Xu Xinming: Can the Trademark Right of Zhengongfu Beat Bruce Lee’s Portrait Right?

(Author: Xu Xinming, Researcher of the Center for Intellectual Property Rights Studies at China University of Political Science and Law, Chief Lawyer of China Intellectual Property Lawyers Network, Member of the Patent Committee of Beijing Lawyers Association. Original title of this article: Can the Trademark of Zhengongfu Beat Bruce Lee’s Portrait Right?, published on the China Business Network (www.cb.com.cn) on December 31, 2019) 

According to media reports, recently, Bruce Lee Enterprises, LLC (hereinafter referred to as “Bruce Lee Company”), whose legal representative is Bruce Lee’s daughter Shannon Lee (Chinese name: Li Xiangning), filed a lawsuit with Shanghai No.2 Intermediate People’s Court against Shanghai Zhengongfu Fast Food Management Co., Ltd., Guangzhou Zhengongfu Catering Management Co., Ltd. and Guangzhou Zhengongfu Fast Food Chain Management Co., Ltd. (hereinafter referred to as “Zhengongfu”) because Bruce Lee Company thought that Zhengongfu Catering Management Co., Ltd. had used an image icon resembling Bruce Lee for 15 years without authorization. Bruce Lee Company required Zhengongfu immediately to stop using Bruce Lee’s image and clarify in the media pages for 90 consecutive days that it was unrelated to Bruce Lee, and requested the court to order Zhengongfu to compensate for economic losses of RMB 210 million and reasonable expenses for rights protection of RMB 8,8000. Shanghai No.2 Intermediate People’s Court has officially accepted this case. At present, this case has not yet been tried.

After the above case was made public, it aroused widespread concern in the society, not only because Bruce Lee has a high reputation, but also because the relevant legal issues involved in this case are quite typical and worth discussing.

Protection Scope of Bruce Lee’s Portrait Right

Firstly, the scope of protection of Bruce Lee’s portrait right should be clarified in this case. According to the usual view, a person’s portrait mainly refers to his/her facial features, and it seems that it does not include other physical features. However, if a person’s physical features other than facial features have formed a stable corresponding relation with himself/herself and have recognizability, such physical features are also part of the portrait and protected by law. In the retrial of the administrative dispute between Jordan and the Trademark Review and Adjudication Board of the State Administration for Industry and Commerce over trademark dispute, the Supreme People’s Court determined that “from the perspective of the cognitive habits and characteristics of the general public, the facial features of a natural person are the most important personal features in his/her physical features. Under normal circumstances, the public can identify and distinguish specific natural persons by their facial features. If a logo, the portrait right of which a party claims to protect, does not have enough facial features to be recognized, the party should provide sufficient evidence to prove that the logo contains other personal features that can reflect the corresponding natural person and is recognizable, so that the public can recognize that the logo can clearly refer to such natural person (see the Administrative Ruling with the number of (2015) Zhi Xing Zi No.275 issued by the Supreme People’s Court).” It can be seen that the Supreme People’s Court did not limit the protection scope of the portrait right to the facial features of a natural person, but extended it to other physical features of the natural person, including other personal features that can reflect the identifiability of the corresponding natural person. 

As for the case of Bruce Lee Company v. Zhengongfu, Bruce Lee is a world-renowned martial arts master. He practiced China traditional martial arts since childhood, created the unique Jeet Kune Do, and devoted his life to spreading Chinese Kongfu. He starred in classic Kongfu films such as “The Big Boss”, “Fist of Fury”, “The Way of the Dragon”, “Enter the Dragon” and “Game of Death”, gaining a high level of reputation worldwide. Bruce Lee’s superb martial arts shown in the films are amazing. His original martial arts movements and fighting postures have distinct personal characteristics and strong identifiability, and have become widely known as his iconic image, forming the only corresponding relationship with himself. Therefore, the personal image formed by Bruce Lee’s signature martial arts movements and fighting postures belongs to the protection scope of portrait right.

Is the Brand Image Used by Zhengongfu Similar to Bruce Lee’s Image?

The media published a comparison chart of the brand images used by Zhengongfu and the images of Bruce Lee. The comparison chart listed three character images used by Zhengongfu in the trademark and three personal images of Bruce Lee. Among them, a trademark figure that Zhengongfu began to use in 2004 is a character image posing as a fighter, and in the film “Fist of Fury”, Bruce Lee has a very classic martial arts posture, which has become one of his iconic postures. The character image used by Zhengongfu in the above trademark figure is highly similar to the facial features and action features in the above image of Bruce Lee. Therefore, the character image used by Zhengongfu in the above trademark figure is similar to the image of Bruce Lee.

The other two trademark figures of Zhengongfu listed in the comparison chart began to be used in 2016. Compared with the related personal images of Bruce Lee, the facial features of the character images in these two trademark figures are vague, and the gestures of the hands are slightly different. However, considering the following two facts, these two trademark figures are still similar to the related personal images of Bruce Lee as a whole: firstly, Bruce Lee, as a Chinese martial artist, has unparalleled popularity in the world, and his original martial arts movements and fighting postures are highly related to himself and have strong identifiability. In view of this, such original martial arts movements and fighting postures should be strongly protected by law. Secondly, since 2004, Zhengongfu began to use Bruce Lee’s personal images as trademark figures for more than ten years, which has been widely recognized by the relevant public. Therefore, even if Zhengongfu blurredly processed and slightly adjusted the original character image in 2016, and then used the adjusted character image as its trademark figure, it is still easy for the relevant public to associate such character image with Bruce Lee due to the long-term cognitive inertia.

Based on the above analysis, I think that the character image used by Zhengongfu in the trademark figure is similar to Bruce Lee’s personal image, thus infringing Bruce Lee’s portrait right.

Should Zhengongfu Bear Legal Liabilities?

If it is determined that the infringement by Zhengongfu is established, Zhengongfu should bear the legal liability for compensation for losses, which is beyond doubt. It is controversial whether Zhengongfu should bear the legal liability for stopping infringement.

Article 9 of the Opinions of the Supreme People’s Court on Several Issues concerning Intellectual Property Trials Serving the Overall Objective under the Current Economic Situation (Fa Fa [2009] No.23) stipulates that “if a registered trademark that conflicts with another person’s prior property rights, such as copyright, enterprise name right, etc., is irrevocable because it exceeds the dispute period stipulated in the Trademark Law, the prior obligee may still bring a civil action for infringement within the period of statute of limitation, but the people’s court will no longer decide to bear the civil liability for stopping using the registered trademark.” The earliest time that Zhengongfu applied for registering a trademark using Bruce Lee’s image was in 2004, which has so far exceeded the five-year dispute period stipulated in the Trademark Law, so it is impossible to invalidate (revoke) Zhengongfu’s application. According to the above provisions of the Supreme People’s Court, it seems that the court is no longer able to decide that Zhengongfu should stop infringement.

However, it should be noted that portrait right is a kind of personality right, which refers to the personality right enjoyed by a natural persons with respect to the spiritual interests and property interests embodied in his/her portrait. Portrait right has both spiritual and property attributes, but it is essentially a personality right, which is related to a person’s personal dignity and personal freedom. Imagine if Bruce Lee were alive, would he allow others to use his personal image for fast food promotion? Even if the use is paid.

Of course, if Bruce Lee’s daughter knew the infringement within the dispute period of the trademark asserted in this case but did not exercise her rights in a timely manner, it is another matter.