The Air Jordan Rules: Image Advertising Adds New Dimension to Right of Publicity–First Amendment Tension
Stephen McKelvey,* Jonathan Goins,† & Frederick Krauss‡
ARTICLE

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26 Fordham Intell. Prop. Media & Ent. L.J. 945
Article by Stephen McKelvey,* Jonathan Goins,† & Frederick Krauss‡

INTRODUCTION

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very year, corporations spend on average nearly thirty-five billion dollars on sports-related marketing, ranging from stadium naming rights and promotional sponsorships, to commercials and endorsement deals.^[1] In mining through some of the potential legal traps, corporate advertisers understand that utilizing the name, image, or likeness of athletes or celebrities in marketing and promotional campaigns requires some form of consent and compensation. Corporations hire lawyers for “advertising clearance”: to ensure that slogans, logos, and images are available for use, and that video and music in audio-visual recordings are otherwise licensed. The concept of getting permission or authorization is relatively straight-forward. However, gray areas remain.

For example, what if an assemblage of athletes’ names, images, and biographical information are incorporated in a social media campaign—developed and promoted by a single company—that merely aggregates public information? Or what if a company produces a print advertisement seeking solely to congratulate an athlete for a career achievement? These questions lie at the core of two recent cases^[2] in which courts have been challenged to determine where brand, or “image advertising,” resides at the nexus of the First Amendment, commercial speech, and the laws governing the right of publicity.^[3] More specifically, the courts in these cases analyzed whether the use of athletes’ likeness within these particular advertising contexts amounted to noncommercial speech (thus deserving of a higher degree of First Amendment free speech protection), or conversely, commercial speech (thus deserving of a lesser degree of First Amendment protection).

The plaintiffs in these cases are two of the most legendary athletes of our time. In Spitz v. Samsung Electronics America, Inc.,^[4] iconic Olympic swimmer Mark Spitz and numerous other notable Olympians sued Samsung over a Samsung-sponsored Facebook app^[5] that incorporated names, images, and biographical information of over 10,000 current and former Olympic athletes.^[6] While acknowledging that Samsung’s sponsorship of the Olympic Genome Project Facebook app was intended to enhance its brand image, the court, in ruling for the defendants,^[7] classified Samsung’s activity as noncommercial speech. In its ruling, the court relied heavily on the second case this Article addresses: Jordan v. Jewel Food Stores (Jordan I).^[8]

In Jordan I, Chicago-based drugstore chain Jewel-Osco ran a print advertisement in a national sports publication, congratulating Bulls’ legend Michael Jordan on his enshrinement in the Basketball Hall of Fame.^[9] The advertisement mentioned Jordan’s name and featured an image of a pair of sneakers with the number “23,” and identified the drugstore by its own name, stylized logo, and slogan. Despite its obvious reference to Jordan’s identity, the district court deemed the speech a congratulatory message, and noncommercial in nature.

The Spitz and Jordan I decisions confirmed that at least in some contexts—here, the aggregation of public information and congratulatory messaging—companies could legally incorporate athlete names and other indicia of identity in advertising campaigns that, while promoting the corporation itself, were not designed to sell a specific product or service.^[10] Such advertising, despite its inclusion of athletes’ indicia, was deemed noncommercial and hence entitled to the full protection of the First Amendment.^[11]

This proposition, however, took a precedent-setting U-turn in February 2014, when the Seventh Circuit for the U.S. Court of Appeals reversed the district court’s decision in Jordan I.^[12] In Jordan II, the Seventh Circuit held that although Jewel-Osco’s congratulatory advertisement did not promote or sell a specific product or service, its purpose as “image advertising” was enough to classify the advertisement as commercial speech, and thus eliminate Jewel-Osco’s First Amendment noncommercial speech defense.^[13] As a result, Jordan was given the green light to resume pursuing his right of publicity claim under Illinois statutory law,^[14] in which he sought five million dollars in damages.^[15] Although the parties ultimately settled in November 2015^[16] and the facts of Spitz and Jordan are distinguishable, these two cases have added a new and arguably conflicting dimension to the ongoing tension between the First Amendment freedoms of speech and expression and the right of publicity.

Part I of this Article begins by discussing the historical evolution of right of publicity law, from baseball cards to video games, followed by an examination of issues at the nexus of the right of publicity, trademark law, and the First Amendment. In Part II, we discuss the origins and evolution of the commercial speech doctrine, and the ongoing challenge in distinguishing non-commercial from commercial speech. In Part III, we examine the Spitz case in detail, including the rationale and reliance on the district court opinion in Jordan I. In Part IV, we discuss the Seventh Circuit’s opinion in Jordan II, which rebukes the rationale in Spitz through its expansion of the U.S. Supreme Court’s Bolger test.^[17] Specifically, the Seventh Circuit held that the failure to reference a specific product in the commercial-speech analysis “is far from dispositive, especially where ‘image’ or brand advertising rather than product advertising is concerned.”^[18] In Part V we discuss the legal and practical implications of Spitz and Jordan II, especially if the Seventh Circuit’s analysis of what constitutes commercial speech should be adopted by other jurisdictions. Ultimately, we conclude that the Seventh Circuit, while arguably broadening the scope of publicity rights through its re-interpretation of the Bolger test, nonetheless shines a brighter light and sheds important guidance for companies seeking to use celebrity names and likeness in image advertising campaigns generally, and congratulatory ads in particular.

*        Associate Professor, Mark H. McCormack Department of Sport Management, Isenberg School of Management, University of Massachusetts Amherst; J.D., Seton Hall School of Law; B.S., American Studies, Amherst College.

†        Partner, Lewis Brisbois Bisgaard & Smith LLP; Adjunct Professor, Atlanta’s John Marshall Law School; J.D., Howard University School of Law; B.A., Political Science, University of Louisville.

‡           J.D., University of Nevada, Las Vegas; Ph.D., Sociology, University of Nevada, Las Vegas; M.S., Sport Management, University of Massachusetts Amherst; M.A., Communication Studies, University of Nevada, Las Vegas; B.A., English, Allegheny College.