Third Year of University 2023.9 -- 2024.7

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The Conflict and Resolution between the Right of Name of Celebrities and the Trademark Right

Abstract: In recent years, with the enhancement of the communication power and influence of the Internet, the time cost of cultivating celebrities has decreased, while the popularity and appeal of celebrities are much higher than in the past. At the same time, celebrities have more diversified ways to monetize the value behind their popularity through the Internet. Therefore, the name of a celebrity contains higher value, and the market value after it is registered and converted into a trademark should not be underestimated. Some merchants have found that using the names of celebrities as trademarks can more quickly attract the attention of consumers. Thus, without signing legal contracts with celebrities, they attempt to use relevant legal loopholes to operate the names of celebrities as their exclusive trademarks, which has led to a series of legal disputes.
Keywords: Right of name; Trademark right; Legal conflict

0. Introduction

With the deep penetration of the Internet into people’s lives, the definition of the scope of celebrities, the cultivation time, and the social appeal of celebrities have all changed greatly. The publicity and promotion of Internet big data make the names of celebrities appear in front of users more frequently. Users have a more sensitive associative response to the names of celebrities and the social labels, groups, and values represented behind them.
At the same time, in the current saturated market situation of e-commerce platforms, it is more difficult for merchants to cultivate their own brand trademarks. Especially for small and medium-sized enterprises, the similarity of trademarks is relatively high, and it is difficult to gain an advantage in market competition. In order to stand out among numerous competitors and attract more attention from consumers, if a trademark has a certain connection with a well-known celebrity, it can help attract most of the uninformed “bystanders” to enter the store and pay attention.
However, from the perspective of market competition, arbitrarily using the names of celebrities as trademarks or implying the connection between the trademark and the celebrity through trademark design will greatly affect the healthy competition in the market. From the perspective of the legitimate rights that celebrities, as legal citizens, should have, their right of name is seriously violated by being arbitrarily misappropriated, tampered with, interfered with, and counterfeited.
Therefore, based on the above social phenomena, this article attempts to sort out and summarize the manifestations of the conflict between the right of name of celebrities and the trademark right in China and the causes of this conflict by querying relevant laws and codes and summarizing the characteristics of relevant cases. At the same time, relevant laws and regulations in foreign legal systems are consulted as a reference. Finally, the communicable approaches to resolving the conflict between the right of name of celebrities and the trademark right in China are proposed.

1. Definition of Relevant Concepts of the Right of Name and the Trademark Right

Right of Name

A name refers to the family surname and the unique name symbol that distinguishes an individual from others. Article 99 of the General Principles of the Civil Law stipulates that a citizen has the right of name, has the right to decide, use, and change his name in accordance with the regulations, and others are prohibited from interfering with, misappropriating, or counterfeiting it. Article 1012 of the Civil Code, while retaining the first paragraph of Article 99 of the General Principles of the Civil Law, adds that a natural person has the right to authorize others to use his name. To a certain extent, this shows that the right of name has a certain property attribute, rather than just a personal attribute.
The name defined in the Judicial Interpretation of the Anti-Unfair Competition Law, in addition to the real name of a natural person, also includes the stage name and pen name of a natural person that have a certain market popularity and are well-known to the relevant public within the scope of protection.

Trademark Right

A trademark, simply put, is a mark of a commodity. It is a mark composed of words, graphics, letters, numbers, three-dimensional signs, color combinations, and combinations of the above elements used by the producer, operator of a commodity or the provider of a service to identify themselves and distinguish from others on their commodities or services [1].
According to Article 3 of the Trademark Law: A trademark approved and registered by the Trademark Office is a registered trademark, including a goods trademark, a service trademark, a collective trademark, and a certification trademark; the trademark registrant enjoys the exclusive right to use the trademark and is protected by law. In China, a legal trademark registration must be carried out first to enjoy the trademark right.

Relevant Legal Determinations of the Conflict between the Right of Name of Celebrities and the Trademark Right

Explanation of the Use of the Right of Name in the Civil Code

Articles 1019 and 1023 of the Civil Code [2] have made corresponding provisions on the term and method of the licensed use of names, providing a unified standard for judicial practice in dealing with the licensed use of names by others. To determine whether the right of name of a celebrity has been misappropriated and violated, the main focus should be on determining whether the trademark registered by the merchant directly or indirectly uses the market value of the celebrity’s name for profit.
However, the interpretation of the right of name in the Civil Code does not include the interpretation of the names of virtual characters’ IP, the names of characters in novels, the names of cartoon characters, stage names, and online names. But such names have formed a stable and highly directional relationship with natural persons in the public view.

Explanation of “Prior Rights” in the Trademark Law

Article 9 of the Trademark Law states: A trademark applied for registration should have distinctive features, be easy to identify, and shall not conflict with the legitimate rights obtained by others prior to it. The trademark registrant has the right to indicate “registered trademark” or the registration mark.
The composition of the right of name of a celebrity is similar to that of a trademark. Both have the attribute of obtaining value through the accumulation of their own reputation. A celebrity can obtain certain value of interests through the use of his right of name before the trademark registration. Therefore, when a certain value is obtained after the malicious registration of a trademark, it has violated the legitimate rights of others.

Prohibition of Confusing Behaviors in the Anti-Unfair Competition Law

Article 6 of the Anti-Unfair Competition Law [3] requires that market entities shall not conduct commercial activities using the names of persons with certain social influence, so as to prevent the public from having misidentifications and associations with the commodities and services provided by the operators. It can be seen that if small and medium-sized enterprises maliciously register the names of celebrities as trademarks in order to attract more attention from consumers, it is an act that violates the healthy competition in the market. However, as a sub-law of economic law, the Anti-Unfair Competition Law mainly adjusts the market economic relations and regulates the market behaviors of market entities, that is, the market business activities of operators [4]. Therefore, if the trademark registrant is not an enterprise operator, it is difficult to pursue his legal liability through the Anti-Unfair Competition Law.

2. Case Introduction, Analysis and Related Phenomena

2.1 The “Jordan” Trademark Case

2.1.1 Case Introduction

Michael Jordan, a famous American basketball player, has created brilliant achievements on the basketball court, making him extremely renowned worldwide. In 1985, Michael Jordan and Nike jointly established the “Air Jordan” sports brand, and its related sports products are deeply loved by fans.
Qiaodan Sports Co., Ltd. was established in Jinjiang City, Fujian Province in 2000. The company applied for the registration of the combination of the name “Qiaodan” and the graphic of a basketball player. Prior to this, the trademark “Qiaodan” was first registered in 1991; in 1997, the trademark “qiaodan” was registered, and a graphic trademark with the image of a baseball player was added. Up to now, the company has more than 5,000 offline brand stores. Since its establishment, Qiaodan Sports Co., Ltd. has successively applied for the registration of a number of trademarks that are closely related to the name and image of Michael Jordan himself, such as “Qiaodan”, “QIAODAN”, and “Qiaodan (another Chinese character with a similar pronunciation)”.
Until 2012, Michael Jordan filed an application with the Trademark Review and Adjudication Board to revoke the disputed trademark on the grounds that the registration of the disputed trademark damaged his right of name and violated Article 31 of the Trademark Law, which stipulates that “an application for trademark registration shall not damage the existing prior rights of others”. Finally, the Trademark Review and Adjudication Board ruled to maintain the disputed trademark.
In April 2014, the Trademark Review and Adjudication Board rejected Michael Jordan’s application, believing that the reason for the violation of his prior right of name was not tenable and ruled to maintain the disputed trademark. Subsequently, Michael Jordan filed an administrative lawsuit but lost both the first instance and the second instance. Then he filed a retrial application with the Supreme People’s Court. Until April 2016, the Supreme People’s Court made a retrial judgment, revoking the appealed ruling and the judgments of the first instance and the second instance, and at the same time, ruling that the National Intellectual Property Administration should make a new ruling on the disputed trademark in this case. Finally, the basketball superstar Michael Jordan won the victory in this trademark dispute case.

2.1.2 Case Analysis

According to Article 7 of the Trademark Law: When applying for trademark registration and using a trademark, the principle of good faith should be followed. The user of a trademark should be responsible for the quality of the goods on which the trademark is used. The administrative departments for industry and commerce at all levels should, through trademark management, stop the acts of deceiving consumers. And according to the provisions of the Trademark Law on the prohibition of certain marks from being registered as trademarks, Paragraph 7 of Article 10 states: Marks that are deceptive and are likely to cause the public to have misidentifications about the quality and other characteristics or the origin of the goods. During the investigation and trial process by the Supreme People’s Court, it was found that over the more than 20 years since its establishment, Qiaodan Company had registered more than 60 trademarks that included the Chinese name and pinyin of the respondent, more than 40 trademarks of basketball images similar to the silhouette of the respondent, and more than 30 trademarks that included the Chinese names and English names of the respondent’s two sons. Based on this, it can be determined that a series of trademark registration acts of Qiaodan Company were to seek improper commercial benefits by using the public recognition and reputation of the respondent.
According to the provisions of the Trademark Law on the prohibition of certain marks from being registered as trademarks, Paragraph 8 of Article 10 states: Marks that are harmful to socialist moral trends or have other adverse effects. Combining with the process of the “Qiaodan” trademark case, Fujian Qiaodan, as a commercial brand with good business performance over the years, has established its corporate culture on the basis of “misappropriating” the reputation achievements of others. It has conveyed a very negative image of a large Chinese brand enterprise to the society and the world, indirectly affecting the establishment of the image of China’s sports brands in the domestic and global markets. Therefore, the reversed judgment of the “Qiaodan” trademark case after four trials and four judgments has clarified the legal application standard for the Trademark Law to protect the prior right of name [5]. Malicious registration has great legal risks. Merchants should not hold a fluke mentality and think that after preemptively misappropriating the name of a celebrity as a trademark and expanding the brand, they will have more say in the face of the law. In fact, after Fujian Qiaodan’s such actions, the legal liability it bears is more serious, and the value of the corporate brand it has painstakingly managed is wasted. The judgment result of this classic case is of great significance for curbing the phenomenon of the names of celebrities being preemptively registered as trademarks and resolving the conflict between the right of name of celebrities and the trademark right.

2.2 The “Iverson” Trademark Case

2.2.1 Case Introduction

Allen Iverson, another well-known basketball star, also has many loyal fans. Iverson once endorsed for Liboke Company. When Liboke Company learned that the English word “IVERSON” had been registered as a trademark by another company, Liboke Company believed that this act was carried out without Iverson’s consent, which violated Iverson’s prior right of name and also damaged the interests of the company. Therefore, Liboke Company requested the Trademark Review and Adjudication Board to revoke the registration of this trademark.
However, the Trademark Review and Adjudication Board finally did not cancel the registration of this trademark. The Trademark Review and Adjudication Board believed that when comparing the English word “IVERSON” with Iverson’s full English name “Allen Iverson”, “IVERSON” is only a surname in their country and not Iverson’s full English name, and it cannot be accurately associated with the basketball star Allen Iverson himself. Therefore, this trademark did not violate Iverson’s right of name.
One year later, Liboke Company, as the plaintiff, sued the Trademark Review and Adjudication Board and the enterprise’s responsible person Lin Zedong. After the court’s trial, the judge finally believed that in the language context of our country, “IVERSON” has a very strong directivity to the basketball star Allen Iverson. The reason why Lin Zedong’s company chose this name when registering the trademark was that it took a fancy to the strong consumption ability of the fan group behind it. Therefore, the legal registration and use of this trademark were revoked.

2.2.2 Case Analysis

The trial result of this case shows that as a symbol, a trademark and the name of a celebrity have different meanings represented in different cultural contexts. Especially, the meanings represented by a name in different cultural circles and the values contained behind it are completely different. Therefore, when there is a conflict between the right of name of a celebrity and the Trademark Law, to determine whether the value of the celebrity’s name has been used, attention should be paid to the types of business operations of the merchant. This can avoid the judgment result of the first instance in the “Iverson” trademark case and also avoid the situation where the registered trademarks of small and medium-sized enterprises are “set up” by “big-name” celebrities after they have created certain original brands.

2.3 The Co-branding between Fictional Characters in Novels and Brands

With the end of the pandemic, all merchants hope to make up for the losses during the pandemic when the market recovers. Especially in the milk tea industry, well-known milk tea shops are competing to co-brand with fictional characters in novels to expand their popularity and attract their fans to consume. Especially when co-branding with fictional characters in novels, although most merchants will choose to use the images of animated characters for better promotion, the value generated behind it is the influence of the names of the fictional characters in novels. Currently, the co-branding between fictional characters in novels and milk tea merchants is in a mutually beneficial stage. However, with the intensification of “commercial battles” and the increase in the number of fans of fictional characters in novels, there may be situations in the future where the names of fictional characters are preemptively registered as trademarks.

2.4 The Manifestations and Hazards of the Conflict between the Right of Name of Celebrities and the Trademark Right

Through the analysis of the above classic cases and business phenomena, it can be summarized that the conflict between the right of name of celebrities and the trademark right is mainly reflected in that merchants preemptively register trademarks for profit through cultural environment differences, attempt to expand the scale of the trademark brand operation to a position equivalent to the influence of the celebrity himself, and use their loyal users to resist the legal definition of the meaning of the trademark.

3. The Reasons for the Conflict between the Trademark Right and the Right of Name of Celebrities in China

3.1 The Definition of the Concept of “Celebrity”

When an enterprise makes a profit by using the name and reputation value of a celebrity without permission, it is determined to have violated the right of name of the celebrity. However, there is no clear legal provision for the definition of “celebrity”. Therefore, “celebrity” is currently a concept that can be redefined according to different case situations. The illegal enterprises in the above cases also took advantage of this loophole to register trademarks.

3.2 Relevant Provisions Are Prone to Confusion

Among the eight situations listed in Article 10 of China’s Trademark Law that cannot be used as trademarks, the situation of registering the names of celebrities as trademarks is not included. Therefore, to determine whether the registered name of a celebrity is an infringement depends only on Article 9 of the Trademark Law on whether it infringes the “prior rights” of the celebrity. However, Paragraph 2 of Article 41 of the Trademark Law stipulates that for a registered trademark that violates the provisions on prior rights, within five years as of the date of trademark registration, the trademark owner or the interested party may request the Trademark Review and Adjudication Board to rule to revoke the registered trademark. In the “Qiaodan” trademark case, Fujian Qiaodan took advantage of the difference in national boundaries. After more than 20 years of its registration and development, it had developed into a large enterprise before being known by Michael Jordan himself. Michael Jordan could not use the relevant legal provisions to pursue liability.

4. Relevant Foreign Legal Provisions for Resolving the Conflict between the Trademark Right and the Right of Name of Celebrities for Reference

4.1 The Referable Ideas for Resolving the Conflict between the Trademark Right and the Right of Name of Celebrities in the United States

The right of publicity system is currently the basis for the United States to resolve the conflict between the right of name and the trademark right [6]. The right of publicity is the right of a natural person to commercially use personal signs such as names and portraits. As a property right, it is different from the right to privacy, but together with the right to privacy, it constitutes the right of personality. To a certain extent, the right of publicity more directly restricts the use of the name and portrait of the person himself by a third party.
 

4.2 Referable Approaches for Resolving Trademark Right and Celebrity Name Right Conflicts in the UK

The UK follows the merchandising right model to protect the property interests generated by names [7]. In British law, trademark rights are not closely linked to celebrity personality rights. Instead, the commercial value brought by celebrities is monetized, and legal action is taken against enterprises for counterfeit or shoddy practices during trademark registration.

4.3 Referable Approaches for Resolving Trademark Right and Celebrity Name Right Conflicts in Germany

Germany adopts a unified rights protection model in its legislation. National laws define the right of name as having dual attributes—spiritual and property. Compensation is determined by identifying whether the trademark right primarily infringes on the spiritual or property aspect of the name right.

4.4 Referable Approaches for Resolving Trademark Right and Celebrity Name Right Conflicts in Japan

Japan imposes strict criteria for registering names as trademarks. A name must demonstrate long-term and significant influence to be approved for trademark use. This fundamentally prevents enterprises from registering names that are identical or phonetically similar to celebrity names.

5 Communicable Solutions for Resolving Conflicts Between Celebrity Name Rights and Trademark Rights

Based on the above case analyses, China’s Trademark Law requires improvement to explicitly regulate the registration of personal names as trademarks, eradicating unauthorized use of celebrity names to attract consumers. Additionally, clearer legal constraints on market norms—especially regarding good faith management—are necessary. Conflicts between celebrity name rights and trademark rights often stem from deceptive practices targeting consumers.
References
[1] Liu, C. Intellectual Property Law [M]. Higher Education Press, 2008:198.
[2] Civil Code Article 1019: Without the consent of the portrait right holder, no one may produce, use, or disclose their portrait, except as otherwise provided by law. Without consent, the copyright holder of a portrait work may not use or disclose the portrait through publication, reproduction, distribution, rental, or exhibition.
Civil Code Article 1023: The licensed use of names and other personal identifiers shall refer to the relevant provisions on the licensed use of portraits.
[3] Anti-Unfair Competition Law Article 6: Operators shall not arbitrarily use the names of enterprises, social organizations, or individuals (including pen names, stage names, and translated names) with significant influence to mislead the public into associating their products or services with others.
[4] Xiao, M. Legal Conflicts Between Trademark Rights and Name Rights [D]. Changchun University of Science and Technology, D923.43; D923.
[5] Chen, Y. Legal Issues in Conflicts Between Trademark Rights and Celebrity Name Rights [D]. Hebei Normal University, D923.43.
[6] Pinckaers, J. C. S. From Privacy Toward a New Intellectual Property Right in Persona [M]. Kluwer Law International, 1996.
[7] Chen, Y. Legal Issues in Conflicts Between Trademark Rights and Celebrity Name Rights [D]. Hebei Normal University, D923.43.

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Design Concept of the MG Animation “Make a Wish”

I. Sources of Inspiration
(I) Sound Visualization
Interpret a piece of music through graphic transformations. The original song “Make a Wish” is a well-known hit by NCT U. From the arrangement and composition to the visual communication in the MV, it conveys the concepts of discovering evil, eliminating evil, and spreading love and peace. This animation extracts various cultural symbols from its MV and also conveys the hope of “ending the war and achieving world peace”.

 

(II) Intense Israel-Palestine Conflict
Among the basic elements, the hexagram hints at Israel, while the red flames, green land, white rain, and black background imply Palestine.

 

II. Conveyed Concepts
peace & love
It is hoped that the bright fire representing love and peace will eventually put an end to the brutal war.
III. Basic Elements
  1. Hexagram: The hexagram, which originally represents peace and blessings, mutates under the influence of dark forces and is controlled by evil forces.
  2. Flames (Zoroastrianism): Symbolize illuminating everything, discovering evil, and punishing evil.
  3. Rain and Green Land: A place where hope and beauty grow.
  4. Glowing Sphere: The source that illuminates the darkness.
IV. General Plot
The hexagram is shrouded and controlled by darkness, becoming evil and uncontrollable. The fire of hope that was originally burning at its center senses the power of evil, breaks through the restrictions regardless of everything, comes to a new land, is nourished by the power of hope and love, and its power keeps growing. Returning to the darkness, it bursts out from each small sphere longing for light and successfully expels the hexagram.