The Aboriginal Flag

As you know, the Aboriginal Flag has been in the news a fair bit – the AFL even had to abandon plans to paint representations of it on footy grounds for the Indigenous Round: here, here and here.

Mr Thomas, the acknowledged author of the flag’s fantastic design,[^f2] has licensed it to various companies for different types of use including WAM Clothing. WAM Clothing has been making headlines aggressively enforcing its rights, including threatening the AFL for copyright infringement.

Now, the Senate has established a Select Committee to investigate what is to be done!

The terms of reference are (in full):

That a select committee, to be known as the Select Committee on the Aboriginal Flag, be established to inquire into and report on current and former copyright and licensing arrangements for the Aboriginal flag design, with particular reference to: 

a. who benefits from payments for the use of the Aboriginal Flag design and the impact on Aboriginal organisations, Aboriginal communities and the broader Australian community of the current copyright and licensing arrangements; 

b. options available to the Government to enable the Aboriginal Flag design to be freely used by the Australian community, including:

i. negotiated outcomes with licence and/or copyright holders:

ii. the compulsory acquisition of licences and/or copyright,

iii. ways to protect the rights and interests of the flag’s legally recognised creator Mr Harold Thomas; and

c. any other matters relevant to the enduring and fair use of the Aboriginal Flag design by the Aboriginal and Australian community.

Click the terms of reference here.

The fun part: if you are wanting to make a submission, you need to get it in by 18 September 2020 as the Committee is due to report by 13 October.

We thought we had come a long from the days when the Commonwealth Government (in the guise of the Reserve Bank) could appropriate David Malangi’s artwork for the wonderful design of the (now defunct) one dollar note; Johnny Bulun Bulun and a later group of artists including George Milpurrurru rightly successfully asserted their copyrights over blatant infringers.

Now, however, it seems many people think Mr Thomas shouldn’t have the same rights.

While Minister Wyatt ruled out buying the copyright last year, this year it seems that Mr Thomas might be refusing to sell or this Senate inquiry might be upsetting the negotiations.

Placitum (xxxi) of s 51 of the Constitution does give the Commonwealth power to compulsorily acquire property on just terms:

(xxxi) the acquisition of property on just terms from any State or person for any purpose in respect of which the Parliament has power to make laws;

and, of course, placitum (xviii) confers power to make laws with respect to, amongst other things, “copyright”. It seems difficult to argue that a law to acquire one person’s copyright would not be a law with respect to copyright.[^f1]

Of course, an assignee of copyright takes subject to any licences that had previously been granted (and are still on foot): Copyright Act 1968 s 196(4). So, the Commonwealth would also have to have some power under the licence to Wam Clothing to terminate it or, presumably, acquire its property on just terms too.

[[^f2]: According to Shephard J’s judgment in Thomas, the Governor-General proclaimed the artistic work to be the flag of the Aboriginal People under s 5 of the Flags Act, back in July 1995. It seems from Sheppard J’s judgment, Mr Thomas came up with the design for use at the Aboriginal Day rally in Adelaide in 1971 “off his own bat”.

[^f1]: There are also the murky possibilities of placitum (xxvi).

Phillip Morris sues Australia!

Phillip Morris has announced that it plans to sue Australia under the Australia-Hong Kong (SA) Bilateral Investment Treaty over the planned plain packaging legislation.

What the Government is proposing to do

Under the proposed Tobacco Plain Packaging Bill 2011, tobacco companies would be required to adopt a prescribed form of packaging for tobacco products.

In its most recent form, this would involve all tobacco companies using the same olive brown colour for their packaging with large, graphic images and health warnings. Some illustrations here. The contemplated regulations would limit brand names to be positioned on the top, bottom and a designated position on the front of the box in Lucida sans serif font, point size 14. (See pp. 12 and 13 of the Consultation Paper (pdf).

The trade mark lawyers amongst us will notice that clause 15 of the proposed bill will preclude a registered trade mark from being removed for non-use resulting from the strictures imposed by the proposed legislation.

The announced intention is for the laws to come into full operation on 1 July 2012. The proposal is only in exposure draft form at this stage, with public comment being scheduled to have closed by 6 June. However, the Opposition has apparently indicated its support for the Government’s position.

What Phillip Morris claims

If you read a newspaper in Australia, you can hardly have failed to notice the advertisements taken out by the tobacco companies violently opposed to this plan. There is also a website.

Phillip Morris has taken matters a step further and lodged a notice of claim against Australia under the Australia-Hong Kong (SAR) Bilateral Investment Treaty.

Unlike Free Trade Agreements and WTO / TRIPS, apparently, companies can bring claims against a party (alleged) to be in breach of its treaty obligations, not just another country party.

It would appear that Phillip Morris is not just after compensation but also an order requiring Australia to suspend operation of the law.

Details about the basis of Phillip Morris’ claim are sketchy at this stage. According to Phillip Morris’ own News Release:

“The forced removal of trade marks and other valuable intellectual property is a clear violation of the terms of the bilateral investment treaty between Australia and Hong Kong. We believe we have a very strong legal case and will be seeking significant financial compensation for the damage to our business”.

The speculation is that Phillip Morris will argue that the proposed law is an expropriation of Phillip Morris’ investments (trade mark rights) without fair compensation: see Article 6.

According to its Press Release, Phillip Morris has apparently garnered support from an eminent Georgetown professor (and Harvard graduate) for its position.

The Government has previously denied its plans will breach its international obligations.

Assoc. Prof. Jurgen Kurtz at Melbourne University has a very interesting consideration of the issues, noting that there is case law which would support the Government’s position as well as a contrary line. Prof. Rothwell from the ANU also explores the issues. He also reportedly contends that Phillip Morris may well have lodged its complaint too soon as the bill is not law yet, although, presumably, that would not preclude another complaint at a later stage.

The News Release also indicates that a period of 3 months’ negotiating follows before an arbitration proceeding is implemented under the Arbitration Rules of the United Nations Commission on International Trade Law 2010. The process will not be a short one!