Flagrant copyright infringement: Boomerang Investments Pty Ltd v Padgett (Liability)  FCA 535 (24 April 2020)
First published as part of Claire Gregg, Michael Caine, Miriam Zanker and Courtney White, ‘Current Developments – Australia: Full Court rejects “mental element” test in construction of Swiss-style claims: Mylan Health Pty Ltd v Sun Pharma ANZ Pty Ltd  FCAFC 116 (3 July 2020) and Flagrant copyright infringement: Boomerang Investments Pty Ltd v Padgett (Liability)  FCA 535 (24 April 2020)’ (2020) 121 Intellectual Property Forum 73.
Boomerang Investments Pty Ltd v Padgett (Liability)  FCA 535 is a case of “flagrant” copyright infringement of the musical work in the iconic song ‘Love is in the air’ (“Love”). It demonstrates that lyrics are not strictly confined to literary works, as the sound of those lyrics being sung can be taken into account as part of a musical work.
In 1977, Australian songwriting duo Vanda & Young composed the song Love. The song was published by J Albert & Sons Pty Ltd who later assigned the rights to Boomerang Investments Pty Ltd (“Boomerang”) in 2016. Boomerang also licensed rights to the Australasian Mechanical Copyright Owners Society Ltd (“AMCOS”) and assigned rights to the Australasian Performing Right Association Ltd (“APRA”) in 2016.
Sometime between 2008 and 2011, a Portland indie band called Glass Candy composed the song ‘Warm in the winter’ (“Warm”) that included the lyrics “love’s in the air”, arguably to the same melody as Love. Warm was eventually licensed to Kobalt Music Publishing Australia Pty Ltd. Mr Padgett and Ms Monahan, members of Glass Candy, adapted Warm for Air France’s marketing campaign between 2015 and 2018. The adapted song was called ‘France is in the air’ (“France”) and it was used by the French airline as their telephone hold music (on Air France’s toll-free Australasian phone line) and on their YouTube channel.
Copyright infringement of musical works
In determining whether the songs Warm and France infringed the copyright in Love in Australia, Justice Perram reinforced the existing approach from EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd  FCAFC 47 (“EMI”):
- Identify the work in which copyright subsists.
- Identify the part of the allegedly infringing work which is said to have been reproduced from the copyright work. This step involves answering two questions about the allegedly infringing work:
(a) Are the impugned portions of the allegedly infringing work objectively similar to the equivalent portions in the copyright work?
(b) Is there causal connection between those parts and the copyright work?
- Determine whether the part taken constitutes a substantial part.
In contrast to EMI where the infringing act was the making of a recording, the applicants in this case took a different course and argued that copyright infringement occurred each time Warm and/or France was made available for streaming or downloading on a number of online platforms in Australia, including YouTube. (This was because the original recordings of Warm and France were made in the United States of America (“US”) and therefore would need to be pursued under US, not Australian, copyright law). In addition, the playing of France as on-hold music in Australia was alleged to be a breach of the communication right.
This conduct was alleged by Boomerang to breach the copyright owner’s exclusive rights to reproduce a work in material form and communicate a work to the public. Vanda and Young’s claim for infringement of moral rights was barred by s.195AX of the Copyright Act 1968 (Cth) as the acts of infringement (changing the lyrics in a manner which the authors argued was prejudicial to their honour or reputation) occurred outside Australia.
A finding of objective similarity is determined by the aural perception of the ordinary, reasonably experienced listener and not by a note-for-note comparison. Justice Perram held the sung line ‘love’s in the air’ in Warm is objectively similar to the first two lines of each of the four verses in Love (“Love is in the air, everywhere I look around; Love is in the air, every sight and every sound”). However, Justice Perram did not consider the works to be objectively similar beyond the first two lines, stating “they just do not sound the same to me”.
The judgment at  set out the logical possibilities for causal connection, including that Glass Candy had either consciously or unconsciously copied the line and melody from Love.
Glass Candy denied having heard of Love but the facts otherwise demonstrated the duo had heard Love more than once at gigs at which they had performed. Despite Justice Perram highlighting that conscious copying did not automatically follow from their awareness of Love, he found Glass Candy knowingly copied the sung lyric “love is in the air” and its accompanying music.
Air France was held to have engaged in flagrant infringement, as it had concurrently sought (but failed to acquire) the licence from the applicants for the use of Love, when it acquired the licence for Warm.
Quality and quantity are both considered in determining whether there has been a reproduction of a substantial part of the original work (IceTv Pty Ltd v Nine Network Australia Pty Ltd (2009) 239 CLR 458). However, there is usually a greater emphasis placed on quality rather than quantity (EMI).
The five-note length of “love is in the air” was not “too short or too mundane” for this part of the musical work to be considered substantial. Justice Perram held the musical work taken from Love (the line ‘love is in the air’ sung to a particular melody) constituted a substantial part of the Love original musical work. However, the words “Love is in the air” alone did not constitute a literary work (lyrics alone) in their own right as his Honour held the expression was commonplace and not original.
Issue of standing
Due to the various licenses and assignments of the copyright in Love, there was an issue as to whether Boomerang had standing to claim certain acts of infringement. In particular, Boomerang could not make any infringement claim in relation to digital streaming of Warm or the on-hold music, as APRA held the digital streaming and communication rights. However, Boomerang and AMCOS both had standing to sue for infringement in relation to digital downloads of Warm.
Overall, Boomerang’s claim was only partly successful, and its victory was largely pyrrhic. Boomerang succeeded in its claim in relation to the digital downloads of Warm, and AMCOS and Boomerang were entitled to an injunction restraining Glass Candy from authorising or making available downloads of Warm in Australia. However, Boomerang was entitled to monetary relief for only 13 downloads of Warm from the Italians Do It Better, Inc and Big Cartel websites. Boomerang’s claims in relation to the other conduct, including streaming of Warm and France, were dismissed on the basis that the streaming was carried out by the platform providers, not Glass Candy or Air France, and the providers were authorised to stream those songs because of the specific terms of the licence they held in respect of Love. APRA was also entitled to an injunction against Air France in relation to the on-hold music, as a breach of the communication right.
On 25 June 2020, the Court subsequently refused an application by Boomerang to re-open part of its case and introduce new arguments in relation to the “authorisation” arguments concerning the online streaming platform providers.
The decision demonstrates that:
- the sound of the lyrics of a song, (i.e. the way the words are sung), can be taken into account as part of a musical work;
- to qualify as a substantial part of a musical work, the part does not need to be necessarily lengthy; and
- it is of vital importance to correctly identify who owns certain rights to works within copyright material to ensure a case is pleaded correctly and damages can be recovered if the claim is successful.
 Copyright Act 1968 (Cth) ss. 31(1)(a)(i), (iv).
 Boomerang Investments Pty Ltd v Padgett (Liability)  FCA 535 at .
 Boomerang Investments Pty Ltd v Padgett (Liability)  FCA 535 at .