Fans of the Denver Broncos are thrilled after they watched their vaunted defense dismantle the NFL’s highest scoring offense, the Carolina Panthers. With the Super Bowl high in full effect, fans of the Broncos are probably trying to decide how they can show their support and congratulate their favorite players – whether that be Peyton Manning (maybe) riding off into the sunset just like John Elway did, or possibly Von Miller, who was named the Super Bowl MVP. As exciting as the win is, and as tempting as it may be for a business to take out advertisement space to show support for one of their favorite players – if you run an ad featuring a player, or something that may make it obvious that you are referencing a player, without that player’s express consent, you may pay dearly for it.
This tough lesson was taught by Michael Jordan and his legal team to two companies, Dominick’s Finer Foods and Jewel-Osco, based on the advertisements they ran in the Sports Illustrated commemorative edition about Michael Jordan.
In Jordan v. Dominick’s Finer Foods, 115 F. Supp. 3d 950 (N.D. Ill. 2015), Michael Jordan sued Dominick’s Finer Foods, a Chicago-based grocery store chain, which took out a one-page advertisement in Sports Illustrated commemorative edition about Michael Jordan. The ad featured a red background and the words “Congratulations, Michael Jordan” above the number “23,” followed by “You Are a Cut Above,” and a $2.00 off coupon for steaks at Dominick’s. The advertisement did not include a photograph of Michael Jordan, but he sued Dominick’s for their unlicensed use of his persona. The Court ruled in Jordan’s favor, holding that Dominick’s had violated the Illinois Right of Publicity Act by misappropriating Jordan’s identity. Having won the legal argument, the next question came down to damages – which essentially comes down to what Dominick’s should have paid him for the ad. During trial, Jordan revealed that from 2000 to 2012, Nike had paid him $480 million in endorsements, and that he had turned down an $80 million offer to endorse headphones. A sports economist told the jury that the fair market value for Jordan’s endorsement should have been $10 million, though the jury ultimately disagreed and awarded only $8.9 million. This was a significant decision because it established that right of publicity applies not only to images of celebrities, but also includes a person’s “persona,” which includes their name, voice, signature, catchphrases, and biographical information. Here, Dominick’s used Michael Jordan’s name and basketball number.
Jordan brought a similar claim against Jewel-Osco when it ran an advertisement in the Sports Illustrated Michael Jordan commemorative edition with the following wording: “Jewel-Osco salutes #23 on his many accomplishments as we honor a fellow Chicagoan who was ‘just around the corner’ for so many years.” This advertisement also contained the Jewel-Osco logo, with its tagline “just around the corner.” This advertisement did not contain a coupon, and referenced only his basketball number – yet, after the Dominick’s decision, Jordan and Jewel-Osco entered into a confidential settlement agreement. Jordan v. Jewel Food Stores, Inc., 743 F.3d 509 (7th Cir. 2014).
Dominick’s and Jewel-Osco both learned a hard lesson when they tried to congratulate Michael Jordan and also advertise their businesses. So before doing the same with your favorite Super Bowl player – or any other player – remember to obtain legal counsel to ensure you have cleared any and all trademarks, copyrights, and rights of publicity that be involved.
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
John McCormick is an associate in the Boston office of Fish & Richardson P.C. Mr. McCormick works closely with businesses on brand adoption, protection, and enforcement in the U.S. and internationally. Working with a wide range of clients – from startups to global multi-billion dollar enterprises – Mr. McCormick has experience...