Since its inception, the right of publicity has become a powerful means by which individuals can control the use of their identities.
Although the legal landscape remains a patchwork of state statutory and common law, states have continued to recognize and expand publicity rights. For example, this summer, the New York State Assembly introduced a bill that would codify a postmortem right of publicity and extend rights for forty years after an individual's death.
Just as the body of law protecting identity rights has expanded, so have the cases seeking to enforce those rights. For example, last month, dozens of popular recording artists sent an open letter to Democratic and Republican national, congressional and senatorial committees demanding that politicians cease unauthorized uses of their songs for political purposes. The artists cited violations of their rights of publicity among other possible claims.
To address the growing trend of right of publicity cases, we draw on our experience protecting the publicity rights of three of the most famous athletes of all time: Michael Jordan, Pele and Muhammad Ali. Each of these cases provides guidance about the reach of the right of publicity.
Jordan v. Dominick's: Establish an intellectual property policy, and follow it.
Jordan v. Dominick's Finer Foods LLC in the U.S. District Court for the Northern District of Illinois, brought on behalf of Jordan, involved an advertisement for Dominick's, a major supermarket chain in the greater Chicago area at the time.
The advertisement was printed in a commemorative edition of Sports Illustrated magazine that was published in connection with Jordan's induction into The Naismith Memorial Basketball Hall of Fame. The advertisement included the Dominick's name, its logo, a photo of its "Rancher's Reserve" steak and a coupon. It also included Jordan's name, his iconic number 23, the black and red colors of the Chicago Bulls, and a silhouette that resembles the Jumpman logo used for the Jordan brand at Nike Inc. A simple message linked Jordan to the image of the steak: "You Are a Cut Above."
The purpose of the case was to protect Jordan's right to control who can use his identity and how they can use it. The defense was straightforward. The defendants argued that they did not take much of Jordan's identity, and, so, they should not have to pay much. In fact, there were fewer than 150,000 copies of the commemorative issue distributed and only slightly over 40,000 copies sold.
Our response was an argument that Jordan's former agent, David Falk, had used over the years, which he called the Hope Diamond theory. If you want the Hope Diamond, you have to buy the whole thing. You cannot just chip a little piece off. If you could, everyone would do that. The owner would lose control and there would be nothing left.
We presented evidence that Jordan only enters into contracts in the range of $10 million. He does not enter into small, one-off contracts of the kind that Dominick's wanted to use to value what it had taken. The jury's verdict was for $8.9 million dollars. Jordan donated all the proceeds to 23 charities in Chicago, confirming that the case was not about personal enrichment but about maintaining control over the use of his identity.
One of the key lessons from this case is that organizations should establish an intellectual property policy and adhere to that policy. At the time that it published the Jordan ad, Dominick's had an established policy requiring that all uses of others' intellectual property be submitted in advance to the legal department. But in its eagerness to use Jordan's identity to promote its products, Dominick's violated its own policy.
Jordan v. Jewel: The commercial speech doctrine is broad.
Jordan v. Jewel Food Stores Inc. involved an advertisement printed in the same issue of Sports Illustrated for Jewel-Osco, another major supermarket chain in the greater Chicago area. The advertisement contained the Jewel-Osco trademark, brand logo and advertising slogan, "Good Things Are Just Around the Corner." It incorporated the advertising slogan into the statements about Jordan by describing him as being "just around the corner."
The U.S. District Court for the Northern District of Illinois was not impressed with Jordan's claim that the advertisement violated the Illinois Right of Publicity Act. The court granted summary judgment for the defendants, holding that the advertisement was noncommercial speech fully protected by the First Amendment.
In so holding, the district court focused on the fact that the advertisement did not refer to any specific product or service. According to the court, "readers would have been at a loss to explain what they have been invited to buy." The U.S. Court of Appeals for the Seventh Circuit reversed.
In our presentation to the Seventh Circuit, we showed that many advertisements do not refer to any specific product or service but are clearly commercial speech.
We specifically highlighted a few such examples. The famous Marlboro ad does not depict any product, just the Marlboro Man. Likewise, one of Apple Inc.'s advertisements merely depicts a woman in an aviator's cap with no computer or any other product. The Nike Jordan Jumpman ads, with the Jumpman logo on the bottom right corner, has no product — it is just a picture of Jordan with his championship rings. Finally, we showed a Gatorade Company Inc. ad with Jordan — a still shot of him about to dunk — with the Gatorade trademark visible, but again no product.
The Seventh Circuit's opinion illuminates the key lesson from this case — that brand advertising is commercial speech. As the Seventh Circuit stated, "An advertisement is no less 'commercial' because it promotes brand awareness or loyalty rather than explicitly proposing a transaction in a specific product or service."
Responding directly to the district court's statement that it is difficult to explain what readers were invited to buy, the Seventh Circuit stated:
What does it invite readers to buy? Whatever they need from a grocery store — a loaf of bread, a gallon of milk, perhaps the next edition of Sports Illustrated — from Jewel-Osco, where "good things are just around the corner."
The Seventh Circuit concluded that to view the ad "as constitutionally immune noncommercial speech would permit advertisers to misappropriate the identity of athletes and other celebrities with impunity." Shortly after the Seventh Circuit's opinion, and after the verdict in the Dominick's case, the Jewel case settled.
Pele v. Samsung: Avoid lookalike identities.
Pele IP Ownership LLC v. Samsung Electronics Co. Ltd. was brought in the Northern District of Illinois on behalf of the entity that owns the endorsement rights for the former soccer player Pele.
At issue was a Samsung advertisement that ran in The New York Times, Fortune, Forbes, The Economist and The Wall Street Journal. The advertisement did not use Pele's image but featured an individual who looked very much like Pele. The advertisement also showed a Samsung TV with a soccer player executing a version of the so-called scissors or bicycle kick for which Pele is famous.
Fewer than two years before Samsung ran the advertisement, Samsung nearly entered into a license agreement for the use of Pele's identity, but it backed away at the last minute. This case settled after several years of discovery.
The key lesson from this case is that companies cannot avoid misappropriation claims by imitating an individual's likeness. Courts have sustained misappropriation claims based on the use of lookalikes, soundalikes and other identity evocations.
Muhammad Ali v. Fox: Even a tribute can become commercial speech.
Muhammad Ali Enterprises LLC v. Fox Broadcasting Co. was brought in the U.S. District Court for the Northern District of California on behalf of the entity that owns Ali's endorsement rights based on Fox's use of Ali's identity in a video promotion for the 2017 Super Bowl.
Fox broadcast the video in its pregame show before its broadcast of the 2017 Super Bowl and again in the post-game show. The first half of the video is a tribute to Ali and his accomplishments, stressing the theme of greatness and the greatest. The second half, while continuing those themes, celebrates a series of National Football League legends. The video ends with the Super Bowl logo, licensed from the NFL, and some final footage of Ali.
Fox moved for judgment on the pleadings on the grounds that the video was noncommercial speech. Fox initially characterized the video as a mere tribute to Ali. Later, however, Fox acknowledged that the video, shown in the pregame show just before the Super Bowl, does promote Fox Broadcasting. But Fox argued that as a broadcaster it has a blanket license to promote its products and services using any individual's identity, without their consent.
We argued that although a broadcaster has the right to show the players in a sports event, it does not have the right to use the identity of someone who is not part of or related to the event to promote it. It was undisputed that Ali had nothing to do with the Super Bowl or football.
During argument on Fox's motion, Fox's counsel was asked about the relationship between Ali and the Super Bowl. Fox's counsel responded that Ali is an athlete and the Super Bowl is an athletic contest. We countered: That is only one step away from saying that Ali and football players are both people. Shortly after the hearing on Fox's motion, during which the judge did not appear to be receptive to Fox's argument, the case settled.
This case demonstrates the limits of the First Amendment's broad protection. The First Amendment would have protected a documentary or docudrama about Ali. Likewise, the First Amendment would have protected a noncommercial account of Super Bowls past and present using the identities of athletes who competed in those events. But the First Amendment does not protect the use of an individual's identity to promote unrelated products or services.
In light of the growing trend of individuals seeking to enforce their rights of publicity — and the substantial damages that can be recovered for the misappropriation of those rights — it is critical to ensure that any use of another's identity is proper. As these cases make clear, there is significant risk in failing to do so.
This article is reprinted with permission from Law360, September 4, 2020, www.Law360.com.
 New York Assembly Bill A5605C.
 Jordan v. Jewel Food Stores, Inc. , 851 F. Supp. 2d 1102 (N.D. II. 2012).
 Id.at 1111.
 Id.at 1110.
 Id.at 1107.
 Jordan v. Jewel Food Stores, Inc. , 743 F.3d 509 (7th Cir. 2014).
 Id. at 518.
 Id. at 519.
 Id. at 520.
 Pele IP Ownership LLC v. Samsung Electr. Co., Ltd., No. 16-03354 (N.D. Ill., amended complaint filed May 25, 2016).
 See, e.g., Onassis v. Christian Dior-New York, Inc. , 472 N.Y.S.2d 254 (Sup. Ct. 1984), aff'd 488 N.Y.S.2d 943 (1985) (claims based on Jacqueline Kennedy Onassis' lookalike model in a Dior ad).
 See, e.g., Midler v. Ford Motor Co. , 849 F.2d 460 (9th Cir. 1988) (claims based on Bette Midler soundalike in a Ford commercial).
 See, e.g., White v. Samsung Elecs. Am., Inc. , 971 F.2d 1395 (9th Cir. 1992) (claims based on robots evoking Vanna White's identity in a Samsung ad).
 Muhammad Ali Enterprises v. Fox Broadcasting Co., No. 17-7273, 2017 WL 4516708 (N.D. Ill., complaint filed Oct. 10, 2017). The case was later transferred to the Northern District of California. See Agreed Motion to Transfer Venue, Muhammad Ali Enters. LLC v. Fox Broad. Co., No. 17-0949, 2017 WL 7793205 (N.D. I11Nov. 13, 2017).
 Defendant's Motion for Judgment on the Pleadings, Muhammad Ali Enters. LLC v. Fox Broad. Co., No. 17-06949, 2018 WL 663189 (N.D. Cal. Jan. 16, 2018).
 Id. at 1.
 Id. at 12-13.
 Id. at 11-17.
 See Sarver v. Chartier , 813 F.3d 891 (9th Cir. 2016).
 See Dryer v. Nat'l Football League , 814 F.3d 938 (8th Cir. 2016).