Jordan v. Jewel Food Stores, Inc., 10 C 340

• Decision Date: 12 March 2015
• Docket Number: 10 C 340
• Citation: 113 U.S.P.Q.2d 2093,83 F.Supp.3d 761
• Parties: Michael Jordan, Plaintiff, v. Jewel Food Stores, Inc., and Supervalu Inc., Defendants/Third–Party Plaintiffs/Third–Party Counter–Defendants, v. Time Inc., Third–Party Defendants/Third–Party Counter–Plaintiffs, and Vertis, Inc., Third–Party Defendant.
• Court: U.S. District Court — Northern District of Illinois

83 F.Supp.3d 761

113 U.S.P.Q.2d 2093

Michael Jordan, Plaintiff

v.Jewel Food Stores, Inc., and Supervalu Inc., Defendants/Third–Party Plaintiffs/Third–Party Counter–Defendants

v.Time Inc., Third–Party Defendants/Third–Party Counter–PlaintiffsandVertis, Inc., Third–Party Defendant.

10 C 340

United States District Court, N.D. Illinois, Eastern Division.

Signed March 12, 2015

Clay A. Tillack, Frederick J. Sperling, Sondra A. Hemeryck, Schiff Hardin LLP, Chicago, IL, for Plaintiff.

Anthony Richard Zeuli, Eric Ronald Chad, Merchant & Gould, P.C., Minneapolis, MN, David E. Morrison, Oscar L. Alcantara, Goldberg Kohn Ltd., Chicago, IL, for Defendants/Third-Party Plaintiffs/Third-Party Counter-Defendants.

Christopher S. Naveja, Mark E. Enright, Arnstein & Lehr, LLP, Chicago, IL, Elizabeth A McNamara, Jeremy Adam Chase, Davis Wright Tremaine LLP, New York, NY, for Third-Party Defendants/Third-Party Counter-Plaintiffs.

Patrick David Kuehl, Jr., Husch Blackwell Sanders LLP, William Eugene Corum, Husch Blackwell LLP, Kansas City, MO, Sherry Lee Rollo, Steven Eric Feldman, Husch Blackwell, Chicago, IL, for Third-Party Defendant.

Memorandum Opinion and Order

Gary Feinerman, United States District Judge

After Jewel Food Stores, Inc., a Chicagoland grocery store chain, took out a page in a commemorative issue of Sports Illustrated congratulating Michael Jordan on his 2009 induction into the Hall of Fame, Jordan sued Jewel in state court for using his identity without permission. Doc. 1–2. Jewel removed the suit to federal court, Doc. 1, and filed third-party claims against Sports Illustrated' s publisher, Time Inc., and the page's graphic designer, Vertis, Inc., for contribution and indemnification, Doc. 17. Time responded with third-party counterclaims against Jewel for breach of contract and indemnification. Doc. 40. Jordan then filed an amended complaint that added Jewel's parent, Supervalu Inc., as a defendant; the amended complaint stated claims under the Illinois Right of Publicity Act (“IRPA”), 765 ILCS 1075/1 et seq. , § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), the Illinois Consumer Fraud and Deceptive Trade Practices Act (“ICFA”), 815 ILCS 505/1 et seq. , and common law unfair competition. Doc. 55. (Supervalu's presence in this suit can and will be ignored for ease of exposition.) The court granted summary judgment to Jewel on First Amendment grounds. 851 F.Supp.2d 1102 (N.D.Ill.2012). The Seventh Circuit reversed, holding that Jewel's ad was commercial speech within the meaning of the First Amendment, entitling it to lesser constitutional protection, and remanded for consideration of the merits of Jordan's claims. 743 F.3d 509 (7th Cir.2014). Vertis went into bankruptcy, so Jewel's third-party claims against it are stayed. Docs. 276, 285. With the parties' agreement, a jury trial has been set for December 8, 2015. Doc. 316.

Now before the court are Jordan's motion for summary judgment as to liability on his IRPA claim, Doc. 261, and Time's motion for summary judgment on Jewel's third-party claims, Doc. 288. After the motions were fully briefed, and with the agreement of all parties, the court granted Jordan's motion for leave to file a second amended complaint, which states only an IRPA claim; although Jordan did not formally dismiss his other claims, he agreed on the record that he will not renew those claims against Jewel in this or any other case. Doc. 339. Jordan's summary judgment motion is denied, and Time's motion is granted as to Jewel's claim for indemnity and contribution on Jordan's IRPA claim and denied as moot as to Jewel's claim for indemnity and contribution on Jordan's other, dropped claims.

Background

The following facts are set forth as favorably the non-movants as the record and Local Rule 56.1 permit. See Hanners v. Trent, 674 F.3d 683, 691 (7th Cir.2012). On summary judgment, the court must assume the truth of those facts, but does not vouch for them. See Smith v. Bray, 681 F.3d 888, 892 (7th Cir.2012).

In 2009, when Jordan was inducted into the Naismith Memorial Basketball Hall of Fame, Time published a Sports Illustrated Presents commemorative issue devoted to celebrating his career. Doc. 301 at p. 2, ¶ 4. Time asked several businesses, including Jewel, to design a one-page advertisement for the issue “with some play on words or design that is specific to Michael Jordan.” Id. at p. 1, ¶ 2; id. at pp. 4–5, 10–12. Attached to Time's email solicitation to Jewel were examples of ads designed for a similar commemorative issue celebrating the Philadelphia Phillies' 2008 World Series win; those ads incorporated the Phillies' logo and name. Doc. 308 at p. 21, ¶¶ 21–22. A Time vice president agreed that “acceptance of [the offer] would require the content [of the ad] to at least have something to do with Michael Jordan,” and that “a tribute to LeBron James,” for example, probably would not have been acceptable. Id. at p. 21, ¶ 24.

Jewel paid no money for the opportunity, but did agree to stock and sell the commemorative issue at special displays by the checkout counters of its stores. Id. at p. 18, ¶ 9; id. at p. 19, ¶ 14. Jewel's internal copywriter wrote the text, and Vertis, its marketing vendor, designed the graphics. Doc. 102 at ¶¶ 31, 32, 34. Here is the ad:

Doc. 301–8 at 4. On the tongue of each shoe is “23,” the number Jordan wore for most of his tenure with the Chicago Bulls. Below the header “A Shoe In!” is 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 phrase in quotes is a play on Jewel's slogan, which is printed below its logo: “Good things are just around the corner.” Jewel does not sell basketball shoes, and the ad mentions no specific Jewel product or service.

Discussion

I. Jordan's Summary Judgment Motion

Jordan has moved for summary judgment on liability as to his IRPA claim. The IRPA provides in relevant part: “A person may not use an individual's identity for commercial purposes ... without having obtained previous written consent[.]” 765 ILCS 1075/30(a). “To allege a statutory claim of appropriation of likeness under the [IRPA], one must set forth essentially the same three elements that were required for a common-law claim of appropriation of likeness.” Blair v. Nev. Landing P'ship, 369 Ill.App.3d 318, 307 Ill.Dec. 511, 859 N.E.2d 1188, 1192 (2006). “To allege a common-law appropriation-of-likeness or right-of-publicity claim, a plaintiff had to set forth three elements: (1) an appropriation of one's name or likeness; (2) without one's consent; and (3) for another's commercial benefit.” Trannel v. Prairie Ridge Media, Inc., 370 Ill.Dec. 157, 987 N.E.2d 923, 929 (Ill.App.2013). Jewel does not dispute the first two elements, Doc. 301 at p. 2, ¶ 5; id. at p. 3, ¶ 10, so the only question is whether Jewel's ad served a “commercial purpose,” 765 ILCS 1075/30(a).

“Commercial purpose” under the IRPA means “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 ; see Trannel, 370 Ill.Dec. 157, 987 N.E.2d at 929. Jordan argues that these passages from the Seventh Circuit's opinion conclusively establish that Jewel's ad served a “commercial purpose” within the meaning of the IRPA:

Jewel's ad served two functions: congratulating Jordan on his induction into the Hall of Fame and promoting Jewel's supermarkets....

[C]onsidered in context, and without the rose-colored glasses, Jewel's ad has an unmistakable commercial function: enhancing the Jewel–Osco brand in the minds of consumers. This commercial message is implicit but easily inferred, and is the dominant one....

[A]n ad congratulating a famous athlete can only be understood as a promotional device for the advertiser....

The ad is plainly aimed at fostering goodwill for the Jewel brand among the targeted consumer group—“fellow Chicagoans” and fans of Michael Jordan—for the purpose of increasing patronage at Jewel–Osco stores....

Jewel's ad is an example of a neighborly form of general brand promotion by a large urban supermarket chain. What does it invite readers to buy? Whatever they need from a grocery store—a loaf of bread, a gallon of milk, perhaps the next edition of Sports Illustrated —from Jewel–Osco, where “good things are just around the corner.”

743 F.3d at 518–19. Yet Jordan's initial and reply briefs ignore this passage from the opinion:

Jewel's counsel argued that the federal and state laws at issue here, by their own terms, apply only to commercial speech as defined by First Amendment jurisprudence. So Jewel's free-speech defense might be understood as using the First Amendment commercial-speech inquiry as a proxy for determining whether the speech potentially falls within the scope of these laws. It is true that each of the statutory and common-law claims alleged here has a “commercial” element in one form or another, but it's not clear that the Supreme Court's commercial-speech doctrine should be used to define this term in each cause of action. As to the Lanham Act claim in particular, we have cautioned against interpreting the scope of the statute in this way. We don't need to address this matter further because the parties haven't briefed the extent to which the scope of the Lanham Act (or the state laws) is coextensive with the Supreme Court's constitutional commercial-speech doctrine.

Id. at 514 n. 4 (citation omitted). And this one as well:

To wrap up, we hold that Jewel's ad in the commemorative issue qualifies as commercial speech. This defeats Jewel's constitutional defense, permitting Jordan's case to go

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