Court down under finds that it is not the hook, but it is Kookaburra
Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd  FCA 799;  FCA 29
Larrikin Music Publishing Pty Ltd (“Larrikin”) has been successful in copyright infringement proceedings brought in the Federal Court of Australia against the composers of the anthemic Australian pop song “Down Under”, Colin Hay and Ronald Strykert, and the owner and licensee of the copyright in the lyrics and music of that song, EMI Songs Australia Pty Ltd and EMI Music Publishing Australia Pty Ltd (together, “the respondents”). The Court held that a substantial part of the iconic Australian children’s song “Kookaburra Sits in the Old Gum Tree” (“Kookaburra”) is reproduced in the flute riff in Down Under.
Facts of the case
Kookaburra was penned by Marion Sinclair in 1934 and it became the winning entry in a Victorian Girl Guides competition for “A Singing Round with Music”. Kookaburra is a short musical work, comprised of only four bars. Larrikin’s challenge arose following recognition of the resemblance between the flute riff of Down Under and the first two of the four bars of Kookaburra during an airing of the ABC television musical panel quiz show “Spicks and Specks” in 2007. The flute riff in Down Under does not consist solely of the two bars of Kookaburra, but includes an intervening bar. Where it first appears in the 1981 recording of Down Under, the flute riff only contains the second bar of Kookaburra. The flute riff is then heard at two later points in Down Under, where it includes the first and second bars of Kookaburra. In addition, Kookaburra was originally notated in a different key to the relevant passages of Down Under and the harmony in the two songs is different.
In June 2009, the Federal Court of Australia considered the preliminary question of whether Larrikin is the owner of the copyright in Kookaburra. Larrikin claimed to have acquired copyright in Kookaburra from the Public Trustee (as trustee of Ms Sinclair’s estate) and/or the Libraries Board of South Australia (pursuant to a donation made by Ms Sinclair). The respondents, on the other hand, contended that Ms Sinclair had assigned the copyright in Kookaburra to the Victorian Girl Guides and she therefore could not give what she did not own.
Jacobson J held that there had been no assignment of the copyright in Kookaburra from Ms Sinclair to the Victorian Girl Guides. The Copyright Act in effect at the time required (as does the current Copyright Act) that an assignment be in writing signed by or on behalf of the owner. His Honour held that the evidence did not establish that Ms Sinclair submitted her entry after being given notice of the Girl Guides competition entry rules, which included a rule that: “All matter entered to become the property of the Guide Association”. There was also no evidence that Ms Sinclair had entered into an assignment in writing with the Victorian Girl Guides as a result of entry into the competition. Further, it had not been established that Ms Sinclair’s signature and initials on the manuscripts of the song indicated an assignment of copyright to the Victorian Girl Guides. In his Honour’s view, the reference to “all matter” was a reference to the physical manuscripts, rather than to the assignment of the copyright in the works to the Victorian Girl Guides. Thus, Jacobson J concluded that Ms Sinclair’s entry of Kookaburra into the competition did not amount to an assignment of the copyright in it.
His Honour went on to conclude that by a series of subsequent assignment and confirmatory documents between the Public Trustee, the Libraries Board and Larrikin, the title to the copyright in Kookaburra had been assigned to Larrikin with effect from 21 March 1990.
The substantive issue at the trial heard in late October 2009 was whether the 1979 and 1981 recordings of Down Under infringe the copyright in Kookaburra.
In his judgment, Jacobson J applied a three step approach to comparing competing works, expressed in other recent copyright infringement judgments of the Court1, that is:
- identify the work in which copyright subsists;
- identify in the allegedly infringing work the part that has been derived or copied from the copyright work; and
- determine whether the part taken is a substantial part of the copyright work.
There was no dispute between the parties that Kookaburra was an original composition in which copyright subsists.
Following the approach taken in Francis Day & Hunter Ltd v Bron  Ch 587 (“Francis Day”), his Honour observed that, in the context of copyright infringement, reproduction requires a sufficient degree of objective similarity between the two works and some causal connection between the plaintiff’s work and the defendant’s work. Jacobson J also noted that Francis Day is authority for the propositions that objective similarity of musical works is not to be determined “by a note for note comparison, but is to be determined by the eye as well as the ear” and that “the reproduction of the copyright work need not be identical with the original, the test is whether the substance of the work is taken”.
Assisted by evidence from music experts, his Honour considered that based on an aural comparison of the musical elements (melody, key, tempo, harmony and structure) and a visual comparison of the notated songs, there is a sufficient degree of objective similarity between the flute riff in Down Under and the first two bars of Kookaburra.
On the question of causal connection, admissions were made by the composers of Down Under that the flute riff in Down Under makes a reference to part of the melody of Kookaburra. Thus, his Honour noted that:
“…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 over a period of time from about 2002.” 
His Honour also referred to the respondents’ failure to call Mr Ham, the musician who introduced the improvised flute riff to the Down Under recording. Mr Ham’s affidavit contained an admission that his aim in adding the flute line was “to try and inject some Australian flavour into the song”: at . The Judge held that it was “trite to say that I can infer his evidence would not have assisted the respondents’ case”, but the real significance of the failure to call Mr Ham was that his reproduction of the relevant bars of Kookaburra reinforced the finding of objective similarity: -.
The respondents submitted that if both Kookaburra and Down Under are such icons, and the similarities so strong, then why did it take so long for anyone to recognise the connection? Indeed, even the musical experts on the panel of “Spicks and Specks” had initial difficulty in making the link. His Honour’s view, however, was that:
“What Spicks and Specks does show is that there are difficulties in the recognition of the work, but a sensitised listener can detect the aural resemblance between the bars of Kookaburra and the flute riff of Down Under.
For the reasons I have already given, this is sufficient to satisfy the test of objective similarity.” [207-208]
The authors submit that Jacobson J’s view that copying had occurred was not solely based on his Honour’s observation that a “sensitised listener” can identify the similarities between Kookaburra and the flute riff of Down Under. Nevertheless, this raises an interesting question of whether it is proper to infer objective similarity between competing musical works even if their resemblance may not be audibly perceptible to the average untutored ear.
(iii) Substantial part
The musical experts gave evidence that the first two bars of Kookaburra are “the signature” or “musical hook” which makes Kookaburra instantly memorable and recognisable. In determining whether the part taken is a substantial part of the copyright work, the emphasis is on the quality rather than the quantity of what has been taken, but with particular attention directed to the degree of originality in the expression of the part of the work that is reproduced. This principle was endorsed recently by the High Court of Australia in IceTV Pty Ltd v Nine Network Australia Pty Ltd (2009) 254 ALR 386 (“IceTV”).
Jacobson J held that Mr Hay’s performance of the words of Kookaburra to the tune of the flute riff in Down Under was “a sufficient illustration that the qualitative test had been met” and a substantial part had been taken. Further, although the question of quantity is secondary to that of quality, his Honour also noted that two of the four bars of Kookaburra, or 50% of the song, have been reproduced in Down Under. Thus, the Judge held that the Down Under recordings reproduce a substantial part of Kookaburra and constituted an infringement of the copyright in Kookaburra.
His Honour also considered whether two Qantas advertisements which contained orchestral versions of a part of Down Under infringed the copyright in Kookaburra. The advertisements contained only the second bar of Kookaburra, with additional musical embellishments over it. The embellishments made it difficult to hear the second bar of Kookaburra when the advertisements are played. In the circumstances, Jacobson J held that, without more, there had not been reproduction of a substantial part of the Kookaburra song in the Qantas advertisements.
As part of its infringement case Larrikin also claimed for past performance income. It was not in dispute that since about 1982 the royalty collecting agencies APRA and AMCOS had paid 100% of the revenue referable to Down Under to the respondents, pursuant to notifications given by them. Larrikin assigned its performance rights in Kookaburra to APRA. Larrikin argued that but for the making of certain representations by the respondents to APRA, APRA would have given a percentage of the performance royalties to it. Larrikin also claimed record sales (mechanical income), which is paid by AMCOS.
The alleged misrepresentations were, firstly, that the respondents were entitled to 100% of the proceeds from the performance, communication and record sales of Down Under and, secondly, that Down Under did not infringe the copyright in any other work. These were said to arise as a result of the respondents giving notice as to their claimed entitlement under the Constitutions of APRA and AMCOS, and as a result of a warranty with respect to copyright ownership in APRA’s standard form agreement and AMCOS’s Exclusive Licence Agreement. His Honour held that the respondents had made these misleading and deceptive representations to APRA and AMCOS, and that APRA and AMCOS would not have otherwise paid the respondents all of the proceeds since 1982.
Significantly, his Honour dismissed the respondents’ submission that Larrikin’s claim for damages was statute barred given the length of time that has elapsed since the relevant ‘representations’ were first made to APRA. APRA relies on composers and producers to correctly notify it of the ownership of a song and the evidence was that it pays performance income to its members in accordance with the notifications in its computer records every six months. Jacobson J accepted Larrikin’s submission that on each occasion that APRA referred to its computer system to pay the relevant income, a new act was done in reliance on the original representation and the claim was therefore one of a continuing representation.
The next round
In the next round, the Court will need to grapple with the calculation of the percentage of the proceeds from Down Under to which Larrikin is entitled.
Larrikin has claimed that it is entitled to a 40%-60% interest in Down Under. In quantitative terms, two of the four bars of Kookaburra were taken, but that part taken only comprises a relatively small portion of the total number of bars of Down Under. Significantly, however, Jacobson J emphasised that his conclusions “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”. To establish copyright infringement, the infringing part of a work must be a substantial part of the copyright work, not a substantial part of the infringing work. Thus, the Court’s finding that 50% of Kookaburra was copied does not necessarily equate to an entitlement to half of the profits made from Down Under.
While Jacobson J rejected the respondents’ submission that Larrikin was statute barred from maintaining its TPA claims, Larrikin’s claim for damages or profits will be limited under limitation of actions laws to acts performed in the past 6 year period before the commencement of the proceedings. This of course does not take into account the implications on future entitlements.
It seems we will have to wait just a little longer for the Court’s quantification of any damages or profits, however, as EMI filed a Notice of Appeal on 25 February 2010.
- See Metricon Homes Pty Ltd v Barrett Property Group Pty Ltd (2008) 248 ALR 364; Elwood Clothing Pty Ltd v Cotton On Clothing Pty Ltd  FCAFC 197.