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Tuesday, 13 March 2012

Can Michael Jordan slam dunk naming rights case in China?

This Kat has always been too short to have a devastating impact on the basketball court. The same cannot be said of former NBA player Michael Jordan. It has been said that Jordan rewrote the basketball record book during his 13 seasons at the Chicago Bulls. These feats include leading the NBA league in scoring a record 10 times; having the highest NBA points per game average (with 30.1 points) and ranking third on the all-time scoring list (with 32,292 points). He was inducted into the Naismith Memorial Basketball Hall of Fame in September 2009. With such a successful career, Jordan has become very marketable and been involved with high profile brands such as Nike, Coca-Cola, Chevrolet, Gatorade and McDonald's. It is not surprising then that he is very protective of his name and his brand.

In China, the Chinese translation of Jordan is 'Qiaodan' (乔丹). Jordan has been known in China as 'Qiaodan' (乔丹) since the mid-1980s when he gained widespread popularity on Chinese television after playing for the 1984 gold medal-winning US basketball team at the Los Angeles Olympics and the 1987 NBA All-Star Games. In 1993, Nike registered the trade mark JORDAN in China.

Qiaodan Sports Company Limited (Qiaodan) is a Chinese sportswear and footwear manufacturer. In 1998, it successfully registered QIAODAN and乔丹 as trade marks in China. In 2004, it registered the domain name http://qiaodan.com.cn. Over the years, Qiaodan has unsuccessfully tried to register a number of trade marks in English text and Chinese characters for 'Michael Jordan', the number 23 (Jordan's jersey number) and his sons’ names, Jeffrey and Marcus.

On 21 February 2012, Jordan commenced proceedings against Qiaodan in China for the 'unauthorised use of his name'. Unfortunately, this Kat has not been able to find a copy of the complaint as filed, but she understands from an official Jordan website (specifically dedicated to provide information on the proceedings) that in it Jordan alleged that Qiaodan 'deliberately and aggressively used Michael Jordan’s name without his permission and misled Chinese consumers'. This dedicated website further explains that the complaint was based on 'naming rights' rather than trade mark rights because 'the injury to Michael Jordan as an individual is the misuse of his name and other personal attributes' and was brought now following recent decisions by 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.

In a statement issued on 23 February 2012, Jordan said:

'During my basketball career and now as a businessman, I've worked hard to establish my identity and brand, and I take tremendous pride in the shoes and apparel that feature my name and logo. 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. We live in a competitive marketplace, and Chinese consumers, like anyone else, have a huge amount of choice when it comes to buying clothing, shoes and other merchandise. Chinese fans have always been very supportive of me, and that's something I deeply appreciate. I think they deserve to know what they are buying. This complaint is not about money. It's about principle and protecting my name. Any monetary awards I might receive will be invested in growing the sport of basketball in China.'
The case was accepted by the Chinese courts on 1 March 2012, at which time Jordan issued another press release in which he added:
'No one should lose control of their own name, and the acceptance of my case shows that China recognizes that this is true for everyone. After all, what’s more personal than your name?'
According to Chinese Law, an individual enjoys the right of personal name (Article 99 of the General Principle of Civil Law); infringement of an individual person’s naming rights is prohibited (Article 2 of the Torts Liability Law). To succeed in a naming rights claim, Jordan needs to establish that:
1. he is a famous public figure;
2. Qiaodan has acted in bad faith by intentionally using his name or other personal attributes without authorisation; and,
3. the use of his name or other personal attributes damages him by causing confusion among consumers who mistakenly associate Qiaodan, its products or services with him.
According to the 'Facts of the Case' provided on Jordan's website, Jordan believes that he has a strong case on each of these elements:
1. Throughout his career, Jordan has been a visible sports figure in China (various milestones are provided since 1984). Since the 1980s, thousands of media reports in well-known publications such as the People’s Daily, Economic Daily and China Sports Daily have continuously and extensively reported on Michael Jordan’s career, influence and achievements – consistently referring to him as Qiaodan (乔丹).

2. Jordan has never authorized Qiaodan to use his name, yet the company has registered several trade marks which include his name and reference his registered brand and his career.

3. Qiaodan's use of Jordan’s name and its aggressive marketing tactics have misled Chinese consumers: Qiaodan uses these names without permission in large scale advertising campaigns, including entering a sponsorship agreement with China Central TV (CCTV) at the World University Games and sponsoring Federation Internationale de Basketball Amateur from 2008-2010. In 2009-2010, Qiaodan Sports broadcast its name and logo courtside during US NBA games broadcast in China. A Shanghai sports product marketing company conducted an independent survey involving 400 respondents in 2009. The survey found out that 90 percent of young people in China’s small cities believed Qiaodan was Jordan’s own brand in China. Further, Qiaodan has profited from consumer confusion created by such misuse: with over 30 franchises and 4,000-5,000 specialty stores, Qiaodan revenue totals have grown from $45.6 million in 2007 to $456.3 million in 2010.
In response, a representative from Qiaodan is quoted in many media outlets as saying:
'There is no connection, 23 is just a number like $23 or $230 dollars… I don’t think there is a problem at all here ... 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.'
The IPKat is gobsmacked at the audacity of this response. True, there are other celebrities called Jordan, such as Robert Jordan (an American fantasy author), Jordan Knight (an American pop singer from boy band New Kids on the Block), Eddie Jordan (an American basketball coach) and glamour model Katie Price. However, surely the use of JORDAN or QIAODAN in conjunction with a silouette of a famous Jordan 'jumpman' picture or the number 23, could it genuinely be a reference to anyone else?

Merpel wonders if Jordan will be able to achieve his desired slam dunk in this case. She notes that Yao Ming and Yi Jianlian were both Chinese, which may have influenced the court's decision. Indeed, she recalls, foreign companies have, for whatever reason, had difficulty in enforcing intellectual property rights in China. See KatPosts on Apple and IKEA: here, here, here and here.

5 comments:

Anonymous said...

Soon all the world's wealth will be in the hands of four celebrities. Michael, ask yourself, don't you have enough yet?

Megan said...

I don't think any famous person should be able to object to a translation of their name in another language. Can I (Megan) object to the use of Mégane for the Renault cars in France (assuming I am famous)? Can Meg Ryan be able to object to Mégane cars? No. Could she object to Még Ryan cars or Mégane Ryan cars? Maybe/probably. Now if her image were used with the cars against her will, then yes, that is something different.

Tevildo said...

Megan - It's been done...

SooraJ said...

Interesting and Insightful post. I am working on a paper based on the issue. Thanks a lot. However I found an anomaly in your post. Article 99 of General Principle of Civil Law says only citizens can enjoy right to name. Not an individual. Will this make any problem for the claims of Jordan?

Thank You

http://en.chinacourt.org/public/detail.php?id=2696 link to GPCL

Anonymous said...

I noticed that anomaly too. If naming rights fall outside the principle of national treatment (which I think it does, not at all sure however) that could be very interesting.
I wonder why they did not go for Article 13 (unregistered right).
Would Article 31 be applicable in this this case? Yao Ming and Yi Jianlian were considered to have prior rights, I have not read the case but the fact that it is their names by birth probably had something to do with it, not sure how a translation would be treated. I think Jordan could be considered to have prior rights too (although unregistered).

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