This article is more than 1 year old

This article is more than 1 year old

A leading copyright lawyer says the Australian federal government could step in to settle the current dispute over who can reproduce the Aboriginal flag, by buying out all the rights to license the image.

Former CEO of the Australian Copyright Council Fiona Phillips says the legal status of the Aboriginal flag is a “unique situation” that requires a public policy solution.

The flag was designed by Luritja artist Harold Thomas, and is said to have made its debut at a National Aboriginal Day rally in Adelaide in 1971. It then began appearing at marches and protests on the east coast, most famously at the Tent Embassy in Canberra in 1972. While it is covered by the same protections as other official Australian flags, the Aboriginal flag image can only be reproduced with Thomas’s permission.

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“The Aboriginal flag is not just an artistic work, it’s a national symbol and is particularly important to Indigenous Australians,” said Phillips, who has also worked at the Australian Competition and Consumer Commission and as a government adviser on copyright law.

“The government could seek to compulsorily acquire copyright from Mr Thomas on public policy grounds. They could buy him out for the rights.”

Thomas was widely credited with the design but did not seek copyright until the 1990s. In 1997, the federal court recognised him as the author of the image, meaning it is protected under copyright law and can only be reproduced with his permission.

In October 2018, Thomas granted WAM Clothing worldwide exclusive rights to use the flag on clothing. Late last week, it issued a series of “cease and desist” notices to several companies, including the AFL, which uses the flag on jerseys for the Indigenous round, and an Aboriginal social enterprise which puts the profits of its clothing sales back into Aboriginal community health programs.

A spokesperson for WAM Clothing said it had been “actively inviting any organisations, manufacturers and sellers who wish to use the Aboriginal flag on clothing to contact us and discuss their options”.

“Until WAM Clothing took on the licence Harold was not receiving recognition from the majority of parties, both here and overseas, who were producing a huge amount of items of clothing bearing the Aboriginal flag,” the spokesperson said.

WAM Clothing also released a statement it attributed to Thomas:

“As it is my common law right and Aboriginal heritage right, as with many other Aboriginals, I can choose who I like to have a licence agreement to manufacture goods which have the Aboriginal flag on it.

“It’s taken many years to find the appropriate Australian company that respects and honours the Aboriginal flag meaning and copyright and that is WAM Clothing.

“The Aboriginal flag is doing its job as it was intended to do, to bring unity and pride to all Aboriginals. At times we get the few who snigger and are disenchanted. I can’t satisfy all black people who wish to break up the Aboriginal unification.”

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Spark Health, the Aboriginal-owned and run social enterprise that produces clothing merchandise with the tagline Clothing the Gap, says they’re angry that it’s “a white business that’s got full licensing agreement and it’s a white business that’s profiting off it.”

“We make our merchandise for the mob … we make it for them so they can celebrate their identity and wear their culture with pride,” Sianna Catullo, from the Clothing the Gap project, said. “We don’t make our clothes to profit.”

The case is unusual, according to Phillips.

“When you’re dealing with a national symbol like that there are broader issues at play,” she said.

“Usually a flag is a work that is in the public domain [free to use] and subject to protocols around its use or, if it’s a national symbol, it’s created or commissioned by the government and, therefore, copyright is owned by the government.

“It goes beyond just Mr Thomas, because the copyright in the flag will last for his life plus another 70 years. We’re potentially looking at another 100 years of this going on before it enters the public domain.”

She said the onus was on the federal government to find a solution.

A spokesperson for WAM Clothing said it welcomed anyone, “including the government, to contact us with respect to the use of the Aboriginal flag under our licence.”

In 2017, Harold Thomas announced he had granted two licences for the design: one to the flag-making company Carroll and Richardson, and the other to Birubi Art Pty Ltd.

Birubi Art – which is under administration – is a wholesaler of souvenir and Australiana products based in Kippa-Ring in Queensland, the same location as WAM Clothing. Birubi was owned by Ben Wooster, who is also part-owner of WAM Clothing.

In October 2018, the federal court found that Birubi Art had breached consumer law by selling thousands of items labelled as Aboriginal art but which were made in Indonesia.

Birubi Art “made false or misleading representations that products it sold were made in Australia and hand-painted by Australian Aboriginal persons, in breach of the Australian consumer law”, according to the Australian Competition and Consumer Commission (ACCC).

From July 2015 to November 2017, the ACCC said, Birubi sold more than 18,000 boomerangs, bullroarers, didgeridoos and message stones to retail outlets around Australia, featuring designs “associated with Australian Aboriginal art” and words such as “Aboriginal Art”, “genuine” and “Australia”.

“It was unacceptable that Birubi sold Indonesian-made products as having being hand-painted by Australian Aboriginal persons when that was not the case,” ACCC commissioner Sarah Court said at the time.

A hearing on penalties and other orders sought against Birubi by the ACCC will be held by the federal court on Friday.