Vertigan, Phoebe --- "EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd (2011) 191 FCR 444" [2011] UTasLawRw 16; (2011) 30(2) University of Tasmania Law Review 155

EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd [2011] FCAFC 47; (2011) 191 FCR 444


Copyright law has been devised to create an incentive for creativity and provide economic benefit for those who create works that will benefit society. This principle pertaining to copyright law is challenged when a company acquires copyright of a work for a small amount of money, and makes a large windfall from the efforts and work of others. Such an occurrence arguably goes beyond the philosophy that underpins copyright law. The copyright infringement action brought by Larrikin Music Publishing Pty Ltd (‘Larrikin’) against EMI Songs Australia Pty and the members of Men at Work (‘EMI’) has attracted a great deal of public interest and commentary for precisely this reason. ^[1] This case exposes the risk attached to presenting a modern representation of Australian icons, with the Full Court of the Federal Court upholding that the popular Australian song Down Under’ (‘Down Under’) by Men at Work, infringed copyright in the iconic Australian tune ‘Kookaburra Sits in the Old Gum Tree’ (‘Kookaburra’). Kookaburra was composed by Marion Sinclair and first published in a 1934 Girl Guides publication. This short musical work was consistently described by the parties as a four bar work, sung in rounds. Larrikin is an Australian music publisher, who owns the copyright of Kookaburra as a result of an assignment from the executor of Sinclair’s estate, the Public Trustee, after Ms Sinclair died in 1988.^[2]

Larrikin instituted proceedings in November 2008 against EMI on the basis that a substantial part of Kookaburra was copied in Men at Work’s 1978 pop song Down Under. At trial, the primary judge found that Down Under did in fact infringe copyright in the work. EMI’s appeal to the Full Court was heard by Jagot, Nicholas and Emmett JJ, on the grounds that the primary judge’s methodology in considering infringement was overly mechanistic, failed to properly consider originality, failed to give due weight to differences in aural perception, failed to inquire into animus furandi^[3] and erroneously relied on certain evidence.

I BACKGROUND TO THE APPEAL

To assist in understanding the issues before the Full Court, it is critical to appreciate the nature of the dispute between the parties and the initial dispute before the trial judge. The dispute was initially heard on 30 July 2009, where the primary judge determined that the owner of the copyright in Kookaburra was Larrikin. This was not challenged on appeal. Jacobson J’s decision on 4 February 2010 in Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd [2010] FCA 29; (2010) 263 ALR 155, that Kookaburra had been substantially reproduced by Down Under, went to the heart of the appeal to the Full Court.

The central question before the Full Court was whether there was a substantial degree of copying and sufficient objective similarity between the flute riff in Down Under and the first two bars of the Kookaburra round. The court unanimously dismissed the appeal, with Nicholson J agreeing with the reasoning of Jagot J, and Emmett J employing different reasoning to her Honour but reaching the same conclusion as Jagot J. The precedent set by the Full Court decision is of particular concern for musicians due to the court’s finding that reproduction of two bars will amount to a substantial portion.

At first instance, Jacobson J noted that the test for infringement under s 14(1) of the Copyright Act 1968 (Cth) (the Copyright Act) requires determination of whether a substantial part of the copyright work has been taken, and that objective similarity and a causal connection exist between the works. Jacobson J undertook a precise step-by-step analysis of whether the works were objectively similar, looking at melody, key, tempo and harmony. His Honour then considered admissions by the members of Men at Work, giving particular weight to the fact that Mr Hay, of Men at Work, would sing the words of Kookaburra during live performances of Down Under. In their submissions to the Full Court, EMI criticised this approach on the basis that it was overly mechanistic and fragmented, which resulted in an incorrect application of copyright principles.

II APPLICATION OF COPYRIGHT PRINCIPLES

The starting point for any question of copyright law is the Copyright Act, which governs its operation. The Copyright Act is an exception to the law’s general abhorrence of monopolies,^[4] and aims to ensure a balance between the public interest and benefit in the creation of new musical works, and providing incentive and commercial reward for composers.^[5]

Section 13(1) of the Copyright Act provides owners of copyright an exclusive right over the work, including musical works. Section 13(2) outlines the exclusive rights of the copyright holder, as defined in s 31 to include reproduction of the work, performance of the work, communication of the work in public and making an adaption of the work. Section 32 further provides that copyright will subsist in an unpublished original work, so long as the author has a connection to Australia at the time the work was made. Section 14(1) states that a work will infringe the exclusive rights of a copyright owner when done in relation to a substantial part of the work. The Copyright Act is silent on how a court should determine if a substantial part of the copyrighted work is infringed. To this end, the comments of the Full Court are influential in providing guidance on the requirements for infringement of copyright. The Full Court also clarified that animus furandi is not a prerequisite for an action in copyright infringement.^[6]

When determining if infringement has occurred, the court must first ascertain if copyright subsists in the work alleged to have been copied. There are no registration requirements for subsistence of copyright; copyright can subsist automatically in works and other subject matter. One of the requirements for copyright in works is that they are original. Musical work is an abstract concept, and as such is not defined in the Copyright Act. As a general rule, a court will consider the notated musical score or sound recording of the original composition. In their separate judgments, Jagot and Emmett JJ both reiterated the trial judge’s analysis of the effort involved in composing a musical round. The EMI parties submitted that Kookaburra’s originality lay in the writing of the piece as a round, and therefore the two bars which constitute the round, and are reproduced in Down Under, lacked separate originality. This submission was dismissed, on the basis that there was sufficient skill and originality in these bars to constitute a stand-alone piece of music.

Copyright protects the expression of ideas, and therefore it is necessary to show that there has been actual copying to establish infringement. Once copyright is established in the work allegedly copied, the inquiry then moves on to infringement. For musical works, infringement will be found when the air or melody taken is substantially the same as the original. Altering the instrument on which the melody is performed will not prevent infringement. As such, the fact that the riff in Down Under is performed on a flute is insufficient to exclude liability if the ear can still recognise the tune.^[7]

III THE RELEVANT TEST

At first instance Jacobson J interpreted the test under section 14(1) to require the court to determine if a substantial part of the copyrighted work has been taken. On appeal Jagot J accepted Jacobson J’s orthodox approach to dealing with objective similarity and what constituted a substantial part, dismissing EMI’s submission that the primary judge’s process impermissibly fragmented his Honour’s inquiry. As the assessment for works is qualitative, not quantitative,^[8] a plaintiff must establish objective similarity and that a casual connection exists between the works. Taking a substantial part of a copyright work does not require the infringing party to take all of the protected subject matter. The approach from Metricon Homes and Elwood Clothing,^[9] as endorsed by Jagot J, requires the court to first identify the work in which copyright subsists; and secondly, identify the allegedly infringing work, then finally determine if this constitutes a substantial part of the original copyrighted work.^[10] Despite not referencing the test from Metricon Homes when considering the preferable approach to an infringement action, at para 66 Emmett J utilised extensive case analysis to arrive at a similar test. His Honour’s test also requires the court to first identify the relevant copyrighted work, before identifying the allegedly infringing work, with infringement occurring when there is ‘sufficient objective similarity between the two works and a causal link between the two works.’^[11] The similarities of approach in the different judgments evidence how both Jagot and Emmett JJ both made clear finding of infringement.

As the test is qualitative, when determining infringement the court should not undertake a note-by-note comparison of the works, but rather, it must determine whether in substance the copyright work has been taken.^[12] To achieve this examination, the court must analyse the musical feature and structure of each work. Emmett J cited Francis Day & Hunter Pty Ltd v Bron to support the requirement of a sufficient degree of objective similarity between the two works, and a causal connection between the copyright work and the allegedly infringing work to establish infringement.^[13] By reference to Francis Day, Emmett J stated that when analysing the musical features of each work a court is permitted to examine, for example, the structure of the two works to establish whether a particular combination of notes forms an essential component of the original work, and is present in the subsequent work. It may also consider the theme of the original work, and if there is a noticeable correspondence between the works. A court may also consider the sound of the respective works to ascertain if their harmonic structure is the same, or if the importance of timing and rhythm is replicated in the impugned work. With reference to the Metricon and Elwood Clothing test, Jagot J endorsed a similar approach, stating that the permitted approach for a trial judge included consideration of aural comparison of musical elements, the notated works, melody, tempo, key, harmony and structure.^[14]

IV DETERMINING WHAT CONSTITUTES A ‘SUBSTANTIAL PART’

EMI contended that the primary judge was in error as a result of his Honour’s isolation of the relevant notes in Kookaburra and Down Under when considering infringement, as opposed to considering the two works as a whole. In reaffirming the approach of the primary judge, Jagot J clearly specified that the test is not concerned with the entirety of Down Under; instead, it must focus on the flute riff that reproduces Kookaburra.^[15] Her Honour stated that to adopt ‘the approach of the EMI parties and Mr Hay of determining objective similarity by reference to the whole of Down Under, would have involved a departure from established principle.’^[16] A key challenge for a layperson considering the court’s decision is the lack of aural similarity between the works. This lack of aural resemblance is not afforded weight when determining if infringement has occurred, as the test requires objective similarity, rather than subjective similarity to the ear of a layperson.

The impression and degree of the similarity will be a critical determinant of whether a substantial part of the work has been infringed, with Emmett J stating that the court must consider whether or not what is reproduced is so slender it cannot constitute infringement. Despite this, artists who draw inspiration from a variety of sources must note that both judgments specify that, as the test is not quantitative, if a small part of the original work is reproduced, and this is vital or material to the original work, this will be sufficient to ground a finding of infringement.^[17] Quoting Designers Guild v Russell Williams, Jagot J noted that this test requires the court to consider the importance of the copied work in the original work; its importance to the defendant’s work is not relevant.^[18] Both Jagot and Emmett JJ considered the context of the works to be important, with Emmett J explaining that this stems from the fact that the word ‘substantial is susceptible to some degree of ambiguity’.^[19] In light of the authorities relied on by their Honours, they concluded it was not inappropriate for the primary judge when determining substantiality, to individually and sequentially consider the melody, key, tempo and rhythm, harmony and context, and structure.^[20] Their Honours recognised that this process was one of convenience, and did not support an inference that the trial judge’s approach was overly mechanistic or artificial. The Full Court also clarified that a trial judge is able to listen to the works multiple times to determine if a substantial portion of the work has been reproduced.

V DETERMINING ‘OBJECTIVE SIMILARITY’

Once a court determines that the copied work constitutes a substantial part of the copyrighted work, it must then be satisfied that the impugned work is objectively similar to the original work. At trial, substantial part and objective similarity were considered as two separate limbs. This approach was upheld on appeal, with Jagot J dismissing the suggestion that it impermissibly fragmented the inquiry. When considering objective similarity, the correct approach is that of the ordinary reasonably experienced listener. In Francis Day the court highlighted that this approach is not concerned with deceptive similarity, nor is the test that of a sensitized listener overly assisted by expert evidence. When considering the orthodoxy of the primary judge’s approach, Jagot J confirmed that a trial judge may be assisted by expert evidence from both sides. Alternatively, a primary judge will be in error where excessive reliance on expert evidence results renders them incapable of being the ordinary reasonable listener.

Throughout the judgments, both the Full Court and the primary judge acknowledged that although Kookaburra was composed as a round, it was not reproduced in this fashion in Down Under. The EMI parties contended that the fact Kookaburra was not reproduced as a round in Down Under was persuasive. This was dismissed by Jagot J who confirmed that the primary judgment gave sufficient consideration to Kookaburra’s composition as a round. Jagot J held that this key difference in the works is not a determinative factor in rebutting a suggestion of objective similarity. Nor is that fact that the similarities between Kookaburra and Down Under with regards to key, tempo, harmony and rhythm are limited. Noting these differences Justice Emmett nonetheless describes the melody of Kookaburra as ‘clearly recognisable’ in Down Under.^[21] Therefore, despite recognising multiple factors that evidence differences in the work, and the fact that the works are not part of a similar genre, their Honours upheld the infringement claim, with Emmett J adding that a finding of objective similarity could be assisted by the fact a that listener can hear the reproduction of Kookaburra. Furthermore, the fact that the primary judge also was persuaded by the fact that Mr Hay would sing the lyrics of Kookaburra as an ‘amusing historical reference’ when performing Down Under live was permissible, but not conclusive.^[22]

VI DAMAGES

Since the Full Court’s dismissal of EMI’s appeal, Jacobson J has handed down the award for damages under the Trade Practices Act 1974 (Cth) (‘Trade Practices Act’) in Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd (No 2) [2010] FCA 698. Damages were sought under s 52 of the Trade Practices Act on the basis that the EMI parties made misrepresentations to collecting societies that Down Under did not infringe copyright, with damages calculated under s 82 of the Act. Damages were calculated at five percent of EMI’s income earned since May 2002, with Larrikin’s claim of 40-60% of income received rejected. Jacobson J stated that such an award would be excessive, overreaching and unrealistic, particularly as the use of Kookaburra in the infringing work was relatively small, and the existence of evidence demonstrating comparable bargains reached between other musicians for the use of samples in their work. The harshness of the decision regarding infringement has been somewhat mitigated by the decision regarding damages, however, when damages were quantified Larrikin received a substantial payout for a small contribution.

VII PRACTICAL IMPLICATIONS

This case effectively reaffirms existing copyright principles, however, the key message to be distilled from the judgments is that musicians who use, intentionally or subconsciously, small excerpts of music as inspiration for their own work may be found to have violated copyright law. In his Honour’s judgment upholding the trial judge’s decision on infringement, Emmett J expressed ‘some disquiet’ about the decision, particularly as the ‘quotation or reproduction of the melody of Kookaburra appears by way of tribute to the iconicity of Kookaburra’. Down Under is arguably a celebration of Australia’s cultural history, and it is debatable as to whether the intention was to use Kookaburra for commercial advantage. To many listeners, it is unlikely to signify more than a recollection of an important childhood memory.

The controversy inherent in this decision demands examination of the fairness and suitability of copyright principles and their application to musical works that source inspiration from iconic Australian tunes and themes. On its face, it is impossible to see how the Full Court could have reached a decision any different to their finding of infringement. This point is reiterated by the fact that on 7 October 2011 Justices Gummow and Bell refused to grant special leave for EMI to appeal to the High Court.^[23] Practically, this demonstrates a tension between copyright law as it stands, and the wider community’s expectations of what the law should, and should not protect. The difficulty of the Full Court’s decision is that a layperson, uninformed with regards to the operation of copyright law, is unlikely to find the portion of Kookaburra used by Men at Work substantial. The critique of this decision by commentators and the media questions why similarities between Kookaburra and Down Under were not immediately apparent when Down Under was released in 1978. Given the iconic nature of both songs in Australia, if they are so similar as to constitute an infringement claim, why was this not detected until an episode of Spicks and Specks, a popular Australian-themed music quiz show, highlighted the similarities between the works in 2007. This lack of aural similarity was highlighted in EMI’s submissions. However, this argument was not afforded weight by the trial judge or the Full Court as a result of the test’s requirement of objective similarity.

After examining Australian copyright law as it stands, as highlighted by Jagot J ‘it cannot be doubted’ that the reproduction of Kookaburra in Down Under satisfies the requirements of an infringement claim. This is despite the fact that Down Under does not use the lyrics of Kookaburra, nor is it used as a round or in a folk song context. Men at Work’s use of Kookaburra does not fit within the fairly circumscribed fair dealing exceptions in ss 40-43 of the Copyright Act, nor even the newly introduced parody and satire exception in s 41A. Arguably these fair dealing exceptions should be expanded to strike a better balance between the public benefits gained in original compositions and commercial reward in recognition of the effort involved in composing original music.

Following the precedent of this case and its application of copyright principles, it is arguable that similar litigation may be increasingly seen in the courts. The method in which damages are calculated may provide means to mitigate the ramifications of copyright infringement. Nominal damages in recognition of the artistic endeavour involved in creating original works is more suitable in cases such as this rather than damages that are calculated with deterrence in mind. The prospect of nominal damages would serve as a deterrent to vexatious litigants.

Phoebe Vertigan^[∗]

^[1] This case note is confined to the EMI’s appeal of Jacobson J’s finding of copyright infringement. It will not consider the second cross appeal regarding two Qantas advertisements that contained an orchestral version of Down Under and if these advertisements constituted infringement. It does not address whether the granting of licenses by the copyright holders in Down Under constituted authorisation of infringement. The dispute regarding authorisation of infringement has been remitted to the trial judge.

^[2] This was confirmed in Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd [2009] FCA 799.

^[3] In copyright law this means a defendant’s intention to take advantage of the skill and labour of a claimant, with the High Court in IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458 recognising that this is an important inquiry at [171].

^[4] IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458, [28].

^[5] For further discussion see IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458, [154].

^[6] EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd [2011] FCAFC 47; (2011) 191 FCR 444, [96], [221], [254].

^[7] D’Almaine v Boosey [1835] EngR 557; (1835) 160 ER 117, [302], [124].

^[8] This is a well established principle, see Gibbs CJ in SW Hart & Company Pty Ltd v Edwards Hot Water Systems [1985] HCA 59; (1985) 159 CLR 466, [472].

^[9] See Metricon Homes Pty Ltd v Barrett Property Group Pty Ltd (2008) 248 ALR 364, [23]; Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd [2008] FCAFC 197; (2008) 172 FCR 580, [41].

^[10] EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd [2011] FCAFC 47; (2011) 191 FCR 444, [198].

^[11] EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd [2011] FCAFC 47; (2011) 191 FCR 444, [66].

^[12] Emmett J at [47] citing Austin v Columbia Graphophone Company Ltd [1917-1923] MacG Cop Cas 398, [408].

^[13] Francis Day & Hunter Pty Ltd v Bron [1963] Ch 587 [614].

^[14] EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd [2011] FCAFC 47; (2011) 191 FCR 444, [198].

^[15] Ibid [199].

^[16] Ibid.

^[17] EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd [2011] FCAFC 47; (2011) 191 FCR 444, [54], [188].

^[18] Ibid [190]. See Designers Guild v Russell Williams (Textiles) Ltd [2000] UKHL 58; [2000] 1 WLR 2416 [2425].

^[19] EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd [2011] FCAFC 47; (2011) 191 FCR 444 [28].

^[20] Ibid [198].

^[21] EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd [2011] FCAFC 47; (2011) 191 FCR 444, [90].

^[22] Ibid [72].

^[23] The transcript of Gummow and Bell JJ’s refusal to grant special leave of appeal to the High Court can be found at EMI Songs Australia Pty Ltd v Larrikin Music Publishing [2011] HCATrans 284.

^[∗] Final year BA-LLB (Hons) student at the University of Tasmania, and co-editor of the University of Tasmania Law Review for 2011.