The Next Wave Festival in Melbourne was working with Sydney curator, Tania Doropoulos to present a show of 1 Perth-based and 5 Sydney artists to be part the Commonwealth Games cultural program in 2006. The artists wanted the show to be called "Sports Illustrated" a catchy title in the Games context. For those of you who are so enmeshed in the art world, “Sports Illustrated” is the name of a very well known American publication:
Sports Illustrated is an American sports magazine owned by media conglomerate Time Warner. It has over 3 million subscribers and is read by 23 million adults each week, including over 18 million men, 19% of the adult males in the United States. It was the first magazine with circulation over one million to win the National Magazine Award for General Excellence twice.1
As Fiona Maxwell at Next Wave recalls, “The name certainly raised the eyebrows of the people at the Commonwealth Games as well as the lawyer on my board.” Some investigations were conducted and it was ascertained that trade marks for Sports Illustrated had been registered in Australia in 3 classes since 2001. The classes were – 1) sports magazines; 2) videos and films relating to sport; and entertainment services in the form of radio programmes, television programmes and programmes made available over a global computer network; production of video tapes and video discs; arranging and conducting sporting events; publication of magazines.
It is questionable whether holding an art exhibition would fall within the categories protected by the trade mark, but the other issue that arises is whether the artists could be seen to be trading on the reputation of Sports Illustrated which might have resulted in the magazine suing the artists for passing off.
The curator could either contact Sports Illustrated in New York to get the relevant permissions to use the name for the exhibition or think about a new name for the show. It was suggested to the festival organisers and the curator that it would be very difficult to get a response from the New York office of Sports Illustrated so the artists came up with a new name for the show Game On.
In this case study the artists and curator were ahead of the game and got the relevant legal advice in time to take preventative action. Whilst it might have been annoying to have to change the name of the exhibition this was a much better outcome than having legal action threatened or taken for using the name Sports Illustrated without permission.
Go to IP Australia’s website http://www.ipaustralia.gov.au for information on registering a trade mark (or to make sure you are not using someone else’s).