Were you captivated by “The Last Dance” like the rest of the world? You don’t have to be a 90s kid or a die-hard basketball fan to have been glued to the docuseries about Michael Jordan and the Chicago Bulls. With the NBA (and most professional sports) on pause and people stuck inside, even the most casual of sports fans were tuning in during this Covid-19 epidemic.
The popularity of “The Last Dance” further proves the undeniable strength of the Jordan brand. Amazingly, 36 years after his draft into the NBA, people around the globe still want to “be like Mike”. They covet Jordan’s shoes, sometimes paying through the roof. They vehemently argue that he’s the GOAT (greatest of all time) even amongst the current generation of players. Young and old, American and Chinese, and everyone in between, people adore Michael Jordan.
With this immense loyalty and brand recognition, many might be surprised to know that Michael Jordan has been engaged in an ongoing and seemingly never ending battle to stop a very large company in China from using his name and likeness on their athletic goods. This company, Qiaodan Sports Co., Ltd (乔丹体育股份有限公 司) (“Qiaodan Sports”), is a Chinese sportswear company based in Fujian, China that owns thousands of stores across China and brings in hundreds of millions USD year after year.
Since its establishment, Qiaodan Sports registered 100+ trademarks related to Michael Jordan including his name in Chinese, the name of his sons Jeffrey and Marcus, the number 23, and a very recognizable “jumpman” logo. In fact, “Jordan” is right in their company name. “Qiaodan” is the Chinese transliteration of “Jordan” and well recognized in China as the name used for Michael Jordan himself. The company has used these Jordan related trademarks in pretty large scale marketing campaigns including advertising on China Central TV and during NBA games being broadcasted in China. Shocking? It certainly is. Even more so because its not a common situation. To be honest, in China we see foreign trademarks being hijacked all the time, but usually its by some unknown company or individual. But this case is particularly interesting not only because it involves our beloved Michael Jordan, but because the Chinese company involved runs a legitimate business and has been very successful for many years, as opposed to the typical “trademark squatter” that foreign brand owners are used to.
All things considered, this highly visible, long lasting, and complex trademark dispute, which eventually reached China’s Supreme People’s Court (“SPC”), is considered a “star case” in the industry. And while we can assume Michael Jordan is pleased with his wins, the truth is that these are wins for IP practitioners and foreign brand owners as well. The decisions involved will certainly play a major role in further shifting China’s protection of trademarks into the international sphere and be used in cases and new regulations going forward.
Skip ahead to end of article to see the KEY TAKEAWAYS from this case.
Trademarks at Play
While Michael Jordan sought to invalidate about 78 of Qiaodan Sports’ trademarks, the following marks involved in SPC cases will be discussed in detail here:
“乔丹”, Trademark No. 6020569, Class 28
乔丹 is the Chinese word pronounced as “Qiao Dan” which is the transliteration for “Jordan” and widely used in referring to Michael Jordan, the NBA star.
“Qiao Dan”, Trademark Nos. 6020571 and 6020575, Classes 25 and 28
Qiao Dan is the romanized version (also referred to as Pinyin) of the Chinese word 乔丹 which is the transliteration for “Jordan”.
“乔丹 and device”, Trademark Nos. 6020578, Class 25
1997 - 2015: Qiaodan Sports’ Rise and Michael Jordan’s Delayed Reaction
In 1997, while Michael Jordan and the Chicago Bulls were dancing their “last dance”, Qiaodan Sports established itself in Fujian Province looking to sell sportswear in China. At that time, the NBA was starting to broadcast live in China on CCTV5 (China’s ESPN) and there was a growing interest in international sports. However, in the late 90s people in China did not have much disposable income and most were not spending money on sportswear. Counterfeit clothing was also quite popular because of its low price point. But that all started to change in the early 2000s when Yao Ming began playing for the NBA and China’s middle class was growing.
As China grew, Qiaodan Sports grew as well, filing more and more trademarks that most would associate with Michael Jordan. Over time the company built up a portfolio of 100+ Jordan-related trademarks and was a behemoth by 2010 with over USD 450,000,000 in revenue and stores spanning the country. In 2011 it was looking at an IPO on the Shanghai Stock Market.
It’s unclear when Michael Jordan became aware of Qiaodan Sports, but in 2012, he began to file trademark invalidation actions against 78 trademarks owned by the company, arguing the marks infringed his name rights and were otherwise registered in violation of the law.
It does not appear that Michael Jordan’s partner, Nike, had taken any action prior to this. Notable is the length of time between Qiaodan Sports’ filings and Michael Jordan’s initiation of action. For example, Qiaodan Sports had filed trademark no. 1186599 which includes the words “乔丹” and “Qiaodan” along with other graphics in 1997 (registered finally in 1998) which was 15 years before Michael Jordan first initiated action against Qiaodan Sports.
During his battle with Qiaodan Sports, Michael Jordan failed at numerous stages. He lost cases before administrative boards as well as courts including Beijing’s High Court where they held that Michael Jordan provided insufficient evidence to prove an exclusive link between 乔丹 and himself. It took 4 years and China’s Supreme People’s Court (“SPC”) to step in for Michael Jordan to see any positive results.
2016 - Michael Jordan Refuses to Give Up, Wins Case in Highest Court of the Land
Much like his career on the basketball court, Michael Jordan can’t be stopped. After consistently losing cases in the lower courts, he eventually asked the SPC to hear his cases. The SPC approved re-trial in only a small handful of cases but it was a big step and led to Michael Jordan finally catching a win.
In his first SPC win, Michael Jordan was successful in arguing that he held prior name rights over the Chinese equivalent of his name “乔丹“. Qiaodan Sports fought back claiming that Michael Jordan did not hold an exclusive link to the name “乔丹” as it has its own meaning in Chinese and is also the translation of a common English surname. But the SPC held that Michael Jordan was popular and influential in China and that when the public saw “乔丹” they thought of the basketball star. In other words, while there was not a exclusive link, there was an established link between Michael Jordan and 乔丹. Further, the Court found that Qiaodan Sports was aware of Michael Jordan’s fame under the “乔丹” name and yet it still filed its trademark. Given this established link, the Court believed it would be easy for consumers to mistakenly believe that Qiaodan Sports’ goods may be connected to Michael Jordan and there was a relationship between Qiaodan Sports and Michael Jordan (even though there was none). As such, the SPC found that Qiaodan Sports’ was maliciously damaging Michael Jordan’s name rights.
While all of this means that Michael Jordan prevailed in arguing name rights under Article 31 of the Trademark Law, it should be noted that he also argued violation of Articles 10.1.8 and 41.1 which prohibit registrations of marks that are considered immoral or were obtained by fraud or improper means. However, the SPC found that Michael Jordan could not prove his case there. Furthermore, and unfortunate for us outside observers, bad faith was not specifically discussed as one might have expected in a case like this. It seems obvious that Qiaodan Sports’ was taking a ride on the fame of Michael Jordan but this was not something the SPC chose to address. Failure to address bad faith may be due to the SPC’s own reasons or because Michael Jordan did not provide sufficient evidence on this issue or did not specifically argue bad faith. But all in all, it does leave us wanting more.
Lastly, while Michael Jordan succeeded in getting his name rights back over “乔丹” the SPC held that he did not enjoy the same rights over “Qiaodan” (the romanized/pinyin version of 乔丹) holding that “Qiaodan” was not Michael Jordan’s actual name nor was it considered to be a famous trademark belonging to him prior to Qiaodan Sports’ registration. The reasoning here was that the phonetic “Qiaodan” could correspond to many different Chinese characters besides 乔丹 and so there was not an exclusive corresponding relationship between Michael Jordan’s Chinese name “乔丹” and “Qiaodan”. A big win for Qiaodan Sports there.
2020 - Who is the Jumpman?
In March 2020, the SPC passed Michael Jordan another win against Qiaodan Sports involving an oddly familiar “jumpman”.
Here, the SPC continued down the path identifying the rights established in their 2016 judgment - that Michael Jordan indeed held prior name rights to “乔丹”. So in this case where the disputed trademark not only included a “jumpman”, but also the text "乔丹", the Court found that Qiaodan Sports’ registration damaged Michael Jordan’s prior name right.
Unlike the 2016 case, here, Jordan also claimed “portrait rights” in relation to the “jumpman” device in the trademark. However, the SPC reasoned that “portraits” as protected by portrait rights should be recognizable, containing enough personal features for the public to identify the individuals. Given that the device was a silhouette and did not contain any personal characteristics related to Michael Jordan, the Court reasoned that he could not enjoy “portrait rights” and he had no other legal rights over the mark itself. Nevertheless, because the mark included “乔丹” it could still be invalidated.
Blocking Qiaodan Sports’ Continued Rise
Flashback to 2012, and we know that Qiaodan Sports was seeking to go public. These efforts seem to have been frustrated by the actions that were brought against the company by Michael Jordan in the same year and the IPO never occurred. Based on reports, Qiaodan Sports again sought an IPO recently with its application to be listed on the Shanghai Stock Market expecting to pass preliminary review in April 2020. However its recent loss at the SPC and likely a still pending infringement litigation pending with the Shanghai 2nd Intermediate People’s Court appears to have severely impacted its brand image and again thwarted its plans. The IPO has been suspended.
In an effort to get ahead of the reaction from the recent 2020 decision by the SPC, Qiaodan Sports reaffirmed on a social media post that they had won 74 of the 78 initially filed cases by Michael Jordan, reassuring the public that its business was not significantly impacted. While the numbers do show that Qiaodan Sports was largely successful in defending itself in most of the cases brought by Michael Jordan, it cannot be denied that the company’s plans has been affected and its future is unsure.
All in all, there’s no doubt that Michael Jordan must be pleased with these big wins, however this isn’t the end. The dance continues with cases still in the pipeline and Qiaodan Sports’ future still in question. Moreover, brand owners everywhere should see this as a win as these cases will certainly have an impact on IP in China generally and result in major changes in trademark practice. So, nearly 4 decades after he stepped into the national stage, we can look at Michael Jordan and say he still hasn’t lost that will to win and steadfast determination to do what he sets out to do. It’s no wonder that his brand continues to soar.
⁃ China is a first to file country. This means that rights will be granted to those who file trademarks first with only a few exceptions. Even where exceptions apply, it can be a long, hard battle to claw back these rights. Try to file your trademarks sooner rather than later. This story would have been very different had Michael Jordan or Nike filed these trademarks first.
⁃ Register Chinese language trademarks. Registration of your English/Latin trademarks will not automatically give you protection over the Chinese equivalent. Also, most people in China do not speak English so foreign brands will usually be referred to by Chinese consumers with a Chinese equivalent, get ahead of this and create a branding for them and avoid unflattering “nicknames” from being developed by consumers. Then register that Chinese mark as soon as possible to keep others from doing so.
⁃ China’s internationals brand awareness is growing by the day. With the internet and e-commerce growing, Chinese consumers are becoming more and more aware of international brands and stars, registration in China and in other countries where there is a potential market for your brand is important. Also, if you are battling a bad faith filer but haven’t been selling your goods/services in China, you may find evidence that your trademark has already built a certain reputation in China that can help your case.
⁃ Don’t delay and take action against a mark within 5 years. Once a trademark has been registered for 5 years, it becomes much more difficult invalidate. It is important to take action against bad-faith marks as soon as you learn about them. Michael Jordan may have been more successful if he took action earlier since most of the 78 trademark registrations of Qiaodan Sports had been registered for more than five (5) years by 2012 when the actions were commenced. Some as long as 15 years.
⁃ Don’t give up, appeal! After a loss in this first round, it may be wise to bring your case to the next level. It took the SPC to review his case before Michael Jordan caught a win, but you likely won’t need to go that high. You will find that certain arguments are better presented before a different tribunal.
⁃ Don’t be intimidated by big players. From large Chinese corporations to State Owned Enterprises, cases can be won against these parties. Michael Jordan faced a legitimate company which held a very large market share, and this was not the typical trademark squatter that many foreign parties face, but the SPC found that Qiaodan Sports’ business operations, circumstances surrounding their use of the marks, awards received, was all irrelevant and could not legitimize their use of Michael Jordan’s name.
⁃ Utilize name rights and portrait rights when available.These arguments can be quite strong when celebrities are seeking to oppose or invalidate bad faith trademarks. However, portrait rights can be tricky. Michael Jordan could not establish enough to prove his rights over the “jumpman” without showing that the related trademark did not show clear characteristics of him.
⁃ Name rights, exclusive link vs. established link. In the Jordan case, the SPC shifted from looking for an ”exclusive link” which was the previous standard, to looking for an “established link” when it comes to name rights. This will make it much easier for celebrities and brand owners to better protect themselves.
⁃ China IP protection continues to grow stronger.We will likely see an increasingly stronger defensive strategy in the form of IP protection in China going forward. This will grow as more foreign brands push their cases forward and also as Chinese companies grow and seek to protect their own rights.