The NBA’s relationship with China is complex and unsettled in the aftermath of last fall’s controversy over political speech and Hong Kong. A key component of that relationship is intellectual property rights. The NBA, like other businesses, seeks credible protection under Chinese law for the names, images and likenesses of the league, teams and players and their associated brands. Both the capacity to use the Chinese legal system to block bad faith “squatting” of intellectual property and the opportunity to seek meaningful enforcement actions against pirated and counterfeit goods are integral to the NBA and its partners.
A recent ruling by the Supreme People’s Court—the highest court in China and thus China’s equivalent to the U.S. Supreme Court—promotes intellectual property rights in ways surely welcomed by the NBA. It does so by awarding a “win” to the most famous person associated with the league: Michael Jordan.
For the last eight years, Jordan and his attorneys have waged litigation in China against the Chinese company Qiaodan Sports. The focal point of the litigation, which has involved more than 80 lawsuits and counter-lawsuits, is the company’s use of the word “Qiaodan” in its name, brand and various commercial applications.
Not long after Michael Jordan became an NBA superstar in the 1980s and then the world’s most prominent athlete, Chinese media and TV broadcasters referred to him as “乔丹” which translates as “Qiaodan.” Qiaodan appears to be the most often used word in pinyin (the official system for writing the sounds of Chinese in Roman characters) to reference the English surname “Jordan.” Jordan insists that Qiaodan Sports has illegally misappropriated his fame and used it for ill-gotten gains. In that same light, the 57-year-old billionaire maintains that Qiaodan Sports has exploited his goodwill, and falsely implied that he is somehow connected to the company and its product line. As explained below, the Supreme People’s Court has largely sided with Jordan.
But the story is not so straightforward. The details of the legal dispute were superbly explained in 2016 by attorney and international IP law expert Laura Wen-yu Young in her The Trademark Reporter article, “Understanding Michael Jordan v. Qiaodan: Historical Anomaly or Systemic Failure to Protect Chinese Consumers?” As Young explains, “Qiaodan” has multiple meanings. Also, there are a variety of ways of writing Michael Jordan’s name in Chinese. As a result, “Qiaodan” can be thought of as a “rough transliteration” of Jordan’s surname but not a translation of “Michael Jordan.” Transliteration is different from translation since it involves using letters of another language to most closely approximate the sound and pronunciation of a word. Unlike a translation, a transliteration doesn’t concern the meaning of a word.
The origin of the dispute
In 1997 the Fujian-based company that would name itself “Qiaodan Sports Company” launched with the goal of selling sportswear to Chinese consumers. As detailed by Young, the company initially registered a trademark for a logo that did not appear to reference Jordan. The logo was “of a baseball batter with pale hands.” Not only did the batter not look anything like Jordan, but it seemed unconnected to him. Jordan is associated first and foremost with basketball, followed by occasional movie, television and video game roles. While Jordan is the greatest basketball player of all time, his professional baseball career was brief and unremarkable. After playing nine seasons for the Chicago Bulls, Jordan pursued baseball in 1994. He batted just .202 for the Double-A Birmingham Barons and returned to the Bulls the following year.
In the late 1990s and 2000s, Qiaodan Sports filed trademark applications in China that left no doubt its company name was about Jordan. Those applications included trademarks for: a jumping basketball player silhouette logo that bore more than a passing resemblance to the famed Jumpman logo; the number 23 (which happens to have been Jordan’s number during most of his NBA career) and Chinese characters that sounded just like “Jeffrey Jordan” and “Marcus Jordan”, the names of Michael Jordan’s two sons. All told, Qiaodan Sports has registered approximately 200 marks that are closely related to Jordan’s name, image or likeness. It has another dozen pending, too.
To many observers, Qiaodan Sports is a blatant knockoff of Jordan Brand and Michael Jordan himself. Yet the company has wisely capitalized on Chinese trademark law, which generally grants trademark rights on a “first-to-file” basis. This arrangement is different from U.S. trademark law, which requires a “first-to-use” threshold, meaning proof the mark has been used in business or will be used.
The strategy worked for Qiaodan Sports. The company’s sales surged during the 2000s and 2010s as Qiaodan Sports opened about 6,000 stores. This surge reflected, among other things, a rapidly growing Chinese economy and consumer class, an increase in sports industry activities stemming from Beijing hosting the 2008 Summer Olympics and, perhaps most importantly, the rising popularity of the NBA among teenagers and young adults in China. Along those lines, the stardom of Houston Rockets center Yao Ming, the first overall in the 2002 NBA draft, clearly boosted the NBA’s fandom in China. Former NBA stars—including Tracy McGrady, Stephon Marbury and Gilbert Arenas—later playing in the Chinese Basketball Association only amplified the connection between the NBA and China.
Meanwhile, with an eye towards exporting its products to an increasingly affluent Chinese market, Nike in the late 2000s and early 2010s pursued intellectual property protection under Chinese law. The company enjoyed a presence in China for decades and had sought ways to protect its rights for apparel and footwear products. Notably, in the early 1990s, Nike obtained Chinese trademark rights for the name “Michael Jordan” and the Jumpman logo. Yet as explained by Young, in the early 1990s Nike was “focused on sourcing and product manufacture in China rather than sales to Chinese consumers.”
When Chinese consumers became wealthier in the 2000s, many became potential customers for Nike. The company soon filed numerous trademark applications, including for Air Jordan and sports bags, clothing and footwear with the “Jordan” mark. Nike was no doubt surprised and disappointed to see Jordan-related applications rejected. The main reason: Qiaodan Sports had already registered those marks and neither Nike nor Jordan had objected to them for years. Chinese authorities concluded “Jordan” would be confusing with Qiaodan.
In 2012, Nike, through Jordan, responded by filing lawsuits in hopes of invalidating Qiaodan Sports’ marks. Jordan spoke to the media at the time. He opined that a person’s name is effectively part of his or her DNA and he argued that Qiaodan Sports had illegally taken “his” name:
The value of Jordan’s brand, including his name and identity, is massive. While the NBA has long been identified with generations of superstar players—including LeBron James and the late Kobe Bryant—no player has enhanced the league’s brand quite as consequentially as Jordan. This point will likely be powerfully made in ESPN’s upcoming documentary, The Last Dance. Jordan, whose net worth is reportedly about $2.1 billion, is integral to Jordan Brand. Jordan Brand is one of nine categories of Nike’s product offerings, the others being Running, Nike Basketball, Football, Men’s Training, Women’s Training, Action Sports, Sportswear and Golf. Although Nike, not Jordan, owns Jordan Brand, the six-time NBA champion and five-time MVP nonetheless plays a pivotal role in the brand’s management. Jordan, of course, wears another important hat in the NBA as the principal owner of the Charlotte Hornets. However, the appeal of his identity in apparel, footwear, video games and other products is most closely linked to his playing days and the Jumpman logo.
Legal hurdles for Jordan in China
Jordan’s legal strategy in 2012 led to a multi-faceted path through the Chinese court system. The details of it are expertly outlined in Young’s law journal article, but in brief, Jordan encountered several obstacles.
First, Qiaodan Sports regularly used its marks in business activities and, as a result, the company’s product line became associated with “Qiaodan.” Stated differently, it wasn’t as if Qiaodan Sports squatted on the word “Qiaodan” and effectively held it for ransom, hoping that either Jordan or Nike would pay up. Just the opposite, it appears, the company used the word in its business activities and the word became distinctive to those activities. For that reason, had Nike secured protection for Jordan-related products, Chinese consumers who were familiar with the similar line of products made by Qiaodan Sports might have been confused as the products’ source.
Second, Qiaodan is not Michael Jordan’s name. As noted above, it is a popular reference to his last name but is not a direct translation and has multiple meanings. This fact made it more difficult for Jordan to persuasively argue that Qiaodan Sports had fraudulently or immorally registered the word, or that he should own the word.
Jordan’s experience was dissimilar from those of other American celebrities facing intellectual property disputes in China. Take singer and producer Beyoncé Giselle Knowles-Carter, better known as Beyoncé. Her attorneys had stopped companies in China from using her famous name for clothing, coffee and other products. Jordan was in a different position. He became known in China through a name—Qiaodan—that wasn’t his own. This rendered his argument less direct. As Young details, Qiaodan Sports capitalized on this point by asserting that “Qiaodan” wasn’t even a reference to Jordan but instead a plant found in South Asia.
Third, Jordan hadn’t licensed the name “Qiaodan” for business purposes, a fact that further distanced his connection to the word. His business dealings were conducted under the name Michael Jordan or Jordan Brand, not Qiaodan. In contrast, Nike attorneys in China had successfully blocked a Chinese company from registering the Chinese characters for LeBron James – 勒布朗.詹姆斯. Nike gained the protection in part because James does business under his own name.
Fourth, even if Qiaodan means “Jordan” it doesn’t necessarily mean Michael Jordan. There have been other NBA players with Jordan as their surname. They include DeAndre Jordan, Jerome Jordan and Reggie Jordan. To be sure, this seems like an unpersuasive argument. None of those players were anywhere near as marketable or successful as Michael Jordan. Also, the fact that Qiaodan Sports registered the names to Michael Jordan’s sons, a Jumpman-like logo and the number 23 seem to leave no doubt as to which NBA player named “Jordan” was relevant to Qiaodan Sports. Still, every fact can matter in a case.
Jordan “sort of” wins: impact
After losing at different rounds in the litigation, Jordan received favorable news from the Supreme People’s Court in January. The Court ruled that because “Qiaodan” has such a strong connection to Jordan, Qiaodan Sports had infringed on Michael Jordan’s name. The company’s trademark in Qiaodan, the court expressed, must therefore be revoked.
The ruling was limited in certain ways. As explained by Cissy Zhou of the South China Morning Post, Qiaodan Sports has not been ordered to disgorge the profits it obtained through the unauthorized use of Jordan’s name. Likewise, the ruling permits Qiaodan Sports to continue to use its Jumpman-like logo, which is now subject to further review by China’s trademark office. Indeed, while Jordan’s name is protected by the ruling, the other aspects of his identity—including his image and likeness—are not.
For many observers, the ruling was logical. It seemed clear that Qiaodan Sports had misappropriated Jordan’s name and, in turn, diminished both his personal capacity and the capacity of Jordan Brand to capitalize on his identity in China (and in other markets served by Qiaodan Sports). For other NBA stars, as well as the league itself, the ruling affirms the identifying power of names . Yet the lack of protection for images and likenesses highlight the continued fight ahead for athletes’ intellectual property rights in China.
The ruling also has political ramifications. It was announced at a time when the U.S. and China are implementing a new trade deal and one which emphasizes protection of intellectual property rights. Regardless of that emphasis, U.S. companies ought to be aggressive in filing early given China’s first-to-file trademark system. Those companies just witnessed Michael Jordan expend considerable resources and time over the past decade fighting for his name—one transliteral version of his name, that is.
We’ll keep you updated on further developments with NBA intellectual property rights in China.
Michael McCann is SI’s Legal Analyst. He is also an attorney and the Director of the Sports and Entertainment Law Institute at the University of New Hampshire Franklin Pierce School of Law