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. 

Monday, 23 January 2017

Around the IP Blogs


"Lower courts can give fresh insight into the adjudication taking place at the highest national and European courts" -- Geert Lokhorst brings his insights  on the "new food for thought on the meaning of placing a hyperlink 'for profit'" which was created by the German and Dutch courts on the recent GS Media case. 


Brad Spitz's writes a recap of the different approaches that the ECJ and the French courts took with regard to "out-of-print" books -- after the ECJ's ruling, the French legislation therefore must be corrected so that each author is actually informed beforehand and can oppose the digital exploitation of his work without further formalities.



Say a good Farewell to EU IPO practice
“There will be no gold clocks for retirees from EUIPO practice” -- UK practitioner Barbara Cookson says her concerns in the post-Brexit era: "(we) will shortly find careers as EUIPO representatives ended as a result of Brexit. I understand that some continue to hope that our businesses will be saved but while that would be welcome, it isn't to be expected within the complexities of the negotiation that must deliver a departure to which we are unlikely to be able to attach conditions. Concessions may come later as they did for Swiss Norwegian and Icelandic representatives."


More than 700 key enforcement judgments from 16 EU Member States are now available online in EUIPO’s eSearch Case Law database. The decisions collected, which have set new trends in case-law, include all types of IP rights -- including trade mark rights -- and cover both civil and criminal proceedings. See further information here


* New Turkish IP Code: what it means for designs

Mutlu Yıldırım Köse (Gün + Partners) summarizes the notable updates for designs in the New Turkish Industrial Property Code which entered into force on January 10, 2017. 

* Designs 2017: Global Guide now available

The publishers of the World Trademark Review have issued their subscribers with Designs 2017: A Global Guide. While its objective is undeniably promotional, its contributors include many 'household names' in the field of design and IP practice, and it enjoys the advantages of being slim and attractively presented. Further details can be found here.

* DesignClass news: CP7 reaches completion

From EUIPO's User Association newsletter comes welcome news of DesignClass. Phase II of this valuable and useful project went live this month, marking the finalisation of the CP7–Harmonisation of Product Indications convergence project. The objective is to make available a harmonised database of product indications and a common classification tool for designs. 

Sunday Surprises

* PhD positions

Keep calm and get a Doctoral Degree.
--> EUI Doctoral Programme is calling for PhD candidates. Application deadline: 31 January 2017. The Application Form for the 2017-2018 academic year (starting 1 September 2017) is active from 2 November 2016 until 31 January 2017. For more information, check here

--> New 3 year Funded PhD positions in Communications Law: PhD position in Communications Law at IViR on the meaning of established values and concepts such as editorial control, independence and liability in light of news media personalisation. The application deadline is 31 of January 2017 and the position ideally commences in spring 2017. More details can be found here

 Seminar

3rd February 2017, London
The Rise of Web Blocking Orders in the UK: Empirical Evidence Perspectives. 
Speaker: Professor Lilian Edwards (Strathclyde University). 
Sign up here, and more details can be found here

* Conference announcement 

CIPIL Annual Spring Conference 2017 -- Intellectual Property and Human Rights
Faculty of Law, University of Cambridge, 10 West Road
Saturday, March 11th 2017, 10.00am-5.00pm

This conference seeks to explore the interplay between IP and human rights. Beginning with an introduction to the different human rights instruments, their relations with European and national law, as well as an exploration of the methods used (proportionality, balancing of rights), the programme goes on to consider particular interactions, tensions and conflicts: the relationship between copyright and human rights (in particular freedom of expression and science); the relationship between trade marks and health in the context of plain packaging; the relationship between copyright and a host of other rights in discussion of intermediary liability (Angelopolous); and the relationship with patents and the right to health.e).

Booking: For further information and to book a place via the electronic booking system please see this link or email Claire Hill (ch771@cam.ac.uk).

Postdoctoral program

The Project on the Foundations of Private Law at Harvard Law School is seeking applicants for the Qualcomm Fellowship in Private Law and Intellectual Property.

The Qualcomm Fellowship is a two-year, residential postdoctoral program specifically designed to identify, cultivate, and promote promising scholars early in their careers with a primary interest in intellectual property and its connection to one or more of property, contracts, torts, commercial law, unjust enrichment, restitution, equity, and remedies. Fellows have been selected from among recent graduates, young academics, and mid-career practitioners who are committed to pursuing publishable research likely to make a significant contribution to private law scholarship.

Fellows devote their full time to scholarly activities in furtherance of their individual research agendas. In addition, fellows contribute to the intellectual life of the Project and the Harvard Law School community through mentoring students, presenting their research in and attending faculty workshops and seminars, helping to organize and participating in Center events, and blogging.

Application details can be found in the attached documents. For more information, please contact Bradford Conner, conner@law.harvard.edu. Applications must be received by March 1, 2017. For more informations see here and here

Call for Papers

Deadline 27th January
4th Winchester Conference on Trust, Risk, Information and the Law
Date: Wednesday 3 May 2017
Venue: West Downs Campus, University of Winchester, Winchester, Hampshire, UK

The Fourth Interdisciplinary Winchester Conference on Trust, Risk, Information and the Law will be held on Wednesday 3 May 2017 at the West Downs Campus, University of Winchester, UK. The overall theme for this conference is: Artificial and De-Personalised Decision-Making: Machine-Learning, A.I. and Drones

Keynote speakers:
Professor Katie Atkinson, Head of Computer Science, University of Liverpool, an expert in Artificial Intelligence and its application to legal reasoning, and John McNamara, IBM Senior Inventor, who will speak on 'Protecting trust in a world disrupted by machine learning’.

Papers and Posters are welcomed on any aspect of the conference theme, which might include although is not restricted to:
* Machine learning and processing of personal information;
* Artificial intelligence and its application to law enforcement, legal reasoning or judicial decisions;
* Big Data and the algorithmic analysis of information;
* Implications of the Internet of Things;
* Machine based decision-making and fairness;
* Drone law and policy;
* Trust and the machine;
* Risks of removing the human from - or leaving the human in - the process;
* Responsibility, accountability and liability for machine-made decisions.

The conference offers a best poster prize judged against the following criteria: 1) quality, relevance and potential impact of research presented 2) visual impact 3) effectiveness of the poster as a way of communicating the research. Proposals for workshops are also welcome. Workshops offer organisers the opportunity to curate panels or research/scholarship activities on an aspect of the conference theme in order to facilitate interdisciplinary discussion.

This call for papers/posters/workshops is open to academics, postgraduate students, policy-makers and practitioners, and in particular those working in law, computer science & technology, data science, information rights, privacy, compliance, statistics, probability, law enforcement & justice, behavioural science and health and social care.

Abstracts for papers are invited for consideration. Abstracts should be no more than 300 words in length. Successful applicants will be allocated 15-20 minutes for presentation of their paper plus time for questions and discussion. Please note that accepted poster presenters will be required to email an electronic copy of their poster no later than a week before the conference. Accepted poster presenters will also need to deliver the hard copy of their poster to the venue no later than 9am on the date of the conference to enable it to be displayed during the day. Workshop proposals should summarise the workshop theme and goals, organising committee and schedule of speakers, panels and/or talks. Proposals should be no more than 500 words. Workshops should be timed to be 1.5-2 hours in length.

Abstracts and proposals, contained in a Word document, should be emailed to trilcon17@winchester.ac.uk. Please include name, title, institution/organisation details and email correspondence address. The deadline for submission of abstracts/proposals is Friday 27 January 2017. Successful applicants will be notified by 17 February 2017. Speakers/poster presenters/workshop organisers will be entitled to the early registration discounted conference fee of £80 and will be required to book a place at the conference by 28 February in order to guarantee inclusion of their paper/poster/workshop. Speakers will be invited to submit their paper for inclusion in a special edition of the open access eJournal, Information Rights, Policy & Practice.

To book a place at the conference, please click here to visit the Winchester University Store and click on academic conferences. For more information, please contact the conference team at trilcon17@winchester.ac.uk

Photo courtesy of Ms. Nyske Blokhuis.

Sunday, 22 January 2017

Never Too Late: If you missed the IPKat last week!

This Kitten is delighted to bring you the 131th edition of Never Too Late covering the posts from 9 until 15 January!

Seeking an Arrow

GuestKat Eibhlin Vardy discusses Fujifilm Kyowa Kirin Biologics Co., Ltd v AbbVie Biotechnology Ltd & Anor [2017] EWCA Civ 1, which involves two appeals, both raising the question of whether a Court can grant a so called ‘Arrow declaration’, i.e. a declaration that “a product was old or obvious in patent law terms at a particular date”.


Yangjin Li shares a guest post analysing the reasons why the State Intellectual Property Office of China (SIPO) tops the World Intellectual Property Indicators of IP Offices based on receiving more patent applications, the quality of the patent applications filed and the impact of this patent activity on China.


GuestKat Rosie Burbidge discusses Bhayani & Anor v Taylor Bracewell LLP, [2016] EWHC 3360, a summary judgment in which addressed the question of whether there was passing off due to the use of the plaintiff’s family name as part of the law firm’s name after she had left the partnership.


PREVIOUSLY ON NEVER TOO LATE

Never Too Late 130 [week ending on Sunday 8 January] | Around the IP Blogs | Sunday Surprises | Trademark and co-branding as a badge of … did you say "location"(?) | 15 fully-funded IP PhD positions are calling for candidates | Never Too Late: If you missed the IPKat last week! | Around the IP Blogs | Biosimilars battle in clearing the way - Fujifilm v AbbVie continues | Book review: Maintenance time and the industry development of patents

Never Too Late 129 [week ending on Sunday 1 January] | Happy Public Domain Day! | Jaguar Land Rover DEFEND[ER]s its trade mark | Never Too Late: If you missed the IPKat last week! | Passing off the National Guild of Removers and Storers | Fuss over function: In case you missed the annual IP-World Christmas party | The Supreme People's Court of China's Michael Jordan Trademark Decision | Intermediary IP injunctions: what are the EU implications of the UK experience? | Länsförsäkringar, Länsförsäkringar, bork, bork, bork!| The champagne of trade mark disputes | Around the IP Blogs! | Swedish Supreme Court has ruled that sport broadcasts are not protected by copyright | Swedish Patent and Registration Office refuses registration of figurative mark because contrary to morality and public order

Never Too Late 128 [week ending on Sunday 25 December] | Sunday Surprises | A TITANIC trade mark dispute | Book Review: two new methodology books for EQE candidates: Smart in C and Tactics for D | Around the IP Blogs | Before there was copyright there was censorship: the tale of "The Feast in the House of Levi” by Veronese | Permission to appeal in patent cases - farewell to the Pozzoli approach | EPO bows to EU Commission on patentability of products of essentially biological processes | Monday Miscellany | Groundless threats - Nvidia v Hardware Labs

Never Too Late 127 [week ending on Sunday 18 December] | Around the IP Blogs | Top-level Property Rights Protection Guideline released in China | CEIPI/EAO Conference--"Copyright Enforcement in the Online World" | More on the Swedish application of GS Media | Mini UPC Update: UK signs Protocol on Privileges & Immunities | When a holiday e-card meets IP: Well done, IPOS! | Unregistered designs for eXreme storage | Academic publishing houses lose appeal against Delhi University & photocopy shop | GS Media finds its first application in Germany | Monday Miscellaneous | Part 36 offers in the IP Enterprise Court

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