4.1
Mr Harold Thomas is the designer and copyright holder of the Aboriginal flag. As copyright holder, Mr Thomas has exercised his right to grant several exclusive licences for the reproduction of the Aboriginal flag, most recently to WAM Clothing and Wooster Holdings. These licensing arrangements and the conduct of the licensees are considered in this chapter.
Licensing arrangements
4.2
Mr Thomas has entered into a number of licensing agreements with various organisations. These include exclusive world-wide licences for the manufacture and sale of products, non-exclusive licences, including a licence agreement with the Aboriginal and Torres Strait Islander Commission (ATSIC), and bare or gratuitous licences (which do not involve the exchange of consideration) to Aboriginal organisations providing essential services. The first two types of licences are considered below.
Carroll & Richardson Flagworld
4.3
In 1998, Mr Thomas entered into a world-wide exclusive agreement with Flags 2000 Pty Ltd, known today as Carroll & Richardson Flagworld (Flagworld), to:
(a)
Reproduce or authorise the reproduction of the design of the Aboriginal Flag on flags, pennants, banners and bunting (Products): and
(b)
Manufacture, promote, advertise, distribute and sell Products throughout the world.
4.4
Flagworld's licence agreement with Mr Thomas is ongoing and has a lifetime of 70 years after Mr Thomas's death. The licence is therefore contracted to expire when copyright in the Aboriginal flag ends.
Aboriginal and Torres Strait Islander Commission
4.5
ATSIC entered into a licence agreement in 2001 for the non-commercial use of the Aboriginal flag. The licence terms stipulated:
The Artist grants to ATSIC and the Regional Councils established by the Aboriginal and Torres Strait Islander Commission Act 1989 and any bodies of elected Indigenous representatives that may succeed them a non‑exclusive irrevocable worldwide licence to reproduce the Work for any non‑commercial purpose associated with the performance of their functions by them or by other persons authorized by them.
4.6
Mr Mick Gooda occupied senior roles within ATSIC at the time the licence agreement was negotiated and entered into, and at the time ATSIC was abolished in 2005. With regards to the licence negotiations, Mr Gooda stated:
It took a fair while to negotiate. Let's just say there were robust parts of that negotiation that went on. The agreement was really about community use of the flag and the use of ATSIC and its successors. I think there were things built in around…it not ever being held by government. As I understood it, it was really around the non-commercial use, and ATSIC negotiated it on behalf of, mainly, the Aboriginal community use of the flag. That, as I understood it, went through and there was an exchange of some money. I wouldn't tell you if I knew but I can't remember how much money was involved, except that it was fairly significant...
4.7
Following the abolition of ATSIC in 2005, the ongoing status of this agreement is unclear. The National Indigenous Australians Agency (NIAA) submitted that the licence agreement was between Mr Thomas and ATSIC, not the Commonwealth government, because ATSIC was a statutory corporation and as such, a separate legal entity from the Commonwealth government and able to enter agreements in its own right. An information paper prepared by the ATSIC National Policy Office in January 2002 about the licence stated that '…if ATSIC is replaced by a Department of State, the Licence would not transfer to the Commonwealth'. The NIAA submitted that the information paper is '…the only record that has been located to date regarding [ATSIC's] consideration of the licence…'.
4.8
Mr Gooda similarly told the committee:
I'm not a lawyer but I'd say it just became null and void…To go back to your original question, my thing is, not being a lawyer, given what Mr Thomas put in the conditions, once ATSIC was abolished that agreement lapsed, I'd say…The really strong point that Mr Thomas made was that, if anything happened in ATSIC, it should never go into the hands of government. I think it would be a little bit dishonest to say it now goes there if he was strong about that. I think you've got to respect his wishes in that, and it's in the contract…As it was stipulated in that agreement that it could never go to government, I'd say that's the reason. Once ATSIC was abolished, that agreement would have lapsed.
4.9
The legal implications of the abolition of ATSIC appear to be less clear cut. The NIAA submitted:
There is a possible argument that the effect of ATSIC Amendment Act in replacing all references to 'ATSIC' with "the Commonwealth" preserved the licence agreement after ATSIC was abolished in 2005.
4.10
The NIAA provided further information on the basis of this 'possible argument', stating:
Section 193 of Schedule 1 of the Aboriginal and Torres Strait Islander Commission Amendment Act 2005 (ATSIC Amendment Act) states that:
A Commission instrument…in force immediately on ATSIC Abolition day has effect on and after that day, in relation to everything occurring on or after that day, as if a reference in the instrument to [ATSIC]…were a reference to the Commonwealth.
Under item 191(1) of the ATSIC Amendment Act, the term ‘Commission instrument’ includes an instrument subsisting immediately before Aboriginal and Torres Strait Islander Commission abolition day to which [ATSIC] was a party. The ATSIC Licence agreement therefore may be regarded as a Commission instrument.
4.11
Professor Nicholas Seddon, a leading Australian authority on contract law, explained that ATSIC was a 'body corporate' and a separate legal entity from the Commonwealth government:
It is very common for Commonwealth statutory corporations (for example, the ANU, CSIRO, the National Gallery) to enter into contracts…it is the corporation that is bound by such a contract, not the Commonwealth.
4.12
Professor Seddon stated that upon the abolition of ATSIC, the Aboriginal and Torres Strait Islander Commissioner Amendment Act 2005 'vested "assets" of ATSIC in the Commonwealth'. 'Assets', he explained, are defined as:
property of every kind and, without limiting the generality of the foregoing, includes:
(a) choses in action; and
(b) rights, interests and claims of every kind in or to property, whether arising under an instrument or otherwise, and whether legal or equitable, liquidated or unliquidated, certain or contingent, accrued or accruing.
The question then is whether the copyright licence was an 'asset' under this definition. A "chose in action" is a right that is enforceable at law and is regarded in law as a form of property. Prior to abolition, ATSIC had a licence to use copyright in the flag. The licence is a permission. So long as its terms are adhered to, the party who uses or otherwise exploits the copyright cannot be sued for breach of copyright. The licence holder (ATSIC) had rights determined by the terms of the licence. In my view the licence rights that ATSIC had prior to abolition were choses in action. Thus it is arguable that the Aboriginal and Torres Strait Islander Commissioner Amendment Act 2005 vested these rights in the Commonwealth.
4.13
In respect of possible limitations on this, Professor Seddon stated:
It could be the case that the terms of the licence are such that it is futile for the Commonwealth to take over the licence. This would be so if, for example, conditions attached can only apply to ATSIC. I note that in the submission by NIAA that the original licence was limited to reproduction of the flag for non-commercial purposes associated with ATSIC's functions. ATSIC's functions were set out in its Act. It is at least arguable that the Commonwealth cannot reproduce the flag for non-commercial purposes associated with the Commonwealth’s functions. Possibly, this argument could be countered by saying the Commonwealth, as the new licensee, is restricted to non-commercial purposes associated with what were ATSIC’s functions.
4.14
This position was echoed by the NIAA, which stated:
However, it is not without some doubt, and even if this is the case, the original ATSIC Licence only covered the reproduction of the Work for non‑commercial purposes related to ATSIC’s functions.
Gooses T-Shirts and Vaguce T-Shirts
4.15
Clothing manufacturer Neil Booth had a relationship with Mr Thomas for over 20 years to print items such as shirts, hoodies and singlets through his companies Gooses T-Shirts and subsequently Vaguce T-Shirts. The committee understands that that relationship ended in 2018.
WAM Clothing Pty Ltd
4.16
WAM Clothing 'is the exclusive licensee for a range of clothing and apparel, towels, and digital and physical media products featuring the Aboriginal Flag'. The first licence agreement between Mr Thomas and WAM Clothing commenced in late 2018. The committee is unaware of the number of licence agreements that have been entered into since then, but is aware of at least one additional agreement, dated 7 June 2019.
4.17
The directors of WAM Clothing are Ms Semele Moore and Mr Ben Wooster. Mr Wooster is also a director of Wooster Holdings (discussed below).
4.18
The duration of the licence agreement between WAM Clothing and Mr Thomas is unknown to the committee. WAM Clothing refused to discuss this aspect of the agreement, citing confidentiality concerns.
4.19
The committee was told that the licence agreement with WAM Clothing may apply to the use of the Aboriginal flag:
on social media graphics;
on flyers, printed and digital copies;
on miscellaneous campaign collateral e.g. pledge cards, fact sheets, information booklets (printed);
in an annual report or plan, printed and digital;
any horizontal or partially horizontal surfaces including:
naturally occurring or artificial ground – solid dirt, grass, stone, snow, ice etc.;
any vertical or partially vertical surfaces including;
cliff faces, hills, mountains; and
atmosphere of earth including sky or the air; or
any building, sporting ground, stadium, arena.
4.20
A redacted version of the licence agreement between WAM Clothing and Mr Thomas appears to grant WAM Clothing 'exclusive authority to act as Agent for the purpose of enforcing…Copyright', including permission:
to take whatever action it sees for breach of Copyright of the Work, without notice to, or consent from the Licensor...[including negotiating] payment of a fee, in favour of the Licensee, from anyone who is in breach of the Copyright, whilst permitting those persons to use the Products which would otherwise be in breach of copyright.
Wooster Holdings Pty Ltd and Gifts Mate Pty Ltd
4.21
In 2018, Mr Thomas entered into an exclusive licence agreement with Wooster Holdings, which subsequently granted permission to Gifts Mate Pty Ltd (Gifts Mate) to manufacture and wholesale a range of souvenir products featuring the Aboriginal flag.
4.22
Mr Ben Wooster is a director of both Wooster Holdings and Gifts Mate. Mr Wooster is also the former sole director of Birubi Art Pty Ltd (in liquidation) (Birubi), which also held a licence to manufacture souvenirs bearing the Aboriginal flag from 1 January 2010.
Implied licence
4.23
The question of whether or not Aboriginal people enjoy an implied licence to use the flag was raised during the course of the inquiry. Mr Michael Connolly, Ms Nova Peris OAM and Mr Peter Francis argued that the origins of the flag and the purpose for which it was created point to the existence of an implied licence for the benefit of Aboriginal people. The Australia Council for the Arts stated:
While Mr Thomas is the copyright owner of the Aboriginal flag, the communal use of the flag has been practiced since the 1970s. Dr Gary Foley has argued that this communal recognition of the flag almost gives it an implied licence for all Aboriginal people to use as they wish. This free use of the flag is no longer allowed due to the exclusive licence granted to WAM clothing company.
4.24
Dr Terri Janke, a leading legal practitioner in the area of Indigenous cultural intellectual property (ICIP), advised that while it is unlikely that shared copyright exists between Mr Thomas, Professor Gary Foley and other individuals who were involved in the creation of the flag, 'it certainly opens up the idea of its implied use'. Dr Janke explained:
It was implied that people would use it for that particular purpose—an implied licence to use it as a flag, as it has been used for many years. The issue is to what extent that implied licence might extend. The commercial uses are, in my opinion, where the sticky points have been. For many years the use of the flag was an implied licence, I think by Mr Thomas, in the way that it was used as a symbol of Aboriginal rights.
4.25
Associate Professor Jani McCutcheon acknowledged that while an implied licence may exist, 'implied licences can also be revoked pretty reasonably. I think that's what he's done through his court case and his subsequent legitimate behaviour in exploiting his exclusive rights'.
Conduct of licensees
Birubi Art Pty Ltd
4.26
Fake or inauthentic Aboriginal art was raised by numerous submitters and witnesses as an ongoing matter of concern. The committee heard these concerns raised in the context of successful action against Birubi, and the connection between Birubi and the current Aboriginal flag exclusive licence holders.
4.27
In March 2018, the Australian Competition and Consumer Commission (ACCC) instituted court proceedings against Birubi. At the time, Mr Ben Wooster was the sole director of Birubi.
4.28
The Federal Court of Australia found that between 2015 and 2018 Birubi had sold almost 18,000 products in Australia featuring images, symbols and design associated with Australian Aboriginal art and words such as 'Authentic Aboriginal Art', 'Hand Painted, and 'Australia', but were all made in Indonesia. On October 2018, the Federal Court found that Birubi engaged in false or deceptive conduct that products it sold were made in Australia and hand painted by Australian Aboriginal persons, in breach of the Australian Consumer Law. As of 29 October 2018, Birubi resolved to enter voluntary liquidation.
4.29
On 26 June 2019, the Federal Court of Australia ordered that Birubi pay a fine of $2.3 million, despite acknowledgment by Justice Perry that 'given that Birubi is in liquidation, it is unlikely that Birubi would be able to pay any pecuniary penalty in any event'.
4.30
At the time the penalty was imposed, the ACCC Commissioner stated:
This penalty sends a strong message to anyone considering selling fake Australian Aboriginal style art as the genuine article…Birubi's actions were extremely serious. Not only did they mislead consumers they were liable to cause offence and distress to Australian Aboriginal people…The ACCC took this action because the misleading conduct has the potential to undermine the integrity of the industry and reduce opportunities for Australian Aboriginal peoples.
4.31
The ACCC provided evidence to this inquiry that it is unable to pursue Mr Wooster as he was not party to the original Birubi proceedings in any personal capacity, adding that Gifts Mate, WAM Clothing and Mr Wooster cannot be held liable to pay the penalty awarded to Birubi.
4.32
In 2018 the House of Representatives Standing Committee on Indigenous Affairs tabled its 'Report on the impact of inauthentic art and craft in the style of First Nations peoples'. The report cited Birubi as a successful case of enforcement against inauthentic Indigenous art and craft products and that the outcome of the court proceedings would be used to frame some of its future guidance.
4.33
In evidence to the committee, Gifts Mate stated that no complaints were ever made by the ACCC against Mr Wooster personally and emphasised that Justice Perry did not find that Birubi had intentionally sought to mislead potential purchasers of the products.
Relationship between Birubi, WAM Clothing and Gifts Mate
4.34
WAM Clothing was registered with the Australian Securities and Investment Commission (ASIC) on 21 November 2018; Ms Semele Moore and Mr Ben Wooster are both current company directors. WAM Clothing has been the exclusive worldwide copyright licensee for the use of the Aboriginal flag since that time. Gifts Mate was registered with ASIC on 2 May 2018; Mr Wooster is the sole director. Gifts Mate is the manufacturer and wholesaler of a range of souvenir products featuring the Aboriginal flag. Mr Wooster is the former sole director of Birubi.
4.35
The Birubi case was known to a number of witnesses and submitters to this inquiry, who expressed concerns that Mr Wooster, an exclusive licence holder of the Aboriginal flag, was the former director of Birubi. Mr Wooster's connection to Birubi was a particular point of contention, with one submitter describing the connection as 'egregious'.
4.36
The Indigenous Art Code emphasised the lasting impact that the Birubi case, including the non-payment of the $2.3 million fine, continues to have on the Aboriginal arts community:
As noted in evidence provided to the committee last week and today, the former director of Birubi Art is now a director of both GiftsMate and WAM Clothing, which have the exclusive licences to reproduce the Aboriginal flag on clothing and merchandise. These issues are regarded as connected and relevant by many of the Indigenous Art Code stakeholders. The These issues are regarded as connected and relevant by many of the Indigenous Art Code stakeholders. The non-payment of the fine has caused considerable concern and distrust within the community.
4.37
The Australia Council characterised this aspect of the current licensing arrangements as 'a moral issue':
There is a moral issue as WAM clothing company is a non-indigenous company and is also associated with Birubi Art…questions have been raised as it whether Mr Thomas knew about his case and their association.
WAM Clothing
4.38
WAM Clothing's conduct, in particular its approach to enforcing its rights as a licensee, was raised throughout the course of the inquiry.
4.39
Numerous submitters and witnesses voiced distress about the way in which WAM Clothing had communicated with them. In most instances, organisations received a cease and desist letter or a 'notice to potential consumer' demanding payment for use of the Aboriginal flag design or stating that products adorned with the Aboriginal flag must not be used without WAM Clothing's permission. An example of a 'notice to potential consumer' provided to the committee states that WAM Clothing is the exclusive licensee for use of the Aboriginal flag on clothing and advises that 'if you are currently using the Aboriginal Flag on clothing or have orders with manufactures for clothing incorporates the Aboriginal Flag, you are required to contact us immediately'.
4.40
A cease and desist letter is typically a communication in which a party asserts that it is the owner or exclusive licensee of the copyright, and advises the recipient that they are believed to be infringing on copyright. The party asserting copyright may alert the recipient to the relevant breach and advise them to cease and desist.
4.41
Based on the evidence before it and media reporting, the committee understands that the following individuals and/or organisations have received correspondence from WAM Clothing of the nature of a cease and desist letter or a 'notice to potential consumer':
Spark Health Australia Pty Ltd (Spark Health) and Clothing the Gap;
Rugby Australia (and the Lloyd McDermott Rugby Development Team under the auspice of Rugby Australia, along with other First Nations rugby teams);
Renee Tighe, Chastity & Co;
Australian Football League;
Seed Indigenous Climate Network;
Stephen Hogarth (Aboriginal artist);
North Stradbroke Island Aboriginal & Islander Rise Co-op Society; and
Nugurrubul Baadhin Clothing.
4.42
According to WAM Clothing, it has issued '[v]ery few cease and desists. The total would be less than 10'. WAM Clothing conceded, however, that there has:
been a range of correspondences issued to third parties with respect to our licences. Being cease and desists, notices to potential consumers, notices to manufacturers and general information letters on processes for reproducing the Flag under our licences…
4.43
Spark Health considered WAM Clothing's approach to enforcing its rights as an exclusive licensee a marked difference with the previous licence holder:
My understanding is that there was a clothing licensee before WAM, called Gooses Clothing, and they produced the Aboriginal flag on clothing. They paid a licensing fee and royalties to Harold but they didn't actively pursue other people in communities that were also using the flag. I think that's been the real difference since Ben Wooster and Semele came on board—it's them actively looking to see who's using the flag and then issuing them a cease and desist. It's hard to find everyone who's reproducing the flag on clothing, so they'll often go to manufacturers and issue the manufacturer with a cease and desist, and, in some ways, ensure that the manufacturer is passing on the message to Aboriginal communities about who to go to produce stuff.
4.44
Other submitters and witnesses stated that interactions with WAM Clothing had left them feeling uncertain and confused about permitted use of the flag and/or the potential costs associated with its use. For example, Seed Youth Climate Network told the committee that after receiving a notice and subsequently seeking clarification from WAM Clothing regarding use of the flag, it was left feeling less clear about how the Aboriginal flag could be used:
It didn't use the words 'cease and desist', but, through further correspondence, they did end up giving us three days to take action and implied that, to continue using the flag, we would need to enter into an agreement. We had quite a bit of back and forth, asking them to specify the exact uses and clarify how the fees would be applied on email signatures, on business cards, on a website. Eventually, after a bit of back and forth, we didn't enter into the agreement because we felt really confused and conflicted.
4.45
Similarly, Cricket Australia told the committee that prior to making a decision not to use the flag it had 'failed to receive complete clarity on licensing requirements for non-commercial and non-merchandised use of the flag for our Indigenous State and National teams as well as community clubs'.
4.46
These experiences were echoed by Tandanya National Aboriginal Cultural Institute:
There's great concern about how they can use it. You can look at a lot of people, including our institute. We think twice about using the flag on any marketing material, so we've stopped that. We don't use it at all, and most organisations that we're talking to are doing the same thing because they're not sure whether they're going to get a cease and desist letter or whether or not they're able to deal with getting that.
4.47
The Gurindji Aboriginal Corporation told the committee about a festival it runs each year, and how uncertainty around using the flag has become a risk management issue:
I guess there are concerns as we now do our designs for the festival or as to flying the flag at the festival. We need to know where we stand with that, and it's a bit of a risk management thing, now, for us to consider. There are fees and charges or whatever we need to consider that does impact on our planning now, because this event is quite a monster…Are we in breach right now, for example? That's a bit of a risk for us if we're using that flag.
4.48
Some submitters and witnesses advised that in the past, Mr Thomas may have authorised use of the Aboriginal flag free of charge for certain non-commercial purposes. The Queensland Bar Association remarked:
Historically, Harold Thomas allowed Aboriginal health and not-for-profit Aboriginal community to openly connect with a collective identity in circumstances where there is otherwise no homogenous tribal identity that exists in Australia. As a result of the licence agreements with WAM Clothing and Flagworld Pty Ltd, Aboriginal health and not-for-profit organisations can no longer reproduce the flag and have been issued cease and desist letters by WAM Clothing. This has jeopardised the economic sustainability of Aboriginal health and not-for-profit organisations who provide much needed support to Aboriginal people in the community, because many of their branding and products featured the Aboriginal flag.
4.49
The Victorian Aboriginal Health Service (VAHS) suggested that more recently, with WAM Clothing as an exclusive licensee, Mr Thomas is still amenable to use of the Aboriginal flag for certain non-commercial purposes but that held no sway in negotiations with WAM Clothing:
…I've been talking with my promotional health manager, who did talk with Harold about us using the flag. I've actually got it here in writing from Harold himself, and he says: 'It was a pleasure speaking to you yesterday. The Aboriginal medical and legal services has always promoted and used the Aboriginal flag design from the beginning, and we're all grateful. Because of recent events, some individuals have been reckless to say the least. I suggest contacting WAM Clothing and say we have spoken. The issue will be amicable. I support you 100 per cent. Your friend, brother and member of a beautiful great race.'
To which, my manager spoke to WAM through email explaining the situation. WAM then asked for a copy of the email from Harold, and we don't have much more from WAM in emails. But my manager has let me know that they did talk over the phone and he said it was a lengthy conversation. They apparently looked into VAHS's financial records online and said that, financially, we were viable to pay a fee and also that they could offer a discount but we would still have to pay…
4.50
The licencing fees charged by WAM Clothing were not provided to the committee and figures provided by witnesses differed. Similarly, the overall value of the exclusive licensing agreements between the copyright holder and licensees are unknown to the committee.
4.51
Aunty Rieo Ellis told the committee:
...our manufacturer had shared with us that they were no longer able to place the Aboriginal Flag on our uniforms unless we paid an additional 20% on top of the manufacturing costs. Being a small team driven by Community volunteers and relying heavily on sponsorship, this was way too much and we simply couldn’t do it.
4.52
The Indigenous Wellbeing Centre (IWC) was initially advised by WAM Clothing that a twenty per cent fee was payable, which was later discounted to fifteen per cent, so long as the IWC signed a confidentiality agreement. In relation to WAM Clothing, the IWC stated:
They initially offered for us to be charged 20 per cent and later on they gave us an additional discount of five per cent. With that five per cent discount we had to sign a confidentiality agreement that we could not share with anybody or speak of that five per cent additional discount. So we refused the agreement. Now we do not put the Aboriginal flag on our shirts, unfortunately, and we haven't from last year.
4.53
In its written submission, the Lloyd McDermott Rugby Development Team discussed the financial burden currently associated with using the Aboriginal flag and concluded that current licensing arrangements are not in the public interest:
The First Nations Rugby Club (FNRC) also wishes to highlight the significant financial burden that the current licencing has on smaller Aboriginal sporting teams. These small community-run teams simply cannot afford to include the flag on their merchandise. The fact that Aboriginal-run sporting clubs are prevented from using the Aboriginal flag is all the evidence needed that a change is required…The FNRC requests the Senate to take an informed and principled approach to its review, by recognising that the current licencing arrangement is not in the best interests of the Nation.
4.54
While many organisations have refused to pay the licencing fee, Koori Knockout told the committee it had paid WAM Clothing a sum of around $10,000 to keep WAM away from its 2019 competition:
We were organising the Koori Knockout last year on the Central Coast. I think it was about March, April or May, we received an email from the clothing company that's got the copyrights, telling us that we need to notify all the teams they can't have the flag, or if they wanted the flag they've got to pay the extra costs and whatever else. But by then teams had already ordered their gear with the flag on it. So they said they were going come to the knockout and come around and have a look and see who's got it and fine everybody—so to prevent them from doing that and fining all the teams who may have it on their shirts and their guernseys, we just gave them $10,000 to stay away.
4.55
WAM Clothing's approach to exercising its exclusive rights to reproduce the Aboriginal flag on clothing has, at best, discouraged its use, and at worst, caused distress to notice recipients and others seeking to produce the clothing or products. Clothing the Gap summarised evidence consistent with a number of witnesses and submitters to this inquiry:
Community have stopped using the Aboriginal flag like they used to – for three key reasons.
to avoid possible legal action;
to avoid paying to do so; and
on principle, no one wants to have to ask to use the flag from non-Indigenous people.
Carroll & Richardson Flagworld
4.56
Comparisons have been drawn between the conduct of WAM Clothing and Flagworld, the holder of the worldwide exclusive licence to reproduce the design of the Aboriginal flag on flags, pennants, banners and bunting.
4.57
Flagworld told the committee how it gives effect to Mr Thomas's wishes that that the flag be freely available for non-commercial, individual use:
In accordance with Mr Thomas' wishes, the Aboriginal flag can also be produced by an individual for their own use, but not for commercial gain as this would breach his IP and our licence. Therefore the manufacture of a flag is open to an individual not engaged in commercially gaining from the design, therefore ensuring at a local level it can be freely made and used.
4.58
The committee heard no evidence to suggest that Flagworld has acted contrary to its public position, or to Mr Thomas's wishes. Notably, the committee heard a comparatively low number of concerns regarding the conduct of Flagworld in relation to the exercise of its exclusive licence.
4.59
The Australian Football League (AFL) informed the committee that the:
AFL has agreed that it will purchase all depictions of the Aboriginal Flag on flags, pennants, banner or bunting (Flag Form) from Carroll & Richardson – Flagworld Pty Ltd…AFL has no concerns or complaints with the arrangement as apply to the use of the Aboriginal Flag in Flag Form. In contrast, AFL does have concerns with respects to the current situation as exists with the us of the Aboriginal Flag in all other respects (i.e. other than in Flag Form)…AFL is most concerned that the commercial terms sought by WAM Clothing with respect to the use of Aboriginal Flag by all potential user of it are either not reasonable and/or are not affordable by many persons, in particular Aboriginal people and enterprises, who seek to celebrate their indigeneity through the proud display of the Aboriginal Flag in many forms.
4.60
In relation to enforcing its rights as a licensee, Flagworld stated:
From time to time, yes, but normally not against individuals. The usual people that we find breach the licence are those who are often importing from overseas countries, from low-cost labour countries, who will bring in cheap and inferior products into Australia. So we will often contact those people and suggest that that's not a very good idea. More often than not, many of them, probably through ignorance, are not aware of the licensing arrangements and end up becoming re-sellers for the Aboriginal flag and buy the genuine product rather than buying cheap imports from overseas.
4.61
In 2003, Flags 2000 Pty Ltd (as Flagworld was then known) took action in the Federal Court against Mr David Smith who carried on business under the name 'Flags and Poles' in Bassendean, Western Australia for infringements of Mr Thomas's copyright. The Court found in favour of Flags 2000 and ordered Mr Smith to refrain from infringing Mr Thomas’s copyright and deliver up all infringing copies of the flag. Mr Smith was also ordered to pay damages of $320, additional damages of $1,000, and the applicant’s costs.
4.62
In March 2020, Flagworld successfully applied to the Federal Court for the production of names and contact details for the person/s operating the website https://freetheflag.net from Paypal, Vodafone and Shopify. Flagworld alleged that the operators of the website advertised, distributed and sold flags in the design of the Aboriginal flag in breach of copyright. It sought the contact details under Rule 7.22 of the Federal Court Rules 2011 (Cth), which
is intended to provide a person with a means of obtaining information as to the identity of a party against whom the person wishes to commence a proceeding, in circumstances in which the person is unable to do so because of a lack of sufficient information about that party’s description to enable an originating application to be filed.
4.63
Whether or not subsequent legal action against the website administrators has commenced is unknown to the committee.
4.64
What, if any, connection the administrators of this website have to the Free the Flag movement, led by Spark Health is unknown. During the committee’s public hearing, Spark Health stated that the current licensing arrangements have:
…never really been an issue with Flagworld, because not many of us want to actually produce flags that go on flagpoles. So we haven't seen it playing out. It's more that the mob want to use it on clothes, and that's when we've seen it play out.
Spark Health and Clothing the Gap
4.65
WAM Clothing's heavy-handed (yet entirely legal) approach to enforcing its rights as an exclusive licensee for the Aboriginal flag was the catalyst for a campaign—led by Spark Health—to garner community support to 'free the flag'.
4.66
Spark Health is an Aboriginal-owned and led social enterprise specialising in health promotion and Aboriginal community engagement. The organisation designs and delivers preventative health and health engagement programs and offers Aboriginal community engagement consultancy services.
4.67
Spark Health also trades as Clothing the Gap, a Victorian Aboriginal-owned and led social enterprise. Clothing the Gap is a fashion label managed by health professionals. Ms Laura Thompson is co-founder and managing director of Spark Health and Clothing the Gap.
4.68
In March 2019, Spark Health started selling clothing that featured the Aboriginal flag. On 6 June 2019, Spark Health received a letter from WAM Clothing demanding that within three business days from the date of the letter it cease and desist with the sale of clothing bearing the Aboriginal flag. In August 2019, Spark Health wrote to Mr Harold Thomas to seek permission to use the flag, but did not receive a response.
4.69
On 16 October 2019, Spark Health received a letter from Lion Legal acting on behalf of Mr Thomas, requiring that Spark Health cease and desist from 'engaging in any way in the sale of any clothing bearing the Aboriginal flag or variation thereof' within three business days from the date of the letter. On 22 October 2019, Spark Health’s clothing manufacturer, Daluna Industries, also received an email advising that any use of the Aboriginal flag on clothing without the consent or agreement of WAM Clothing was prohibited.
4.70
After receiving the initial cease and desist letter from WAM Clothing, Ms Thompson began the Free the Flag campaign. The campaign is promoted via the Clothing the Gap website and calls for the Aboriginal flag to be free from its current exclusive worldwide licencing agreements with WAM Clothing, Wooster Holdings and Flagworld. The campaign encourages free use of the Aboriginal flag for all, provided that usage adheres to the flag protocols and guidelines set out in the Flags Act 1953 (Cth), consistent with arrangements for the Australian flag. Free the Flag encourages people to support the movement by signing the Pride Not Profit petition, writing to their local Member of Parliament, buying Free the Flag merchandise produced by Clothing The Gap and using the Free the Flag logo.
4.71
Spark Health and Clothing the Gap submitted:
We believe if Aboriginal people had known Harold Thomas would end up asserting his private ownership rights over the flag and appointing non-Indigenous licensees to shut down its use unless fees were paid - we would never have adopted it. Flags should always be about pride and not profit, so we started a petition. Today, nearly 150 000 people have signed this petition (www.change.org./pridenotprofit) and supported what has become a movement to #FreeTheFlag for the people.
4.72
Free the Flag has garnered support from individuals and organisations that have been issued with cease and desist notices as well as from the broader community. The campaign is supported by a number of prominent Aboriginal Australians including former Senator and Olympian Ms Nova Peris OAM, and former AFL players Mr Michael Long and Mr Eddie Betts. A number of professional sporting organisations have also expressed support for the movement, including most AFL clubs and the Super Netball.
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On 28 July 2019, Ms Thompson, Ms Peris and Mr Michael Connolly (an Aboriginal artist) travelled to Canberra to meet with federal parliamentarians to advocate for the campaign. On 31 July 2019 the Pride Not Profit petition was acknowledged by Ms Ged Kearney MP in the House of Representatives.
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Ms Peris described her work with the campaign:
I appear as a member of the Free the Flag campaign and also in my own capacity as a well-known Aboriginal identity here in Australia…I spent hundreds of hours in discussions with Ms Laura Thompson, Mr Michael O'Connor and our lawyer, Peter Francis, from FAL, who have all worked tirelessly together. I've also spent hundreds of hours working across [inaudible] speaking with Aboriginal natural people [inaudible] for them to be able to use their symbol. As this committee will have heard, many of these people have not sought to profit from the use of the flag; rather they have included the flag on uniforms or team jumpers to wear as a symbol of pride and belonging…You've received some 50 submissions, but we've got close to 160,000 people who have signed on to say, 'We want to free the flag.'
I'm also a strong advocate for the fake Aboriginal art campaign and the Free the Flag campaign with Laura Thompson and Nova Peris. With Nova and Laura, we have received cease and desist letters from WAM Clothing and our passion is to free the flag for all peoples—all our people—who have fought under the flag, been buried under the flag and have marched under the flag.
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Several Aboriginal Land Councils expressed support for the campaign, emphasising that the matter is of national significance to Firsts Nations people in particular, but also the broader community. The Bahtabah Local Aboriginal Land Council, Mindaribba Aboriginal Land Council and Thungutti Local Aboriginal Land Council submitted:
We echo the calls of the #FreeTheFlag campaign for Aboriginal people to have equal rights and access to the flag. The flag is an important part of our contemporary heritage and identity as First Nations people.
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Mr John Burgess, a Gurindji Aboriginal business owner expressed support for Free the Flag's key message, stating:
This flag is about identity and once again, Aboriginal Australia are fighting for it, where someone wants to control and profit off it. More than ever, the Australian government needs to acknowledge our existence and our place in this country, especially given the context of what has happened to our people.
In relation to the Senate Select Committee on the Aboriginal Flag, I wanted to add my voice to the chorus of thousands of Australian seek to Free the Flag from its current commercial license agreement…
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Other business owners impacted by restrictions on producing merchandise featuring the Aboriginal flag similarly expressed support for Free the Flag. For example, Yarn Strong Sista (YSS), an Aboriginal education consultancy in Victoria submitted:
At the end of 2018 we were approached by a Victorian Aboriginal organisation who wanted YSS to develop a range of Back Packs and Duffel Bags with the Aboriginal Flag, Torres Strait Island flag and Tiwi Flag printed on the product. This Organisation works to support Indigenous children who are living in Kinship Care and Out of Home Car. The Indigenous children are very vulnerable and find comfort and strength in these important Flag symbols.
Whilst Yarn Strong Sista has not received a cease and desist letter from WAM, we were aware that Clothing the Gap had been sent a letter in the post. We became scared and stopped selling our YSS items that had the Aboriginal Flag printed on the products. We had invested $5000 into the development of our Back Packs and Duffle Bags and now we are left with boxes and boxes of stock we are not allowed to sell. We support the "Free The Flag" Movement!
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Aunty Rieo Ellis stated 'I will continue my right to practice integrity and continue to fight to Free The Flag'.
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While there is community support for Free the Flag, some submitters raised concerns regarding free use of the flag for all Australians, referring to the solution proposed by the campaign. The National NAIDOC Committee stated:
We believe that completely “Freeing the Flag” - like the Australian Flag that some have suggested, could lead to it being exploited for commercial gain by non-Indigenous businesses, particularly foreign companies.
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The implications of making the flag free to use for all was partly articulated by Associate Professor Jani McCutcheon, who emphasised that any attempt to do so would have a corresponding effect on the rights of the copyright owner:
Any push to free the flag, in copyright speak, would demand an augmentation of the list of fair dealings that we currently entertain under the Copyright Act—something like a fair dealing for cultural expression, or something like that. But, of course, that will always have a corresponding effect on Mr Thomas's rights, because what he was able to demand monetary compensation for he no longer will be, once that new exception comes into place. So any augmentation of the list of fair-dealing exceptions would need to be carefully thought through and would have serious implications for the rights of the licensees as well.
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While Mr Thomas's view has been notably absent from this inquiry, he expressed the following opinion in a media interview in June 2019:
Now the court made it clear, they posted advertisements to say are there any other people of interest for the flag?...No one came forward to say, if Mr Thomas wins the case or something, the copyright shouldn’t got to him, or should go to all black people throughout Australia. Not one group of people came up with that not even the government…Those people on this petition, where were they?...See this is the silly argument about the flag…See under copyright, and I’m now and proved as that, you can exercise that. You can make agreements between companies, with manufacturing companies, that you can give agreements for a day, you can give agreements that are non-exclusive, you can give agreements that are exclusive, that no one else can no one else can produce those Aboriginal flag designs on them. That’s the first step…That means I can make an agreement with a non-aboriginal company.
Those who are signing this so called petition, has any of those people…worked for a grassroots black organisation like the medical and legal service? Have they been on the committee?...No of course they haven’t. You come on my journey…when it started, there was nobody. Only a few who stood up to be counted to be black. Only a few, people like Gary Foley and all those people. Who were activists at the time. They were no were near these people… These idiots of a people, where were their family? During the 70’s, 80’s and 90’s?
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Despite differing views, Free the Flag has generated attention and stimulated discussion and debate in relation to this issue.