Michael Jordan was inducted into the Basketball Hall of Fame
in 2009. Sports Illustrated (whose publisher Time is a third-party
defendant; interesting that Jordan didn’t try to bring it in) published a
commemorative issue “devoted to celebrating his career.” Time asked numerous businesses, including
Jewel, to design a page for the issue “with some play on words or design that
is specific to Michael Jordan.” Jewel
didn’t pay, but did agree to stock and sell the issue at special displays by
the checkout counters of its grocery stores.
Jewel’s ad features a pair of basketball shoes spotlighted
on the hardwood floor of a
basketball court.
23, the number Jordan wore for most of his tenure with the Chicago Bulls, appears on the tongue of each shoe, and the text reads: “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.”
Underneath is Jewel’s logo and slogan, “Good things are just
around the corner.”
Jordan sued Jewel for state and federal trademark claims as
well as violation of the Illinois right of publicity. Jewel removed from state court and filed a
third-party complaint against Time, seeking contribution and indemnification, at
which point Time counterclaimed for breach of contract and indemnification.
The court ruled that the ad was noncommercial speech but
declined to find that this was dispositive of all claims absent further
briefing.
Procedurally, whether the speech was commercial was an issue
of law, and the factors for the court to consider were also issues of law. Jordan still argued that if relevant material
facts were in dispute, the jury should be asked about them via special
interrogatories. The court
disagreed. The parties disputed not
historical facts but legal consequences of those facts, and for SJ purposes it
resolved all factual disputes in Jordan’s favor.
To determine whether speech is commercial, the 7th
Circuit asks whether it proposes a commercial transaction. The court didn’t see this ad as doing so,
since it was just congratulating Jordan.
“At the most basic level, … readers would be at a loss to explain what
they have been invited to buy.” Jordan
invoked brand theory, arguing that the use of its TM and slogan “effectively
propose a commercial transaction by inviting the reader to visit Jewel stores.” Further, Jordan contended, the statement that
he “was ‘just around the corner’ for so many years” explicitly linked him to
Jewel’s ad campaign and thereby invited readers to enter into a commercial
transaction.
In this posture, the court accepted Jordan’s “factual
description of the role played” by the slogan.
But the conclusion—that use of the logo and slogan, and reference to the
slogan in the congratulatory text, proposed a commercial transaction—did not
follow given the context.
The court then proceeded to offer several reasons that this
was a special case, many of which will doubtless be seized on by plaintiffs’
counsel. Initially, this issue was no
ordinary Sports Illustrated. It was a “special commemorative issue
expressly designed as a paean to Jordan, a fact confirmed by its title, ‘Jordan[:]
Celebrating a Hall of Fame Career.’”
Jewel’s ad embraced the issue’s theme, “focusing not on Jewel or its
particular products and services, but on Jordan.”
True, the ad used Jewel’s logo, but that was the most
effective way to identify Jewel as the speaker; Jewel wasn’t required to use
the harder-to-identify corporate name, which might have caused “a moment’s hesitation
or confusion.”
Likewise, the use of the slogan “was simply a play on words,
a cheeky way to ensure that the congratulatory message sounded like it was
coming from Jewel and not any from other person or entity.” The court hypothesized Arnold Schwarzenegger
congratulating the LA Lakers for winning the championship. If he said, “Congratulations to our Lakers
for ‘terminating’ the Orlando Magic and bringing home yet another NBA title,
and to Kobe Bryant for winning the Finals MVP.
Let me join all Angelenos in saying that Kobe and the team surely will
‘be back’ in the 2010!,” the references to Terminator
would personalize the congratulatory message.
“Who other than Schwarzenegger would congratulate the Lakers and Bryant
in precisely that way? The ‘Terminator’
references thus are deployed to make the congratulatory message more effective,
not to tie the Lakers and Bryant to the ‘Terminator’ franchise in an effort to
encourage readers to buy Terminator DVDs and video games and thereby enhance
Schwarzenegger’s royalty checks.” (The
theoretical and practical criticisms of “trademark use” are powerful, but
judges sure do like to reinvent the idea when it suits them.)
Jewel’s use of its slogan also personalized the message and
reinforced the idea that Jordan was Jewel’s “fellow Chicagoan” and therefore a
source of pride for Jewel and all other Chicagoans. “It is highly unlikely that
the slogan’s presence would lead a reasonable reader to conclude that Jewel was
linking itself to Jordan in order to propose a commercial transaction.” Anyway, even if the slogan introduced a
minimal amount of commercialism, “that element is intertwined with and
overwhelmed by the message’s noncommercial aspects, rendering the page
noncommercial as a whole.”
The court contrasted the Abdul-Jabbar
case, where the ad at issue linked Lew Alcindor’s performance with that of
Oldsmobile’s car. “GM touted Alcindor’s
accomplishments as a means to propose commercial transactions—sales of a
particular Oldsmobile model—not as a means to congratulate him on honors he
earned a quarter century before the spot aired.
The opposite is true of Jewel’s page.”
Even setting the “proposes a commercial transaction” test
aside, the three factors the Supreme Court has identified as relevant to
defining commercial speech also favored Jewel.
The factors: whether (1) the speech is an advertisement; (2) the speech
refers to a specific product or service; and (3) the speaker has an economic
motivation for the speech. No single factor
is necessary or sufficient on its own.
Jewel’s ad wasn’t a conventional ad, as the court already
concluded, even though it used Jewel’s logo and slogan. Jewel and Time used the term “ad,” but that
was “convenient shorthand; there is no equivalently precise and pithy term for
the kind of page that Jewel and others placed.”
Indeed, family friends of Jordan placed a page that was also called an “ad”
by relevant parties, but it was not a conventional ad either.
Furthermore, Jewel didn’t pay money to run the page; it only
agreed to stock copies in its store. (I’m
guessing barter doesn’t take an ad out of the “commercial speech” category
without more, though.) Nor did the ad
focus on or praise any product or service.
It was timed to praise Jordan, not to any Jewel promotion.
The court also drew attention to the fact that Dominick’s
Finer Foods, a defendant in a separate case filed by Jordan, placed an ad in
the same issue. “The fact that Jewel and Dominick’s, fierce competitors in the
Chicago grocery market, both placed pages in the commemorative issue is
significant because anybody inclined to be swayed by Jordan’s appearance in an
advertisement knows that he does not play on two or more sides of the same
fence, commercially speaking. Jordan is Hanes, not Jockey or Fruit of the Loom;
Nike, not Adidas or Reebok; Chevrolet, not Ford or Chrysler; McDonald’s, not
Burger King or Wendy’s. A reader who purchased the commemorative issue and saw
the Jewel and Dominick’s pages would know, instinctively, that the Jewel page
was not an advertisement.” The court
noted that the Dominick’s page shows a steak and offers a coupon; “if somebody
were to view one of the pages as an advertisement, it would be the Dominick’s
page…. The reader would see the Jewel
page for precisely what it is—a tribute by an established Chicago business to
Chicago’s most accomplished athlete.”
(Given what the court says later, I’m pretty sure that the court is
trying to make this prediction nondispositive to its analysis.)
As to the second factor, whether the ad refers to a specific
product, Jordan argued that Jewel’s slogan and logo effectively referred to all
of Jewel’s products and services. The
court disagreed. “The name and slogan of
any business will evoke that business’s products or services in general—McDonald’s,
fast food; IKEA, affordable furniture; Mercedes, luxury transportation; Apple,
stylish technology. But the Jewel page
does not refer to a specific product or service, which is the relevant inquiry.” Even without a reference to a specific
product, an ad might be commercial: “If Jewel’s page pictured a fully set
Thanksgiving table, but no food or other products sold at Jewel stores, the
page still might have been commercial. But
there is nothing in Jewel’s page even remotely as evocative of its products and
services” (citation omitted).
The court accepted that Jewel had an economic motivation for
placing the page, to bolster its reputation as a good Chicago citizen. “To say that a for-profit corporation like
Jewel has an ‘economic motivation’ for taking any particular action is to state
a truism.” But the Supreme Court has
clearly rejected the idea that it follows that all corporate speech is
commercial. There must be something
more, and that more was missing here.
The court then “recognize[d] that this conclusion rests in
part on judgments regarding how reasonable readers would view the page.” But such judgments had to be made, and the
precedent said they had to be made as a matter of law. Because judges aren’t experts in consumer
perception, it was possible that consumer surveys could show whether people
actually consider particular speech to have proposed a commercial
transaction. For this, the court cited
the Supreme Court’s consideration of survey evidence for the second prong of Central Hudson (whether there’s a substantial government
interest in regulating the speech that’s already been determined to be
commercial), which I don’t think is quite on point, but ok. (Note, however, that the 9th
Circuit has rejected surveying audiences about what counts as
transformativeness for copyright fair use purposes, and that fair use serves a
similar speech-protective role. One reason
not to ask consumers is that such a question might not be particularly
meaningful to them: “does this page propose a commercial transaction?” is a
weird thing to ask. At the very least we might need to train consumers with
things that do and don’t propose commercial transactions first, as with
genericity surveys.)
Anyway, it didn’t matter here because neither side submitted
a survey.
The court held that it couldn’t yet decide the full
implications of the noncommercial speech holding for Jordan’s claims. Each side provided perfunctory arguments, so
the court asked for further briefing.
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