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Focus: Final laugh in Kookaburra copyright case?

4 April 2011

In brief: The Full Court of the Federal Court has rejected the appeal from an earlier decision that found Men At Work's hit song Down Under infringed the copyright in the popular folk tune Kookaburra Sits in the Old Gum Tree. EMI's liability for the authorisation of infringement is yet to be determined. Partner Miriam Stiel (view CV) and Law Graduate Tracy Lu report on this latest decision.

How does it affect you?

  • The Full Court substantially upheld the primary judge's findings on the issue of 'substantial part' and clarified the application of the test of an 'ordinary reasonably experienced listener'.
  • The decision1 also demonstrates that where copyright infringement has been found, subsequent licensing of the infringing work may expose the licensors to further liability for the authorisation of copyright infringement.

Background

Following Justice Jacobson's first instance decision in February 2010, EMI appealed against the finding of infringement on the ground that Down Under reproduced a 'substantial part' of Kookaburra and against the dismissal of its proceedings, alleging that Larrikin had made unjustifiable threats of copyright infringement. Larrikin cross-appealed from the finding that EMI had not authorised acts of infringement in relation to other works: in particular, two advertisements published by Qantas.

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The decision

The Full Court, comprising Justices Emmett, Jagot and Nicholas, dismissed both of EMI's appeals, upholding the decision of infringement on the ground of reproduction of a substantial part of the original work. Larrikin's cross-appeal was allowed in part, with the Full Court dismissing the claim of authorisation for two Qantas advertisements but remitting to the primary judge the claim in relation to other works.

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Reproduction of 'substantial part'

The Full Court stated that the question of whether the reproduction is of a substantial part is a matter of 'impression and degree' and, in the absence of any error in principle applied by the primary judge, an appellate court should show a measure of deference.

The court rejected EMI's argument that the trial judge had not established that the two bars of Kookaburra in question required skill and originality to compose. Justice Jagot, in particular, drew attention to the difference in the application of originality in the context of compilations (such as in IceTV 2 ), which require more attention to be paid to the issue of looking at and comparing the two works as a whole, as opposed to musical works, where it is not impermissible to treat each individual note as a 'sliver' worthy of copyright protection. Justice Nicholas suggested that while it is convenient in determining the question of substantiality to ask whether the part would be protected as a work in its own right, this is not necessary.

In rejecting the suggestion that infringement requires a positive finding of an intention to take advantage of the skill and labour of the author of the original work in order to save effort in the creation of the allegedly infringing work, Justice Jagot also noted that in compilation cases, intention takes on a greater significance, due to the difficult factual issues of distinguishing between the protection of information and the form in which it is expressed.

The Full Court emphasised that the question of resemblance between the works is an objective one, so the fact that the resemblance was subjectively unnoticed for 20 years by a number of actual listeners is irrelevant. In applying the test of whether an 'ordinary reasonably experienced listener' would note the resemblance, the listener is not precluded from focusing on particular parts of the work, listening to the work repeatedly or having regard to expert views.

Justice Emmett expressed some concern about the outcome of the case, noting that the reproduction of the melody of Kookaburra in Down Under was a tribute to the iconicity of Kookaburra, which occurred many years after the death of the original composer, whose rights had been assigned to a third party, and questioning the longer duration of protection for copyright works compared with inventions. This may be an issue for consideration by the Australian Law Reform Commission in the upcoming copyright inquiry that was announced by the Federal Attorney General in February 2011.

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Authorisation

Larrikin also argued that EMI had authorised infringement of copyright by granting licences to use Down Under in a variety of other works, including two Qantas advertisements. The Qantas advertisements were found not to have reproduced a substantial part of Kookaburra, so the question of authorisation did not need to be considered. However, the Full Court considered that the trial judge had not adequately dealt with licenses granted to parties other than Qantas and has remitted that issue back to the trial judge, meaning that the closely followed saga will continue.
 

Footnotes
  1. EMI Songs Australia Pty Limited v Larrikin Music Publishing Pty Limited [2011] FCAFC 47.
  2. IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458. 

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