Tasmanian AFL Team Name Dilemma

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Tasmanian AFL Team ‘Tassie Devils’ Trade Mark Considerations

09 MAY 2023 | by Tasman Wylie

With the recent news that the AFL has granted a new license for a team to be established in Tasmania, the discussion has naturally turned to what the team will be called. The obvious choice to many people is the ‘Tasmanian Devils’ (or a variation thereof).

But there may be a problem with the obvious choice - the popular Loony Tunes character the ‘Tasmanian Devil’ is owned by Warner Brothers Studios.

1. Warner Brother’s (WB) has at least 6 registered trade marks incorporating the Tasmanian Devil, all along similar lines as:

2. A trade mark is a sign (could be logo, name, slogan, colour, shape, movement etc.) which is used to distinguish goods or services. In other words, a trade mark is a badge of origin and would include the name of a team or a club. This is distinct from copyright which protects the expression of an idea, for instance the visual appearance of the Looney Tunes character and how it is drawn and animated. Both will need to be considered by the AFL.

3. At law, the AFL cannot use a trade mark (or register one themselves for that matter) which is either substantially identical or deceptively similar in relation to the same or closely related goods or services¹ as an existing trade mark. A couple of points here:

• Trade Mark: Warner Brothers does not use their trade mark for the purpose of an AFL team, however there is likely to be overlap in closely related goods/services in entertainment more broadly and affiliated goods/services like merchandising;
• Furthermore, the WB will likely argue that their trade mark is well-known and therefore afforded a broader protection outside of the normal goods sold using that brand²; and
• The WB’s trade mark incorporates the use of the devil character not just the name, so there is a genuine question that if the AFL created a brand and logo, still using ‘Tasmanian Devil’, but with a number of sufficiently different elements whether they may not infringe.
• Copyright: WB will have an extensive copyright library protecting the look of various Tasmanian Devil character designs. Any AFL logo, mascot etc. that might incorporate a devil character would need to be very careful that it is not substantially similar³.
• Australian Consumer Law: The final likely issue that might arise is an AFL team utilising that name could potentially be found to mislead or deceive consumers or imply an affiliation or endorsement by the WB of the AFL contrary to sections 18(1) and 29 of Schedule 2 of the Competition and Consumer Act 2010 (Cth) ‘The Australian Consumer Law’.

So what could the AFL do?

6. A common outcome would be for the parties to meet and discuss terms for WB to consent to the AFL to naming the team the Tasmanian Devils, which could include:

• WB having sign-off on designs and marketing; and
• a financial contribution (or even licence) payable by the AFL to WB.
  An interesting quirk to such a resolution would be the AFL’s existing deal with Marvel and their owner Disney (for naming rights to Marvel Stadium in Melbourne), a direct competitor of WB.

7. The AFL could carefully design their Tasmanian team logo and brand to ensure that it bears no similarity with the popular character. But this wouldn’t necessarily avoid the issues around the name overlap and could lead to expensive litigation.

8. A left field and unlikely outcome is whether the Federal Government steps in and legislates an outcome allowing the AFL to proceed. The difficulty with this is that it may run contrary to Australia’s international treaty obligations⁴.

9. Finally, they might have to look at a different animal or name, but the Tasmanian Wombats may not have quite the same ring to it.

For more information regarding trade marks, please contact Tasman Wylie.

 

1. Trade marks act 1995 (cth)
2. Ibid s60.
3. s14 of the Copyright Act 1968 (cth), noting that substantial is not a quantitative test but rather qualitative. Erven a small reproduction can amount to infringement. 
4. In particular note: Paris Convention for the Protection of Intellectual Property and the1994 World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS)