It is hard to imagine there is anyone left in the world who is not at least tenuously aware of Harry Potter and/or its author J.K. Rowling. Rowling introduced us to the Wizarding World which incorporated a multi-faceted fictional reality of magic wands, spells, mythical creatures and even sports. The main sport in question being Quidditch. A sport where players ride around on brooms and attempt to score points by passing balls through hoops, avoiding projectiles strategically launched at other players and one special player, the seeker, looking for a golden ball known as the snitch.
Interest in the Wizarding World has overflowed into the Muggle World such that Quidditch has been made into a real sport. According to the International Quidditch Association’s (IQA) website, the inaugural match was played in 2005 and has expanded to thousands of players on 600 teams across over 40 countries.[1] Needless to say, the excitement around the real life Quidditch is in large part due to the excitement generated by the Harry Potter books and movies.
The International Quidditch Association along with a number of respective national Quidditch organisations have made the decision to rebrand from ‘QUIDDITCH’ to ‘QUADBALL’. Interestingly, the other names which were under consideration included ‘Quadraball’, ‘Quicker’, ‘Quickball’, ‘Quidstrike’ and ‘Quidball’ all of which start with the distinctive ‘Q’.[2] The two main reasons behind this decision being cited as:
1. Trademark an original name owned by the organization
2. Distance the organization(s) from the Author
Rowling has come under scrutiny for some public comments which have been interpreted to speak against the inclusive nature that the original Quidditch associations wish to portray and maintain.
The Quidditch trade marks are owned by Warner Bros. Entertainment Inc. (Warner Bros.). While the actual licensing costs have not been revealed, the IQA noted that Warner Bros. placed limitations on the expansion of the sport. In particular, it appears that Warner Bros. has limited the ability for the IQA and other national bodies to seek sponsorships and broadcasting opportunities.
Warner Bros. have stated that they “enjoyed individual expressions of that fandom” but that it also had “the right to defend against unauthorized attempts to commercialise the intellectual property contained in our stories.” In Australia, a registered trade mark provides the owner with the exclusive right to use a trade mark and to authorise other persons to use the trade mark.[3] Other persons may infringe a trade mark where they use a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to the goods or services in respect of which the trade mark is registered.[4]
While from a very brief look at any of the potential marks and the existing ‘Quidditch’ mark it seems difficult that Warner Bros. would be successful in an action for trade mark infringement, there may be one or more other causes of action available. Nevertheless, this case should put licensors on notice that even though a brand or trade mark may seem necessary or infallible, it does not guarantee that a licensee will want to use a mark indefinitely. Accordingly, it is important to keep the licensing fees and limitations in check with reality or you may find yourself with a trade mark and no one to license it to.
Subject to the splitting of existing Quidditch organisations and associations, it seems unlikely that another group or organisation will come along to start a sport under the ‘Quidditch’ trade mark. Australian trade mark law renders a trade mark open to removal for non-use if the mark has not been used in Australia or used in good faith for a period of 3 years.[5] Accordingly, in three years if no use of the mark in good faith has occurred, a third party may apply to remove the registration for non-use. However, even if removed, it would be a daunting task to try and defend yourself against an action for passing off against Warner Bros.
If successful, the change from Quidditch to Quadball may be a signal to licensees of high profile trade marks that there is another way to resist unjustifiably high trade mark licensing fees and/or being associated with an undesirable party or parties. However, it makes one wonder whether, without the Harry Potter brand, a sport such as Quidditch would have even taken off in the first place and whether that sport can actually ever be ‘distanced’ from the Wizarding World.
If you would like assistance with registering your trade mark, please contact our trade mark attorneys on 07 3369 2226 or email mail@mbip.com.au
[1] International Qudditch Association Home Page https://iqasport.org/.
[2] Mary Helen Sprecher, ‘Ditch Quidditch: The Sport Weighs Options for Name Change’ Sports Destination Management, retrieved from <https://www.sportsdestinations.com/sports/team-sports/ditch-quidditch-sport-weighs-options-name-change-22001#:~:text=Information%20on%20the%20website%20notes,to%20sponsorship%20and%20broadcast%20opportunities.%E2%80%9D&text=This%20was%20not%20a%20decision,according%20to%20the%20website%20information> 29 January 2022.
[3] Trade Marks Act 1995 (Cth) s 20(1).
[4] Ibid s 120(1).
[5] Ibid s 92(4)(b).