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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.


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).


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.

JIPLP article cited with approval in L'Oréal appeal

Today's ruling of the Court of Appeal for England in England and Wales (noted here on the IPKat) in L'Oréal SA & Ors v Bellure NV & Ors [2010] EWCA Civ 535 gives great pleasure to the publishers and editorial team of JIPLP, since it's probably the first time that an article in JIPLP has been cited with approval in the Court of Appeal -- and the approval comes from the United Kingdom's leading appellate intellectual property judge, Lord Justice Jacob, who says:
"17. ... I regret that the ECJ in this case has not addressed the competition aspects of what it calls "riding on the coattails". The trouble with deprecatory metaphorical expressions such as this ("free-riding" is another), containing as they do clear disapproval of the defendants' trade as such, is that they do not provide clear rules by which a trader can know clearly what he can and cannot do.
I do not stand alone. For instance [Darren] Meale and [Joel] Smith wrote this in the Journal of Intellectual Property Law Practice (2010) Vol 5, 96 at 103:
While the ECJ's conclusion largely condemns the practices of the defendants in L'Oréal, it does so without providing clear guidance as to where the line is drawn between unfair and fair advantage. It might be read to suggest that all advantage is unfair. This would render the word 'unfair' in the article redundant, as was Jacob LJ's concern when he reviewed the previous free-riding authorities in the Court of Appeal".

Buff up your submissions!

I have just disovered today the existence of a language polishing service, provided by Oxford University Press. This service is aimed principally at articles which have reached the presubmission stage, where the author seeks a degree of assistance in making that article easier to read and therefore easier for peer reviewers to assess. According to OUP,
"This service is for authors who do not possess good English language skills to edit their manuscripts. The aim is to enable referees to evaluate the content of the manuscript. English-language editing will: correct grammar, spelling, and punctuation; delete redundant words and phrases; replace inappropriate words and generally improve clarity; ensure that the tone of the language is appropriate ...".
There is a fee, but it can work out at as little as US$0.032 per word. For further information concerning this service please click here; for further details of charge click here.

Outsourcing of IP office functions: the June editorial

The June 2010 issue of the Journal of Intellectual Property Law and Practice is now available online to subscribers. The contents of this issue are available to everyone, here. The June Editorial addresses a subject of some sensitivity -- the prospect of outsourcing of national intellectual office functions:
"Outsourcing of IP office functions: no longer a joke

For the second year running, I draw on an April Fool story as inspiration for an Editorial. Last year's story related to the establishment of a World Intellectual Property Court; this year's featured the announcement that the functions of the UK's Intellectual Property Office were being outsourced to India.
Reactions to the story were telling. While some people recognized instantly that it was no more than a harmless piece of fun and rejoiced in it, some angry responses were received. These included complaints that it was not proper to make fun of the Intellectual Property Office—which has already been relocated from high-rent Central London to economy-rich Newport—at a time when public spending cuts are under review; that the subject should not be raised in case it inspires the government to take such a step; and that it was disrespectful towards Indians to suggest that the outsourcing of any IP-related administrative activity to India was a joke. Not all correspondents were angry: some (mainly IP owners rather than their representatives) said that anything which reduces the cost of the patent system to its users should be welcomed.

The nature and the extent of the reaction suggested that the outsourcing of the patent examination and grant functions is not far-fetched and that—whether it is to India or anywhere else—it is an outcome which is feared by many people who use the system regularly.

First, the desirability of outsourcing patent office services depends on what one regards as the portfolio of skills which an IP office is expected to bring to bear at the behest of its users. Some skills are relatively mechanical, such as reviewing relevant prior art, while others depend upon a degree of judgment and experience, such as the sort of advisory role which increasingly the UK's office (among others) seek to play in providing sage counsel for small- and medium-sized users and would-be users. The mechanical roles are more portable, the others less so.

Secondly, as IP offices increasingly cooperate with one another, the ease with which one may fulfil the role of another increases. Bilateral and multilateral initiatives such as the Patent Prosecution Highway (PPH) are likely to accelerate this trend. While no country from the developing world, nor even any BRIC (Brazil, Russia, India, and China) jurisdiction, has yet signed up to a PPH venture, it is difficult to imagine that the early signs of mild success will not trigger further arrangements that will smooth the interoperability of the world's examination and grant facilities. And to the extent that this happens, outsourcing of shared services from a more cost-heavy economy to one which is less so may gain in its appeal.

Thirdly, continued technological and informatic developments make it increasingly easy to implement any form of complex outsourcing of technical and administrative functions. Internet access and cloud computing have long ago bypassed the old notion that each national office has to have its own databases of local patent applications and prior art physically present in its own territory; free or low-cost instant communications enable offices to engage in real-time dialogue, while digital technologies ensure the instant transmission of text and images, only a couple of decades after the grinding sounds of the old analogue fax machine were welcome music in the ears of patent examiners everywhere.

Fourthly, we have increasingly come to accept both the internationalization and the globalization of IP grant, exploitation, and enforcement. While the patent was once a consequence of the exercise of a monarch's royal prerogative, and thus inherently national, it is now far removed from its historical roots—a property right to which its owner is entitled by his status as an inventor or his contractual right as the inventor's employer. Some scope for purely national interest will always remain, as in the case of the trade mark where national offices are the guardians of cultural as well as commercial considerations. But we live in a new era now and we must be prepared to evaluate every suggestion on its merits, however formerly unthinkable it might have been".

"Hauling in the Middleman" -- an advisory notice

The current (May 2010) issue of JIPLP contains an article by James L. Bikoff, Keri A.F. Johnston, David K. Heasley, Phillip V. Marano and Andrea Long entitled "Hauling in the middleman: contributory trade mark infringement in North America" (Journal of Intellectual Property Law & Practice 2010 5: 332-343). According to the abstract:
"Legal context: This article discusses the differing positions in the US and Canada in relation to contributory trade mark infringement. In the US, indirect liability has blossomed from its ancient roots in tort law to reach an increasingly diverse spectrum of intermediaries and this can consistently be found at the intersection of IP law and the law of the internet. The position in Canada differs in that there is no history of "secondary" liability available.

Key points: In the US part of the article, the authors track the historical development of indirect trade mark liability, from its bricks and mortar origins to it modern application in relation to intermediaries such internet service providers for example. In Canada where this option is not possible, the issue is how a brand owner can frame a legal challenge against an intermediary when the ability to argue "secondary" liability from a trade mark perspective does not exist.

Practical significance: The authors suggest that the evolution of indirect trade mark liability in American jurisprudence may inspire lawyers in other jurisdictions grappling with similar problems".
Events have moved on since this article was sent for publication. Accordingly James L. Bikoff, David K. Heasley and Phillip V. Marano have kindly sent the jiplp weblog the following post-publication advisory notice:
"Since Hauling in the Middleman went to press, two key decisions – Tiffany (NJ) Inc. v eBay, Inc. and Louis Vuitton Malletier S.A. v Akanoc Solutions, Inc. – have further solidified the jurisprudence of contributory trade mark infringement in the United States. The decisions delineate the knowledge and conduct that constitute contributory infringement by Internet Service Providers.

In Tiffany v eBay 2010 U.S. App. LEXIS 6735 at *37; No. 08-3947-CV at *29 (2nd Cir., April 1, 2010), the United States Court of Appeals for the Second Circuit affirmed the judgment of the Southern District of New York, rejecting Tiffany’s claims of direct and indirect trade mark infringement against the online auction house: “For contributory trademark liability to lie, a service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods. Some contemporary knowledge of which particular listings are infringing or will infringe in the future is necessary.”
In Louis Vuitton v Akanoc Solutions No. 07-03952 JW D.E. # 281 at *18, fn. 19 (N.D. Cal., March 19, 2010), see also 2010 U.S. Dist. LEXIS 34021, the Northern District of California held that Akanoc “knew of the direct infringement occurring on websites hosted on their servers” and “w[as] in a position to directly control and monitor the instrumentality (the servers) used by third party direct infringers.” Akanoc had “numerous tools at their disposal for monitoring their servers and terminating abusive users” including “the ability to suspend a particular user, disable IP addresses used by a particular website or if necessary, unplug a server the contained the data for a particular website.” Accordingly, Akanoc could be held liable for “inaction after receiving notice of trademark infringement.”
These cases addressed opposite factual scenarios. In one case, eBay took steps to prevent counterfeiting on its online auction service, and was shielded from contributory liability; in the other case, Akanoc continued to supply webhosting services to known counterfeiters, and was held liable for contributory infringement. Both decisions followed a similar line of reasoning to reach those outcomes: specific notice of infringement cannot be ignored by Internet Service Providers, who owe a duty to take appropriate anti-counterfeiting measures or risk liability for contributory trade mark infringement.

Both eBay and Akanoc are of particular importance to United States trade mark owners. However neither case is the final word on Internet Service Provider liability for contributory trade mark infringement. Tiffany may still petition for review by the United States Supreme Court, and Akanoc may still appeal to the United States Court of Appeals for the Ninth Circuit".
For details of the authors click here.

JIPLP: a production editor writes ...

Each issue of JIPLP is the result of a great deal of team effort. Authors, editors, setters and printers strive to produce each month's journal on time, with the right number of pages and with well-presented contents, in some cases simultaneously working on materials for future issues. Here the jiplp weblog presents a short piece by a highly-valued member of the production team, Siobhán Fogarty. Siobhán (the name is Irish and it's female, corresponding to "Joan" in English) is JIPLP's Production Editor, in which role she has come to learn a great deal about IP. She writes:
"As a production editor, I flick over hundreds of articles on various niche academic interests, but rarely have the luxury of being able to set aside some time to read them. IP law was never something I knew much about prior to working for Oxford Journals, the DRM system being as much as I had come across at that point. This appeared to me illogical, unfair, outdated and based solely on greed of the music and techonological industries, without the rights of the artists or listeners really taken into consideration. I am a huge fan of open-source software and Creative Commons licences but, working in publishing, know how important it is for the creator of an original work to be able to benefit financially. I do not feel that it is fair to expect our artists to adhere to the 'starving-in-a-garret' stereotype; I believe strongly that, if we value art and cultural pursuits for their own sakes, we should allow people to make their living from it, whilst maintaining the public's right to access culture. This right is taken seriously in Britain, as shown by the superb system of free galleries and museums. One of the reasons I was so attracted to working for OUP is the company's dedication to the dissemination of knowledge, which extends to voluntarily reducing profit in order to remain accessible to institutions in developing countries.
Beginning my employment at OUP with these slightly confused ideas of IP law, working on JIPLP has been a genuinely pleasurable education. Through the nuts-and-bolts method of publishing papers, checking citation styles, correcting style errors and writing emails to untold numbers of lawyers, I have come across nuggets of pure philosophy. Tomasz Rychlicki's article about the ownership of graffitti art on trains travelling across EU borders was a real eye-opener (JIPLP Volume 3 issue 6). It was facinating to see a case study which had no real financial or legal interests involved (aside from the question of whether any of the art was legal at all), and therefore stemmed entirely from an exploration of the theoretical issues surrounding creative ownership and, intriguingly, how this could change day-by-day according to different laws, as the train moves through different countries.
Julian Gyngell's article on 'Down Under' (now available on Advance Access), a song previously best known for being a novelty single by a man who went on to write the hauntingly beautiful 'serious' work Transcendental Highways (although I for one take my novelty singles very seriously) is, to me, equally thought-provoking. It raises questions such as when homage becomes theft, whether a riff is vital to a song's integrity and character, and when a eucalyptus becomes a gum tree (some trees from the eucalyptus family are called gum trees, whereas others are not - the presence of a eucalyptus tree in the video for 'Down Under' was used as evidence of infringement, but it was not mentioned whether this was in fact a gum tree, which is the more specifically named resting-place of the kookaburra in the original composition). These are certainly not easy questions to ascertain in a post-modern culture where whole genres have risen around the mash-up, and sampling is taken for granted as a sign of respect or affectionate mockery. To use a riff from a folk song in order to impart something into a larger composition is not a new practice, but clearly one that has implications for IP law, and which could cause problems when used in cross-cultural 'fusion' art.
This is why I find IP law to be so fascinating: higher notions of fairness and justice are played out in individual cases, and, whilst I cannot pretend to have a sustained interest in some of more industrial areas of IP law, as a lay person reading the journal I have had my eyes opened to the ways in which it affects our whole culture, high-brow and low, popular and esoteric. Whilst my own personal interest lies with notions of creative ownership in culture, and a fascination with the complications of Web 2.0, and what this could potentially mean for the sharing of knowledge and ultimately, the shaping of our society, I recognise that the issues behind trade marks, copyright, slogans, logos and designs have implications far beyond 'culture for culture's sake', and hope to continue to learn from and enjoy the journal as long as I can".