Antitrust Law Daily Wrap Up, ADVERTISING—N.D. Ill.: Court boots Lanham Act claims of Hacky-Sack record holder, (May 3, 2016)

By Edward L. Puzzo, J.D.

The holder of a Guinness World Record for consecutive kicks of a footbag could not sustain false advertising and false endorsement claims against Wendy's and Guinness, based on their use of footbags and a reference to his record in a Kid's Meal promotion, the federal district court in Chicago has ruled (Martin v. Wendy’s International, Inc., May 2, 2016, Alonso, J.).

Since 1997, plaintiff Johannes "Ted" Martin has held the Guinness World Record for consecutive kicks of a footbag (commonly known as a "Hacky Sack"). Martin brought various claims against fast-food chain Wendy's International and Guinness World Records Limited in connection with a joint promotion they ran in 2013. During the six-week promotion period, Wendy's Kids Meals included one of six toys, including a footbag, bearing the words "Guinness World Records." Instructions for the footbag mentioned Ted Martin's world record.

Standing. Martin alleged that the footbag used in Wendy's promotion was presented as if endorsed by him, was of inferior quality, and injured his commercial interest in his reputation, giving rise to a Lanham Act claim. The defendants contended that Martin had no standing to bring a Lanham Act claim because he had no commercial interest likely to suffer an injury due to the defendants' promotion.

The court stated that, as a footbag world record-holder, Martin had at least an economic interest akin to that of a trademark holder in controlling the commercial exploitation of his identity. Because defendants used his identity without paying him an endorsement fee, Martin's allegations were sufficient to demonstrate that he had a commercial interest in his reputation or identity sufficient to confer Lanham Act standing, the court held.

Martin also claimed that he was in the process of getting a footbag mass-produced and had a verbal agreement with a company for 10 percent of the gross sales of a prototype footbag patterned after the one he constructed and used in his 1997 record-breaking attempt. He claimed that defendants' promotion injured his future business interest in the sale and distribution of the forthcoming footbag product he will be paid to endorse. However, Martin is not yet in the footbag business, and his potential business is not very concrete at this point, the court observed. Thus, his potential business venture was too speculative to support Lanham Act standing on that basis.

False advertising. Martin alleged that defendants had engaged in false advertising by referring to the footbags issued in their promotion as "record-breaking" when they differed from the footbags Martin used in his record-breaking attempt. But defendants argued that their statements were mere puffery, and not material false statements of fact in a commercial advertisement that tended to deceive a substantial segment of its audience. The court agreed that the term "record-breaking" served only as a vague or exaggerated claim of superiority, which was non-actionable puffery under the Lanham Act.

In addition, the court continued, it was not plausible that, based on the "record-breaking" term, consumers would be misled into believing that the footbags used in the promotion had anything to do with Martin or his record. Instead, the term was used to further the "Kids versus Parents" theme of the promotion, which urged children to compete with their parents for family records. Thus, Martin failed to state a plausible false advertising claim, requiring dismissal of the claim.

False endorsement. Martin also alleged that defendants' use the "Guinness World Records" wording on the footbags, combined with an accompanying instructional card mentioning Martin's record, misled consumers into believing that Martin endorsed the footbag. Unlike other challenged promotion materials, the court conceded, the instructional card did explicitly reference Martin and his record. But, the court continued, it was not plausible that consumers would be likely confused as to whether Martin endorsed the footbag.

Unlike some state right of publicity laws, the Lanham Act does not permit recovery for the mere commercial use of a person's name or image. It only prohibits their use if endorsement or sponsorship is suggested. It was not plausible that the mention of Martin's name and record on an instructional card, only visible after purchase and used as an illustration of how to play the game, were likely to confuse consumers as to Martin's association with the footbag distributed in Wendy's promotion. Thus, the court also dismissed Martin's false endorsement claim.

The case is Civil Action No. 1:15-cv-06998.

Attorneys: Johannes T. Martin, pro se. Joseph R. Dreitler (Jones Day) for Wendy's International Inc.

Companies: Wendy's International Inc.

Cases: Advertising IllinoisNews