Antitrust Law Daily Wrap Up, ADVERTISING—7th Cir.: Hacky sack record holder’s 5-hour ENERGY Lanham Act claim crashes, (Jul 1, 2016)

By Cheryl Beise, J.D.

The federal district court in Chicago properly dismissed Lanham Act false endorsement and Illinois publicity rights claims filed by Johannes Martin, the world record holder for the most consecutive kicks of a footbag or "hacky sack," in connection with a 5-hour ENERGY shot commercial in which an actor claimed that he "mastered origami while beating the record for Hacky Sack," the U.S. Court of Appeals in Chicago has held (Martin v. Living Essentials, LLC, June 30, 2015, per curiam).

In 2013 Living Essentials, LLC launched a commercial featuring an actor who boasted that in just five hours—all because of 5-hour ENERGY—he disproved Einstein’s theory of relativity, swam the English Channel twice, found Bigfoot, and "mastered origami while beating the record for Hacky Sack."

Illinois resident Johannes "Ted" Martin filed suit, claiming that Living Essentials used his identity in the commercial without permission to market its caffeinated 5-hour ENERGY drink in violation of the Lanham Act and the Illinois Publicity Rights Act. Since 1997, Martin has been listed by Guinness World Records as the open singles champion for consecutive kicks of a footbag (commonly associated with the Hacky Sack brand).

The district court dismissed both claims for failure to state a claim. The district court, interpreting Martin’s claim Lanham Act claim as alleging false advertising, held that puffery and parody were not actionable. The district court found that Martin’s publicity rights claim was time-barred and failed on its merits because no viewer could reasonably conclude that the commercial identified Martin.

Lanham Act claim. On appeal, Martin argued that the district court erred by analyzing his Lanham Act claim as one for false advertising under Section 43(a)(1)(B) rather than false endorsement under Section 43(a)(1)(A). Martin claimed that the 5-hour ENERGY commercial implied that he endorsed the company’s energy shot and even suggested that, without using the caffeinated drink, he would not have set a footbag record and become famous.

The appeals court clarified that Martin’s Lanham Act false endorsement claim depended on whether consumers, after viewing the commercial, were likely to be confused and believe that Martin endorsed or approved of the 5-hour ENERGY product. According to the court, the commercial would not confuse anyone into thinking that Martin himself endorsed 5-hour ENERGY or that he had used the product years before it came to market. Moreover, the actor in the commercial could not have impersonated Martin, since he bragged of besting, not holding, a footbag record and he was shown kicking two footbags, not one, while creating origami animals. Guinness World Records credited Finnish footbagger Juha-Matti Rytilahti, not Martin, with the most consecutive kicks of two footbags, the court noted.

Publicity rights claim. After dismissing Martin’s Lanham Act claim, the district court should have decided whether to retain supplemental jurisdiction over the state law claim instead of assuming the existence of diversity jurisdiction, the appeals court said. As an LLC, Living Essentials assumed the citizenship of each of its members and there was no information in the complaint about the members.

Assuming that it had diversity jurisdiction, the district court determined that Martin failed to state a claim under the Illinois Right of Publicity Act (IRPA) and that, even if he did, his claim was barred by a one-year statute of limitations applicable to IRPA claims.

The Seventh Circuit declined to affirm the district court’s ruling that a one-year statute of limitations was applicable to IRPA claims, based on one decision, Blair v. Nevada Landing P’ship, 859 N.E.2d 1188, 1192 (Ill. App. Ct. 2006). The IRPA does not include a statute of limitations. The issue did not appear to be one of settled law, the court noted, because another court had applied a five-year statute of limitations, but that ruling was not determinative of the case’s outcome. In a third case, the Seventh Circuit expressly declined to decide whether Blair was correct about the applicable statute of limitations.

The Seventh Circuit, however, agreed that Martin’s complaint failed to state a claim under the IRPA. The IRPA prohibits the nonconsensual exploitation of an individual’s "identity" for commercial purposes. The statute defines "identity" to mean "any attribute … that serves to identify that individual to an ordinary, reasonable viewer or listener." The district court correctly held that the phrase "the record for Hacky Sack" was too ambiguous to be an "attribute" of Martin and that no reasonable viewer would interpret the commercial as referring to Martin.

The ruling of the district court was affirmed.

The case is No. 15 C 01647.

Attorneys: Johannes T. Martin, pro se. Joseph W. Barber (Howard & Howard Attorneys PLLC) for Living Essentials, LLC.

Companies: Living Essentials, LLC

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