When a commemorative magazine issue celebrating Michael Jordan’s career carries ads referencing that career, how should right of publicity and Lanham Act claims, and related state law unfair competition/deceptive practices claims, against those ads be evaluated? The district court found that a “congratulations”-style ad that identified the sponsor but didn’t tout its products was noncommercial speech, and thus outside the scope of both laws. The court of appeals reversed.
“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 ad space in exchange for stocking the magazine in its stores.
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.
Jewel’s ad was commercial speech because it prominently featured Jewel’s 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.” Remand for consideration of the substance of the claims.
The court began by noting that Jordan conceded that, if the ad was noncommercial speech, his claims would fail. But the law, it continued, was considerably more complex than the premise that the right of publicity and trademark can’t apply to speech that is noncommercial in the constitutional sense. (Which is why the law is screwed up, sigh.) Among other things, though each of the claims had a “commercial” element, it wasn’t clear that First Amendment commercial speech doctrine should be used to define that term for each cause of action.
Supreme Court jurisprudence generally comes from “public law” cases, where “the commercial/noncommercial classification determines the proper standard of scrutiny to apply to the law or regulation under review in the case.” But this is a clash of private rights. (Ooh, state action. NYT v. Sullivan, anyone?) So that means that even if the ad is noncommercial speech, the trademark and right of publicity claims might survive; according to McCarthy, there’s no consensus on how to resolve IP v. free speech claims, “and decisions from the lower courts are a conflicting mix of balancing tests and frameworks borrowed from other areas of free-speech doctrine.”
But Jordan’s concession allowed the court to skip further discussion.
The basic definition of commercial speech, “speech that proposes a commercial transaction,” is just a starting point—the core, but not the full extent of commercial speech. Bolger, for example, involved speech with noncommercial and commercial elements; there, pamphlets providing general information about contraception, and specific information about the manufacturer’s products, were commercial speech because they had the form of an ad, referred to specific products, and were distributed by the manufacturer for economic purposes. None of the three elements (form, specific product, economic motivation) is sufficient in itself, and not all are necessary.
Jewel argued that its ad didn’t propose a commercial transaction. True, the literal words congratulated Jordan. But context was also important, especially in identifying commercial speech, since “[m]odern commercial advertising is enormously varied in form and style.”
Image advertising is advertising:
We know from common experience that commercial advertising occupies diverse media, draws on a limitless array of imaginative techniques, and is often supported by sophisticated marketing research. It is highly creative, sometimes abstract, and frequently relies on subtle cues. The notion that an advertisement counts as “commercial” only if it makes an appeal to purchase a particular product makes no sense today, and we doubt that it ever did. An advertisement is no less “commercial” because it promotes brand awareness or loyalty rather than explicitly proposing a transaction in a specific product or service. Applying the “core” definition of commercial speech too rigidly ignores this reality. Very often the commercial message is general and implicit rather than specific and explicit.
Thus, Jewel’s ad did more than congratulate Jordan. It promoted Jewel’s supermarkets. It wasn’t just civic boosterism, as congratulating a local community group might be. “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. Unlike a community group, the athlete needs no gratuitous promotion and his identity has commercial value. Jewel’s ad cannot be construed as a benevolent act of good corporate citizenship.”
The court noted that Jewel-Osco’s graphic logo and slogan appeared just below the textual salute to Jordan. The bold red logo was prominently featured in the center of the ad and in a font size larger than any other on the page. They were set off from the congratulatory text, drawing attention to Jewel’s sponsorship. And the congratulatory text incorporated Jewel’s slogan (“just around the corner”). “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.”
The district court thought that there was no particular invitation to buy a product. True, the ad didn’t showcase specific products, which was a relevant consideration, but far from dispositive, especially where image ads are concerned. The ad invited readers to buy whatever they would buy at a grocery store. “That it doesn’t mention a specific product means only that this is a different genre of advertising. It promotes brand loyalty rather than a specific product, but that doesn’t mean it’s ‘noncommercial.’”
The district court thought that the slogan and graphic logo just identified the speaker. But that overlooked their value as advertising tools. The repetition of the slogan in the congratulatory message “only makes sense if the aim is to promote shopping at Jewel-Osco stores.” The court pointed out that Jewel’s copywriter thought the repetition of the slogan was “too selly” and “hitting too over the head.”
The ad was commercial speech by necessary implication:
In short, the ad’s commercial nature is readily apparent. It may be generic and implicit, but it is nonetheless clear. The ad is a form of image advertising aimed at promoting goodwill for the Jewel-Osco brand by exploiting public affection for Jordan at an auspicious moment in his career.
Returning to Bolger, the ad had the form of an ad; it was easily distinguishable from the editorial content even though it followed the special issue’s theme; it promoted Jewel-Osco supermarkets. It promoted patronage at Jewel-Osco stores, similar to promoting purchase of a product. And it served an economic purpose: “to burnish the Jewel-Osco brand name and enhance consumer goodwill.” The court noted that Jewel’s marketing representatives said it was a “great offer” and it “would be good for us to have our logo in Sports Illustrated ” because “having your logo in any location where people see it is going to help your company.” Further, Jewel gave Time valuable consideration—placement in its stores—in exchange for the ad, which suggested that “it expected valuable brand-enhancement benefit from it.” Though Jewel’s tribute “was in a certain sense public-spirited, … Jewel had something to gain by conspicuously joining the chorus of congratulations on the much-anticipated occasion of Jordan’s induction into the Basketball Hall of Fame.”
A contrary holding would be troublesome for “athletes, actors, celebrities, and other trademark holders seeking to protect the use of their identities or marks.” After all, image ads are common. The court pointed to ads by Olympic sponsors, many of which consist of images of athletes coupled with the advertiser’s mark and expressions of support for the team, with nothing in particular offered for sale. “To say that the ad is noncommercial because it lacks an outright sales pitch is to artificially distinguish between product advertising and image advertising. Classifying this kind of advertising as constitutionally immune noncommercial speech would permit advertisers to misappropriate the identity of athletes and other celebrities with impunity.”
However, the court claimed that a company could use its logo or slogan “in an otherwise noncommercial way without thereby transforming the communication into commercial speech.” The holding here was “tied to the particular content and context of Jewel’s ad as it appeared in the commemorative issue of Sport Illustrated Presents.” Yes, but—after this, how should product placement be analyzed? Maybe there’s not too much worry about trademark, but what if New Girl makes a joke about William Shatner in the same episode that features paid Subway sandwich placement—would Shatner have a right of publicity claim?
Finally, the court rejected the district court’s conclusion that the commercial and noncommercial elements of the ad were inextricably intertwined. “[T]he inextricably intertwined doctrine applies only when it is legally or practically impossible for the speaker to separate out the commercial and noncommercial elements of his speech.… But simply combining commercial and noncommercial elements in a single presentation does not transform the whole into noncommercial speech.”
The court of appeals disagreed with Hoffman v. Capital Cities/ABC, Inc., 255 F.3d 1180 (9th Cir. 2001), which held that a fashion article featuring altered movie stills was noncommercial speech because the editorial elements were inextricably intertwined with the commercial elements. When Dustin Hoffman sued over a photoshopped image of himself in his role in Tootsie, the 9th Circuit held that “the article as a whole is a combination of fashion photography, humor, and visual and verbal editorial comment on classic films and famous actors. Any commercial aspects are ‘inextricably entwined’ with expressive elements, and so they cannot be separated out ‘from the fully protected whole.’” This was wrong, since there was no legal or practical barrier to “publishing a fashion article without superimposing the latest fashion designs onto film stills of famous actors.” (This disagreement suggests that the holding isn’t exactly as limited as the court claims, though the court also says that it is not opining on whether the ultimate result in Hoffman was nonetheless correct. Also, note the court’s use of generic “photoshopped,” which I have repeated.) Here too, “[n]o law of man or nature compelled Jewel to combine commercial and noncommercial messages as it did here.”
Comment: Jewel endorsing Jordan isn’t the same thing as Jordan endorsing Jewel, though I doubt courts will recognize that; anyway, with the metastasizing right of publicity, confusion doesn’t really matter. I agree that this is an ad. But I’m distressed by the substantive claims. And I do wonder about product placement.