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In Partial Trademark Victory over Chinese Sportswear Company, Michael Jordan Posterizes Unauthorized User of Chinese Version of His Name ("乔丹")

In Game 3 of the first round of the 1991 NBA Eastern Conference playoffs between the New York Knicks and the Chicago Bulls, Michael Jordan produced one of his many memorable highlights when he eluded a double team on the baseline and took it to the rim and dunked over (or "posterized") Patrick Ewing. The Knicks were eliminated from the playoffs and the Bulls went on to win their first NBA Championship. After losing trademark battles over the use of his name in front of two lower Chinese tribunals, Jordan recently achieved a victory in another important Game 3 before the Supreme People's Court of China. In a notable decision, the Chinese high court partially reversed the lower court decision and invalidated sportswear company Qiaodan Sports Co.'s registration of the Chinese version of Jordan's name, "乔丹", but refused to cancel related registrations that used the transliteration or pinyin version of Jordan's last name, "Qiaodan" (pronounced cheow-dahn).

Jordan first brought suit against Qiaodan Sports in 2012 over the use of his name as a trademark on jerseys, sneakers and a host of sports-related and other products sold in Qiaodan Sports' thousands of retail locations in China. Jordan contested over 70 of Qiaodan's trademarks, including the use of a basketball player silhouette similar to the well-known Jumpman logo. Qiaodan registered to use the Chinese version of MJ's name first, beating Jordan to the hoop for the trademark rights to his Chinese name. Jordan's suit is emblematic of the problem faced by famous athletes and American multinationals that have, in some cases, found their attempts to thwart trademark squatters rejected, given that the law in China generally favors those who register first and marks that have been registered for five years.

Known for his tenacious play and lethal fourth-quarter finishing skills, Jordan kept pushing the case up the court and finally achieved a noteworthy (if partial) win. While the high court revoked Qiaodan's rights with respect to trademarks using the Chinese form of Jordan's name – finding that it was clearly associated with the famous name of Michael Jordan – the Chinese court permitted the company to employ trademarks using the pinyin version of Jordan's name (Qiaodan). Jordan had argued that he was well-known in China as "Qiaodan" and that the high court also should have called an offensive foul on those pinyin marks. The logic of the high court's decision to protect the Chinese form of his name but not the transliteration may be as inscrutable as the triangle offense, particularly without a written opinion; the lower court previously had reasoned that "Qiaodan" is merely the customary transliteration of the common surname "Jordan" and not specifically linked to the superstar Michael Jordan. The Supreme People's Court is the final word on the trademark issues, yet the series is not over, as Jordan may gain further relief from a separate lawsuit against Qiaodan Sports in a Shanghai court for unauthorized commercial use of his name.

Court watchers and international brands are optimistic that this narrow victory is a harbinger of stronger IP protection in China for Western individuals and companies and might provide some relief from trademark squatters. The ruling may impel more sports stars to file actions to invalidate Chinese trademarks that unfairly capitalize on their names, yet the best advice for securing Chinese rights is to beat the shot clock and register your mark first.

© 2019 Proskauer Rose LLP.

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L. Robert Batterman, Labor, Management, Sports, Attorney, Proskauer, Law Firm
Partner

A partner since 1974, Bob Batterman has considerable experience representing both individual employers and multi-employer groups in union relations and collective bargaining. Much of Bob’s time is spent in day-to-day contact with clients, often in “crisis” situations where a rapid resolution of union-related problems is vital.

Bob is a senior member of our nationally recognized Sports Law Group, serving as labor counsel to the National Hockey League, Major League Soccer and the National Football League. He has extensive experience in collective...

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Michael Cardozo, Commercial Litigation Attorney, Proskauer, Law Firm
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Michael A. Cardozo is a Partner in Proskauer’s Litigation Department and the former Corporation Counsel for the City of New York. As the city's 77th and longest serving Corporation Counsel, he was the city’s chief legal officer, headed the city's Law Department of more than 700 lawyers, and served from 2002 through 2013 as legal counsel to Mayor Michael Bloomberg, elected officials, the city and its agencies.

Michael’s experience managing large litigations in both the private and public sectors provides him with unique insight into litigation assessments, risk management and mitigation issues. In his role as head of the New York City Law Department, he effected numerous changes that resulted in significantly increased efficiency. He achieved this by greatly expanding the use of technology and statistical data allowing for effective risk/cost analysis of cases.

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Robert L. Freeman, Technology, Media, Sports, Attorney, Proskauer, Law Firm
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Robert E. Freeman is a Partner in the Corporate Department and a member of the Sports Law Group and Technology, Media & Communications Group.

Rob began his career as an intellectual property litigator before shifting the focus of his practice to intellectual property-related transactions. Today, he helps lead a team of media, sports and entertainment attorneys representing clients such as Time Warner Cable, Discovery Communications, the WTA, the Orlando Magic, Scripps Networks, Armstrong Cable, the PAC-12, Insight Communications and CBS Sports. Rob’s work for these clients...

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Howard Ganz, Sports, Employment Attorney, Proskauer, Law Firm
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Howard Ganz is co-head of the Sports Law Group and former co-Chair of the Labor & Employment Law Department.

Howard represents and counsels clients with respect to a wide variety of labor and employment matters, such as employment discrimination, sexual harassment, wrongful discharge, defamation, breach of contract, discipline, and large-scale reductions-in-force. His litigation experience has run the gamut, from single plaintiff lawsuits to major class actions, in federal and state courts in New York and elsewhere. The clients Howard has represented include the National...

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Wayne D. Katz, Finance, Sports, Attorney, Proskauer, Law Firm
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Wayne D. Katz is a Partner in the Corporate Department, specializing in the sports industry.

Wayne's experience includes the representation of the National Basketball Association and National Hockey League in their various corporate matters, including team ownership transfers and team financings. Major transactions he has worked on for the leagues include the NBA’s purchase and sale of the New Orleans Hornets; the NBA's grant of expansion franchises to Toronto, Vancouver and Charlotte; the NHL's grant of expansion franchises to Nashville, Atlanta, Columbus and Minnesota; the NBA’s $...

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