Thanks to the hard work of Jessie Zeng 曾 潇 of Tsinghua University Law School, and the support of his professor, former Chief Judge Randall Rader, we now have a translation of the Michael Jordan/Qiaodan case. Here is a translation of the decision in word format. Jessie Zeng has also kindly provided a translation of cited laws in the decision.
On first impression, the case has significant implications for entertainment law, trademark rights for well known foreign individuals in China as well bad faith issues. Here are some key points:
A) The SPC overturned Beijing High Court’s view that required a definitive association between Qiaodan and Michael Jordan, but instead required a stable association. The court relied heavily on general civil doctrine, including tort law, IP law and advertising law in making its analysis. The court also noted that, with respect to foreigners, the key factor is that the relevant public in China has gotten used to calling the foreigner with a Chinese name in translation.
B) The court also admitted a range of evidence to support the fame and reputation of Michael Jordan as proof of bad faith by Qiaodan, including a large number of articles, endorsements and survey data.
C) The court recognized that, with respect to foreign names, sometimes the public may use a name for the individual that is different from the name the person actively uses, and that this name should be protectable.
D) The court also noted that Qiaodan’s prior investment activities and brand promotion did not give it any “squatter’s rights”, noting that “Qiao Dan Inc.’s operation condition, its efforts in related trademarks’ publicity, use, related trademarks’ awarded prizes and received protection and etc. cannot make the disputed trademark’s registration legitimate.” Qiaodan operates about 6,000 stores in China. The case is in a sense a warning shot to trademark pirates that a business model based on bad faith is risky in today’s China.
In fact, in the many years that I have followed this case one of my greatest concerns was how much a court would be unwilling to disrupt expectations built around a bad faith business model. Viewed as a political statement, the SPC is sending a strong and laudable signal by saying that relatively settled expectations based on bad faith registrations will not legitimize these trademark registrations and indeed can end up being quite costly. Times are changing…
My thanks, once again, to Jessie Zeng!
(Note: Translation revision: January 6, 2017).