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Any sharp attorneys in the house specializing in international law to assist Tesla in China with copyright issue?

Any sharp attorneys in the house specializing in international law to assist Tesla in China with copyright issue?

according to the following Reuters article a Chinese businessman (Zhan Baosheng) had the foresight to register Tesla in China back in 2006 and owns the "Tesla" trademark in China which is preventing Tesla Motors USA to open a flagship showroom in Beiging. Should Tesla pay him off for the easy profit he was banking on, or should Tesla fight the case in court and delay the launch of their flagship showroom? From a business standpoint it may be cheaper and wiser to payoff the man, but personally i don't want to see him get a penny from Tesla.

http://www.reuters.com/article/2013/08/23/us-china-autos-tesla-idUSBRE97...

bradslee | 23 August 2013

@mikefa

In this case lawyers would not play any roles to stop this Chinese thief and troll. Only Chinese government, if it wants, can stop and eliminate this guy's ridiculous sham.

IMO, this Chinese thief has not only publicly and shamelessly demonstrated how he stolen Tesla's logo and concept (an amateur design combining Roadster and Model S) but also acted just like a most shameless thief who stole your property and then tried to extort the rightful owner. He has demanded $32 million dollars from Tesla to get the name (Tesla Motors) and the domain name (teslamotors.com.cn) back. A typical heartless and dishonorable Chinese businessman.

Mathew98 | 23 August 2013

Elon wouldn't pay this bozo the $32M he demanded. So TM decided on a new name for the Chinese market instead.

The new name works out better because the intended market would have called Tesla in a mandarin dialect into "Tes-si-la"(a form of pronunciation) instead. The original translated name was very unflattering.

bradslee | 23 August 2013

@mathew,

Yes, you are right. See this thread:

www.teslamotors.com/forum/forums/rumor-tesla-becomes-tuosule-china

Brian H | 23 August 2013

Sometimes I get the impression the Chinese tie themselves into knots trying to obtain, achieve, or avoid favorite or feared puns!

mwill1 | 24 August 2013

They say imitation is the sincerest form of flattery,however in this instance,I wouldn't even submit to this bandit or give him the time of day. What goes around,comes around and I figure $32,000,000 can buy you a lot of knee cappers eager to dispatch this rodent. QUID PRO QUO I SAY!!!!

ChristianG | 24 August 2013

In china the Model S will be sold from 'the company formaly known as Tesla' :P

Brian H | 24 August 2013

'formerly' is how it's spelled, formally.

RedShift | 24 August 2013

I have suggested enlisting the help of a professional life termination service in another thread.

Tâm | 24 August 2013

1) Name:

Do you really need copyright to sell a merchandise in China?

If "Lady Gaga" is copyright by a local Chinese man, does that prevent original US CDs from selling in China?

2) Website:

So what if "LadyGaga.com.cn" is taken, can't Chinese comsumers log on original US site to get the merchandise?

Hodas | 24 August 2013

First, I just need to interject here (as an Intellectual Property attorney) that as a first step we need to be careful to distinguish between Trademark and Copyright law. These are entirely different areas of law (which, together with patent law, make up "Intellectual Property" Law).

This is a trademark issue, not a copyright issue.

And while the issue with the transliterated version of the name has been addressed by choosing a different three-word phonetic compound mark (tuosule) that does not address the registration of the actual romanized name Tesla or the use and registration of the graphical mark.

I have not yet looked at the details of the case, and the squatter's registrations, but if he has registered the romanized original name and the graphical mark too, then Tesla would still be barred from using those in China.

And, I can assure you getting a chinese court to rule in Tesla's favor will be no small feat, though it is not impossible. They may have little choice but to buy him out. But, as I said, I have not looked at all at the details of the case as yet.

LionPowered | 24 August 2013

Suggesting someone be killed is worse than stealing a trademark!

bradslee | 24 August 2013

@Hodas

From a legal point view it would probably be that as you said Tesla has little choice but to buy this Chinese trademark troll out. However, I applaud Elon's decision not to yield to this guy's ridiculous demand and to use a totally new name for Tesla in China.

Since Chinese market is completely a different beast and Tesla has not yet entered it, a Chinese name for Tesla as a company that is used by Tesla will ultimately become a recognizable brand. Also, the new Chinese name that Tesla has decided to adopt is much better in pronunciation and in its Chinese meaning than the old sound translation of Tesla that was trademarked by the Chinese trademark troll.

Therefore, TM 's strategic move in China avoiding to fight the trademark issue is smarter and correct.

soma | 24 August 2013

I doubt the exact letters "Tesla" make much of a difference to the Chinese consumer who would buy it. Everyone knows what the real car/brand is, regardless of the exact spelling.

Hodas | 24 August 2013

My point is that the registration of "tuosule" (or, more specifically, of a three-character ideograph romanized as "tuo su le") does not resolve the issue.

The squatter registered both "Tesla" and a three-ideograph mark that when pronounced happens to sound like "tesla". In China you tend to market with both, as well as your graphical trademark.

Tesla now registered a different three-character ideograph (romanized as "tuo su le") that sounds a bit less like "tesla" than the one the squatter registered, but has a somewhat nicer actual meaning.

That resolves the issue for the ideographic mark, but does not allow Tesla to use the word "Tesla" written in english characters, or to use the graphical symbol (logo) it uses elsewhere. (I believe the squatter registered both of those as well. But, as I said I have not researched the case.)

If Tesla wants to use it's english name or its logo in ads in China, then it will need to consider paying him off.

Also, you cannot assume that an arbitrary Chinese citizen who types tesla.co.cn into a browser will not realize that they are not looking at the actual Tesla's web site.

bradslee | 24 August 2013

@Hodas,

You are right on the issue. Yet I still believe that TM is doing the right thing, i.e., try to get the governmental approval to open TM's very first showroom in Beijing (now the hurdle is not the trademark but the governmental approval process) AND at the same time through its legal team to challenge the Chinese trademark squatter's validity of his Tesla trademark in the local court.

Beyond this logistics, TM still faces a huge challenge in successfully selling MS in China. The road to a success in China will be long and undulating.

mikefa | 24 August 2013

@bradslee@yahoo.com - but why would the Chinese government deny Tesla's showroom request in Beiging in order to support an obvious trademark troll? Wouldn't that hurt the Chinese government's reputation as an unfriendly territory for foreign investors to do business in their country especially when their economy are tanking?

Tâm | 25 August 2013

@mikefa

By now you should know that not every courts in the world love Americans!

Examine#1:
English court defended its citizens for defaming Tesla. TV program Top Gear showed Tesla Roadster ran out of battery at 55 miles out of expected 211 miles and had to be manually pushed to the garage.

Tesla found out that the episode was "staged" filed the lawsuit. It lost the first round. Then it appealed. After repeated examinations: OK! It's fake, it's staged, but the English appeal court still dismissed the lawsuit.

Examine#2:
Italian jury convicted American student Amanda Knox of murdering roommate despite of lack of physical evidence.

Tâm | 25 August 2013

What I meat to spell was Example :)

GReese | 25 August 2013

There are people in China constantly trying to grab the trademarks of Western startups and then extort the start-ups.

This one just happens to be a really big fish.

carlk | 25 August 2013

What I would do is to design a new logo, the current one is not all that attractive (imo) anyway, and in the mean time fight the trade mark troll in the court with whatever means you have. The outcome is another matter but you can't buy the free publicity with any amounts of money.

SamO | 25 August 2013

It's not clear at all that the MARK (giant T) was registered at all.

In fact, Tesla (the name) is R registered as a mark, while the Giant T is TM which means filed but not granted which means the filing was at a later date.

Tesla will be able to use the T logo but not english letters T-E-S-L-A

Tâm | 25 August 2013

@SamoSam

From what I read, it seems that Chinese has registered:

1) Romanized name Tesla:

2) Chinese characters for "Tesla"

3) Exact US Tesla "T" Logo (but the font of the word "Tesla" is different and the position of the word is on top)

SamO | 25 August 2013

TM (filed), R= registered

Tâm | 25 August 2013

A) Buyout:

Apple paid $60 Million for IPad name in China after 2 years in court. The current Tesla trademark owner wants only 1/2 of what Apple paid.

However, doing so would encourage more trolls and squatters.

B) Lawsuit:

1) lengthy delays if won.
2) if lost, the buyout price might even be much higher.

C) New name and logo:

The disadvantage is the international good name is ruined by trolls/squatters.

However, this might be the quickest way to get into China market and let the trolls and squatters hang dry.

katsu555 | 25 August 2013

There was a good discussion on this subject at Seeking Alpha titled 'Tesla Motors faces trademark hurdle in China (Aug.23,6:51 am)'

I support approach C) @Tam above.

1) Mxxx Motors
2) Palo Alto Motors as suggested in SA
3) MxxxmElon

only for China.

carlk | 25 August 2013

Musk Motors is a good choice. It's a bigger name now than Tesla anyway.

rchiang | 25 August 2013

They need to start selling the car in first Taiwan because of the delay in China.

Tâm | 25 August 2013

@rchiang:

Sounds good but can you blame Tesla when the mainland's millionaires number is 1,110,000

http://www.rediff.com/business/slide-show/slide-show-1-countries-with-th...

and Taiwan number is 246,000

http://www.huffingtonpost.ca/2012/06/12/countries-with-most-millionaires...

By comparison, US has about 5,231,000 millionaires.

There's no statistics showing whether millionaires would buy more than non-millionaires would.

NKYTA | 25 August 2013

Patent trolls and domain squatters are the absolute dregs of humanity. They put NNT to shame.
Create or Produce or do something.
A local Mom&Pop store, hell, work at McDonald's for all I care, but do something.

AlMc | 25 August 2013

I like 'Musk Motors'. Big 'M' instead of a 'T'.

Do NOT give in to trademark trolls in China. Just encourages more.

Bubba2000 | 25 August 2013

I think that Tesla could market the autos under any new name and logo. It is a new product, so what is the big deal? Whoever is interested will know the name. A lot of choices are possible.

The main thing is to hang the troll to dry. Do not pay. Apple's experience is that their courts are a waste of time. Even if Tesla won, the victory would take too much time and expense.

A lot of cars are marketed under different names:
1. Datsun and Nissan
2. Rabbit and Golf (VW)
3. Suzuki and Maruti

Brian H | 25 August 2013

The "T", BTW, is the depiction of an electric motor rotor.

2-Star | 26 August 2013

Since I don't believe in coincidences, I can't imagine that the Tesla "T" and Chinese "T" were created independently. Which came first, the Elon Musk design or the Chinese design? Somebody copied the design, but the question is which one. Does anyone have exact dates and documentation of the first public appearance of each design?

ChristianG | 26 August 2013

@fred, it dosn't matter who was first and I think noone believes the logo was not copied from tesla. But it only matters who registered it first in china. Imagin an african can proof that his grand grandfather had a coffeebrand named coca-cola way before the now famous coca-cola company excisted.. in your logic they would need to change the name.. justice is blind you know ;)

actually it's half as bad as getting millions in spilling a coffe while driving. Those people got money for being unbelievable stupid. this one may get money because he's an asshole using the laws against someone. Hey that's almost the definition of capitalism :)

Tiebreaker | 26 August 2013

This may lead to something:

http://www.inipsoon.com/Trademark/0711192151928885.html

"May I register my own name as a China trademark?
Normally, you may not register a proper name neither yours, nor anyone elses, as a trademark. An exception may be made if you can demonstrate that the name has become identified in the minds of the public with your specific wares or services."

Tesla is, as a matter of fact, a proper name. And there is an exception...

carlk | 26 August 2013

@Tam I agree with rchiang. Evne Taiwan has smaller numbers of millionaires but they are concentrated is a much smaller area. It should be much easier for Tesla to set up store and services. The same thing goes for Hong Kong other than Taiwanese drives on the right (yes it's a pun) side of the road.

TeslaTap.com | 26 August 2013

I have no idea about China law, but in the USA you actually have to use the trademark and sell a product using the trademark. It's fairly hard to cyber-squat a trademark. Also most people are not aware that you have to trademark in a fairly narrow category.

I likely could trademark a cola soft drink called "Tesla" even if Tesla Motors owns a trademark on "Tesla" for cars.

Now if the same holds for China, and the guy that got the Tesla logo makes a car and sells it, he's in a very solid position. My guess is China trademark law is a joke, and using the China courts to get what is right will be a lost cause and be quite expensive. I wish Tesla a lot of luck on this one!

One problem for Tesla is many the parts used in the car are marked with "Tesla". It really doesn't seem practical to rename all the parts in a car to deal with the trademark issue. Very messy.

Brian H | 27 August 2013

The coffee incident, btw, was one woman, who got 185° coffee instead of the usual (per store policy) 155°. Employees had been overheating it for their own convenience. So it produced 3rd degree scalds instead of first degree.

katsu555 | 27 August 2013

My suggestion to Tesla:

1) Donate a couple of Tesla Model S cars to the Central Communist Party for testing and sharing. It should be tested and appreciated among others by the top 3 people, whoever those might me.They hopefully appreciate the value of Tesla it brings to the Chinese society.

2) Wait a month or so, and if trademark things are not solved to Tesla's advantage and in line with the common sense in the free trade world,Tesla should make a strategic/tactical retreat from the Chinese market for now. The wise communist leaders will cordially invite Tesla to do business in China sooner than expected.

3) Focus the energy and attention released from China hassle for trademark and production spec modification on the US mainland battle field, i.e., accelerated deployment of the Supercharger network and many other high priority agenda.

This will result in the best value for Tesla shareholders.

AmpedRealtor | 27 August 2013

Those of you who think Tesla should change the name of the company to avoid paying or litigating with a trademark squatter in China have obviously never worked in high level marketing. You just don't do that. Changing the name of a car, okay. But the entire company? No way. At least not if you want to build a brand identity.

Here's what Tesla will do. They will continue with their China plans as Tesla Motors. The squatter would have to initiate legal action to stop Tesla. Tesla does not need to obtain this squatter's permission. Judging by what the squatter did with his trademark, I don't think Tesla will have a difficult time making their case.

Even if they have to pay $30M, that is far cheaper than the damage a name change would do to the Tesla brand. No way this is going to happen, and I will bet my P85 on it!

SamO | 27 August 2013

@AR

I bet my car that Elon will never pay a squatter 30M to return a trademark.

Cars have brand names that differ by geography.

What's in a name? that which we call a rose
By any other name would smell as sweet

Shakespeare (Romeo and Juliet ACT II, Scene II)

Eleanor | 28 August 2013

As yet another IP attorney with an opinion, I wonder where Tesla's IP attorneys were at the beginning. China has been allowing its citizens to register foreign companies' trademarks and use them for extortion since I began my practice decades ago. This isn't a new problem -- it was happening long before Apple ran into it and they should have been prepared and taken preemptive action.. By paying the extortion, Apple encouraged these thieves. Chinese law provides remedies for foreign trademark owners; Tesla should take advantage of these remedies and help discourage this piracy, but assistance by some sharp Chinese attorneys will be needed.

Brian H | 28 August 2013

katsu's ideas sound best, to me. Grab the nettle.

Eleanor | 28 August 2013

In fact, you can register a proper name -- there are numerous registrations for variations of Einstein and Edison, among others. Hebrew University owns worldwide rights to use Einstein as a trademark and vigorously enforces it. There is no reason that Tesla couldn't qualify for registration in the US or any other country. Under the Madrid Protocol, the mark could have been registered in most countries., including China, via a single application, however, Tesla's Madrid Protocol application wasn't filed until 2013. Too late -- the Chinese application covering vehicles, which was filed in 2009 (undoubtedly targeting Tesla Motors), blocked TM from filing in China.

I still think TM shouldn't reward thieves, however, it was short-sighted not to file for worldwide protection of the mark at the outset, especially considering the global scope of Musk's grand vision. A few thousand saved 5 or 6 years ago will now cost millions in legal fees, extortion payouts, or both. Maybe Elon's the next big project will be a time machine.

JAFIC | 29 August 2013

Dun be surprised ...there's are alot of counterfeits.

I assume we are all familar with Sony Playstation (2,3,4)

I have seen one "Soni Pleystation 2" which is a NES inside a actual Playstation 2 shell.

Bubba2000 | 29 August 2013

Litigation will take a long time in China and it will be expensive. Paying off is bad too. $30M is enough to deploy 200 superchargers without solar panels. I think Tesla would get a better return on such and network than paying off the thief.

Solution for China? Simple: Use a different name and logo. Car companies do it all the time. Toyota/Lexus. Tesla may have to avoid putting the "Tesla" name and logo on a few parts like windshield, etc but that is not too many.

The name could be anything like a variation of "Tesla" in Chinese, MuskMotors, etc. Same with the logo. Any good design firm can help with this.

In terms of marketing, this kind of change will not have an impact on sales. Sales are driven by the product, regardless of the packing because it is unique. Folks who buy Tesla cars are sophisticated.

Use the $30M saved to deploy 200 superchargers in China. File administrative complaint in China on the cheap. It is up to the Chinese government anyway, not the courts, to decide.

rchiang | 29 August 2013

Tam: China is delayed but any expansion helps making a foot print in Asia like Taiwan.

Tâm | 28 January 2014

VICTORY FINALLY!!!!!!!!!!!

This is historical!!!

Justice prevails!!!!!

Tesla has gotten its name back in China thanks to court's ruling with no payment to well established name suatter practice.

Congratulations to Tesla and all those who held back against blackmailing.

http://www.reuters.com/article/2014/01/24/us-tesla-china-idUSBREA0N0O720...

Cindy I II III | 28 January 2014

That is great news. Thank you, Tam, for sharing.

Brian H | 28 January 2014

Tam;
blackmail is threatening to reveal dark secrets. You're thinking of extortion, perhaps.