Yesterday I mentioned that someone had filed a trademark incorporating Jeremy Lin’s name, and now today we’ve got the exact same issue with Michael Jordan. Good excuse for me to actually track down the specific legal foundation at play here.
First, here’s some background from the Jordan press release:
Basketball legend Michael Jordan has filed suit in a Chinese court against Qiaodan Sports Company Limited, a Chinese sportswear and footwear manufacturer, for unauthorized use of his name.
“It is deeply disappointing to see a company build a business off my Chinese name without my permission, use the number 23 and even attempt to use the names of my children. I am taking this action to preserve ownership of my name and my brand.
The Chinese company has registered and uses the name “Qiaodan” (乔丹), which is the moniker Michael Jordan has been known by in China since he gained widespread popularity in the mid-1980s.
The full press release and other information on the case can be found at www.therealjordan.com.
You probably wouldn’t be surprised to learn that Jordan has been on the fuzzy end of the lollipop when it comes to China IP infringement for a very long time. So what explains the timing of the case?
Two other disputes involving reputation rights were recently won by famous athletes in China. Although there is no specific law on celebrity names, these cases were built around the Trademark Law, Article 31, which says:
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.
A few issues here, including the scope of this provision and how it relates to name usage in addition to attempts to register trademarks. Let’s have a look at the cases, which were brought by two other basketball players, Yao Ming and Yi Jianlian.
The Yi Jianlian case is a bit complicated in terms of procedure. The “Yi Jianlian” trademark was registered in respect of shoes and sports equipment in February 21, 2005 and then transferred to a Fujian sporting goods company (they also used “Yi Jianlian” as their corporate name) two years later.
Meanwhile, Yi Jianlian (the person) filed an action at the Trademark Review and Adjudication Board (TRAB) to cancel the trademark. He won this case, which was decided on November 30, 2009.
But wait, it wasn’t over yet. Appeals to administrative decisions are available, and the sporting goods company did just that, going first to the Beijing First Intermediate Court (they handle all TRAB appeals) and then to the Beijing High Court — they lost both times. The case was finally over on July 30, 2010, with the cancellation action officially upheld.
Sorry about that. Still with me?
More important, what law are we dealing with here? The Yi Jianlian case was decided based on Article 31 of the Trademark Law (noted above). The court specifically referred to “prior rights” of others (in this case, the right of reputation or name). The court also mentioned the general provisions of the Civil Law, which among other things protects “personal name” rights (Article 99) and “right of reputation” (Article 101).
In determining that the mark was registered in violation of these rights, the court found that Yi Jianlian had a certain reputation prior to the registration (i.e. he was famous) and that the use of his name resulted in him suffering damages. If you’ve ever dealt with a “bad faith” cancellation of a trademark or a case involving a well-known trademark, we’re talking the same sort of issues, particularly in terms of evidence.
OK, what about Yao Ming? I apologize, but for this case, I wasn’t able to dig up as much information given my time constraints. From press accounts (see this Sohu story, for example), last June, Yao Ming sued Wuhan Yunhe, a sporting goods company, in Intermediate Court in the city of Wuhan. I assume the case was decided last December based on the news coverage.
Unlike the Yi Jianlian case, which was primarily about cancelling trademarks, this was a civil suit alleging infringement of reputation, name and portrait rights. In addition to the references above with respect to the Trademark Law and Civil Law, the Yao Ming case undoubtedly also dealt with Article 100 of the Civil Law, which covers image rights.
The Yao Ming case, which began in Wuhan, also involved a counter-suit and appeal in Beijing and an entire other backstory involving an unauthorized trademark registration and licensing — very complicated! As I do not have copies of those judgments and I’ve already run through procedure in the Yi Jianlian case, let’s leave it at that.
Which brings us to the Michael Jordan case, which deals with reputation/name rights. Like the Yao Ming dispute, this will be a civil suit alleging unauthorized use of Jordan’s name(s) and a whole bunch of marks that were registered after Jordan was famous in China, including his kids’ names (see below list if you can see embedded images; if not, follow the above link). I’m not sure whether an unfair competition claim will be added or whether a separate cancellation action(s) will be necessary.
What will Jordan need to prove here? Well, evidence of his reputation will be quite easy. This goes back at least to 1984 in China. Evidence of the use of his name and consumer confusion should also be easy to come by, and since, as I understand it, he is not looking at money damages as a primary remedy, that should simplify some of the more difficult evidentiary challenges we normally see in infringement cases.
Certainly looks like bad faith at first glance, doesn’t it?
This one will be interesting to watch as it unfolds. The legal theory here is relatively new, and there are several marks involved, and of course we haven’t heard from the other side yet. I’d love to hear how this company justifies their use of Jordan’s name.
I’m also rather interested to see what his legal team comes up with in terms of evidence of Jordan’s fame. Not that it will be difficult. I’m just curious — of all the different aspects of Jordan’s fame, which would you choose?
Disclaimer: As usual, since I just found out about this case this morning and only spent a bit of time checking out the Yao Ming and Yi Jianlian cases, please do not rely on the above dates, etc.