On Wednesday, the AFL finally made good on their word. The league awarded the licence for an 19th AFL team to Tasmania — finally giving representation for the footy-mad state at the top level.
The announcement set out a lot of the details of the new side.
It will enter the league in 2028, and play out of three cities — Penguin in the North West, Launceston in the North and Hobart in the South.
The new Hobart Stadium will be the key to the new team’s entry, a 23,000 seat venue with a fixed roof at Macquarie Point.
But one thing was left absent — their identity. Their name, their colours.
“The Devils seem to make sense to me. And I know there’s been debate around the legality, and copyright issues, they broadly can be worked through,” AFL CEO Gillon McLachlan said.
“I know there will be broad-minded people at Warner Brothers but that will be for others to decide.”
Behind the scenes the AFL has been locked in a more than three-year battle for the name “Tasmania Devils”, going back to 2019.
Standing in their way is one of the world’s biggest entertainment companies, a more mysterious entity, and trademark law.
What is in a trademark?
All legal stuff can get complex fast.
But at their heart, trademarks are pretty simple. A trademark protects businesses from people trying to rip them off, and helps the public ensure that the goods and services they buy are genuine products.
According to IP Australia, the governing body for trade marks in Australia, “a trade mark legally protects your brand and helps customers distinguish your products or services in the market. Trademarks can be used to protect a logo, phrase, word, letter, colour, sound, smell, picture, movement, aspect of packaging or any combination of these.”
The AFL currently owns 305 trademarks. They have applied for, and previously held, more than 1200 in the past, and regularly apply for more including the recent ‘Gather Round’.
The AFL owns trademarks for all clubs and logos, including, it should be noted, those relating to Collingwood’s mascot and guernsey.
They also own those relating to Port Adelaide — an issue that’s often been under dispute.
From a trademark perspective, there’s no conflict there because it’s all the same owner.
Even the ABC logo is trademarked.
Not everything can be trademarked — such as generic or offensive terms. Trademarks last for 10 years before renewal, but renewals can occur indefinitely.
Daniel Kiley, a partner at HWL Ebsworth Lawyers in Adelaide and the former chair of the Intellectual Property Society of Australia and New Zealand South Australian committee, says that a trademark isn’t complete protection either.
“It only protects businesses operating in those areas listed.” Kiley says.
“A trademark applicant needs to nominate the goods and services to be covered by their application, with those products categorised into standardised classes.”
Trademarks also can’t be speculative.
“You can’t trademark broad areas to cash in — you have to use it in relation to those products, or risk being challenged and losing it,” Kiley adds.
For example, the ABC name and logo can be used by the ABC in not only audiovisual products, but also in the production of books, headgear, buttons and greeting cards.
But the ABC can’t apply for its trademark in relation to fishing rods because it doesn’t make them, and doesn’t intend to.
The ABC’s trademark registrations give it the exclusive right to use those marks in relation to the goods and services covered by the registrations, and to prevent other traders from using any substantially identical or deceptively similar marks in relation to those kinds of products.
Or as Kiley puts it: “If another company tried to sell a product with a version of the ABC logo on it, they will be infringing its trademark registrations.”
For a sporting world increasingly obsessed with commercialisation and merchandise, that runs into a pretty big, rabbit shaped problem.
The devil in the details
In 1954, in the search for new foils for Bugs Bunny, Looney Tunes added a new character in the short “Devil May Hare”.
Almost no-one watching would have conceived that it could have an impact on professional Australian Football 70 years later.
The new character was the Tasmanian Devil, or Taz for short.
In 1984, they filed for their first trademark with “Tasmanian Devil”.
By 2000, they were granted five more, all with the image of Taz.
Those six trademark applications cover a vast array of products.
It turns out you can buy Taz on almost anything. That includes a lot of the things the AFL wants to sell with their Tasmanian Devil logo, and presumably, mascot character.
The AFL first filed the trademark applications for the names “Tasmania Devils”, “Tassie Devils” and a “Tasmania Devils” logo in May 2019.
While sporting teams and cartoon characters seem to be in different fields, they share similar merchandising opportunities.
Since then, there has been a series of setbacks and stumbles with IP Australia.
The “TASMANIA DEVILS” word mark application was first examined by IP Australia in November 2019, and was initially provisionally refused.
After a series of extensions of time, and a six month deferral to provide the AFL with time to engage in “gathering evidence for honest concurrent use, prior use or other circumstances”, the AFL appears to have filed a substantive response with IP Australia in February this year.
That response proved unsuccessful, with IP Australia responding to the AFL in March to maintain its provisional refusal of the application.
Additional extensions have given the AFL until July to provide further response, stretching the application to almost four years after it was initially filed. This is not the usual pathway for a trademark.
The AFL’s two other applications have followed similar patterns, and also remain pending.
“IP Australia would be assessing the marks for two main issues,” Kiley says.
“Are they too similar to any existing trade marks registered in similar fields? And, in the case of the word marks, are the plain words “TASMANIA DEVILS” and “TASSIE DEVILS” too generic to be registered for the exclusive use of one party.”
Warner Brothers aren’t the only business with a trademark on the term Tasmanian Devil.
Notice how we mentioned fishing rods before? There’s already a company — JM Gillies Agencies Pty Ltd — with the Tasmania Devils trademark on it for fishing purposes, which Warner Brothers carefully have carved out from their own claims.
There’s also several foodstuff producers with Tasmanian Devil trademarks in their own narrow field, such as cherries or wine.
Finally, there’s also a football club — the Tasmanian Football Club Ltd — with some rights to the name. They have the right to sell football jumpers, socks, shorts, tracksuits, polo tops, jackets, caps, scarves, and beanies promoting a football club.
The club is believed to be the one formed to compete in the VFL and underage competition, and are registered to North Hobart Oval.
Interestingly, the Australian Company Number tied to the club and its trademark registration has lapsed.
The Tasmania Devils underage team has been participating in the AFL’s underage development competition since 2019, seemingly without drawing the ire of Warner Brothers or any other trademark owners, but the far more commercial nature of a professional club might heighten the stakes.
At the end of the day, the real reason the AFL is fighting so hard is because they’ve been burned before.
Strauss gives Freo the heave ho
The Fremantle Football Club was established in 1994 and began playing in 1995.
Famously, their nickname is the Dockers, a fact known to all footy fans across the country.
But a careful scan of Freo merchandise from before 2010 will show something missing. From 1997 to 2010, under the wharfie clutching an anchor, it said “Fremantle Football Club”.
Clothing from that era? Also Fremantle FC.
After the initial honeymoon period of the Fremantle Dockers, it turned out that the manufacturer of Dockers jeans, Levi Strauss, beat the club to trademark registration.
As a result the (Fremantle) Dockers had to refrain from using the name lest it infringe on the jeans company’s own anchor-centric Docker brand.
Eventually, around 2010, when Fremantle rebranded to the modern chevron-based guernsey and switched to a less anchor-forward logo design, the name Dockers returned to official merch.
Fremantle decided the name was important enough to negotiate, and struck a deal with Levi Strauss reportedly worth about $1000 a year in royalties.
The low stakes and amicable resolution involved visual brand separation and the small payment of royalties in exchange for being allowed to officially use the Dockers name once more.
It points to the sort of terms that are likely already under discussion for Tasmania’s prospective brand.
The last team to join the AFL, the GWS Giants, were also subject to a trademark stoush.
The AFL, on behalf of its newest club, put an application in to IP Australia that another sporting team — MLB’s San Francisco Giants — weren’t using their trademark and that it should be removed.
The MLB, on behalf of the San Francisco side, defended their trademark.
Eventually, the AFL withdrew and both sides came to an agreement of sorts.
The IP Australia’s trademark register also suggests other names that the AFL unsuccessfully tried to register for its most recent expansion clubs: the Stingrays, Rays, Marlins, Ironmen and Guards for the Gold Coast, and the Rangers, Stallions, Pride and Wolves for Greater Western Sydney.
The sole application for Tasmania indicates that they have focused early and entirely on the name Devils.
The team that doesn’t exist
The AFL is of course also a fierce protector of its own trademarks.
The Queensland Football Club, the fastest growing retro-styled sports-based casual wear company based on a team that doesn’t exist, began as a reaction to the AFL protecting its trademarks.
Founder Ken Sakata, a Melbourne doctor and football writer, started posting jokes on social media about trying to be rookie listed by the Suns in 2020.
He also produced some bootleg merchandise featuring himself as a Suns player, as their star ‘tall small forward’.
Sakata was almost immediately caught up in a wave of cease and desist notices about trademark infringement.
But according to Sakata it was the best thing that could have happened to him.
“After the cease-and-desist I was thinking what would be the funniest way to respond,” Sakata says.
“I was like ‘I don’t think I could really run a business with shirts with my face on them’. So honestly it was amazing. It gave me a company.”
The result was the pivot to the ‘Queensland Football Club’.
Ironically, success soon followed the brand change. The Queensland Football Club has been profiled in media outlets across the country, and has even entered the international fashion market.
“Now I sell thousands of items both in Australia and internationally. A significant part of my customer base has never heard of Australian rules football. Now apparently I’m some sort of stalwart of Australian manufacturing. The whole thing is bizarre,” Sakata says.
The Queensland Football Club has become so successful that Sakata is having to consider something bold.
“Now I’m in an ironic position where I have to protect my own intellectual property,” he says.
The end game
It’s likely that a compromise of some form will be on the table here. If the AFL and Tasmanian footy fans really want the name, there is the likelihood that they will be able to secure it somehow.
A potential solution might even see a co-branding solution, or royalties paid to Warner Brothers for the use of Taz.
This solution in itself has another complication — the sponsor for the AFL’s biggest tangible asset, Docklands Stadium, is Disney, and operates under the name of Marvel Stadium.
Warner Brothers produces movies with DC, arguably the biggest direct rival of Disney and Marvel in the marketplace.
At the end of the day, regardless of name Tasmanians are set to support whatever team is playing out of the state.
As long as they are wearing myrtle, magenta and primrose that is.
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