The Australian government is considering whether to compulsorily acquire the rights to use the Aboriginal flag on public policy grounds. The debate raises questions over whether similar moves could occur in other jurisdictions.

Since 1978, the rainbow flag has been a global emblem of the LGBT+ 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 annunciation past the governor general in 1995 and nether the Flags Human action 1953 (Cth) in 2008. Therefore, it has the same protections as other official Australian flags.

Gratis utilize versus licence to use

What differentiates these two flags is the fact that the designer of the rainbow flag, Gilbert Bakery, promoted the gratuitous employ 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 pattern in the manufacture and marketing of the flag and, more than recently, to WAM Wear for use of the design on manufactures of habiliment. Every bit a licensee, WAM Wearable has been sending cease and desist messages to tertiary parties, including the Australian Football League – which has used the flag design on football jerseys in its ethnic rounds – and Spark Health – an Ancient-owned social enterprise visitor, which was previously selling merchandise begetting the flag.

The terminate and desist alphabetic character states: "Any utilize of the Ancient Flag on wear 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 united states of america immediately."

The fact that the flag is subject to private IP rights has come as a surprise to many, merely following recognition by the Federal Court of Australia in 1997 that Thomas owns the copyright in the flag as an artwork, the design will non enter the public domain until seventy years after his death. Until and then, the flag may be reproduced for commercial purposes but with the permission of Thomas or his licensees.

Thomas does allow non-commercial operations that requite healthcare, educational, legal or other assistance to Ancient people to use images of the flag for costless. Withal, enforcing copyright in such a powerful symbol against people seeking to express their cultural identity has given ascension to confusion and some resentment.

The current dispute is non 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 forbid Google from using a version of the flag in an Australia Day Google logo.

Copyright in the Aboriginal flag has been used to prevent unauthorised utilise of the pattern. In 2010 Google was prevented from using a version in an Commonwealth of australia Day Google logo

Authorities involvement

Many flags and national symbols are deputed 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. Withal, there are restrictions on 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 Department 8).

Farther, the term of copyright for older flags may take expired, even if they were not created for or on behalf of governments. While many flags and other state emblems are protected nether Article half-dozenter of the Paris Convention, an application must exist submitted by a state political party to the convention or an international inter-governmental organisation.

It seems unlikely that the Australian authorities could do this without owning the copyright in the Ancient flag and Baker took action to block the registration of the rainbow flag as a US trademark by an advocacy system in order to prevent any restrictions from being imposed on the utilise of the flag.

Even without protection nether Article 6ter, whatsoever application to annals the rainbow flag or the Aboriginal flag every bit an EU or UK trademark would likely exist rejected as, under Article seven(1)(i) of the EUIPO guidelines, registration can be denied for emblems that have not been communicated in accord with Article viter(three)(a) of the Paris Convention when they "are of particular public involvement". Therefore, an application to register either flag could be opposed to prevent whatever 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 learn 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 endemic by the Australian government, it could be exploited for commercial gain by not-Aboriginal businesses. When privately owned, as it is at present, the integrity of the flag may be controlled, merely this results in an individual potentially profiting from the use of a national emblem.

Use of patented inventions for services of the Crown

Arguably, the closest provision under United kingdom of great britain and northern ireland police to enable the government to compulsorily larn rights to utilize individual intellectual belongings is Department 55 of the Great britain Patents Act, which specifies when acts can be washed for the services of the Crown without the consent of the owner of the patent for the invention in question and without amounting to infringement of that patent.

Section 55 states:

55(i) Yet anything in this Act, any government section

and any person authorised in writing by a government department may, for the

services of the Crown and in accordance with this section, practice any of the following

acts in the United Kingdom in relation to a patented invention without the

consent of the proprietor of the patent… and annihilation done by virtue of this subsection shall not amount to an infringement of the patent concerned.

Section 56(2) defines 'services of the Crown' to include:

(a) the supply of annihilation for foreign defense force purposes;

(b) the production or supply of specified drugs and medicines; and

(c) such purposes relating to the product or apply of atomic energy or

research into matters continued therewith as the Secretarial assistant of State thinks

necessary or expedient.

However, this is not an exhaustive list and the department goes on to say "except so far every bit the context otherwise requires".

Like provisions exist with regard to registered designs and unregistered design rights under:

  • Schedule 1, Paragraph 4 of the Registered Designs Act 1949 (c88), every bit amended past Schedule 3, Paragraphs 37(4) and (v) of the Copyright, Designs and Patents Act (CDPA) 1988;
  • Schedule 4, Paragraph 4 of the CDPA; and
  • Department 244 of the CDPA.

Other provisions covering the Crown's use of intellectual property can be establish in legislation relating to defence and security, as well as certain health purposes.

However, there seem to be no equivalent rights regarding copyright in artistic works (eg, the Aboriginal flag) and there has been disagreement every bit to whether the government should intervene at all in the current debate. Would compulsory acquisition or a compulsory licence in patent terms exist seen as notwithstanding another instance of the disenfranchisement of Aboriginal people – in this case, with regard to the rights of an artist to maintain buying of their work?

An alternative approach would be to expand the definition of 'off-white dealing' in social club to protect the employ of the Aboriginal flag without authorisation or a licence from Thomas. Although in that location is no statutory definition of 'fair dealing' in the United Kingdom, it is governed past Sections 29 and 30 of the CDPA and allows for the utilize of works still in copyright without licensing in certain circumstances, primarily where the employ is:

  • for research or individual study;
  • to allow for criticism or review; or
  • for reporting current events.

Since 1978, the rainbow flag has been the internationally recognised symbol of the LGBT+ community. The designer has ever promoted the free use of his flag and never sought to enforce his copyright

US off-white use doctrine

This stance is more than limited than the United states of america doctrine of off-white use, which is set out nether Section 107 the The states Copyright Human action and states that use "for purposes such equally criticism, annotate, news reporting, teaching (including multiple copies for classroom employ), scholarship, or enquiry, is not an infringement of copyright".

Information technology is this blazon of approach that has been explored recently by the Australian Law Reform Commission and supported by the Productivity Commission, and which may resolve the bug surrounding the use of the Aboriginal flag. On 19 March 2019 a Copyright Modernisation Consultation Paper was issued past the Department of Communications and the Arts, asking for views on the following issues:

The expansion of flexible exceptions to copyright infringement in order to modernise the circumstances in which access to copyright material is permitted. In particular, the Department is seeking views on whether an open-ended "off-white utilise" exception like to that in the U.s. should be introduced in Australia or, alternatively, if the existing list of "off-white dealing" exceptions should be expanded to arrange changing community, technology and business standards (such every bit not-commercial private use, library and archive use, educational uses, quotations, text and data mining, certain incidental or technical use by online service providers and government uses in the publicinterest).

Withal, even the introduction of this extended definition of 'fair dealing' may not be sufficient to cover use by those lobbying for the Aboriginal flag to be treated similar other recognised national flags and available for use without a licence. Nor would it necessarily help if Baker's descendants sought to enforce copyright in the rainbow flag.

Resolution

The debate over the apply of the Aboriginal flag is unlikely to be resolved in the virtually future. Indeed, information technology seems destined to exist an ongoing consequence. In the words of Laura Thompson, the owner of a business concern which has received a finish and desist letter of the alphabet: "The flag represented a struggle and a resistance movement, and now it just feels like a struggle to employ it."

Kate O'Rourke

Mewburn Ellis

 This article starting time appeared inWorld Trademark Review. For further information please visit https://www.worldtrademarkreview.com/corporate/subscribe