During the penultimate day of 2020, the Shanghai Second Intermediate People’s Court decided the first instance case between the plaintiff basketball legend Michael Jeffrey Jordan and two defendants Qiaodan Sports Co. Ltd. of Jinjiang, Fujian province, and Shanghai Bairen Trading Co., Ltd. See a guest post by Ouyang Yini revisiting the previous Michael Jordan cases, here. While the earlier cases primarily focused on the use of the transliteration of Jordan in pinyin “Qiaodan”, this case focused on the use of the trade name “乔丹” which are the Chinese characters used for the name “Jordan”. Presiding Judge Jiang Xiaoyan, Judge Ji Lei and People’s Assessor Wang Chengqi asked themselves the following 5 questions. See also Qingjia’s article here (Chinese).
1. Whether Michael Jeffrey Jordan, as a foreigner, can claim the right of name in accordance with the General Principles of Civil Law and the Tort Liability Law?
Since Michael Jeffrey Jordan is a US citizen, it is a civil case involving foreigners and the question is which law should be applied. The right of name is part of the right of personality, included in protection scope of the Tort Liability Law.
Article 2 Tort Liability Law: “Infringement of civil rights and interests shall bear tort liability in accordance with this law. The civil rights referred to in this law include the right to life, health, name, reputation, honor, portrait, privacy, marital autonomy, guardianship, ownership, usufructuary rights, security rights, copyrights, and patent rights. Personal and property rights such as trademark exclusive rights, discovery rights, equity, inheritance rights, etc.”
Article 44 Law on the Application of Laws in Foreign-related Civil Relations: “Tortious liability is governed by the law of the place of tortious act. Where the parties have common habitual residence, the law of their common habitual residence shall be applied. Where the parties have chosen by agreement an applicable law after the tortious act occurs, the agreement shall be followed.”
In this case both parties chose to apply China’s laws including the General Principles of Civil Law and Tort Liability Law. The court granted permission to do so.
The provisions of Article 8(2) General Principles of Civil Law: “The stipulations of this Law as regards citizens shall apply to foreigners and stateless persons within the People’s Republic of China, except as otherwise stipulated by law.”
2. If there can be a connection between Michael Jeffrey Jordan and “乔丹”?
The court held that through their long-term connection with natural persons, names become important symbols of personality, and are identifiable and distinctive. According to many corresponding facts in this case, the use of “乔丹” in the commercial activities of Qiaodan Sports Company has been used to refer to the plaintiff.
The name protected by law is not only limited to the name recorded on an ID card or passport of a natural person, but also includes the translated/transliterated name (including the simplified version, pen names and screen names) familiar to the public. If the latter is used by other parties than the natural person, it can cause confusion.
“乔丹” has long been used as the simplified translation/transliteration of the plaintiff’s full name, as is demonstrated by the large number of media reports quoted in this judgment.
Whether a natural person can claim name rights to a specific name depends on whether the name has a stable relationship with the specific natural person. “Jordan” can be recognized as a common English and American surname from language translation, and there are indeed other natural persons with this surname in the UK and US. But defendant did not use the name because it is a common name. Although the scope of protection of a name right is not limited to a specific field, it is an important consideration in the assessment of infringement that the defendant uses the name referring to Michael Jordan in regard to basketball and baseball; the sports in which he was active; the use of No. 23, the jersey he wore; and the use of the names “Marcus” and “Jeffrey”, which are the names of his sons.
Article 99(1) General Principles of the Civil Law: “Citizens shall enjoy the right of personal name and shall be entitled to determine, use or change their personal names in accordance with relevant provisions. Interference with, usurpation of and false representation of personal names shall be prohibited.”
According to this stipulation, “use” is one of the rights enjoyed by the name right holder, Therefore, Bairen Trading Company’s argument that the plaintiff’s name rights can only be obtained through legal procedures is not accepted by this court.
3. Does Jordan Sports Company’s use of “乔丹” in its commercial activities infringe Jordan’s right in its name?
Anyone who interferes or misappropriates another’s name, or deliberately causes confusion, becomes liable for infringement of the right of another’s name. At the same time, in accordance with Article 120 General Principles of the Civil Law, where the name right is infringed, you can claim compensation for the loss.
Article 120 General Principles of the Civil Law: “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.
The above paragraph shall also apply to infringements upon a legal person’s right of name, reputation or honor.”
The court held that the name right holder has an influence in a specific field due to his efforts, and his name can contain great economic benefits. If the name is deliberately used in commercial activities in this field by another, without the permission of the right holder, then the name is used to mislead the public and to obtain unjustified economic benefits, which constitutes an infringement of the name rights of others.
Qiaodan Sports proposes a contrived explanation for its use of Qiaodan, which according to this company does not refer to Michael Jordan. Instead, it is inspired by and refers to a combination of two characters. One from the fourth chapter of the Shang Shu Da Chuan Juan (尚书大传卷) book which tells about the “Qiao” tree (macrophanerophytes), combined with one of the five elements of Chinese philosophy, fire, which has a color called “Dan”. The court was not convinced.
Qiaodan Sports Company also argued that the “乔丹” trademark is legally registered, so its trademarks using this word should not constitute infringement. The court believed that name rights belong to personality rights, while trademark rights are property rights. Although name rights are in the category of personality rights and less exclusive, this does not mean that intentional confusion using the same name and surname is allowed. The court held that when personality rights conflict with property rights, the high-level value and protection priority of personality rights should be established.
The court appreciated that some of the Qiaodan Sports Company’s trademarks with “乔丹” have become irrevocable after a five-year period in which they could have been opposed. However, the exercise of these irrevocable trademark rights should be limited to not infringing upon the plaintiff’s personality rights, in order to be exempted from civil tort liability.
4. Did the defendant Bairen Trading Company’s sale of Qiaodan Sports’ products infringe upon the plaintiff’s right to name?
The court held that the products sold by Bairen Trading Company via legal commercial channels. It could not be proved that the Bairen Trading Company had the intention to infringe upon the plaintiff’s name rights jointly with Qiaodan Sports Company, nor could it be proved that its sales activities in “乔丹” continued, therefore Bairen Trading Company was not held a joint infringer.
5. Is there a legal basis for the plaintiff to request the defendant to stop using the plaintiff’s name in this case in order to stop the infringement?
In accordance with Article 120 General Principles of Civil Law, if a civil subject’s right to name has been infringed, it has the right to request the cessation of the infringement, restoration of reputation, elimination of the impact, an apology, and compensation for losses.
According to Article 15 Tort Liability Law, the ways to bear tort liability also include cessation of the infringement, making an apology, and eliminating the impact.
Article 15 Tort Liability Law: “The methods of assuming tort liabilities shall include: 1. cessation of infringement; 2. removal of obstruction; 3. elimination of danger; 4. return of property; 5. restoration to the original status; 6. compensation for losses; 7. apology; and 8. elimination of consequences and restoration of reputation. The above methods of assuming the tort liability may be adopted individually or jointly.”
Therefore, under the premise that this court finds that Qiaodan Sports Company has infringed the plaintiff’s name right, it should stop the infringement of the plaintiff’s name right. However, when determining the specific way to bear the responsibility for stopping the infringement, the relevant provisions of the Tort Liability Law and the Trademark Law in our legal system should be comprehensively considered. Therefore, this court must not only consider whether the plaintiff’s rights are sufficient for relief, but also the legal effect of irrevocable trademarks that have been registered in accordance with legal procedures, that is, the legislative purpose of the five-year opposition period for registered trademarks in the Trademark Law.
Those “乔丹” trademarks which are still in the five-year opposition period, Qiaodan Sports Company should stop using them since they are infringing the plaintiff’s name right. As for the “乔丹” trademarks beyond the five-year dispute period, the legislator has fully considered the balance of interests between the prior rights holder and the trademark owner when setting the time limit. This time limit can urge right holders and interested parties to claim their rights in a timely manner, and prevent the legal effect of the disputed trademark from remaining in a disputed state for too long after the registration is approved, thereby affecting the promotion and use of the disputed trademark by the trademark owner.
The Supreme People’s Court in its administrative ruling (2015) Zhixingzi No. 291 and other administrative rulings held that the trademarks were not harmful for socialist morals or had any other adverse effects or used deceptive means. Nor were there other improper means used to obtain registration. Therefore, Michael Jeffrey Jordan’s request for reexamination of these trademarks was rejected.
However, in regard to its irrevocable trademarks, the Qiaodan Sports Company should adopt certain reasonable methods to communicate to the public that it is not related to the plaintiff and by de-specifying, de-identifying, and de-referring to Michael Jordan. And thus there is also no need to use the full name of the plaintiff Michael Jeffrey Jordan.
According to the Provisions on the Administration of Enterprise Name Registration, the enterprise name must not contain content or words that may cause deception or misunderstanding to the public.
Article 9 Provisions on the Administration of Enterprise Name Registration: “The name of an enterprise shall not contain the following contents and words: (1) It is harmful to the public interest of the country and society; (2) It may cause deception or misunderstanding to the public; (3) Names of foreign countries (regions) and international organizations; (4) The name of the political party, the name of the party, government and military agency, the name of the mass organization, the name of the social organization, and the number of the unit; (5) Chinese pinyin letters (except those used in foreign names), numbers; (6) Those prohibited by other laws and administrative regulations.”
The Implementation Measures for the Administration of Enterprise Name Registration further stipulates that if the registered enterprise name causes deception or misunderstanding to the public in use, or damages the legitimate rights and interests of others, it shall be deemed as inappropriate and be corrected.
Article 44 Implementation Measures for the Administration of Enterprise Name Registration: Failure to use an enterprise name according to the registration in other ways, which causes deception or misunderstanding with the public or damages lawful rights and interests of others shall be dealt with according to Article 26 Provisions on Administration of Enterprise Name Registration.
Unlike registered trademarks, there is no provision regarding the opposition period for registered company names. Therefore, the court determined that Qiaodan Sports Company’s use of “乔丹” as a trade name and trademark can cause misunderstandings to the public. In order to avoid market confusion and misleading the public, effectively safeguard the legitimate rights and interests of rights holders and consumers, optimize the business environment, and promote the establishment of a social credit system, Qiaodan Sports Company should stop using “乔丹” as its business name.
Article 20 Tort Liability Law holds that the infringement of the personal rights and interests of others causes property losses which the victim can seek relief of through litigation.
Article 20 Tort Liability Law: “Where any harm caused by a tort to a personal right or interest of another person gives rise to any loss to the property of the victim of the tort, the tortfeasor shall make compensation as per the loss sustained by the victim as the result of the tort. If the loss sustained by the victim is hard to be determined and the tortfeasor obtains any benefit from the tort, the tortfeasor shall make compensation as per the benefit obtained by it. If the benefit obtained by the tortfeasor from the tort is hard to be determined, the victim and the tortfeasor disagree to the amount of compensation after consultation, and an action is brought to a people’s court, the people’s court shall determine the amount of compensation based on the actual situations.”
However, the court noted that the claim for compensation made by the plaintiff in this case was limited to the actual expenditures in the litigation such as mental distress, investigation fees, and notary fees, so the judgment in this case will be limited to the scope of the plaintiff’s request.
In regard to the compensation for the infliction of mental distress, it is sufficient to determine that Qiaodan Sports Company has carried out a series of actions to cause the relevant public to misunderstand which lasted for more than 20 years and was profitable for Qiaodan Sports Company. The court determined that Qiaodan Sports Company should compensate the plaintiff with RMB 300,000 for mental distress. For investigation fees, notarization fees, and other expenses spent by the plaintiff in the litigation for the investigation and collection of evidence, should fall into the category of actual losses.
6. Has the statute of limitations for the plaintiff’s claims in this case exceeded?
The court held that the right of name belongs to the right of personality. According to the facts in the case, Qiaodan Sports’ infringement has continued throughout. Therefore, the defendant’s statute of limitations defense could not be established and the court did not accept it.
Verdict
- The defendant Qiaodan Sports Co., Ltd. shall publish it on the China Market Supervision News, Sports Weekly, and the homepage of Sina website (www.sina.com.cn) within 30 days from the effective date of this judgment for three consecutive days, a statement to clarify the relationship with the plaintiff Michael Jeffrey Jordan and publicly apologize (the form and content need to be reviewed by this court);
- The defendant Qiaodan Sports Co., Ltd. shall stop using the “乔丹” business name in its corporate name within 30 days from the effective date of this judgment;
- The defendant Qiaodan Sports Co., Ltd. shall stop using trademarks involving “乔丹” within 30 days from the effective date of this judgment. However, for trademarks involving “乔丹” that exceed the five-year opposition period, it shall include distinctive signs. In a reasonable way, including, to indicate that it is not related to Michael Jordan, a former American basketball player, in order to eliminate the connection, show the difference, and stop the infringement (the form and content need to be reviewed by this court);
- The defendant Qiaodan Sports Co., Ltd. shall, within 30 days from the effective date of this judgment, compensate the plaintiff, Michael Jeffrey Jordan for mental damage relief of RMB 300,000;
- The defendant Qiaodan Sports Co., Ltd. shall, within 30 days from the effective date of this judgment, compensate the plaintiff, Michael Jeffrey Jordan, for the reasonable expenses of RMB 50,000 for the litigation in this case.
- The other claims of the plaintiff, Michael Jeffrey Jordan, were dismissed.
If the obligation to pay money is not fulfilled within the period specified in this judgment, the interest on the debt during the delayed performance period shall be doubled in accordance with Article 253 Civil Procedure Law.
The case acceptance fee in this case was RMB 256,026.29, the plaintiff Michael Jeffrey Jordan was responsible for RMB 126,026.29, and the defendant Qiaodan Sports Co., Ltd. was responsible for RMB 130,000.
It would be interesting to see whether or not one of the parties will appeal to the High People’s Court.