Hacky Sack Champ Loses Right of Publicity/43(a) Lawsuit
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Hacky Sack Champ Loses Right of Publicity/43(a) Lawsuit

June 9, 2017

by Jerry Glover

Johannes T. Martin holds the world record for consecutive kicks of a footbag known as a Hacky Sack. In 1997 he set that record by kicking a Hacky Sack into the air 63,326 consecutive times without letting it hit the ground. In 2013 Wendy’s and Guinness partnered to do a promotion that included six Guinness-themed, “record breaking” toys. A footbag with the Guinness logo was one of those toys. An instructional card with the footbag including the following: “How many times in a row can you kick this footbag without it hitting the ground? Back in 1997, Ted Martin made his world record of 63,326 kicks in a little less than nine hours!”.

Martin filed suit against Wendy’s/Guinness in the federal district court for the North District of Illinois alleging a violation of the Illinois Right of Privacy Act (IRP), 765 ilcs 1075. Martin v. Wendy’s International, Inc., 183 F. Supp. 3d 925 (N.D. Ill. 2017). Martin alleged that the companies had used his name and elements of his persona for commercial purposes (his identify) without his consent.

In May, 2016 the district court ruled that Martin’s claim was time-barred because it was not filed within the one-year statute of limitations for slander, libel or right of privacy matter. 735 ILCS 5/13-201. The IRPA does not have its own statute of limitations provision. But shortly after that ruling, the U.S. Court of Appeals for the Seventh Circuit (which includes Illinois) in an unpublished (i.e., non-binding) opinion questioned, without deciding, whether the five-year statute of limitations governing injury to property and all civil actions not otherwise provided for should apply. 735 ILCS 5/13-205. So the district court decided to give its earlier ruling another look.

After reviewing other lower court cases that had addressed the district court concluded that its first ruling was correct—the one-year statute of limitations applied. But as a “precaution” (i.e., if the ruling is appealed), the court went ahead and looked at Martin’s substantive right of publicity claim. Wendy’s/Guinness argued that Martin’s identity was not used for a commercial purpose and even if it was, their use of his identity falls within one of the exceptions to the IRPA—“use of a person’s name in truthfully identifying the person as the author of a particular work or program or the performer in a particular performance.” 765 ILCS 1075/35(b).

The court rejected the defendant’s argument that there was no commercial purpose noting that they had publicly used or held out Martin’s identify by using his name in their promotion to promote the defendants’ goods/services. But the court did agree with the defendant’s second argument—the reference to Martin’s identity falls within the exception noted above. The court noted that the defendants did nothing more than truthfully identify Martin as the holder of a world record as reported by Guinness. It would not make sense, the court added, to allow Guinness to note this records in its world records book but not note this “bar fact” in a promotional item. So the court rejected Martin’s IRPA claim.

But Martin also argued that the promotion violated his rights under Section 43(a) of the federal trademark act (the Lanham Act), 15 U.S.C. Sec. 11225(a)(1). This statute sets out two bases for liability: false association or endorsement and false advertising. Plaintiff argued that he had business associates in Canada who saw the promotion and told him, “We thought you had something to do with it.” So, the plaintiff concluded, they believed he was directly involved in the promotion. Since he was not involved in creating or approving the promotion, it was a false endorsement.

The court noted, however, that to state a false association claim the plaintiff has to show that the terms the defendants used and the representations they made in their promotion likely caused consumers to believe that Martin endorsed the Wendy’s/Guinness products. Even though Martin cited one instance of friends thinking he might be associated with the promotion, he did not present any other evidence of consumer confusion that he was endorsing the Guinness footbags. The court noted that mentioning Martin’s record as part of the promotion “served only to offer a sample of the sort of word records Guinness publishes.” The court added that Guinness did not use Martin’s records to make a claim about the quality of its footbags.

Ultimately, the court endorsed its original 2016 ruling about the statute of limitations and additionally held that Martin had not stated a claim under the IRPA.

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