Another Take on the Jordan Trademarking Issue

Another Take on the Jordan Trademarking Issue

The Sports Blawg with the Fordham Sports Law Forum

MICHAEL JORDAN CRIES FOUL AS CHINESE COMPANY USES HIS CHINESE NAME TO MARKET PRODUCTS

For the past three decades, Michael Jordan has been arguably the most popular and marketable athlete in the world.  This is especially true in the basketball-crazed China where Jordan is known as “Qiaodan” (??).  But, neither Jordan nor Nike, which owns the Chinese trademark for Jordan’s English name, own the trademark for Qiaodan.  Instead, the Qiaodan trademark is owned by Qiaodan Sports, a Chinese company located in the southern Fujian province.  Qiaodan Sports also uses Jordan’s iconic number 23 on many of its goods.  Amazingly, Jordan silently allowed Qiaodan Sports to operate, never challenging their use of his name and number.  All that changed on February 21 when Jordan filed a lawsuit in Chinese courts against Qiaodan Sports.

In the lawsuit, Jordan argues that Qiaodan is utilizing his Chinese name, iconic number 23, and a logo similar to Jordan’s “Jumpman” logo, to market much of their sportswear and equipment. Jordan further alleges that Qiaodan has even used his son’s Chinese names as advertising tools as well. A 2009 survey conducted by a Shanghai marketing company says that 90 percent of 400 young people polled in China’s small cities believed Qiaodan Sports was Michael Jordan’s own brand.

Jordan’s argument will largely be based on Article 31 of Chinese Trademark Law which states: “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.”  It can certainly be argued that “Qiaodan” is a “reputation” as described in Article 31.

Futhermore, According to the People’s Republic of China, an individual shall enjoy the right of personal name (Article 99 of the General Principle of Civil Law) and infringement on an individual person’s naming rights is prohibited (Article 2 of Torts Liability Law).  The question in relation to this Article will turn on whether Qiaodan is considered a “personal name.”

Qiaodan argues, however, that they have the right to use the name and there is no connection to Jordan. “‘Qiaodan’ is a brand we registered according to Chinese law, and its lawful use should be protected,” Qiaodan asserted.  A spokesman for the company further stated that there is no connection between the number 23 and Jordan, and that it is “just a number.”  The spokesman further attested that “Not everyone will think this is misleading. There are so many Jordans besides the basketball player – there are many other celebrities both in the U.S. and worldwide called Jordan.” 

You might ask why Jordan has decided to sue now after eleven years of Qiaodan using his name.  NBC News’ Ed Flanagan believes it may result from two recent similar cases in China involving basketball players. In both cases, the lawyers used similar arguments to the ones that Jordan is relying on.  The favorable results for the players could signify an evolution in Chinese trademark law, further protecting international celebrities and athletes.  Jordan, seeing his fellow basketball player’s success in Chinese courts, decided to follow suit.

According to Laurie Burkitt, China consumer reporter at The Wall Street Journal Asia, the fact that Jordan doesn’t hold a registered trademark for his Chinese name in China may not be a deterrent for victory. Although Chinese law protects parties who hold registrations and who file early for them, a provision says businesses can’t freely use the names of famous people, even if the people don’t have a registered trademark.  Thus, the case will likely turn on whether Jordan can show that Qiaodan is in fact synonymous enough with Jordan to make it like his own name.

China’s naming rights has become a heated issue as of late.  In 2005, GM settled with Chery Automobile Co. for having a name too similar to “Chevy.”  Apple Inc is in court currently in China over whether a Chinese company holds the iPad trademark.  The rising New York Knicks Star, Jeremy Lin, can expect to have a legal battle as a Wuxi Risheng Sports Utility Co. says it reserved the rights last year to use his Chinese name, Lin Shuhao.  These trademark disputes will only increase as American athletes continue to become international stars, and American companies continue to tap the Chinese consumer markets.  And, for now, this one is just too close to call.