Thursday, May 05, 2016

Off the record: Use of name in instruction card doesn't suggest endorsement

Martin v. Wendy’s International, Inc., 2016 WL 1730648, No. 15 C 6998 (N.D. Ill. May 2, 2016)
Johannes Martin alleged that Wendy’s and Guinness World Records violated §43(a) and his Illinois right of publicity by using his identity in a 2013 promotion. The court dismissed the complaint. Martin alleged that he holds the world record for consecutive kicks of a footbag: 63,326 consecutive kicks without letting it hit the ground.
In August-September 2013, Wendy’s and Guinness ran a promotion in which every Kid’s Meal sold at Wendy’s restaurants included one of six Guinness-themed toys, including footbags.   A card included with the footbag toy showed a picture of two people playing footbag (not Martin) and listed three records below the picture:
1. The most kicks of a footbag in five minutes is 1,019.
2. The most people playing footbag in a circle at one time is 946.
3. The most consecutive footbag kicks in 10 minutes by a pair is 1,415. (
It also said: “How many times in a row can you kick this footbag without it hitting the ground? Back in 1997, Ted Martin1 made his world record of 63,326 kicks in a little less than nine hours!” Then it provided instructions, and concluded with, “What kind of family record can you set?”
Promotional poster

Image from web announcement of promotion

Martin argued that defendants violated his rights by printing “Guinness World Records” on each footbag; using the term “record-breaking toys” in promotional materials; and referring to him by name in the instruction card.
Instruction card
The Illinois Right of Publicity Act prohibits the “use [of] an individual’s identity for commercial purposes during the individual’s lifetime without having obtained previous written consent.” “Commercial purpose” 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.”
The court found the claim time-barred; Martin learned about the promotion no later than September 19, 2013, when he first called Wendy’s to complain.  While the district court in Toney v. L’Oreal applied a five-year statute of limitations, using Illinois’ five-year statute of limitations for “an injury done to property” and for “all civil actions not otherwise provided for.”  However, later cases haven’t followed Toney.  The Illinois Appellate Court has held that the law codified and completely supplanted the common-law right of publicity, and it had a one-year statute of limitations.  
Martin argued that fraudulent concealment tolled the statute of limitations, because when he contacted Wendy’s, they told him to talk to Guinness. “After a number of conversations, Guinness faxed him a letter, dated February 19, 2014, in which it stated that it had ‘agreed to deal with any dispute arising in relation to the usage of materials that formed part of the promotion’ and took the position that ‘the use of [plaintiff’s] name and record as part of the Wendy’s promotion was factual in nature and no person would be led to believe that such usage constituted an endorsement....’”  Through counsel, Martin sent a letter to Guinness on March 26, 2014, reiterating his claim.  Guinness’ outside counsel responded that his claim was meritless.  Martin tried again with Wendy’s but received no reply until July 2, 2015, when Wendy’s sent a letter asking him to “direct all further correspondence to Guinness World Records only.”  There was no plausible claim of fraudulent concealment in these facts. Denial of liability doesn’t toll the statute of limitations, nor do unanswered calls and letters.
Lanham Act claims: The court first determined that Lexmark applied to all of §43(a), though it still called the issue “standing” in defiance of the late Justice Scalia’s dearest hopes.  Section 43(a) requires “an injury to a commercial interest in sales or business reputation proximately caused by the defendant’s misrepresentation.” Proximate cause is “economic or reputational injury flowing directly from the deception wrought by the defendant’s advertising; and...that occurs when deception of consumers causes them to withhold trade from the plaintiff.”
Martin alleged that he was “in the process of getting a footbag mass produced,” and that the promotion “diluted the market” for his future product. He claimed to have a “verbal agreement with a footbag distribution company for 10% of the gross sales of a mass-produced footbag... patterned after the record-breaking footbag that [he] constructed and used to break the footbag world record.” He still needed to approve and probably modify the final design.  His injury was one to his “commercial interest in his reputation,” he alleged, because people have “seen an inferior footbag, which the defendants presented as endorsed by” him, and he seeks to recover for the “loss of endorsement revenue.”   The court found these (pro se) allegations sufficient to demonstrate that Martin had a protectable commercial interest in his reputation or identity/endorsement revenue.
However, injury to his future sales of a footbag wasn’t cognizable, because any injury was purely speculative.  Martin wasn’t in the footbag business yet, and his business plans were not very concrete.  “He has what can only be described as a preliminary ‘prototype,’ but he has not settled on a merchantable model of which to launch production, and he has no more than a ‘verbal agreement’ to participate in bringing any product to market at all.” Thus, Martin’s standing was based on his commercial interest in his identity as a footbag world record holder.
False advertising: Defendants allegedly falsely advertised by calling their footbags “record-breaking” even though no one had used those footbags to break any records.  Moreover, though there are many footbag world records, Martin alleged that his was the most prominent, so any use of the term “record-breaking” in connection with a footbag is a reference to him as the “footbag world record-holder.” He alleged that he used a footbag of his own making to set the footbag world record, and so the use of the term “record-breaking” misled consumers as to the qualities of the footbag.
Defendants argued that “record-breaking” in this context was mere puffery, and the court agreed.  “[I]t is not plausible that any consumer would rely on the term ‘record-breaking’ as a statement about the nature or quality of the footbag,” because it was “a vague or exaggerated claim of superiority.”  Moreover, Martin didn’t plausibly allege that any consumer would be misled by the use of the “record-breaking” term to think that defendants’ footbags had anything to do with him. There was no reference to plaintiff anywhere in the promotion’s website announcement, on the in-store display, or on the Kid’s Meal bag. It wasn’t reasonable to infer that mere use of the term “record-breaking” anywhere near a reference to a footbag was “somehow enough to trigger a signifying chain” that led to him. 
To the extent that “record-breaking” meant anything, it seemed obvious from the materials that it related to the “Kids v. Parents” theme of the promotion, which encouraged kids and their parents to use the Kid’s Meal toys to compete with each other to set family records, or to try to break world records reported by Guinness. For example, the web announcement touted adding “a little record-breaking competition to family dining…. [E]ach toy provides fun challenges and a chance for parents and kids to outdo each other for the title of family’s best.”  It said that customers would receive “an exclusive guide to records that families can try to break, so mom or dad or brother or sister can set the family record.” “Record-breaking toys” was also used on the in-store display and the promotion-themed Kid’s Meal bag, but both also used the heading “Kids v. Parents.”  It was therefore not plausibly a reference to Martin or any past record-breaking performance.
False endorsement: Martin claimed that using “Guinness World Records” on a footbag and using his name in the instructional card offered along with the footbag misled consumers as to his endorsement.  Just as “record-breaking” wasn’t a reference to him, neither was putting the term “Guinness World Records” on a footbag a reference to him.
While the instruction card did explicitly refer to him, likely confusion wasn’t plausible. Mere commercial use of a person’s name doesn’t violate the Lanham Act; the use must suggest endorsement or sponsorship.  “But the card does no more than state the consecutive kicks record and name plaintiff as the record-holder. There is no language directly or indirectly suggesting that plaintiff endorsed defendants’ products, nor do the plaintiff’s name and record appear in a context that might, by its nature, plausibly mislead consumers to believe that plaintiff endorsed defendants’ products.”  The court contrasts Abdul-Jabbar v. Gen. Motors Corp., 85 F.3d 407 (9th Cir. 1996), quoting that court’s statement that “use of celebrity endorsements in television commercials is so well established by commercial custom that a jury might find an implied endorsement.”  The lack of misleadingness was especially clear because the card was only available to consumers after they bought the Kids’ Meal. 
Although the use was promotional “in some sense,” it was more similar to cases in which a person’s name or image was used “on a product rather than in advertising for a product,” rather than a typical false endorsement case.  “[M]erely using Princess Diana’s image on an item such as a commemorative plate was no more likely to deceive consumers as to the source of the plate than Andy Warhol’s use of a Campbell’s soup can or Coca-Cola bottle in his paintings was likely to deceive consumers as to the source of those paintings or as to whether there was any association between Warhol and those companies.” Likewise, “the mere use of plaintiff’s name and record in the instructions for a game defendants distributed to Wendy’s Kid’s Meal customers, as an illustrative example of how to play the game and with the intent that the customers would play that game with their families,” wasn’t plausibly likely to confuse consumers about endorsement, source, or association with the toys.

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