In a safe place: Artist Harold Thomas signs the agreement for his Aboriginal flag design

The flag’s reappearance on football grounds this year is the result of two years of negotiations by Clayton Utz and Corrs Chambers Westgarth IP Lawyers and Colin Golvan QC.

After an absence of two years, the Aboriginal flag was back in its rightful place painted on AFL football grounds around the country for the Sir Doug Nicholls Indigenous round in May.

In 2020 the AFL stopped using the flag after the company that owned the exclusive copyright licence to the flag’s use on products issued it with a bill for its past use of the Aboriginal flag on merchandise produced during the Indigenous round. The company had also issued cease and desist letters to Indigenous groups seeking to sell products featuring the flag.

The reappearance of the flag on football grounds this year was the result of two years of negotiations by teams of lawyers at Clayton Utz and Corrs Chambers Westgarth, and QC Colin Golvan.

Corrs has described as “momentous” the deal in which the Australian Commonwealth acquired the copyright in the Aboriginal flag from its designer and copyright owner, artist Harold Thomas, making it freely available to everyone to use. Corrs acted pro bono on Harold Thomas’ behalf in brokering the deal.

Corrs special counsel Chrystal Dare says working on the deal has been a career highlight. “It was absolutely a matter like no other. We’re very proud as lawyers that we have been able to contribute in this way to address something that will go in our country’s history books.”

QC Colin Golvan, who also worked pro bono with Corrs on the deal, describes it as an exciting and important development.
“It is unquestionably the most important copyright work we have. The fact that we have a truly unifying flag which is free to the Aboriginal people in particular for usage as their representative flag is an important step in our reconciliation journey.”

Clayton Utz partner, Cameron GascoyneClayton Utz partner Cameron Gascoyne, who acted with his team of intellectual property lawyers on behalf of the Commonwealth, says he felt honoured to have the opportunity to work on a matter of such great national significance. “The survival of the Aboriginal flag depended on this. There were people advocating that we might need to change the flag if the public couldn’t use it freely. So there was quite a lot riding on it.”

The Aboriginal flag was first designed by Mr Thomas in 1971 and was used informally for many years as a symbol of protest. The first flag was taken from Adelaide to the Aboriginal tent embassy in Canberra in the 1970s, and it was used regularly in land rights and black rights protests.

Mr Golvan’s involvement with Mr Thomas and the flag goes back to the mid-1990s when he acted for Mr Thomas in his claim for his copyright rights to the flag in a Federal Court case.

Paul Keating had declared the flag a national flag of Australia under the Commonwealth Flag Act, and Mr Thomas brought a claim with the help of Mr Golvan to be declared the copyright owner. In the process other copyright claimants emerged, but in 1997 Harold Thomas was confirmed as the owner of the copyright.

Over the years, Mr Thomas negotiated licences on his own behalf for companies to use the flag on clothing and other products. Among them was a merchandising licence in 2018 with WAM clothing and a licence to its ancillary Wooster.

The Free the Flag movement was born when WAM started sending cease-and-desist letters to Indigenous-run organisations such as the Clothing the Gaps project which produces clothing, the profits of which go to Aboriginal health promotion and community engagement.

An online petition to Free the Flag received almost 150,000 signatures, and the AFL announced it would no longer pay to use the flag in support of the campaign. In September 2020 the Senate established a Select Committee on the Aboriginal flag to look at ways to make its use freely available.

The parties to the negotiation determined to have the flag’s copyright assigned to the Commonwealth, for Mr Thomas to be paid consideration, for the problematic licences granted to WAM and Wooster Holdings to be terminated, but for Flagworld as the manufacturer of mass-produced flags to retain its licence.

The authentic digital representation of the flag approved by Harold ThomasMr Gascoyne says the matter first came across his desk in early 2020. “The conversation started with something like: we want to get you involved in a new IP matter. There are only a handful of people in Australia who know about it.”

It was very important to the Commonwealth that it had Mr Thomas’ trust, he says. “The last thing the Commonwealth wanted to do was something that Mr Thomas didn’t want to do. So it was very important that the Commonwealth and Mr Thomas had objectives that were aligned.”

For Ms Dare and her team at Corrs it was clear from the beginning the matter was beyond the level of usual copyright deals. “Because of the national attention, and press attention, and frequent Senate Estimates hearings in which the CEO of NIAA [National Indigenous Australians Agency] would be questioned as to the status of the negotiations so there was constant scrutiny about what was happening.”

Just as important was the need for respect and understanding of the positions of Indigenous communities in connection with the flag, she says. “Our challenge was to find a safe pair of hands for the copyright, and for the deal to sit well not just with Mr Thomas, but with all Indigenous communities.”

Mr Gascoyne says his initial reaction when the NIAA approached Clayton Utz with the matter was: “it’s just a copyright assignment, how hard can that be? We have a two-page copyright assignment deed template that I’d usually give to junior lawyer and we’d be done in a couple of hours and that would be it.

“As it was, it turned out to be much more complex and difficult than that.”

First there was the problem of coming up with an amount that would be acceptable to all parties. “It’s not the sort of thing you can give to an accountant and say, what is it worth?” Mr Gascoyne says. “There’s no market for the copyright of flags. There was no competition. There was one seller and one buyer. There’s not even any established principles for this sort of transaction.”

“What we had to confront was the fact that there was no proxy for this,” Ms Dare says. Usually art transactions deal with a physical item. But the whereabouts of the original flag is unknown. “So the value in connection with the art is in relation to something which is intangible.”

Flags are usually the product of competitions or commissions, Mr Golvan points out, “and at the time of the commission or competition there’s a copyright arrangement made at the outset. But in our case, we had the unprecedented situation where a national flag of standing had remained in private ownership.”

At the same time, the flag was effectively the most valuable copyright work in the country, Mr Golvan says.

“We believed [the figure] should represent a proper remuneration for the most important copyright work in the country – a respectable and honourable figure which recognised the true value importance of the flag from a copyright perspective, and the whole concept of transacting the flag to the Commonwealth.”

Corrs Special Counsel Chrystal DareThat was overlaid by the Commonwealth’s requirement for accountability and transparency, Mr Gascoyne says. “The Commonwealth was not acquiring the copyright for a commercial purpose. Its objective was to make it freely available, and therefore not make any money out of it. It had to show it was using public money in a sensible way, and be able to justify the expenditure.”

A further complicating factor for the negotiation was the number of parties involved. While it was possible to apply the more usual valuation rules to compensating WAM Clothing and Wooster Holdings for giving up their commercial licences, that was still a difficult negotiation because there was one supplier and one buyer, Mr Gascoyne says. “It’s not like there could be a competitive tender process. But they were willing to do the deal at the right price and we were able to reach an agreement on that.”

All this was against the backdrop of a deadline of the 50th anniversary of its design, with the deal to be announced just before Australia Day 2022.

“Once we reached the point where we had agreement on the commercial terms and we were ready to finalise the documents and negotiate the final details, there was a desire to do that as quickly as possible and to align it with Australian Day, if that could be achieved,” Mr Gascoyne says.

For Mr Thomas the deal was never just about the money for copyright, Ms Dare says. “One of the objectives of the transaction was to educate the public that the flag was first and foremost an artistic work. Its power is not in spite of its simplicity, but it derives from its simplicity.” Part of that deal involves the creation of an educational repository with the NIAA that would tell the story of the flag and Indigenous Australians under the flag.

Another objective was to make sure the Indigenous Australians and communities at the heart of the flag were recognised, she says. “And so there was always a public interest component, in terms of the broader good this deal could achieve in the context of Indigenous communities.”

Harold Thomas has set aside $2 million of his consideration for the purposes of establishing a not-for-profit to support Indigenous men’s and women’s health issues. Flagworld’s exclusive licence which allows it to use the flag on banners and bunting will continue, and the royalties from its licence will go towards the ongoing work of NAIDOC. A scholarship in Mr Thomas’s name funded by the Commonwealth will aim to foster Indigenous leadership.

Aside from the $13.7 million paid to Mr Thomas for his copyright, he retains the moral rights in the flag design, which entitles him to be attributed as the author of the work on reproductions, to not have the work falsely attributed, and to not have the work subject to derogatory treatment.

In the end, the transaction agreements were “quite short in the scheme of things,” Mr Gascoyne says. “Compared to a public infrastructure transaction where you might have thousands of pages, this was a 10-page document.”

But the public awareness and likely scrutiny of the transaction made it one of the most stressful he’s ever done, he says. “Just knowing that it was going to be a very public transaction if it went well, and probably more so if it went wrong.”

He is proud of the outcome, he says. “I’ve been practising as an IP lawyer for 25 years and you don’t get to act on matters of national significance very often, if ever. So I’m very lucky to have had that opportunity and grateful for being involved, and glad that it worked out the way it did.”

Response

Colin Golvan Kings CounselWhile the reaction from the public and the media was generally positive, there are concerns about whether an Aboriginal-controlled organisation would have been a more appropriate entity than the Commonwealth to own the copyright.

Having an Aboriginal-controlled organisation take ownership of the copyright was one of the options considered, but ultimately rejected, by the Commonwealth.

According to Ms Dare, Mr Thomas had been open to considering the best outcome for all stakeholders, including Indigenous communities. “But as the negotiations unfolded to arrive at a point where it was ultimately the Commonwealth that was to take custodianship of the flag, Mr Thomas was comfortable with that.”

Mr Gascoyne says Commonwealth ownership was the best way to ensure the flag was freely available to everyone who wants to use it. “At the end of the day, $20 million is a lot of money and the Commonwealth was not going to spend that amount of money and then find itself in a situation where the flag was not actually freely available.”

Lawyer and Indigenous cultural and intellectual property expert Terri Janke says that while overall the acquisition is a good outcome, “it is a flag that symbolises Indigenous rights and it seems ironic that it is now owned by the Commonwealth.

“I understand that the deal requires that Harold Thomas be recognised as the creator. But it would be really good to see how an Indigenous organisation such as a national Indigenous cultural authority might control or own the flag.”

Indigenous culture and intellectual property specialist Matthew Karakoulakis says the fact the Commonwealth government owns the flag distracts from the true meaning of sovereignty. “In order to recognise the sovereignty of Aboriginal people, there should be the absolute right and ownership, not via a licence with the Commonwealth government, but absolute ownership of the Aboriginal flag by Aboriginal people ourselves.”

Macquarie University Indigenous studies Professor Bronwyn Carlson argued in The Conversation that the Aboriginal flag does not belong to all Australians. “It belongs, like the land, to us as a symbol of our sovereignty ... The Aboriginal flag cannot just be ‘freed’. It is an emblem of our emotion, our loves and losses. It holds our faith, our hope and our future.”

Harold Thomas himself has said that the arrangement “provides comfort to all Aboriginal people and Australians to use the flag, unaltered, proudly and without restriction.

“The Aboriginal flag is in a safe place where the Commonwealth will protect and be the custodian of it, and I like that ... because it’s freed up to be accessed for all Australian people ... and allows the Aboriginal flag to breathe a new life in itself ... in partnership with the Australian flag.”

For the Assignment Deed for Copyright to the Aboriginal Flag, hosted on the NIAA website, go to https://tinyurl.com/yckpan82.

Originally appeared in the Law Institute Journal, July 2022