By Edward Chatterton and Ann Cheung
After two decades on the basketball court, Michael Jordan, one the greatest basketball players of all time, is currently learning the rules of defence and offence in a different game: the Chinese legal system. Qiaodan Sports Company Limited (“Qiaodan Sports”), a Chinese sportswear company, are throwing their legal dispute with him back into his court.
Michael Jordan’s fame in China is long-standing. He was first seen on Chinese television playing for the 1984 gold medal-winning US basketball team at the Los Angeles Olympics. Since then, he has become hugely famous in China, both under his English name but also under his Chinese name “乔丹” which is the Chinese equivalent of the name “Jordan”. This Chinese name is shown in pinyin, the official system which is used to transcribe Chinese characters into Latin script, as “Qiaodan”. Whilst Michael Jordan registered trademarks for “Jordan” in English in China as far back as 1993, he never applied for any registered trademarks for “乔丹” nor for the pinyin representation “Qiaodan”.
Qiaodan Sports first applied to register the name “Qiaodan”, when they applied to use the name with the logo of a baseball player at bat. They also ﬁled several trademark applications for “乔丹” and “QIAO DAN”, which were approved for registration in 1998. Qiaodan Sports have been using their “Qiaodan” and “乔丹” brands since 2000 and have made significant brand-building efforts over the years. Qiaodan Sports currently own about 6,000 shops in China which trade under the “QIAO DAN” name.
In November 2011, Qiaodan Sports won approval from the China Security Regulatory Commission for an IPO of 112.5 million shares to raise about RMB 1.1 billion (approximately USD 178 million). On 21 February 2012, just as Qiaodan Sports were set to debut on the stock market, Michael Jordan cried foul and commenced proceedings against Qiaodan Sports for the unauthorized use of his name at Shanghai No. 2 People’s Intermediate Court. He claimed that Qiaodan Sports were illegally using his Chinese name and his jersey number 23 on their products without his permission. Since Michael Jordan has never registered any trademarks for his Chinese name, his claim is based on the grounds that Qiaodan Sports’ use of his Chinese name was in breach of his rights in his Chinese name. He demanded that Qiaodan Sports stop using the name and the trademarks and requested compensation.
Whilst Chinese law generally protects parties who hold registrations and who file early for them, this does not mean that it is open season to register the names of famous people, even if they do not have registered trademarks. Specifically, Chinese law protects the right of personal name under Article 99 of民法通则 (General Principle of Civil Law) and prohibits infringement of the naming rights of individuals under Article 2 of侵权责任法 (Torts Liabilities Law). These principles are also reflected in Article 31 of 商标法 (Trademark Law) which provides that an individual’s name rights shall be protected as a prior legitimate right.
In its defence, Qiaodan Sports contended that the Chinese name “乔丹” and its pinyin representation “Qiaodan” were only a translation of the English word “Jordan” and that they were not Michael Jordan’s real name or full name. It noted that there were about 4,600 Chinese citizens with the name “Qiaodan” and even more foreigners that have translated their names to “Qiaodan”. As such, it argued that “乔丹” and “Qiaodan” should not belong exclusively to Michael Jordan.
These proceedings were brought following recent decisions by the Chinese courts in favour of protecting the naming rights of other well-known basketball players such as Yao Ming in 2011 and Yi Jianlian in 2010. A Chinese court ruled for former NBA player, Yao Ming, who challenged Wuhan Yunhe Sharks Sportswear Company for using his name and the logo “Yao Ming Era” on its products. The company was forced to stop using the name and to pay RMB 300,000 (approximatedly USD $48,600) in damages. Another NBA player, Yi Jianlian, won against Fujian Yi Jianlian Sport Goods Company at a Chinese court which held that an individual’s name right should be recognized as a prior right.
To slam dunk his naming rights claim, Michael Jordan needs to establish that:
1. he is a famous public figure and his fame under his Chinese name preceded Qiaodan Sports’ trademarks;
2. Qiaodan Sports has acted in bad faith by intentionally using his Chinese name or other personal attributes without his permission; and
3. the use of his Chinese name or other personal attributes has injured him by causing confusion among consumers who misguidedly associate Qiaodan Sports or their products with him.
The Shanghai court accepted this case on 1 March 2012, and there has not yet been any verdict so far.
In an interesting twist to this case, on 26 March 2013, Qiaodan Sports threw the ball back into Michael Jordan’s court and countersued him for an apology and damages at the Quanzhou City Intermediate People’s Court in Fujian, alleging that the above lawsuit has tarnished its reputation and thwarted its plan for an IPO on the Shanghai stock exchange. The Fujian court accepted the case on 2 April 2013.
Many sports companies in China have been looking to capitalize on the sudden popularity of NBA surprise standout, Jeremy Lin, by selling jerseys and t-shirts bearing his Chinese name, Lin Shuhao, or his English name. The Financial and Economic Committee of the National People’s Congress recognises that there are many businesses who register the names of celebrities as trademarks, affecting the rights and reputation of these celebrities and public interests. Therefore, they have already made recommendations to the Legislative Affairs Office of the State Council for amendment to 商标法 (Trademark Law) in order to give additional protection to the naming rights of individuals.
Regardless of whether these recommendations are adopted, it is clear that a foreign celebrity should not assume that his or her name rights necessarily extend to Chinese equivalents of a celebrity’s name, such as “乔丹” or the pinyin representation of the celebrity’s name such as “Qiaodan”. The primary lesson of these cases is that, as well as registering their name in Latin characters, celebrities should, at an early stage, invest time and money in registering the Chinese equivalent of their name in order to avoid third parties in China from registering it before they do.