After the World Cup in 1966, Brazilian soccer superstar Pelé vowed to never again play in a World Cup. In Brazil's opening match, the Bulgarian defenders kicked and stamped Pelé, forcing him to sit on the sidelines in Brazil's second game against Hungary. In the final group game against Portugal, the Portuguese defenders – having learned from the Bulgarians – adopted a similar tactic, striking at Pelé every chance they got. However, despite the persistent and violent fouls on Pelé, the referee refused to send off any Portuguese defenders, and Pelé and the Brazilian team were knocked out of the tournament. Of course, Pelé did return to play in, and win, the 1970 World Cup for Brazil. Fifty years after getting booted around by the Bulgarian and the Portuguese teams, in a case brought in federal court in Chicago against Samsung, Pelé is hoping for a more penal referee.
In March 2016, Pelé filed a lawsuit against Samsung in the United States District Court for the Northern District of Illinois. According to the complaint, Samsung improperly used a Pelé look-alike in a nationally distributed advertisement for its new 4K SUHD TV set that ran in a major New York publication. (See Pelé IP Ownership LLC v. Samsung Electronics Co., Ltd., No. 16-03354 (N.D. Ill. amended complaint filed May 25, 2016)). Though Pelé and Samsung had come close to executing a license agreement for Pelé to appear in Samsung's advertising campaign, Pelé contends that Samsung abruptly pulled out at the eleventh hour and decided to go in a different direction. Pelé asserts, in essence, that Samsung subbed him out for a look-alike, in what amounted to an illegal slide tackle of his valuable persona and publicity rights. The complaint requests a total of $30 million in damages.
The advertisement at issue was published in October 2015. Although Pelé's name is not expressly mentioned, a partial face shot of a man who, it is alleged, "very closely resembles" Pelé, takes up approximately two-thirds of the full-page advertisement. Moreover, a superimposed ultra-high-definition television screen next to the image of the man features two soccer players, one of whom is performing a "modified bicycle or scissors-kick, perfected and famously used by Pelé." Beneath the Samsung television, and adjacent to the alleged look-alike's mouth, is a supposed first-person endorsement of the product.
Pelé's complaint against Samsung makes several allegations, including a claim under § 43(a) of the Lanham Act for false endorsement and a state claim for violation of right of publicity. Generally speaking, a false endorsement is actionable where the defendant uses the celebrity's persona without permission to suggest false endorsement or association – that is, making a false or misleading representation of fact in connection with goods or services that is likely to cause consumer confusion as to sponsorship or approval. For example, courts have found viable false endorsement claims where t-shirts for sale bore a celebrity's name and likeness, a website's masthead included an image of a celebrity, and an advertisement featured a character dressed in a well-known person's signature costume. In fact, the current dispute brings to mind a notable case involving Woody Allen, where a New York court ruled in favor of Allen on his false endorsement claim over a video store chain's magazine advertisement that depicted a look-alike holding a membership card, with VHS tapes of Allen's movies in the background. (See Allen v. Nat'l Video, Inc., 610 F. Supp. 612 (S.D.N.Y. 1985)). Similarly, the state law right of publicity generally protects an individual's persona from unauthorized exploitation, where the plaintiff's name, likeness, identity or voice is used, typically for commercial advantage or advertising, without prior consent.
In claiming that Samsung's actions diminished Pelé's endorsement value and unfairly enriched the defendant, Pelé is seeking monetary damages, injunctive relief barring Samsung from using Pelé's identity without permission, and an order requiring Samsung to place corrective advertising in the publication where the advertisement appeared. In response, Samsung has struck back and filed several motions to dismiss. Beyond arguments relating to lack of jurisdiction and improper venue, Samsung argues that Pelé has, among other things, failed to plead his false endorsement claim under the Lanham Act with heightened specificity pursuant to Federal Rule of Civil Procedure 9(b), which generally requires parties to state with particularity claims related to fraud. Samsung also believes Pelé's state consumer protection claims are similarly out-of-bounds for an alleged failure to plead the requisite intent, causation and substantial harm elements required under the statute. Lastly, and most interestingly, Samsung counterattacks Pelé's state right of publicity claim, arguing that under choice of law principles, New York law (and not Illinois) should apply because it is the state with the most significant relationship to the claim. Such a determination would be significant because, as Samsung contends, Pelé's IP licensing company, as named plaintiff, would lack standing to bring such a claim because the rights under the New York right of publicity statute are nontransferable and only a natural person has a right of action under the statute.
In his 22-year career, Pelé dribbled, kicked, and scored his way to three World Cup wins, but at the age of 74 he is seeking what may be his first victory in the U.S. judicial arena. While Samsung allegedly was looking for an assist from a Pelé look-alike to boost its HDTV sales, Pelé is asking the Chicago court to kick this ball out of play. Indeed, instead of a last-minute goal, Samsung, if its defenses fail to hold, might be facing a yellow card that carries with it a hefty monetary penalty.