A devilishly difficult dilemma: Warner Bros and the AFL’s newest team
On Wednesday the 3rd of May, AFL CEO Gillon McLachlan and the AFL confirmed that Tasmania would finally receive their own AFL team. This followed years of lobbying from the State Government after they were overlooked for the last round of expansion in favour of growth corridors in Gold Coast and Western Sydney, respectively.
However, this watershed moment for the Apple Isle has been partly overshadowed by revelations that Warner Bros owns the trademark of the famous ‘Tasmanian Devil’. As the obvious nickname for the league’s newest side, this presents a range of legal issues for the AFL to determine before the team’s entry in 2028.
Approval for the registering of trademarks in Australia is governed by IP Australia. However, owning a trademark does not give the holder unfettered rights to the name and/or image. According to IP Australia, holders only have ‘exclusive rights to use their trademark for the goods and services listed in the application’. Goods and services are separated into classes – with Warner Bros presently holding rights to six different classes, outlined below:
Class 28: Games, toys and playthings, video game apparatus, gymnastic and sporting articles, decorations for Christmas trees
Class 9:. Apparatus and instruments for scientific or research purposes, information technology and audiovisual equipment, apparatus and devices for controlling use and distribution of electricity, optical apparatus and instruments, and safety equipment
Class 16: Paper, cardboard, printed matter such as books, pamphlets and brochures, and materials for printing and bookbinding, as well as writing materials and office requisites such as writing paper, pens and staplers
Class 25: Clothing including sportswear, scarves, footwear and headwear
Class 28: Games, toys and playthings, video game apparatus, gymnastic and sporting articles, decorations for Christmas trees
Class 41: Video and television films/shows, education, providing of training, entertainment, sporting and cultural activities
Class 14: Jewellery and imitation jewellery, precious stones, watches, clocks and stopwatches
The wide-ranging nature of classes Warner Bros has exclusive rights to could have implications for the AFL. While their activities are not ostensibly akin to the AFL’s, many of their commercial goals have striking similarities.
For instance, Class 25’s provision concerning ‘clothing, including sportswear’ creates obvious issues regarding merchandise sales. It seems extremely likely that football jumpers would be included in this class, while beanies, scarves and hats – a staple for AFL supporters braving winter football conditions – are explicitly provided to be the exclusive domain of Warner Bros. An AFL club being unable to sell merchandise with their name and logo would almost certainly be a dealbreaker for the team being known as the ‘Devils’.
There is also an argument that the broadcasting of games and related programming could be captured by Class 41, specifically the provision regarding ‘video and television films/shows’. Whether live matches fall into the category of ‘shows’ or ‘films’ is less clear, but it would appear that much of the football media programming – productions such as AFL 360 and On The Couch – would be caught by this section. Given the significant outlay paid by NewsCorp for media broadcast rights, it is unlikely that they would accept being unable to display the logo/footage from a team within the AFL. This is particularly so as introducing a new team generates significant media interest, and content covering it would likely be in high demand.
Given the AFL’s struggles to register the trademarks for ‘Tasmanian Devils’ and ‘Tassie Devils’ – they have already received a provisional refusal twice – the most likely and favourable outcome involves brokering a deal with Warner Bros. This view is shared by myriad experts in trademark and copyright law and AFL CEO Gillian McLachlan – who is maintaining faith that the issues ‘can broadly be worked through.’
A compromise could involve ‘co-branding’ or providing royalties to Warner Bros. When assessed in isolation, this solution could adequately resolve the dispute. However, the AFL’s ownership of Marvel Stadium and their stadium naming rights agreement would almost certainly see any co-branding agreement challenged by Marvel – as they are fierce competitors in the entertainment sphere. Per Mark Zadow – managing principal of Sharrock Pitman Legal - another possibility could involve Warner Bros ‘licensing’ the trademarked name to the AFL. This is likely to eventuate should Warner Bros determine that there is more value to be gained by collecting royalties from the name’s increased presence in the public sphere. However, should they conclude that they would be negatively affected by the AFL using the name, they may choose to reserve rights to their trademark and hold faith that IP Australia again rejects the AFL’s application.
If you are interested in learning more, please visit the following links:
https://www.theage.com.au/sport/afl/why-warner-bros-trademark-might-not-be-a-devil-of-an-issue-for-afl-20230503-p5d59g.html
https://www.ipaustralia.gov.au/trade-marks/what-are-trade-marks/classes-of-goods-and-services
https://www.abc.net.au/news/2023-05-07/why-the-afl-is-fighting-for-tassie-to-be-the-devils/102310490
https://www.theguardian.com/sport/2023/may/03/afl-tasmanian-devil-tassie-devils-team-logo-trademark-clash-warner-bros-looney-tunes-character#:~:text=The%20AFL%20has%20already%20registered,said%20they%20could%20be%20navigated.