2021.01.01
On December 30, 2020, the Shanghai 2nd Intermediate People's Court rendered a judgment of the first instance in the Case of Michael Jeffrey Jordan, the famous retired American basketball player, v. Jordan Sports Co., Ltd. and Shanghai Bainren Trading Co., Ltd. The court found that the Defendants' acts constituted an infringement of the name right of Mr. Jordan, ordering the Defendant to publish a statement clarifying their relationship with the Plaintiff and publicly apologize. It was also ordered to cease using the trade name "Jordan" in its corporate name, cease using the trademark "Jordan" and imposed restrictive conditions on the use of the irrevocable trademark. It ordered compensation to the Plaintiff for emotional distress and reasonable costs in a total amount of RMB 350,000. The trial lasted nearly nine years and JunHe represented the Plaintiff, Michael Jordan as his litigation agent.
The Judgment of Shanghai No. 2 Intermediate People's Court held that the Plaintiff, Michael Jeffrey Jordan, had formed a stable correspondence to the name "Jordan" , enjoyed the right of the name in accordance with the law and could claim the liability for the tort of the misappropriation of name rights in accordance with the general principles of Civil Law and Tort Law. Without the permission of the Plaintiff, the Defendant Jordan Sports Company used the exact words as the Plaintiff's Chinese translation of "Jordan" as part of its tradename in the sports field and registered or acquired the trademark "Jordan", separately or in combination with other elements, and commercially promoted the brand "Jordan". The purpose of such acts was to mislead the public into associating the Plaintiff's relationship with Jordan Sports Company and was sufficient to mislead the public, thereby causing the Plaintiff's mental suffering and constituted an infringement of the Plaintiff's right of name. According to the evidence in the case, such infringement has been ongoing, and the case did not exceed the statute of limitations.
The Defendant Jordan Sports Company argued that its use of the legally registered trademark "Jordan" did not constitute an infringement. In this regard, the court emphasized that the rights of name belongs to personality rights and the right of trademark belongs to property rights. When there is a conflict between the rights of personality and the rights of property, the value of the right of personality and the priority of protection shall be established. Even if part of the trademark "Jordan" has become irrevocable, the use of the trademark should still be limited to the non-infringement of the Plaintiff's right of personality, otherwise the civil liability for the infringement of Jordan Sports Company will not be necessarily exempted. With respect to the other defenses such as the Defendant’s allegation that "Jordan" in Chinese means "vegetation in the South," the court pointed out that the Jordan Sports Company's registration of the same words as the Chinese translation of the name of the Plaintiff as a trademark showed that the Defendant used the trademark "Jordan" to mislead the public and, on the contrary, further explained the company's subjective intention to use the Plaintiff's Chinese translation of the name for economic benefit.
In response to the Plaintiff's claim that the Defendant should stop using the Plaintiff's name, the court held that the Defendant should stop the infringement of the Plaintiff's right of name, and based on the relevant provisions of Tort Law and Trademark Law, ordered the Defendant to stop using the trademark "Jordan". Even if the trademark "Jordan" was longer than the five-year dispute period, the Defendant must undertake reasonable measures to indicate that it has no connection with the Plaintiff. In view of the provision that there is no dispute period for a registered enterprise name and the determination that the public may be misled by the defendant Qiao Dan Sports Company's use of "Qiao Dan" as the trademark and trade name, the court ruled that the defendant Qiao Dan Sports Company shall stop using "Qiao Dan" as the trade name of the enterprise.
This is a landmark case in the history of China's personal rights law and trademark law and is of great legal significance:
I. This is a complex frontier case in the field of foreign-related disputes over personality rights. It proved that "Jordan" is the Chinese name of the foreign plaintiff, which is the first key issue in this case, and is also the missing aspect under Chinese law. Therefore, we have done a lot of work and legal research on this case, which has laid a solid foundation and premise for the case.
II. This is a typical case in which the right of name, a prior personality right, conflicts with the trademark right, and the use of the trademark infringes upon personality rights, and represents a concentrated presentation of legal issues in the intersection of civil law, trademark law and administrative law. The relationship of rights and obligations involved in this case was complex, and the rights involved were of various types. The success of this case provides precedents with high reference value for similar cases.
III. The civil litigation in this case, from the perspective of civil infringement, shows the damage that has already been caused to the Plaintiff by the registration of the trademark "Jordan" by the Defendant, and has brought adverse impact on the legal order and market order of trademarks in China, greatly promoting, supporting and affecting the process of subsequent administrative litigation against the Defendant with respect to several "Jordan" trademarks. The key evidence collected and prepared in civil proceedings, such as the evidence of the reputation of "Jordan" in the early stage and the market survey report on consumer cognition, also became key winning evidence in the administrative case concerning the “Jordan” trademark.
IV. In the face of the complex legal relationship and the balance of interests, the court upheld the plaintiff's claim to cease the infringement, and there are many highlights and innovations in ceasing the use of the trade name and properly handling the use of the trademark "Jordan" which has been registered for five years or more. Moreover, this case also supported the claim for compensation of a relatively high amount in respect of moral compensation. At a time when the Civil Code came into force, the judgment in this case fully demonstrated the respect for and effective protection of personality rights, embodies the judicial concept of "people first", and sets an example in respect of the use, value and protection of personality marks.
JunHe has been involved in this case since 2011, and after a great deal of initial research, established the overall litigation strategy of the case (starting from the perspective of civil law to protect the right of name, rather than unfair competition under trademark law. JunHe's strategy was approved by Mr. Jordan). By 2020, the full process of the first instance sentencing, the team members included partners in different offices and different areas of business as well as senior lawyers, and numerous middle and junior support lawyers. The litigation in this case lasted several years, and the legal issues were difficult and complicated. Solid evidence work and abundant legal research became the key to the success of the case. The amount of evidence collected was enormous: the first batch of evidence submitted was in 60 volumes and contained tens of thousands of pages, and the second and subsequent evidence contained many volumes. The JunHe team collected extensive evidential materials in various forms by acquiring second-hand books, excerpts from library materials, organizing third-party professional market surveys, producing comparative videos of images, collecting advertising monitoring data, and other means. The team divided the civil law, the trademark law, the law for the application of foreign-related legal relations and other different departmental laws and arranged and carried out in-depth studies on the principles, cases and comparative law respectively. During the litigation, JunHe’s team conducted meticulous and comprehensive arguments from various perspectives such as legal principles, legal provisions, public interest and social impact with regard to the infringement nature of the defendant's act, as well as how to balance the right of the registered trademark and the right of personality, and the social value of stopping the act involved in this case. In order to promote the progress of this case, JunHe’s team fully cooperated with and closely communicated with their clients, communicated in a timely manner with the court and provided feedback. The team formed and submitted several legal documents for the collegiate bench's reference and application. JunHe’s work not only laid a solid foundation for the first trial of this case, but also provided a comprehensive basic evidence and strategic plan for the follow-up trademark administrative cases and has been highly recognized and praised by its clients. Michael Jordan said after winning the case, "I am very grateful to the Shanghai No. 2 Intermediate People's Court for today's judgment, which upheld my right to name, protect Chinese consumers, and stopped the infringement of Jordan Sports. Jordan Sports intentionally misled consumers through its false promotion of product relevance. Chinese consumers have the right to know that Jordan Sports and its products have nothing to do with me. Nothing is more important than protecting your own name from abuse. Today's judgment, as well as the previous rulings of China's Supreme People's Court, underscored the importance of this principle."
The initiators of this litigation were LIU, Ge, Shu Mingde (consultant - resigned) and LI, Qing. The lawyers WANG, Zhao (George), HU, Nan, HU, Xiaohong and ZHANG, Yue (Brett) also handled and participated in the case.
