argued Oct. 23, 2012.

Decided Feb. 19, 2014.

Frederick J. Sperling, Attorney, Schiff Hardin LLP, Chicago, IL, for Plaintiff–Appellant.

Anthony R. Zeuli, Attorney, Rachel K. Zimmerman, Attorney, Merchant & Gould, Minneapolis, MN, for Defendants–Appellees.

Before FLAUM and SYKES, Circuit Judges, and RANDA, District Judge. ^*

SYKES, Circuit Judge.

This trademark and right-of-publicity dispute pits basketball legend Michael Jordan against Jewel Food Stores, Inc., the operator of 175 Jewel–Osco supermarkets in and around Chicago. On the occasion of Jordan's induction into the Naismith Memorial Basketball Hall of Fame in September 2009, Time, Inc., the publisher of Sports Illustrated, produced a special commemorative issue of Sports Illustrated Presents devoted exclusively to Jordan's remarkable career. Jewel was offered free advertising space in the issue in exchange for agreeing to stock the magazine in its stores. Jewel accepted the offer and submitted a full-page ad congratulating Jordan on his induction into the Hall of Fame. The ad ran on the inside back cover of the commemorative issue, which was available on newsstands for a three-month period following the induction ceremony.

To Jordan the ad was not a welcome celebratory gesture but a misappropriation of his identity for the supermarket chain's commercial benefit. He responded with this $5 million lawsuit alleging violations of the federal Lanham Act, the Illinois Right of Publicity Act, the Illinois deceptive-practices statute, and the common law of unfair competition. Jewel denied liability under these laws and also claimed a blanket immunity from suit under the First Amendment. The district court sided with Jewel on the constitutional defense, prompting this appeal.

Jewel maintains that its ad is “noncommercial” speech and thus has full First Amendment protection. Jordan insists that the ad is garden-variety commercial speech, which gets reduced constitutional protection and may give rise to liability for the private wrongs he alleges in this case. As the case comes to us, the commercial/noncommercial distinction is potentially dispositive. If the ad is properly classified as commercial speech, then it may be regulated, normal liability rules apply (statutory and common law), and the battle moves to the merits of Jordan's claims. If, on the other hand, the ad is fully protected expression, then Jordan agrees with Jewel that the First Amendment provides a complete defense and his claims cannot proceed. The district court held that the ad was fully protected noncommercial speech and entered judgment for Jewel.

We reverse. Jewel's ad, reproduced below, prominently features the “Jewel–Osco” logo and marketing slogan, which are creatively and conspicuously linked to Jordan in the text of the ad's congratulatory message. Based on its content and context, the ad is properly classified as a form of image advertising aimed at promoting the Jewel–Osco brand. The ad is commercial speech and thus is subject to the laws Jordan invokes here. The substance of Jordan's case remains untested, however; the district court's First Amendment ruling halted further consideration of the merits. We remand for further proceedings.

I. Background

On September 11, 2009, Jordan was inducted into the Basketball Hall of Fame. ¹ In light of the occasion, Time, Inc., the publisher of Sports Illustrated, produced a special edition of Sports Illustrated Presents to celebrate Jordan's noteworthy career. The commemorative issue was not distributed to regular Sports Illustrated subscribers, but rather was sold separately in stores. The issue was titled “Jordan: Celebrating a Hall of Fame Career” and was slated to be offered for sale from late October 2009 until late January 2010.

About a month prior to publication, a Time sales representative contacted Jewel to offer free advertising space in the commemorative issue in return for a promise to stock and sell the magazines in its stores. Jewel agreed to the deal and had its marketing department design a full-page color ad. The ad combines textual, photographic, and graphic elements, and prominently includes the Jewel–Osco logo and the supermarket chain's marketing slogan, “Good things are just around the corner.” The logo and slogan—both registered trademarks—are positioned in the middle of the page, above a photo of a pair of basketball shoes, each bearing Jordan's number “23.” The text of the ad reads as follows:

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.

Time accepted Jewel's ad and placed it on the inside back cover of the commemorative issue, which featured Sports Illustrated editorial content and photographs from the magazine's prior coverage of Jordan's career. Among other advertisements, the commemorative issue also contained a full-page congratulatory ad by a rival Chicago-area grocery chain.² We includea copy of Jewel's ad at the end of this opinion.

Soon after the commemorative issue hit the newsstands, Jordan filed this lawsuit against Jewel in Illinois state court alleging violations of the Illinois Right of Publicity Act, 765 Ill. Comp. Stat.. 1075/1 et seq.; the Illinois Consumer Fraud and Deceptive Business Practices Act, 815 Ill. Comp. Stat.. 505/2 et seq.; the Illinois common law of unfair competition; and the federal Lanham Act, 15 U.S.C. § 1125. He sought $5 million in damages, plus punitive damages on the state-law claims and treble damages on the Lanham Act claim. Jewel removed the case to federal court.³

Following discovery, Jewel moved for summary judgment raising the First Amendment as a defense and arguing that its ad qualified as “noncommercial” speech and was entitled to full constitutional protection. Jordan filed a cross-motion for partial summary judgment on the issue of whether Jewel's ad was a commercial use of his identity. In a thoughtful opinion, the district court agreed with Jewel that the ad was noncommercial speech and sought further briefing on the implications of that classification. Jewel maintained that the commercial-speech ruling conclusively defeated all of Jordan's claims. Jordan agreed, accepting Jewel's position that the First Amendment provided a complete defense. The court accordingly entered final judgment in favor of Jewel, and Jordan appealed.

II. Discussion

A. Some Context for the Commercial–Speech Classification

Jordan's appeal requires us to decide whether Jewel's ad is properly classified as commercial speech or noncommercial speech under the Supreme Court's First Amendment jurisprudence. Before addressing the substance of that question, we take a moment to place it in the context of the claims raised in this litigation, which arise from different sources of law but all center on Jordan's allegation that Jewel misappropriated his identity for its commercial benefit.

Jordan is a sports icon whose name and image are deeply embedded in the popular culture and easily recognized around the globe. His singular achievements on the basketball court have made him highly sought after as a celebrity endorser; as a retired player who continues to reap the economic value of his reputation in the history of the game, he understandably guards the use of his identity very closely. The Lanham Act and the other laws he invokes here enable him to do that.

Jewel argues that Jordan's claims can't succeed because its ad is fully protected noncommercial speech under the First Amendment. We understand this to be an argument that the First Amendment prevents the court from applying these laws to any speech that is considered “noncommercial” in the constitutional sense, thus providing a complete constitutional defense to all claims. Jordan accepts this legal premise, so we take the point as conceded. But the law in this area is considerably more complex than the parties' agreement implies.⁴

The Supreme Court has generally worked out its commercial-speech doctrine in public-law cases. See generally City of Cincinnati v. Discovery Network, Inc., 507 U.S. 410, 113 S.Ct. 1505, 123 L.Ed.2d 99 (1993) (challenging a municipal ban on distribution of commercial publications on newsstands on public property); Bd. of Trs. of State Univ. of N.Y. v. Fox, 492 U.S. 469, 109 S.Ct. 3028, 106 L.Ed.2d 388 (1989) (challenging a public university's ban on “Tupperware”-style housewares parties in dormitories); Riley v. Nat'l Fed. of the Blind of N.C., 487 U.S. 781, 108 S.Ct. 2667, 101 L.Ed.2d 669 (1988) (challenging a state statute regulating fees charged by professional charitable fundraisers); Bolger v. Youngs Drug Prods. Corp., 463 U.S. 60, 103 S.Ct. 2875, 77 L.Ed.2d 469 (1983) (challenging a federal statute prohibiting the mailing of unsolicited contraceptive advertisements); Cent. Hudson Gas & Elec. Corp. v. Pub. Serv. Comm'n of N.Y., 447 U.S. 557, 100 S.Ct. 2343, 65 L.Ed.2d 341 (1980) (challenging a state regulation banning promotional advertising by utilities); Va. State Bd. of Pharmacy v. Va. Citizens Consumer Council, Inc., 425 U.S. 748, 96 S.Ct. 1817, 48 L.Ed.2d 346 (1976) (challenging a state statute prohibiting pharmacists from advertising the prices of prescription drugs). In the public-law context, the commercial/noncommercial classification determines the proper standard of scrutiny to apply to the law or regulation under review in the case.

This is not a public-law case; it's a clash of private rights. Even if Jewel's ad qualifies as noncommercial speech, it's far from clear that Jordan's trademark and right-of-publicity claims fail without further ado....