The Australian government is considering whether to compulsorily acquire the rights to use the Aboriginal flag on public policy grounds. Kate O'Rourke of Mewburn Ellis takes a deep dive into the debate.
Since 1978, the rainbow flag has been a global emblem of the LGBTQ community and in 2015 the New York Museum of Modern Art identified it as an internationally recognised symbol, along with other icons such as the international symbol for recycling.
Since 1971, the Aboriginal flag has been both a symbol that has united indigenous people in Australia and a national symbol of the country. It was recognised as an official flag of Australia by proclamation by the governor general in 1995 and under the Flags Act 1953 (Cth) in 2008. Therefore, it has the same protections as other official Australian flags.
Free use versus licence to use
What differentiates these two flags is the fact that the designer of the rainbow flag, Gilbert Baker, promoted the free use of his flag and never sought to enforce his copyright, while the designer of the Aboriginal flag, Harold Thomas, has granted licences to Flagworld Pty Ltd for use of the design in the manufacture and marketing of the flag and, more recently, to WAM Clothing for use of the design on articles of clothing. As a licensee, WAM Clothing is now sending cease and desist letters to third parties, including the Australian Football League – which has used the flag design on football jerseys in its indigenous rounds – and Spark Health – an Aboriginal-owned social enterprise company, which was selling merchandise bearing the flag.
The cease and desist letter states: “Any use of the Aboriginal Flag on clothing from 4 May 2019 without our consent or agreement is prohibited… If you are currently manufacturing the Aboriginal Flag on clothing, you are required to contact us immediately.”
The fact that the flag is subject to private IP rights has come as a surprise to many, but following recognition by the Federal Court of Australia in 1997 that Thomas owns the copyright in the flag as an artwork, the design will not enter the public domain until 70 years after his death.
Until then, the flag may be reproduced for commercial purposes only with the permission of Thomas or his licensees. Thomas does allow non-commercial operations that give healthcare, educational, legal or other assistance to Aboriginal people to use images of the flag for free. However, enforcing copyright in such a powerful symbol against people seeking to express their cultural identity has given rise to confusion and some resentment.
The current dispute is not the first time that ownership of the copyright in the Aboriginal flag has been used to prevent unauthorised use of the flag. In 2010 action was successfully taken to prevent Google from using a version of the flag in an Australia Day Google logo.
Many flags and national symbols are commissioned or created for or on behalf of governments. In the United States, government works cannot be protected by copyright under 17 USC Section 105; therefore, the national flag is in the public domain. However, there are restrictions on the use of the flag. The US Flag Code establishes advisory rules for the display and care of the national flag and specifically states that “no disrespect should be shown to the flag” (4 USC Section 8).
Further, the term of copyright for older flags may have expired, even if they were not created for or on behalf of governments. While many flags and other state emblems are protected under Article 6ter of the Paris Convention, an application must be submitted by a state party to the convention or an international inter-governmental organisation.
It seems unlikely that the Australian government could do this without owning the copyright in the Aboriginal flag and Baker took action to block the registration of the rainbow flag as a US trademark by an advocacy organisation in order to prevent any restrictions from being imposed on the use of the flag.
Even without protection under Article 6ter, any application to register the rainbow flag or the Aboriginal flag as an EU or UK trademark would likely be rejected as, under Article 7(1)(i) of the EUIPO guidelines, registration can be denied for emblems that have not been communicated in accordance with Article 6ter(3)(a) of the Paris Convention when they “are of particular public interest”. Therefore, an application to register either flag could be opposed to prevent any possible misleading association.
Public policy grounds
The question that has now arisen in relation to the Aboriginal flag is whether the Australian government could or should compulsorily acquire the rights to use the flag on public policy grounds in order to protect the interests of legitimate businesses which may wish to use the flag to indicate a connection with or support for the Aboriginal community.
Former CEO of the Australian Copyright Council Fiona Phillips has been quoted extensively as stating that the legal status of the Aboriginal flag is a “unique situation” that requires a public policy solution. However, if the rights to use the flag were owned by the Australian government, it could be exploited for commercial gain by non-Aboriginal businesses. When privately owned, as it is now, the integrity of the flag may be controlled, but this results in an individual potentially profiting from the use of a national emblem.
The debate over the use of the Aboriginal flag is unlikely to be resolved in the near future. Indeed, it seems destined to be an ongoing issue. In the words of Laura Thompson, the owner of a business which has received a cease and desist letter: “The flag represented a struggle and a resistance movement, and now it just feels like a struggle to use it.”
This is an abridged version of an article on the protected status of flags - the full version will consider other regimes and will be published in the next issue of World Trademark Review. It will be available to subscribers at the start of October.