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Focus: Copyright infringement of well-known musical work

8 February 2010

In brief:  A Federal Court ruling that Men At Work's hit song Down Under infringed the copyright of popular folk tune Kookaburra sits in the old gum tree recognises that infringement occurs where a substantial part of a copyright work is reproduced, even if it does not amount to a substantial part of the other work. Partner Jim Dwyer (view CV) and Lawyer Louise Chau report on the case.

How does it affect you?

  • The court's recognition in Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited 1 of copyright infringement across a period of more than 25 years by the composers and music publishers of a well-known hit song shows that copyright owners may not enjoy the copyright protection they might assume they have.
  • Infringement occurs where a 'substantial part' of a copyright work is reproduced in another work, even if the reproduced part does not amount to a substantial part of the other work.

The facts

Kookaburra is a short (four bar) well-known musical work that was written and composed in about 1934, by Ms Marion Sinclair, who, throughout her life, granted permission for use of the work in school and Girl Guides song books. In its earlier judgment2 , the Federal Court made a preliminary finding that the copyright in Kookaburra had effectively been assigned to the music publishing company Larrikin at some stage following Ms Sinclair's death.

In 2007, Larrikin became aware of a resemblance between two bars of the Kookaburra work and the flute riff in the 1981 recording of Down Under. Larrikin brought claims of copyright infringement against Mr Colin Hay and Mr Ronald Strykert, the composers of Down Under, and against EMI Songs Australia and EMI Music Publishing, respectively the owner and licensee of the copyright in the words and music of Down Under. 

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The issues

The Copyright Act 1968 (Cth) provides that copyright is infringed where a person, without the licence of the owner of the copyright, reproduces a substantial part of the work. In determining whether infringement had occurred in this case, the Federal Court considered the following two principal issues:

  • whether there was an objective similarity between the two works; and, if so
  • whether the relevant bars of Kookaburra that were reproduced were a substantial part of that work.

Larrikin also advanced trade practices claims against the Australasian Performing Right Association (APRA), the organisation that collects and distributes licence fees for public performance and communication of members' musical works, and the Australasian Mechanical Copyright Owners Society (AMCOS), the organisation that collects and distributes mechanical royalties for the reproduction of its members' musical works.

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Objective similarity

Justice Jacobson followed the approach taken in the English case of Francis Day & Hunter Ltd v Bron3 , in which it was stated that objective similarity in musical works is 'not to be determined by a note for note comparison but is to be determined by the eye as well as the ear'. His Honour concluded, based on his own aural and visual comparisons of melody, key, tempo, harmony and structure, as well as expert evidence, that there was a sufficient degree of objective similarity between the bars of Kookaburra and Down Under to amount to reproduction. 

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Substantial part

Justice Jacobson referred to the judgments in IceTV Pty Ltd v Nine Network Australia Pty Ltd 4 as authority that the issue of 'substantial part' is to be determined more by the quality than the quantity of what is copied. Justice Jacobson relied on the fact that Mr Hay had on occasions sung the words of Kookaburra where the flute riff would ordinarily be played in Down Under, to determine that the qualitative test had been met. Moreover, he noted that, while quantity is a secondary question, two of the four bars of Kookaburra had been reproduced, thereby strengthening his conclusion that a substantial part of Kookaburra had been taken. 

However, Justice Jacobson concluded that a Qantas advertisement that used only the second bar of Kookaburra did not amount to a reproduction of a substantial part.

His Honour emphasised that, although he considered a substantial part of Kookaburra had been reproduced in Down Under, that did not amount to a finding that the part that was taken amounted to a substantial part of Down Under. It is worth noting that additional notes were included in the flute riff of Down Under that did not appear in the original Kookaburra bars.

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Trade practices claims

Larrikin made further claims in relation to misrepresentations by the respondents to APRA and AMCOS that:

  • the respondents were entitled to all the amounts payable by APRA and AMCOS to the performers and publishers of Down Under; and
  • Down Under did not infringe the copyright in any other work. 

APRA and AMCOS have in place agreements providing that its members notify the organisations of the correct recipients of performance and mechanical income for a particular work. Larrikin argued that the respondents, who were members of APRA and AMCOS, failed to make the correct notifications and misrepresented their entitlements. Justice Jacobson agreed, finding that the representations of the respondents were misleading and deceptive and, but for those representations, APRA and AMCOS would not have paid the relevant entitlements to the respondents.

It is worth nothing that, although the respondents' representations were made to APRA and AMCOS from about 1982, Justice Jacobson accepted that they were continuing representations, and so the limitation period under s82 of the Trade Practices Act 1974 (Cth) did not apply.

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Costs and damages

Larrikin submitted that it should be entitled to 40-60 per cent of the income earned by the respondents in relation to Down Under. It is expected that a decision on costs and damages will be made on 25 February 2010.

Footnotes
  1.  [2010] FCA 29.
  2. Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited [2009] FCA 799.
  3. [1963] Ch 587.
  4. (2009) 254 ALR 386.

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