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Jordan and Dominick's Beef a Cautionary Tale Regarding the Illinois Right of Publicity Act

By Jonathan M. Boulahanis / Jul 03, 2013

The Dirksen Federal Courthouse is no stranger to celebrities, politicians, and athletes walking through the doors. However, it still makes heads turn when his Airness himself, Michael Jordan, is summoned to a Judge's chambers. Unlike the former Illinois governors, though, Jordan was brought in to discuss his requested damages against Dominick's Finer Foods for their advertisement congratulating him on his Hall of Fame Career. Jordan has already been granted summary judgment and won the liability of phase of his case when Judge Shadur agreed that Dominick's violated the Illinois Right of Publicity Act. 

Jordan brought suit against Dominick's Finer Foods, No. 10 CV 00407, alleging violations of the Illinois Right of Publicity Act, Trademark infringement, and various violations of the Lanham Act. Jordan strategically moved for summary judgment on the violation of the Illinois Right of Publicity Act. Once that was granted, the remaining allegations were voluntarily dismissed, and all that is left to argue is how much Jordan was damaged. 
 
The Right of Publicity Act, effective January 1, 1999, completely replaced the common-law tort of appropriation of likeness, although it did not affect the other three common-law privacy torts." Maremont v. Susan Fredman Design Group, Ltd., 772 F. Supp. 2d 967, 972, 2011 U.S. Dist. LEXIS 26441, 99 U.S.P.Q.2D (BNA) 1384, 31 I.E.R. Cas. (BNA) 1845, 39 Media L. Rep. 1992 (N.D. Ill. 2011). The Act protects against unauthorized "commercial" uses of a person's identity. "Commercial" use is defined as "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." 765 ILCS 1075/5. "Identity" is defined by the statutes "any attribute of an individual that serves to identify that individual to an ordinary, reasonable viewer or listener, including but not limited to (i) name, (ii) signature, (iii) photograph, (iv) image, (v) likeness, or (vi) voice." 765 ILCS 1075/30. The statute is held to be a broad and expansive approach to protecting use of a person's identity without their permission. Muzikowski v. Paramount Pictures Corp, 2003 WL 22872117, at *6 (N.D. Ill., Dec. 3, 2003).

In Jordan's case, the claim under the Act was a slam dunk (bad pun intended). Dominick's used his name, trademark number 23, and Air Jordan emblem in order to promote the sale of their Rancher's Reserve Steaks. Dominick's even included a coupon, and admitted that they did not receive Jordan's permission. It was a clear violation of the Act.

As for Jordan's damages, he demanded five million dollars from Dominick's Finer Foods. I, along with the public and Judge Shadur, wonder how Jordan came up with that number. My initial thought was that he has lost the concept of money, or he's had too much of that Miami sun. However, the statute also defines what are recoverable damages. Section 40 of the Act provides that Jordan can recover actual damages, profits derived from the misuse and punitive damages. 765 ILCS 1075/40. It will be interesting to see how many steaks Dominick's actually sold based on the ad, and what Jordan can show his actual damages are.

Jordan brought a similar suit against Jewel-Osco, No. 10 CV 00304. However, Judge Gary Feinerman rejected Jordan's claims. In that case, Judge Feinerman ruled that the advertisement was noncommercial speech and, thus, entitled to First Amendment protections. The advertisements can be seen below, and the most glaring differences were that Jewel-Osco was not promoting a product, and did not attach a coupon.

Even if Jewel and Dominick's intent was only to honor Jordan, this is another example that no good deed goes unpunished. Companies, big or small, planning to use a celebrity's identity in Illinois should think long and hard before running an advertisement. The Illinois protection goes even further than the federal protections, as an identity has been held to afford even broader protection than a trademark. It is imperative to either (1) receive permission, which usually will include paying some kind of royalties; or (2) examine the advertisement long and hard to make sure its noncommercial speech, knowing full well that some courts hold that any company advertisement can be held to be commercial speech. The risk may very well outweigh the reward.

If you have any questions, you may contact Jonathan M. Boulahanis at jboulahanis@clarkhill.com or 312.985.5930.