Jordan's hard fought victory in China
[By Arthur Tan-Chi Yuan]
In a detailed two-part (part 1, part 2 (sections 1 and 2)) opinion, Supreme People's Court (SPC) gave the ultimate victory to Michael Jordan in his hard fought legal battle (covering trademark, copyright, unfair competition, and other claims) against Qiaodan Sports ("QS"), a Chinese company who has registered both Chinese characters of Jordan as well as the pinyin of Jordan, "Qiaodan". The part 1 of the opinion deals with the pinyin of Jordan, "Qiaodan," and part 2 of the opinion deals with Jordan's name in Chinese characters, ”乔丹.“
A quick background of the case (assisted by a brief case timeline) below: Qiaodan Sports Ltd. is a Chinese sporting goods retailer selling sporting merchandise throughout China. It currently has more than 5000 stores in China. It sought to register its first "Jordan" related trademarks in apparels in April 1997, and received such registration thereafter. The application included "QIAODAN," pinyin for JORDAN. It later also applied for, and obtained, trademarks for ”乔丹,“ the two Chinese characters representing "JORDAN." These two characters are phonetic translation of "JORDAN". For those who know Chinese, many Chinese characters are homonyms, so there could be many Chinese characters that sound like "JORDAN." In fact, QS filed and received other trademarks with Chinese characters that sound like "JORDAN" with the Chinese trademark office. However, this particular combination, ”乔丹,“ is the most recognizable and most used set. It was also the combination used by QS.
Across the Pacific, Michael Jordan, the-one-and-only, whether you are a basketball fan or not, was busy to cement his god-like skills in the basketball kingdom and to secure a place in the basketball hall of fame (he was enshrined later in 2009) back in 1997. He and the Bulls just finished an incredible record of 72-10 in 1996. His popularity and fame transcended culture, nations, and languages since his famous buzzer-beater shot in 1982. Unfortunately, he and Nike didn't pay attention to trademarks in China.
Therefore, before MJ filed the lawsuit in 2012,QS grew from a run-of-the-mill OEM shoe manufacturer to a household name in China selling sporting goods. While there is little doubt that its fame was a rip-off of MJ's, but in a first-to-register trademark system, QS did what any savvy entrepreneur would do. And the law was on its side.
Until about a month ago when the Supreme People's Court ("SPC") interpreted section 31 of the Trademark law of 2001 (the current version didn't change that section) in part 1 of the opinion. Despite two lower courts' ruling that Michael Joran's name was not damaged by QS's use, as I argued in 2012 here, Jordan appealed his case to the SPC arguing that the lower courts failed to address section 31 of the Trademark Law of 2001, which provides that:
Article 31 An application for the registration of a trademark shall not create any prejudice to the prior right of another person, nor unfair means be used to pre-emptively register the trademark of some reputation another person has used.
That is, Jordan had his rights in his name before QS's application back in 1997. Before amendments to the Chinese trademark law in 2001, the implementing regulations of the Trademark Law of 1993 already stated that "a trademark application shall not violate prior rights of others".1 The SPC interpreted "the prior rights of others" in section 31 to cover rights to someone's name, even for a non-Chinese individual. In fact, the SPC found that in most of the Chinese media, when it refers to Michael Jordan in Chinese, there was no need to mention MJ's first name or full name or "AIR Jordan"! Just the combination of those two characters for his last name are sufficient, and there is no question that the ordinary readers or consumers would readily recognize that it is referring to MJ - Michael Jeffrey Jordan.
Of course, QS and the Chinese Trademark Reexamination Board argued that those two combinations of Chinese characters and Qiaodan could not be confused with MJ. Those two combinations of characters can be a Chinese citizen's first name and last name. In fact, QS found that there are more than 4000 individuals with that name. Therefore, MJ does not own those two combinations. Moreover, QS argued that "Jordan" is also a common last name in the English language. Lastly, QS raised a similar argument of laches, a familiar one in equity in the common law tradition: Nike, MJ's exclusve licensee, failed to file any opposition or cancellation to QS's filings or reigstrations all this time. The Chinese trademark law provides that an interested party may within five years from the date of the registration of the trademark file a request with the Trademark Review and Adjudication Board for adjudication to cancel the registered trademark. See also section 41. Nike sat on the sideline for all 15 years and QS was in "actual, open, hostile, and continuous possession" -- borrowing language from the definition of adverse possession. It is hard to give Nike a break from an equity stand point.
Honestly, QS has made many solid and good arguments that a reasonable court in any jurisdiction would likely find persuasive.
Therefore, for at least the above reasons, the SPC held that MJ did possess the rights to his name as a non-Chinese citizen and the two Chinese characters are representative of his last name. QS's registrations of 乔丹 violated his rights and shall be cancelled. As for the marks QIAODAN, the SPC held that they do not automatically translate to 乔丹 (for the reasons indicated above). Therefore, MJ would not be able to cancel those marks.
In other words, the SPC splitted the baby and made everyone happy, to a certain extent. I would further argue that Jordan's victory is not a partial victory, as argued here. In fact, it is an extraordinary victory because the SPC held, for the first time, that Michael Jordan, a non-Chinese individual, whose last name's translation in Chinese entitles naming rights and trumped the registrations of QS. The fact that SPC held that QS can keep QIAODAN is a hollow victory to the Chinese company:
- the Chinese public does not typically use pinyin; and
- for Michael Jordan, he also doesn't really care what QIAODAN stands for.
I believe it is also worth emphasizing that the SPC has, for the first time, reading Article 31 of the Chinese trademark law broadly. This should help other celebrities, sports figures, especially those sports that are popular in China, etc.
Now that you have learned a lesson in China, Michael, PLEASE FILE AT LEAST ONE TRADEMARK APPLICATION FOR "乔丹" WITH THE USPTO AS SOON AS POSSIBLE!
1. Translation from the SPC opinion.
[Author’s note: Any errors of the summary and translation of the original Chinese decision are mine and shall not be attributed to any portion of the original.]