Officials were told permission to use the fern on a new flag was unlikely to be granted. If NZ Rugby had allowed its fern to be used on a flag and it made the final four, it would have had to assign all rights in it to the Crown at no cost. Other fern symbols can still be used and feature in three of the final four designs.
After NZ Rugby made it clear it was unlikely to allow its fern to be used, those who used it in their designs were given the option of changing it to remain in contention. About 370 flag designs are still on the flag.govt.nz gallery using the All Blacks silver fern and crediting Dave Clark. None made it to the longlist.
Nick Brown, NZ Rugby's general manager of public affairs, said after initial talks with the flag officials NZ Rugby was not asked to give permission for any flag to progress to the longlist. "We were comfortable with the guidelines they had in place requiring people to submit original work or obtain the permission of the owner of any designs."
Hamish Selby, an intellectual property lawyer at Buddle Findlay, said NZ Rugby's decision was understandable and that any public relations benefits in allowing the fern to be used would be short-term.
"It's almost like handing over the crown jewels, so to speak, of their business to someone for no commercial gain," Mr Selby said. "NZ Rugby has a very strong commercial alignment with its fern because the fern is so closely aligned with the All Blacks, and it leverages a lot of its income from the commercial arrangements it has."
It isn't the only problem the flag project has had with intellectual property issues - it also had to remove all designs which included Hundertwasser Koru after a copyright claim by the Hundertwasser Non-Profit Foundation.
Prime Minister John Key's desire for a new flag was sparked by the 2011 Rugby World Cup - his original preference was for a silver fern on black. Many were surprised it had not made the shortlist, although Kyle Lockwood's version was in the longlist.
The flag panel's chair, John Burrows, said it was considered but the panel decided the white fern on black was too closely associated with sports. "The silver fern has a long history which goes way beyond just sport. It's been around for hundreds of years, long before commercialisation existed. It has been used on military uniforms, the coat of arms, it's on our money."
Mr Lockwood referred questions about the intellectual property rights in his two shortlisted designs to the Flag Consideration Project.
A spokeswoman said under the conditions of submitting a flag design, designers who made the final four had to agree to hand over all copyright and intellectual property rights in the designs to the Crown at no cost.
Mr Lockwood sells his flags in a range of designs and colours on his silverfernflag.org website.
Legal moves
• The New Zealand Rugby silver fern was designed by Dave Clark in 1986 and trademarked in 1991 along with the words 'All Blacks'.
• In 2001, NZ Rugby also tried to trademark any version of the silver fern on a black jersey but in 2005 the court rejected its bid.
• During the Rugby World Cup in 2011, NZ Rugby made Giltrap Audi take down a $10,000 'Go the All Blacks' sign, claiming it breached trademark. Instead the company used 'Go the ABs'.
