The Australian Football League’s worst-kept secret is expected to be revealed next week with the launch of its new franchise’s name. Everyone expects that name to be TASMANIA DEVILS.
The yet-to-be-named new team was announced last May. If and when the team ever runs onto the field, it will be the culmination of a decades-long dream for the Tasmanian community.
Since the soft launch, there’s been a modest level of speculation in the mainstream media about whether the naturally fitting name is available. What about this scary guy?
… And more to the point, these scary guys?
How much trade mark law leverage does Warner Bros actually have to disrupt the AFL’s plans, and the Tasmanian community’s dreams? We think the answer is that it shouldn’t have any.
Warner Bros’ trade mark registrations
Warner Bros owns a collection of Australian trade mark registrations for lock-ups comprising the Tasmanian Devil character and name – they look like this:
These aren’t very good trade mark registrations: they don’t give Warner Bros a monopoly in the image or the name as separate elements. The full lock-up is taken as a whole. So that puts a dint in Warner Bros’ leverage. But for the sake of this article, let’s just say that they’ve got the name stitched up, including for clothing – and particularly for fan merch.
Badge of Origin vs Badge of Allegiance
To infringe a registered trade mark, you have to use it as a badge of trade origin. That means that you have to use it in a way that tells ordinary consumers where the product came from or who made it. When you emblazon a piece of clothing with a footy team’s name, are you using that name as a badge of trade origin?
Take these Essendon Bombers scarves for example. My Dad bought the one on the left for me in murky bowels of the long-since-replaced Olympic Stand at the MCG in 1987. It remains one of my most prized possessions.
Just to bring the uninitiated into the circle, this style of scarf is a classic form of Aussie Rules fan merch. It’s a chilly Melbourne cultural icon. And just to prove how enduring the style (if you can call it that) has been, the one on the right is available for purchase right now for just $28.95.
Coming back to chilly trade mark law, does the word BOMBERS tell anyone who actually made the scarf? No.
BOMBERS is not a badge of trade origin. Instead, it’s a badge of allegiance. The word is there (with the team colours) so that the wearer can tell the world who they barrack for. It’s not there to tell anyone who made the scarf. If TASMANIA DEVILS is a badge of allegiance only, then the AFL won’t infringe Warner Bros’ trade mark registrations. There’s your toothless devil.
The position in the UK
But just like a game of footy in which the better team loses, sometimes these things can go the other way. This exact ‘badge of allegiance’ issue played out at some length over 20 years ago in the UK and EU courts in a case about bootleg Arsenal Football Club merch. Initially the bootleggers won: the court found that the Arsenal indicia was a badge of allegiance but not a badge of origin.
The decision was eventually reversed and went the way of the club. This happened after a series of appeals over the course of four years. The eventual result was that while the ARSENAL name was a badge of allegiance, it was also a badge of trade origin. The court found that the ARSENAL name on the bootleg merch might confuse consumers about who made the merch. Remember, when the court considers the “ordinary consumer”, it’s thinking about the fan-on-the-street: not a die-hard know-it-all.
And the crowd boooooos
Even small children know the difference between authorised and bootleg sporting merch.
That leaves us with the idea that trade mark registrations for football team names can be enforced for badge of allegiance football merch. This registered trade mark for BOMBERS would probably be infringed by my scarf if it was a fake, even though the word is there as a badge of allegiance.
What if the registered trade mark relates to something completely different to football, like an adorably brutish cartoon character? Is anyone seriously going to think that this handsome fellow’s hoodie was produced by Warner Bros?
As an aside, the lock up on this hoodie is the subject of an Australian trade mark application that the AFL has been pursuing (so far without success) since 2019.
But forget 2019: the AFL has been tip-toeing around this badge of allegiance issue for at least 30 years. In 1994, it launched another new franchise in Western Australia called the Fremantle Dockers. Don’t worry if you haven’t heard of them: in three full decades of competition, they remain Australia’s (nay, the world’s) most unremarkable sporting team.
Here’s an early iteration of their scarf (currently listed on eBay for $64.95 if you don’t mind, umpire):
FREO? But where is DOCKERS??
Here’s where. This is an Australian trade mark registration for DOCKERS that dates back to 1991. It covers clothing in class 25. It’s owned by none other than Levi Strauss & Co.
If you click on that link, you’ll see that the AFL had a red hot go at the registration in 1997. That is, it filed a non-use action and sought to have it cancelled. Straight up the guts.
The AFL withdrew the removal action in 2000 and, around the same time, started using the word DOCKERS on the badge of its scarves as pictured below, but not as the main event. Evidently, some sort of compromise was reached after everyone narrowly survived the Y2K bug.
What if Levi’s had sued the AFL for infringement of its DOCKERS registration? Could it have actually stopped the sale of scarves bearing the word DOCKERS in the more traditional and more prominent way? Our position is that it shouldn’t have been able to do that. DOCKERS is just a badge of allegiance, and no-one in their right mind would think that their non-denim Freo Dockers scarf is a Levi’s product.
Now let’s look at this in reverse: is this the sort of debate that the AFL would be interested in having, let alone winning in contested litigation? As an AFL player would say when choosing their words carefully: “obviously yeah nah”. The thing is: if the AFL toppled Levi’s and/or Warner Bros with a badge of allegiance argument, where would that leave its own extensive trade mark portfolio for all of its other team names? Gary Ablett Sr forbid that GEELONG CATS isn’t an enforceable trade mark!
The most likely scenario
The AFL has no doubt done a deal with Warner Bros. Its former CEO was even quoted in the Australian press as saying that “There is leasing, renting, appropriation of trademark stuff all of the time … That can broadly be worked through.”
Wow! If only it was that easy for everyone. And we’re not sure that the AFL really wants to be in the trade mark appropriation space. But maybe the crazy cartoon character will spin its way around the new stadium as a mascot for the new team. The people of Hobart and Launceston would love that sort of Americanisation just as much as some of them love the idea of selling their financial futures and some prime riverfront public land to accommodate the said stadium.
Now just to be clear, we at By George love football, cartoons and native Tasmanian wildlife. We even have one of the latter on staff – shhh, see if you can spot him.
Carn the Devils!
