The Federal Court yesterday handed down its highly anticipated decision relating to the copyright dispute in respect of the well-known songs 'Down Under' and 'Kookaburra Sits in the Old Gum Tree' (Kookaburra).
Justice Johnson held that 'Down Under' reproduces a substantial part of the copyright in Kookaburra and, therefore, infringes that copyright.
Overview of facts
Please see our update dated 31 July 2009 for a detailed explanation of the factual background.
By way of overview
- The copyright dispute between Larrikin Music Publishing Pty Ltd (Larrikin) and EMI Songs Australia Pty Ltd, EMI Publishing Australia Pty Ltd (collectively, EMI) and the composers of 'Down Under', Colin Hay and Ron Strykert (collectively, the composers) was sparked by the popular television show 'Spicks and Specks' when a question on the show was asked: 'which children's song appeared in the Down Under song?'. The answer was given as: Kookaburra.
- Larrikin issued copyright infringement proceedings against EMI and the composers.
- A threshold issue that the Court had to consider was whether Larrikin was the owner of the copyright in Kookaburra and, therefore, whether Larrikin was entitled to bring the copyright infringement proceedings against the composers. The Court ultimately decided that Larrikin was the owner of the copyright in Kookaburra.
The main issue before the Court was whether the famous flute riff in 'Down Under' reproduced a substantial part of Kookaburra.
The analysis conducted by the Court began with the Court confirming that the concept of reproduction in relation to copyright law involves two elements:
- a sufficient degree of objective similarity between the two works; and
- a causal connection between the copyright work and the infringing work (ie that the infringer has copied the copyright work).
If these two elements are established, the Court said the analysis then proceeds to considering whether a substantial part of the copyright work has been reproduced.
The Court found that there was a sufficient degree of objective similarity between the bars of Kookaburra which are seen and heard in 'Down Under' and result in a reproduction of Kookaburra. Justice Jacobson came to this decision as a result of an aural comparison of the musical elements, a visual comparison of the notated songs, assistance from expert evidence given by musicologists and Mr Hay's evidence (discussed below). Although the flute riff in 'Down Under' does not contain the identical notes and pitches of Kookaburra, the Court accepted expert evidence that ultimately this is not sufficient to preclude a finding of objective similarity.
Mr Greg Ham, who added the flute riff in 'Down Under' was not called by EMI to give evidence. However, he did swear an affidavit which contained an admission that the purpose of adding the flute riff to the song was to add some Australian 'flavour'.
Due to EMI's failure to call Mr Ham, it was open to the Court to draw an inference that Mr Ham had purposefully reproduced the bars from Kookaburra to give the flute riff in 'Down Under' an Australian 'flavour'.
Reproduction of a substantial part
The Court reiterated that when deciding whether a substantial part of the work has been copied, it is much more a question of the quality, rather than the quantity, of what has been copied. Despite this, the Court did note that two of the four bars of Kookaburra had been substantially reproduced in 'Down Under', representing 50% of the song.
The Court explained that the features of the song which has been alleged to have been infringed (eg Kookaburra) must form a substantial part of that song, but need not form a substantial part of the infringing song (eg 'Down Under').
The Court also pointed out that its findings do not amount to a finding that the flute riff is a substantial part of 'Down Under' or is the 'hook' of that song.
Evidence of Colin Hay
Colin Hay, one of the composers of 'Down Under' and a former member of 'Men at Work', gave evidence that, although he did not realise at the time the video for 'Down Under' was made that the flute riff was a direct reference to Kookaburra, he now accepts that it was, although he did not concede it was an obvious reference.
Further, Mr Hay admitted that he sang the relevant bars of Kookaburra when performing 'Down Under' at a number of concerts since 2002.
Conclusion and damages
The Court held that 'Down Under' reproduces a substantial part of Kookaburra and, therefore, infringes copyright in the latter.
EMI and the composers had also brought a separate proceeding against Larrikin for unjustifiable threats of copyright infringement which the Court said should be dismissed.
The Court also held that Larrikin is entitled to recover damages from EMI and the composers for breaches of the Trade Practices Act 1974 (Cth) (TPA) and the Fair Trading Act 1989 (NSW) (FTA) (discussed in more detail below).
The question of what percentage of income of 'Down Under' should be paid to Larrikin will be determined at a later date.
The Court also considered whether two Qantas advertisements which featured an orchestral version of 'Down Under' infringed the copyright in Kookaburra. The Court held they did not as a substantial part of Kookaburra was not reproduced in the advertisements.
Larrikin made the following claims:
- a claim for past performance income. This fell under a different category to its claim for damages for copyright infringement because Larrikin has assigned its performance rights in Kookaburra to the Australasian Performing Rights Association (APRA); and
- a claim for mechanical income which is paid to the publisher (EMI) by the Australasian Mechanical Copyright Owners Society (AMCOS).
APRA and AMCOS, being copyright collecting societies, collect and distribute royalties on behalf of their members.
The basis of Larrikin's claims was that EMI and the composers had made misrepresentations to APRA and AMCOS that they were entitled to 100% of the income.
As a result, AMCOS and APRA relied on these representations in paying 100% of the income from 'Down Under' to EMI and the composers.
Larrikin's claim was that it had suffered loss or damage by reason of the misrepresentations under section 82 of the TPA and the corresponding provisions of the FTA.
The Court held in favour of Larrikin in relation to these claims. Larrikin also made a claim for unjust enrichment which was unsuccessful.
The issue of damages will be decided in the future. Larrikin is claiming a percentage interest of 40% to 60% in the work which, if successful, could result in a significant award of damages for the company.