From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Tuesday, 24 January 2017

The Michael Jordan case in China – to be continued


The fresh ruling in December 2016 issued by the Supreme People’s Court of China (SPC) on the “Michael Jordan” 4+ years legal battle has attracted great attention (see a Guest Kat report here). There are many angles to the case that are worth digging deeper into, so this post will then “start at the very beginning” -- to analyze the ruling from a simple perspective that hasn’t been covered much -- language, or putting it fancier, the linguistics. 

In a nutshell, the “December rulings” involved 3 categories of trade marks, namely:
(1) the Chinese translation of “Jordan”: 乔丹
(2) the “Pinyin (phonetic)” version of “乔丹”: Qiaodan
(3) the combination of "Qiaodan" and a silhouette (of a person...)

The SPC ruled in favor of Michael Jordan on (1), namely, he shall enjoy the “rights of name and surname (姓名权)” on “乔丹”; for (2) and (3) the court held that Qiaodan Sports the Chinese sportswear company can continue the use. 

* The ruling on (1) “乔丹” -- fair enough.

Is Michael Jordan entitled to “乔丹”? 

Some experts (also the lower courts) hold the opinion that in Chinese law, the literal translation of “姓名权” is as the picture shows -- the right is based on the combination of “姓” and “名”. For Michael Jordan, his full name is Michael Jeffrey Jordan, therefore cannot claim the integrated “姓名权” on the “Jordan” part, nor on its Chinese translation. 

Well, the argument is partially very true but shall be put into the Chinese context for better understanding. Most of the Chinese characters are monosyllabic morphemes, i.e., one syllable for one character. Therefore, the minimum length of a Chinese “姓名” takes 2 Chinese Characters: 1 character for the first name, and 1 character for the family name -- solely one character is simply too general to refer to anybody, nobody can claim the “姓名权” of Wang or Lee, etc., -- at least it has to be for 2 characters. 

Then, speaking of “乔丹”, it indeed could refer to any Chinese citizens whose “姓名” happens to be 乔丹 (both are quite common seen as Chinese names). Yet when it comes to “the 乔丹”, i.e. the one who has been widely known and enjoyed stable imprints among the relevant public, then the only answer is Michael Jordan the basketball legend.

Moreover, a trade mark is not merely about the wording, instead, it need to be considered together with the line of business/product/classification as a whole. “乔丹” the wordings alone may be unspecified for certain people, but when combine it with sports/basketball (e.g. classes 25, 28), then just like two lines (of information) can locate a specific point in a quadrant, the outcome is most likely direct and clear: His Airness Jordan.


And why at here “乔丹” instead of the full Chinese translation of “Michael Jeffrey Jordan” is sufficient for claiming the “姓名权”? 

Firstly, “乔丹” has fulfilled the aforementioned minimum requirement of “2 Chinese characters”. Apparently it is not rigorously in line with the definition of “姓名权”, but technically speaking, it fits the mechanism of “min. 2 characters in order to specify”. 

Since 1980s, in Chinese media, “乔丹” has been most commonly used as the official (though simplified) appellation to Michael Jordan -- this conventional choice per se is reasonable (actually a fantastic choice) and has made “乔丹” become a conventional signifier of the basketball player, which has been gaining stronger and stronger connotation as time goes by. 

As a conventional signifier, it does not need to be perfect -- it is “allowed” not to be phonetically very much accurate (“乔丹” and “Jordan”, copy and paste in Google Translate, you can hear the differences); it does not need to be the full version of the full name (the connotation/signified of “乔丹” is just as rich and as complete). The main function of a signifier is to facilitate communication, as long as this function is running well, there is no need to “improve” it. Meanwhile, if anyone other than Michael Jordan tries to take advantage of the “inaccuracy” or “incompletion” as “loopholes” to claim the rights of the signifier in relevant business, he will probably fail -- again, the benchmark is “widely known + enjoyed stable mental imprints among the relevant public”. 

* The ruling of (2) Qiaodan -- fair enough.

Qiaodan is the Pinyin (phonetic symbol) of “乔丹”. No not exactly, to be accurate, Qiaodan is the Pinyin of “乔丹” and many other combinations of Chinese characters with pronunciations of “Qiao” plus “dan”. In addition, Tones play crucial roles in the Chinese language. There are 4 tones, which makes “Qiaodan” this 2 syllables combination technically has 4*4 ways of pronunciations. Each pronunciation normally points to several corresponding Chinese characters.

For instance, there are at least 24 “Qiao” with the 2nd tone:
峤蕉翘谯劁乔侨荍荞桥硚菬嫶憔鞒樵燋癄瞧翹櫵藮譙顦... 

For "Dan" with the 1st tone, there are 30+ Chinese characters:
单担瘅儋丹妉単眈砃耼耽郸聃躭酖單媅殚匰箪褝鄲頕勯擔殫甔襌簞聸...

Then if you do the multiplication, you will get a number of possible combinations. To sum up, Pinyin as an indicator is quite general, the versions of combinations are simply too many. Therefore, it would be quite hard to say that “Qiaodan” has a stable corresponding relation with "乔丹" or Michael Jordan. 

* The ruling of (3) -- well, … 

You may find the Gif file (left, showing a courtroom demonstration of the identity between silhouettes) shocking, however, the SPC upheld the former decision regarding this silhouette, i.e. Michael Jordan cannot enjoy the right of portrait on it. We may all feel the impulse to say something cynical about it, but think twice, the grounds might be shaking: without seeing the Gif file, will you still recognize the figure is Michael Jordan? Can’t it be other basketball players? Which part of the figure makes you firmly and exclusively believe that it is Michael Jordan? Let's be fair, it could be any muscular man that has a similar figure and happens to hold a basketball... It is not a slam dunk, or any other motion that require high skills, is it?

Back to 2014, in a portrait right case which Michael Jordan lost in China, the court hold the opinion that: the figure is only displayed in sketch and had no indication to any specific facial appearance. Thus, it would be unlikely for the relevant public to recognize such figure element as Michael Jordan. 

The ruling was totally fine, under the premise that the logo is observed separately -- or to be more accurate, is observed in order to answer the question of "is the silhouette Michael Jordan?". Yet, what if compare it with the Air Jordan logo... on sports shoes? That is to say, to answer the question of "will it mislead consumers that the Qiaodan logo has a certain association with Michael Jordan? Will it then cause confusion?" Probably -- the evidences submitted have supported that.  


* To be continued...

In this InternKat's opinion, many reportages have overestimated the (positive) significance of this case. Or shall I say, they jump to conclusions too soon. By now, Michael Jordan has only won the name-right on the 3 "乔丹" trade marks, in other words, had lost more than 60 "乔丹"-related trade marks before. Qiaodan Sports the Chinese company made a confident announcement right after the ruling saying: “our ‘essential trade marks of our business (see the picture below)’ are not involved today. In fact, the 3 “乔丹” trade marks that have been ruled against us are all defensive trade marks that had been only registered for less than 5 years on much less important products.” 


The "essential trade mark" for Qiaodan Sports, which are "safe" for now.
Here Qiaodan Sports indicates the “5-year restriction” written in the PRC Trade Mark Law (Article 45): 

Where a registered trademark is in violation of the second and third paragraph of Article 13, Article 15, the first paragraph of Article 16, Article 30, Article 31 or Article 32 of this Law, the holder of prior rights or an interested party may, within five years upon the registration of the trademark, request the trademark review and adjudication board to declare the registered trademark invalid. Where the aforesaid registration is obtained mala fide, the owner of a well-known trademark is not bound by the five-year restriction...

Apparently, Qiaodan Sports assumes that the rest of the “乔丹” trade marks that have been registered for more than 5 years are "invincible". Is that so? 

According to Article 120 of the General Principles of the Civil Law of the PRC

If a citizen's right of personal name, portrait, reputation or honour is infringed upon, he shall have the right to demand that the infringement be stopped, his reputation be rehabilitated, the ill effects be eliminated and an apology be made; he may also demand compensation for losses”. 

Paradoxes emerge where name-right meets trade mark right -- can name-right, as a prior right, substantially stop the trade mark uses (as in Germany)? If so, then what is the practical point of having the "5-year restriction"? Well, the restriction probably can be broke by referring to the bona fide principle. Yet, what if the Chinese courts invoke the <Notice of the Supreme People's Court on Issuing the Opinions on Several Issues concerning Intellectual Property Trials Serving the Overall Objective under the Current Economic Situation> (Article 9) and accordingly safeguard the "fruit of the poisonous tree"? Part of the highlights of Article 9 read as follows:

"... Trade marks which have been used for a relatively long time and have established a relatively high reputation in the market and created their own groups of related marks can not be lightly revoked, at the same time as protecting the earlier rights according to law, respect the market reality that the related public has already objectively formed a separation between the related marks. 


It is necessary to grasp the legislative spirit of the procedures of the Trade mark Law relating to protection of prior rights and protecting the market order and focus on maintaining the procedures that have already established and stabilized the market order to prevent parties creating fake trademark disputes to opportunistically and predatorily take advantage and avoid hastily revoking a registered trade mark causing great hardship to an enterprise’s ordinary course of business. 


For trade marks which conflict with other’s prior copyright, business names and other property rights, which have exceeded the period for dispute under the Trade mark Law and cannot be cancelled, the prior right holder can still within the limitation period bring civil litigation, but the People's Court can no longer issue a decision of civil liability to stop use of the said registered trade mark. (...)"


The above-mentioned “Chinese characteristic rule” in fact is not built upon "Socialism nonsense" or protectionism as some critiques might accuse -- as the maxim goes, “Equity aids the vigilant, not those who slumber on their rights.” Some facts may be worth noting here: when did Nike expand the Air Jordan business to China? Around the 90s, back when only the English version of “Jordan” was registered by this American company. When did Qiaodan Sports file the “questionable” dozens of trade marks? Since (around) 2000. Further, when did M.J. firstly sue Qiaodan Sports? In the year of 2012. Can this “10+ years slackness of rights” be excused? Well, monitoring new trade mark applications in major jurisdictions (e.g. in China) and taking actions to stop the potential infringements should be the daily routine for trade mark attorneys, shouldn’t it? 

Moreover, the “essential trademarks”, i.e. “乔丹” on essential products, Qiaodan the Pinyin and the silhouette logo, have been registered and used in China by Qiaodan Sports for around 2 decades. Qiaodan Sports, founded in 1984, has been doing quite well. In the most recent 3 years, Qiaodan Sports has paid taxes of around ¥ 1.5 billion, donated money/supplies to charity amounting to around ¥ 200 million, employed 80 thousand staff, and run businesses in over 6,000 locations of China -- it is indeed a big company that has built up large market scales and positive social influences. In consideration of maintaining the existing market order, it might be the case that the Chinese court tends to allow the actual uses of the essential "乔丹" trade marks owned by Qiaodan Sports. 

To sum up, "things are different in China", still it is too soon to declare the victory for either side -- bottom line, the former decisions on the 3 disputed "乔丹" trade marks that were made by the Trademark Review and Adjudication Board of the PRC State Administration for Industry and Commerce (TRAB) have been revoked by the SPC, therefore, we still need to wait for the TRAB to give a re-consideration. Twists and turns are highly likely. We shall keep an eye on further updates, in particular the pending Michael Jordan name-right infringements case in Shanghai Court -- after seeing the whole picture rather than the tip of the iceberg, a better conclusion might be generalized eventually. 

No comments:

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':