Back in 2009, Time magazine, the publisher of Sports Illustrated, ran a special commemorative Sports Illustrated issue devoted entirely to Michael Jordan’s basketball career. Jewel Food Stores, Inc. (“Jewel”), the operator of supermarkets in the Chicago area, was offered free advertising in the issue in exchange for agreeing to sell the magazine in its stores. Jewel ended up running a full page ad in the issue congratulating Jordan on his induction into the Hall of Fame. The ad, which can be seen below, featured text recognizing Jordan’s accomplishments and a pair of “23” sneakers, and prominently featured the Jewel logo and slogan in the middle of the ad.

Jordan brought suit against Jewel claiming that the ad was a misappropriation of his identity for Jewel’s commercial benefit under the Lanham Act, as well as violations of Illinois’ Right of Publicity Act and common law. He sought $5 million in damages, plus punitive and treble damages under the Lanham Act. In defense, Jewel claimed that the ad was noncommercial speech, entitling Jewel to First Amendment immunity. After the lower court sided with Jewel, Jordan appealed the matter to the Seventh Circuit. Last week, the Seventh Circuit reversed and remanded the case, holding that the ad was commercial speech.

The Seventh Circuit held that while the ad was clearly a congratulatory salute to Jordan, it also served to implicitly promote Jewel. In its analysis, the court first noted that Jordan’s “singular achievements on the basketball court have made him highly sought after as a celebrity endorser; as a retired player who continues to reap the economic value of his reputation in the history of the game, he understandably guards the use of his identity very closely.” The court then dismissed Jewel’s argument that the ad was no different from other ads it had run commending local groups in their public service achievements. Said the court, “But an ad congratulating a famous athlete can only be understood as a promotional device for the advertiser. Unlike a community group, the athlete needs no gratuitous promotion and his identity has commercial value.” Finally, the Seventh Circuit emphasized the central placement and prominence of the Jewel logo and slogan in the ad. In concluding the ad was commercial speech, the court held that “[t]he ad is a form of image advertising aimed at promoting goodwill for the Jewel-Osco brand by exploiting public affection for Jordan at an auspicious moment in his career.”

Jordan is also involved in similar litigation against Dominick’s Finer Foods involving another congratulatory ad. That litigation is ongoing.

This case serves as a reminder to advertisers that referencing or invoking well-known brands or public persona without their permission can be a dicey area. And when you’re dealing with brand or persona as powerful as Michael Jordan’s, those risks can be even higher.