Larrikin Music Publishing Pty Ltd v
EMI Songs Australia Pty Limited [2010] FCA 29
Record company EMI has appealed against the Federal Court ruling
that the Australian band Men at Work infringed the copyright in the
song Kookaburra sits in the old gum tree
(Kookaburra) in its song Down
Under.
Background
Kookaburra was written and composed in 1934 by Ms
Marion Sinclair for use in schools and the Girl Guides book. It is
a short musical work consisting of only four bars. Down
Under was written and composed in 1978 by Colin Hay and Ronald
Strykert, members of Men at Work, and was first published in about
1979.
Larrikin became aware in 2007 of the resemblance between two
bars of Kookaburra and the flute riff in the 1981 version of
Down Under, after the resemblance was commented on during
the ABC's Spicks and Specks program.
Copyright
Copyright is infringed where a person, without the licence of
the copyright owner, reproduces a substantial part of the work.
Reproduction of a copyright work involves two elements:
- resemblance to, and actual use of, the copyright work (that is,
a sufficient degree of objective similarity between the two works);
and
- whether the infringing part of the copyright work formed a
substantial part of that work.
The original proceedings
Larrikin commenced proceedings alleging copyright infringement
against Mr Hay and Mr Strykert and against EMI, the owner and
licensee of the copyright of Down Under, in relation to
the 1979 and 1981 recordings of Down Under which both
contain a flute riff that is similar to Kookaburra.
Larrikin had been successful in interim proceedings in establishing
that it was the owner of the copyright in Kookaburra.
The flute riff, performed by Greg Ham and embodying the four
bars of Kookaburra, appeared in the 1979 recording.
When it first appears in the 1981 recording, the flute riff
contains only the second bar of Kookaburra; the flute riff
is then heard at two further points. In each case, the flute riff
is heard with other notes that were not originally part of
Kookaburra.
The decision
Justice Jacobson followed the decision in Francis Day &
Hunter Ltd v Bron in establishing a number of
propositions:
- the copyright work must be the source from which the infringing
work is derived;
- the question of objective similarity of musical works is not to
be determined by a note-for-note comparison but is to be determined
by the eye as well as by the ear; and
- the reproduction of the copyright work need not be identical to
the original but the substance of that work must be taken.
Justice Jacobson found there was a sufficient degree of
objective similarity between the bars of Kookaburra which
are seen and heard in Down Under to amount to a
reproduction. He based this view on an aural comparison of the
musical elements, as well as a visual comparison of the notated
songs, having taken into account the melody, key, tempo, harmony
and structure of both musical works.
The clearest illustration of objective similarity is to be found
in Mr Hay's admission of a causal connection between the two songs.
Mr Hay acknowledged that for a short period of time in the early
2000s, he sometimes sang the words of Kookaburra while the
flute riff was playing when he performed at concerts. Although Mr
Hay denied being aware of the connection between the two songs at
the time the music video was made for Down Under in 1981,
he accepted that the flute riff was "a direct musical reference to
Kookaburra".
Bolstering Larrikin's argument of objective similarity was Mr
Ham's admission that he knew Kookaburra at the time of
composing the flute riff and had incorporated the riff purposely to
add some Australian flavour to the song.
Justice Jacobson determined that the portion of
Kookaburra reproduced in Down Under constituted a
substantial part of Kookaburra. In reaching this finding,
Justice Jacobson referred to the judgments in Ice TV Pty Ltd v
Nine Network Australia Pty Ltd as authority for the
proposition that the determination of 'substantial part' should be
qualitative rather than quantitative. His Honour relied on Mr Hay's
frank admissions to sufficiently illustrate that the qualitative
test had been met.
Larrikin submitted that it was entitled to as much as 60 per
cent of the earnings of Down Under.
Qantas advertisements
Justice Jacobson was also asked to determine whether two Qantas
advertisements, both containing an orchestral version of a part of
Down Under, reproduced a substantial part of
Kookaburra. The advertisements contained only the second
bar of Kookaburra.
Justice Jacobson found that the part of Kookaburra
reproduced satisfied the element of objective similarity. However,
he found that the portion of work reproduced in the advertisements
(one bar) did not constitute a substantial part of
Kookaburra.
Trade practices claims
Larrikin made certain trade practices claims against the
Australian Performing Rights Association (APRA),
an organisation that collects and distributes licence fees for
public performance and communication of its members' musical works,
and against the Australasian Mechanical Copyright Owners Society
(AMCOS), which collects and distributes mechanical
royalties for the reproduction of its members' musical works, in
relation to the following misrepresentations by the
respondents:
- that the respondents were entitled to all amounts payable by
APRA and AMCOS to the performers and publishers of Down
Under; and
- that Down Under did not infringe the copyright in any
other work.
APRA has managed the business of AMCOS since 1997. APRA relies
on its members notifying APRA of any third party interests in a
work in allocating income for the performance of that work.
Larrikin argued that the respondents failed to make correct
notifications to APRA and AMCOS and misrepresented their
entitlements in respect of Down Under. Justice Jacobson
agreed with Larrikin, finding that the representations made were
misleading and deceptive and, but for those representations, the
two organisations would not have distributed all of the
entitlements to the respondents.
Order
At the time of the judgment, Justice Jacobson was to consider
the form of the orders with the parties.
The appeal
EMI filed appeal papers with the Federal Court in Sydney in late
February seeking orders that Mr Hay and Mr Strykert did not breach
the copyright of Kookaburra. EMI contends that:
- at best, the inclusion of the two bars of Kookaburra
were a tribute to Kookaburra;
- Justice Jacobson erred in contending that Down Under
took a substantial part of Kookaburra;
- insufficient weight was placed on the fact that the
similarities between the two songs went unnoticed for almost three
decades; and
- Justice Jacobson erred in finding that Ms Sinclair had not
assigned the copyright in Kookaburra to the Girl Guides
Association in 1934 in the course of entering the song
competition.
Comment
Justice Jacobson found that there was a sufficient degree of
similarity between Kookaburra and Down Under. His
assessment of what constitutes a 'substantial part' highlights that
courts should approach such an analysis on a qualitative, rather
than quantitative, analysis. He did not assess the quantum of
damages or royalties to be paid.
The date of appeal has not been set but we will keep you updated
of any developments.