Infringement of copyright in musical works: a riff Down Under

Author: Julian Gyngell (Kepdowrie Chambers Wahroonga, Sydney, Australia)

Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited [2010] FCA 29 (4 February 2010)

Citation: Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpq053

The Federal Court of Australia has held that Men at Work's iconic Australian ‘pop’ song ‘Down Under’ infringes the copyright in the children's song ‘Kookaburra sits in the old gum tree’.

Legal context

The Copyright Act 1968 provides that copyright is infringed when someone (without the permission of the copyright owner) reproduces a substantial part of a copyright work (in this case, the musical work Kookaburra). ‘Reproduction’ requires (i) an ‘objective similarity’ between the two works and (ii) a ‘causal connection’ between the works, ie the defendant must have copied from the plaintiff's work (even if only subconsciously).

EMI admitted that the composers had copied from Kookaburra but denied that the copying constituted an infringement of copyright. The second element (the causal connection) was therefore not disputed and the two principal issues were:
* whether there was a sufficient degree of objective similarity between a particular flute riff in Down Under and two of the bars in Kookaburra; and
* if so, whether the two bars in Kookaburra that were reproduced in Down Under were a substantial part of Kookaburra, that question being determined by a quantitative and qualitative consideration of the bars reproduced.
Copyright 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 infringing work.

Facts

Kookaburra, a short musical work (only four bars long), was written by Marion Sinclair in 1934 for a competition conducted by the Girl Guides Association. However, two of those four bars are reproduced in a distinctive flute riff which was included in Down Under. Larrikin's expert witness described the two bars of Kookaburra as its ‘signature’ and the flute riff in Down Under as its ‘hook’, that is:
* a short instrumental figure which (with luck) proves to be instantly memorable and recognisable every time the song is played.
* Larrikin alleged that EMI infringed its copyright in Kookaburra on the basis that the flute riff in Down Under reproduced a substantial part of Kookaburra.
A significant obstacle for Larrikin to overcome in order to establish ‘objective similarity’ was the fact that no part of the two songs sounded similar or evoked a recollection of the other. In this regard, his Honour accepted that there are ‘difficulties’ in recognizing Kookaburra in the Down Under flute riff. The expert musicologist called by Larrikin agreed that the harmony of Down Under is different to that of Kookaburra and, although he expressed the view that the melody of the flute riff is the same as the melody of the first two bars of Kookaburra, he conceded that ‘it has a different feel’. Further, as his Honour stressed at the beginning of his judgment:
... what must be borne in mind when considering the question of infringement is that, on each occasion when the flute riff appears in Down Under, it includes other notes which were not part of Miss Sinclair's composition.
Indeed, somewhat bizarrely, the similarity between the two songs only came to light when a music-themed television quiz-show called ‘Spicks and Specks’ posed the question to the panel:
... name the Australian nursery rhyme that [the Down Under flute] riff has been based on.
The panel did not answer immediately and the excerpt from Down Under was played again. The host then prompted the panel: ‘this bit especially’ and one of the panel members eventually made the link. Once the first panel member gave the correct answer, the others recognized the connection (but only 28 years after the first release of Down Under).

This apparent problem for Larrikin was offset by three defining tell-tale signs of infringement. First, during certain live performances of Down Under, Mr Hay (one of the composers of Down Under and a member of the Men at Work band) regularly sang the relevant bars of Kookaburra in place of the Down Under flute riff. Secondly, Mr Ham (the composer who added the flute riff to Down Under) conceded in his affidavit that he knew about Kookaburra at the time of composing the riff for Down Under adding that his aim in adding the flute to Down Under was to inject some ‘Australian flavour’ into the song. Mr Ham was not called by EMI as a witness and his Honour drew adverse inferences against EMI from his failure to appear. Thirdly, in the music video of Men at Work performing Down Under, Mr Ham appears squatting in a eucalyptus tree playing the flute riff in question (the eucalyptus tree being a favourite place for kookaburras to sit and watch for their prey).

Analysis

These three ‘tell-tale’ signs certainly are awkward to address when faced with an allegation of copyright infringement. However, with respect, they are not evidence of any objective similarity, being entirely consistent with the causal connection between Kookaburra and the flute riff in Down Under (a connection that was admitted), but how do these matters establish an objective similarity in circumstances where the songs do not in fact sound similar to the ear?

In addition to these three ‘tell-tale’ signs, his Honour was guided by the evidence of the parties' respective experts. EMI's expert expressed the view that the combination of other musical elements in Down Under with the bars of Kookaburra created a new musical phrase which distinguished it from Kookaburra. However, he also conceded that the notes from Kookaburra play ‘an important, indeed essential function’ in Down Under's flute riff.

Ultimately, his Honour based his decision (on objective similarity) on being satisfied that a ‘sensitised listener’ can detect the aural resemblance between the bars of Kookaburra and the flute riff in Down Under. However, I respectfully submit that the ‘sensitized listener’ test is not the proper test. It sits at odds with his Honour's own apparent acceptance of EMI's submission that his Honour, during the course of the trial, quite naturally would become ‘sensitised’ to the similarity between the melodies and, for this reason, would perceive an objective similarity between them. In response to this submission, his Honour stated that:
... the test is that of the ordinary reasonably experienced listener ...
This test was applied in Francis Day & Hunter Ltd v Bron [1963] 1 Ch 587, where Willmer LJ stated that what is required is:
... a sufficient degree of objective similarity between the two works ...
such that (per Wilberforce J, the trial judge)
... an ordinary reasonably experienced listener might think that perhaps one had come from the other.
The authority of Francis Day has never been doubted. The High Court of Australia has cited the case on many occasions with approval (see S. W. Hart & Co Proprietary Limited v Edwards Hot Water Systems (1985) 159 CLR 466) and his Honour considered the case to be
authority for a number of propositions which are relevant to the present proceedings.
Accordingly, the fact that a ‘sensitized listener’ could detect the aural resemblance must surely be irrelevant (when assessing ‘objective similarity’) because such a listener is not (necessarily) an ordinary reasonably experienced listener.
The inconsistency perhaps derives from the following statement based on Lord Millett's comments in Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416:
The comparison is not concerned with deceptive resemblance as in a passing-off action. This is because the copyright owner's complaint in an infringement action is concerned not so much with resemblance between the works but that the infringer has copied a substantial part of the copyright work.
Designers Guild concerned two artistic designs, one of which was alleged to infringe the copyright in the other. Lord Millett was therefore expressing the view that an action for infringement of artistic copyright is not concerned with the appearance of the defendant's work but with its derivation. It can therefore be argued that the relevant test when comparing two artistic works is different to the test to be applied when comparing two musical works. Lord Millett was clear in expressing his view that the overall appearance of the defendant's artistic work may be ‘very different’ to that of the plaintiff's artistic work and that fact alone does not mean that the defendant's work does not infringe the plaintiff's copyright. Whereas, for example, in Re CBS Records Australia Limited v Guy Gross [1989] FCA 404, Justice Davies (referring to Austin v Columbia Gramophone Co Ltd (1923) Macg CC 398 and Francis Day) noted that, in those cases involving musical works:
... the importance of aural perception was emphasised.
Special mention should also be made of EMI's decision not to call Mr Ham and the inferences that were drawn by the court. His Honour inferred not merely that Mr Ham's evidence would not have assisted EMI's case but also that Mr Ham deliberately reproduced a part of Kookaburra for the purpose of evoking an Australian flavour in the flute riff. It was this second inference that reinforced his Honour's finding of objective similarity. With respect, drawing the inference is one thing, but Mr Ham's design to convey an Australian flavour (whatever that might mean) does not of itself establish objective similarity. His Honour had himself earlier stated that:
Copyright protection is not concerned with ideas of Australianness but with the form of the copyright owner's expression.
Turning to the second issue of substantial reproduction, his Honour noted that Kookaburra is a short work and that it is not reproduced in Down Under as a round. However, EMI did not suggest that Kookaburra is so simple or lacking in substantial originality that a note-for-note reproduction of the entire work was required to meet the ‘substantial reproduction’ test.
The short answer to the qualitative aspect of the test was Mr Hay's performance of the words of Kookaburra to the tune of the flute riff in Down Under. Although the reproduction did not completely correspond to the phrases of Kookaburra, his Honour was satisfied that Mr Hay's performance of the words of Kookaburra was evidence that a substantial part had been taken.

Moreover, although the question of quantity is secondary to that of quality, his Honour noted that two of the four bars or phrases of Kookaburra were reproduced in Down Under.

Practical significance

The interesting aspect of this case (so far) is the evidence that his Honour accepted (and the inferences that he drew) as being persuasive for the purposes of establishing objective similarity. I have already commented in relation to these matters above. For example, in relation to ‘objective similarity’ Justice Jacobson commented:
perhaps the clearest illustration of the objective similarity is to be found in Mr Hay's frank admission of a causal connection between the two melodies and the fact that he sang the relevant bars of Kookaburra when performing Down Under at a number of concerts.
This author submits that one must establish an objective similarity to the ear of the ‘ordinary reasonably experienced listener’ such that (paraphrasing Wilberforce J in Francis Day) he/she might think that perhaps the flute riff in Down Under had come from Kookaburra. The actions and admissions of Messrs Ham and Hay, although consistent with the causal connection, do not sustain a finding of ‘objective similarity’.

Of further (and future) interest is the assessment of damages. Subject to the outcome of EMI's appeal against the present decision (currently pending), the court must address the question of what percentage of the income of Down Under should be paid to Larrikin (unless the parties agree terms of settlement). Although this issue was not determined in these proceedings, his Honour emphasised that:
the findings I have made do not amount to a finding that the flute riff is a substantial part of Down Under or that it is the ‘hook’ of that song.
His Honour also noted:
... there may be some force in [EMI's] submission that there is considerable tension between Larrikin's emphasis on the overall Australian flavour of Down Under (which employs many Australian images apart from Kookaburra) and its claim to a percentage interest of 40% to 60% of the work. That is not a question which arises in this part of the proceedings and of course I do not express a concluded view.
Larrikin is claiming a percentage interest of 40 to 60% in Down Under which, if successful, would result in a significant award of damages. That claim seems to have been pre-empted (in part) by his Honour's comments above; this author believes that the judgment may be a pyrrhic victory (in financial terms) for Larrikin. The effect of the limitation period is also unclear; that alone may neuter significantly the quantum of damages depending on the facts.

Damages under the Copyright Act are to compensate for the loss suffered as a result of the infringement. The measure of damages is, so far as is possible to calculate, the amount of money that will put Larrikin in the same position as it would have been in if EMI had not infringed its copyright in Kookaburra. In assessing Larrikin's damages claim, there are some broad principles to be applied: first, Larrikin will have the burden of proving its loss; secondly, the object is to compensate Larrikin and not to punish EMI; and, finally, although other cases may be of assistance, each case must be decided on its own particular facts.

The concluding sentence of the judgment reads:
[EMI] submit that Larrikin's claim to be entitled to 40-60% of the income grossly over-reaches a proper allocation of any such entitlement. That is a matter to be determined in the final part of this proceeding.
We wait with interest.

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