Contextualizing Michael Jordan v. Qiaodan Sports: I Don't Believe I Can Fly, or Do Business, in China

• Publication year: 2021

Contextualizing Michael Jordan v. Qiaodan Sports: I Don't Believe I Can Fly, or Do Business, in China

Justin Blair
University of Georgia School of Law, jlblair@uga.edu

Contextualizing Michael Jordan v. Qiaodan Sports: I Don't Believe I Can Fly, or Do Business, in China

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CONTEXTUALIZING MICHAEL JORDAN V. QIAODAN SPORTS: I DON'T BELIEVE I CAN FLY, OR DO BUSINESS, IN CHINA

Justin Blair^*

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TABLE OF CONTENTS

I. INTRODUCTION...........................................................................................123

II. BACKGROUND.............................................................................................124

A. AN UNCANNY RESEMBLANCE.........................................................124

1. A Race to the China Trademark Office....................................124
2. Parallelism in the U.S. Federal Courts......................................126

B. MICHAEL JORDAN V. QIAODAN SPORTS CO.................................127

III. REPEALING CONTESTABLE TRADEMARK REGISTRATIONS................130

A. UNFAIR COMPETITION......................................................................131

1. Bad Faith.......................................................................................131
2. Prior Rights...................................................................................132

B. THE PUBLIC POLICY DILEMMA........................................................134

IV. A MECHANISM FOR PROTECTION IN A "FIRST TO FILE" SYSTEM .... 136

V. CONCLUSION................................................................................................138

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I. INTRODUCTION

"Being named among the best at something is special and beautiful. But if there are no titles, nothing is won."¹ Everyone receives a name, but few are well known. The lust for notoriety is an inherent human desire, which explains why roughly a quarter of millennials—the current driving force behind America's economy—would prefer fame over a professional career in the law or medicine.²

As superficial as it seems, the rich and famous appear to have a certain "Midas Touch,"³ and as such, domestic and international companies should have to obtain approval before they associate themselves with the names and images of rich and famous individuals. But trademark enforceability is a nuanced legal topic, and territorial issues often arise due to entities' geographical separation.⁴ Ranking in terms of gross domestic product, the U.S. ranks first and China ranks second in their percentage shares of the global economy.⁵ American brand owners are electing to conduct business in China in increasing numbers, yet China's trademark law has failed to afford them holistic trademark protection time and time again.⁶

An athlete may steal another player's signature fade-away, duplicate another player's specific workout routine, or clone another player's nutritional regimen to get a leg up on a competitor.⁷ It would be nonsensical to argue that any of these acts rise to the level of infringement.

Michael Jordan's Nike endorsement deal of 1985, however, was the first of its kind—Converse never gave Magic Johnson, Larry Bird, or Julius Erving individual recognition on any of their signature sneakers.⁸ From the 1980s well

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into the twenty-first century, Chinese articles, media reports, and television broadcasts documented Jordan's legacy.⁹ During this time, Qiaodan Sports Company ("Qiaodan Sports") filed bad faith trademark registrations for the right to use Jordan's name and image.¹⁰

This Note serves to: (1) explore the ways in which Jordan's fame has impacted the sports business industry and China's trademark law; (2) examine the reasoning underlying Jordan's claims for exclusive trademark protection; and (3) resolve the ambiguity in China's trademark framework as to the determination of whether to grant image rights to retrial applicants.

II. BACKGROUND

The following section provides background information on Jordan's decade-long trademark dispute with Qiaodan Sports. This section facilitates the reader's understanding of the pervasiveness of bad faith trademark registration globally.

A. AN UNCANNY RESEMBLANCE

1. A Race to the China Trademark Office

In 1997, 17-year-old giant Yao Ming was on the cusp of bringing about a paradigm shift in the popularity of Chinese basketball, which spawned much conversation among NBA scouts.¹¹ Later that year, a Fujian company formed a business entity under the name Qiaodan Sports and began selling swimwear, shoes, and raincoats.¹² It is important to note that all of China understands the word "Qiaodan" to be a rough transliteration, or audible pronunciation, of Michael Jordan's surname in the Chinese language.¹³ At that time, Qiaodan Sports used Jordan's name and, confusingly, aimed its products towards a target market of swimmers and other water athletes.¹⁴

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To date, Qiaodan Sports has filed hundreds of trademark applications in connection with Jordan's name and image including, but not limited to, applications for the right to use the full names of Jordan's two sons "Jeffrey Jordan" (Jie Fu Li Qiaodan) and "Marcus Jordan" (Ma Ku Si Qiaodan).¹⁵ The presumption was that Jordan's sons themselves would generate additional revenue as famous NBA basketball players,¹⁶ which didn't happen.¹⁷

Further indicia of Qiaodan Sports' ill-will is endless; its 1997 logo depicting a baseball player with white gloves¹⁸ went public three years after Jordan's brief stint of playing baseball for the Chicago White Sox.¹⁹ In the early 2000s, presumably as a result of Jordan's return to basketball, Qiaodan Sports then changed its logo to an airborne basketball player and reinvented its inventory to mirror that of Nike's Air Jordan brand ("Air Jordan").²⁰

Nike was the first to hold Chinese trademarks to "MICHAEL JORDAN" and Jordan's black silhouette "JUMPMAN."²¹ Qiaodan Sports' subsequent registrations support allegations of "a deliberate intention to associate [] with, or trade on the fame and goodwill of, Michael Jordan's trademarks" in China.²²

China's World Trade Organization membership, Yao Ming's NBApromise,²³ and Beijing's 2008 Olympics²⁴ bid would all benefit Qiaodan Sports' enterprise, if not for anything else, due to sheer confusion among Chinese consumers about whether Qiaodan was actually Jordan's brand.²⁵

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It's no surprise, then, that Jordan's global ascension helped finance Qiaodan Sports. In 2013 alone, the company reported upwards of $270,000,000 revenue in more than 5,700 outlets in China.²⁶ But while American commentators have displayed public outrage about how Chinese authorities have deprived Jordan of the right to his own identity, similar situations have occurred in the United States.²⁷

2. Parallelism in the U.S. Federal Courts

Trademark law in the U.S. aims to prevent a person from selling goods with "any word, term, name, [or] symbol . . . which is likely to . . . deceive as to the affiliation, connection, or association of such person with another person."²⁸ But still, the U.S. federal courts referenced below have struggled with the dichotomy of whether to protect foreign companies or the American companies whose trademark applications they challenge.

The Second Circuit has put forth a particularly functionalist ruling on this subject. In the 1980s, a foreign company, ITC, owned and operated restaurants in India, acquiring trademark rights about a decade later to a certain "Bukhara" logo through the United States Patent and Trademark Office ("USPTO").²⁹ But the plaintiffs at ITC were unsuccessful in challenging a defendant's simultaneous and conflicting use of their logo in America, even though this defendant knowingly appropriated the Bakhara logo for his own opportunistic gain.³⁰ The Second Circuit found that because the plaintiffs had abandoned their logo for a three-year period, the plaintiffs could no longer demonstrate a right to use their own logo in the United States, in which case this court grants no famous mark exception to the territoriality principle.³¹

In Grupo Gigante SA De CV v. Dallo & Co., however, the Ninth Circuit court followed a more pragmatic approach.³² The case involved a dispute between a Mexican-Arizonian plaintiff and a San Diegan defendant over a "Gigante" logo.³³ First, the court found that the plaintiff's fame depended on what its logo

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meant to a "substantial percentage of consumers" in the defendant's relevant geographic market: San Diego.³⁴ The court then noted additional considerations to take into account, like whether the defendant intentionally copied, or whether consumers would think the defendant was patronizing, the same logo in a different country or province.³⁵

Therefore, if an alleged infringer later duplicates a logo without knowledge of the true owner's earlier local use, what the logo means to local consumers in the given territory would determine who receives priority.³⁶ This shows the circumstances under which an earlier user's logo might trigger in the minds of the public a desire to identify the source of that product, rather than the product itself, rendering the earlier user's region of use irrelevant.³⁷ If a court finds that there is a showing of bad faith on the part of a defendant, adopting a limited famous mark exception seems more logical than the Second Circuit's outright denial to conduct any inquiry into the conflicting party's fame whatsoever.

Historically, the China Supreme People's Court's ("SPC") views aligned with ITC in preserving the rights of its domestic constituents.³⁸ But in Michael Jordan v. Qiaodan, China's highest court adopted something similar to a famous mark exception, though particular questions still remain under China's trademark law with respect to American brand owners' logos, which the next section details further.

B. MICHAEL JORDAN V. QIAODAN SPORTS CO.

The nuances of China's trademark law further complicate court interpretations of the same. Particularly...