Strengthening protection of Indigenous Culture and Intellectual Property

By Amelia van der Rijt
Consumer law Intellectual Property Patents & Trade Marks

In brief 3 min read

Art is an incredibly important part of Indigenous culture, but the protections afforded by existing intellectual property and consumer protection laws have at times proven inadequate and poorly adapted to protect Indigenous rights. Recent attention surrounding use of the Aboriginal flag, and the ACCC's limited success against Birubi Art, highlight the importance of strengthening protection of Indigenous Culture and Intellectual Property (ICIP). 

What's the fuss about the Aboriginal flag?

The Aboriginal flag was designed in 1971 by Indigenous artist Harold Thomas. In 1995, the Governor-General made a proclamation under the Flags Act 1953 (Cth) recognising Mr Thomas's design as the flag of the Aboriginal peoples of Australia. However, despite the Flags Act, Mr Thomas owns copyright in the Aboriginal flag (see Thomas v Brown and Tennant), so, anyone seeking to use or reproduce the Aboriginal flag must obtain Mr Thomas's permission.

WAM Clothing is a company that was established in 2018 by non-Indigenous owners Semele Moore and Ben Wooster. Mr Thomas granted WAM an exclusive, worldwide licence to reproduce the Aboriginal flag on their clothing. Earlier this year, WAM reportedly issued several cease and desist letters to companies including the AFL and Aboriginal-owned brand Clothing the Gap, requesting that they cease using the flag on clothing. Many Indigenous people are upset by the arrangement with WAM, because the flag has become a symbol of their culture and cultural identity.

Adding insult to injury is the fact that Mr Wooster is also the man behind Birubi Art – a company that was found to have breached the prohibitions on misleading or deceptive conduct, but entered liquidation before it was required to pay a $2.3 million penalty.

Is general deterrence good enough?

Birubi Art manufactured five different Indigenous-style products, including didgeridoos and boomerangs, and sold them in packaging that represented the products had been handpainted or made by an Aboriginal person or made in Australia, when they were, in fact, made in Indonesia. The ACCC succeeded in establishing that each of the five products breached at least one of the Australian Consumer Law's (ACL) prohibitions on misleading or deceptive conduct.

Unfortunately, shortly after the liability decision was handed down, Birubi sold its assets to Gifts Mate Pty Ltd, another company established and controlled by Mr Wooster. Birubi then entered voluntary liquidation, forcing the ACCC to drop its case for injunctive relief, a disclosure order and a compliance program order. Instead, the ACCC had to settle for pecuniary penalties, which, while unlikely to be paid by Birubi, will hopefully serve as a general deterrent.

Justice Perry ultimately awarded $2.3 million in penalties against Birubi, after considering the direct and indirect economic, social and cultural harm caused by conduct such as that of Birubi. While these comments don't help much in a practical sense, it is helpful that the Federal Court has recognised the significance of Indigenous art to Indigenous communities, and the harm caused by fake art.

How do we better protect ICIP?

The Birubi case shows that the ACL can only go so far to protect ICIP and address the problem of inauthentic Indigenous art. In the long term, new legislation will be required to adequately and comprehensively protect ICIP. But, in the meantime, the quickest way to implement change is to amend the ACL.

With the Indigenous Art Code, the Arts Law Centre of Australia and the Copyright Agency, Allens drafted proposed amendments to the Competition and Consumer Act 2010 (Cth), which now form part of a Bill before the Senate. If implemented, these amendments will more effectively prevent the supply of inauthentic Indigenous artworks.

The Bill is designed to prohibit the sale of items featuring Indigenous artworks or cultural expressions, unless the item is made by and attributed to an Indigenous artist or community or appropriately licensed. The Bill also prohibits the sale of artefacts that have significance to Indigenous communities, such as didgeridoos, boomerangs, clapsticks, dillybags and carvings, unless the artefact is manufactured in Australia by an Indigenous Australian or community. On 4 July 2019, the Senate referred the Bill to the Environment and Communications Legislation Committee for inquiry. The inquiry's report is due by 5 December 2019.