Full Court decides on appeal that a substantial part of “Kookaburra” was copied in Men at Work’s “Do
EMI Songs Australia Pty Limited v Larrikin Music Publishing Pty Limited  FCAFC 47
The battle between two iconic Australian musical works continued in the appeal proceedings before the Full Court of the Federal Court of Australia comprising Justices Emmett, Jagot and Nicholas. We previously reported on Jacobson J’s findings. First, on the issue of liability, it was held that Men At Work’s Down Under copied a substantial part of Kookaburra, and therefore infringed Larrikin’s copyright in the earlier musical work. Consequently, Jacobson J found that the EMI companies had misrepresented to royalty collecting societies that they were entitled to 100% of the royalties from Down Under. Second, his Honour held on the issue of quantum that Larrikin was entitled to 5% of Down Under royalties. In EMI Songs Australia Pty Limited v Larrikin Music Publishing Pty Limited  FCAFC 47, the Full Court unanimously upheld the trial judge’s decision at first instance that Men at Work’s “Down Under” infringed the copyright in Kookaburra.
Kookaburra is an Australian nursery rhyme which was written and composed by Ms Marion Sinclair, and published as a “Round in 4 Parts” in 1934.
Mr Colin Hay and Mr Ronald Strykert composed Down Under in 1978. Mr Greg Ham joined Men at Work in 1979 and added flute phrases incorporating part of Kookaburra which he considered to be an “Aussie cliché melody” to inject an Australian flavour to the song.
Following recognition of the resemblance between two bars of Kookaburra and the flute riff in Down Under on the ABC’s musical quiz television programme “Spicks and Specks”, in 2007 Larrikin brought proceedings in the Federal Court against the EMI companies and the composers claiming that the respondents had infringed the copyright subsisting in Kookaburra.
Scope of the Appeal to the Full Court
On 7 April 2010, the EMI companies appealed Jacobson J’s 4 February 2010 decision to the Full Court of the Federal Court of Australia claiming that Jacobson J had applied the wrong principles in assessing “substantial part” in the context of copyright infringement of a musical work. By a notice of cross-appeal, Larrikin appealed Jacobson J’s findings that Qantas advertisements containing an orchestral version of a part of Down Under (including a quotation of the second bar of Kookaburra) did not reproduce a substantial part of Kookaburra, and also disputing the trial judge’s finding that the EMI companies were not liable for authorising an infringement of copyright in Kookaburra by granting licences to third parties to reproduce Down Under in a number of works (including the Qantas advertisements).
Reconsideration of substantial part on appeal
Emmett J observed at  that the determination of whether a substantial part of a copyright work has been reproduced and therefore infringed involves questions of impression and degree. As such, unless the trial judge applied an erroneous principle, or the trial judge was plainly and obviously wrong, the appeal court would not normally depart from the finding of a trial judge. Nicholas J also considered when an appellate court should intervene, and was of the view that the weight to be given to the trial judge’s evaluation will depend upon the nature and extent of perceived advantages enjoyed by the trial judge in any given case (at ).
Emmett J found that it was at least arguable that the trial judge did err in approaching the assessment of reproduction of a substantial part, including in the following respects:
- The fact that Mr Hay sometimes sang the words of Kookaburra during performances of Down Under should not have been relied upon as support for the trial judge’s conclusion that there was objective similarity between the two works or that a substantial part of Kookaburra had been copied.
- The two bars of Kookaburra did not constitute 50% of the song because the performance of that song as a round would involve at least seven aurally unique bars. In any event, quantity is not the sole issue to be taken into account in assessing whether a substantial part of Kookaburra had been reproduced.
- The trial judge did not appropriately deal with the contention by the EMI companies that no substantial part of Kookaburra had been taken because the only skill that was involved in composing Kookaburra was in writing it as a round. This was contended by Larrikin to be the only original aspect of Kookaburra and was not reproduced in Down Under (Emmett J went on to find that each of Kookaburra’s phrases was composed through the application of skill and originality, and the reproduction of a substantial part of Kookaburra did not require reproduction of Kookaburra as a round).
- Emmett J also found that the trial judge gave more weight to melody than other elements such as key, tempo, harmony and structure without explanation.
- There were a number of considerations the trial judge regarded as relevant in concluding in his quantum judgment that the musical significance of the notes of Kookaburra in Down Under was small and more consideration should have been given to these matters in the assessment of infringement.
Accordingly, Emmett J decided that it was open for the Full Court to reconsider the question of infringement afresh. His Honour nevertheless ultimately concluded that a substantial part of Kookaburra was reproduced in Down Under and that there had been infringement of copyright.
On the other hand, Jagot J (with whom Nicholas J agreed) did not find error with Jacobson J’s approach, and concluded that the Full Court should not disturb the trial judge’s findings with respect to copyright infringement of Kookaburra.
Copyright infringement: approach
Emmett J (at ) and Jagot J (at  and ) summarised the correct approach in an action for an infringement of copyright of a musical work as follows:
- Identification of the original musical work in which copyright subsists (Kookaburra).
- Identification in the allegedly infringing work (Down Under) the part copied from the copyright work in suit (the flute riff in Down Under): There should be objective similarity between the two works and a causal connection between them.
- Determination of whether the part taken constitutes a “substantial part” of the copyright work in suit: This involves a consideration of the quality of the part taken, or in essence whether that which made the copyright work original has been reproduced. In short, the importance of the part taken to Kookaburra.
The relevant part of Men at Work’s Down Under was two bars of the flute riff or hook, which had been interspersed with other musical material that was not derived from Kookaburra. In this respect, Emmett J found that there was a “reasonably ready aural perception that the versions of Down Under in the impugned recordings contained a recognisable part of Kookaburra, observing that “… The aural resemblance need not be resounding or obvious” (at ). All three members of the Full Court accepted that in determining “objective similarity” it was necessary to ascertain whether an “ordinary reasonably experienced listener” would consider the two works to be aurally objectively similar to each other. The Full Court also accepted that in applying this test, regard may be had to expert evidence, and it was permissible to analyse the similarities by listening to the tunes repeatedly. In this respect, Jagot J explained at :
…There is no principle that the ordinary reasonably experienced listener may not hear a work or part of it more than once. Nor do the cases suggest that the trial judge was not entitled to have regard to the expert evidence when determining objective similarity. Moreover, and as noted, all of the expert evidence was to the same effect at least insofar as it established that the flute riff in Down Under directly borrowed bars from Kookaburra.
All three members of the Full Court accepted that while it was true that the similarity remained unnoticed for some 20 years, it was not erroneous for the trial judge, a “sensitised listener”, to compare the similarities between the melodies by listening to the tunes repeatedly, assisted by experts. The issue of when and by whom the infringement was first noticed was not of itself relevant to the determination of objective similarity.
In determining whether the flute riff constituted a substantial part of Kookaburra, the appeal judges confirmed that regard must be had to:
- the originality of the part taken (i.e. the level of independent intellectual effort imparted in relation to the part copied);
- the importance of the part taken in relation to the work as a whole; and
- whether the part taken represented the most distinctive or qualitatively important part of the work, that is, whether the part taken “contain[s] what constitutes the principal air or melody of the copyright work, which anyone who heard the alleged infringing work would recognise as being the essential air or melody of the copyright work” (at ).
Drawing on these principles, the Full Court concluded that Down Under reproduced a substantial part of Kookaburra and infringed Larrikin’s copyright because:
- the part taken was described by an expert witness as the ‘signature’ phrase of Kookaburra, and constituted an essential air or melody of the copyright work; and
- the part taken, albeit brief, represented “an important and significant part whose composition may be said to have involved skill and originality”(at ).
Nicholas J made the additional observation in separate reasons that provided that the musical work originated from Ms Sinclair, in the sense that it was the product of the composer’s own independent intellectual effort, the requirement of originality was satisfied and it need not be proven that the part reproduced would be protected as an original copyright work in its own right.
Authorisation of copyright infringement
The Full Court upheld Jacobson J’s findings on authorisation in relation to the Qantas advertisements, accepting that they did not reproduce a substantial part of Kookaburra. Hence, it followed that the claim of authorisation of copyright infringement by the Qantas advertisements could not be sustained.
The appeal judges considered, however, that Larrikin’s arguments concerning authorisation of acts of infringement in respect of other works were not properly addressed and remitted this issue to the trial judge.
On 29 April 2011, EMI Songs and EMI Music filed a Special Leave Application to the High Court. The application is yet to be determined.
In assessing whether a substantial part of a copyright musical work has been reproduced, the following principles are relevant:
- The determination of infringement is not a question of note for note comparison, but of whether the substance of the copyright work is taken.
- The question of objective similarity is to be determined by reference to aural perception.
- A reasonably ready aural perception that the alleged infringing work contains a recognisable part of the copyright musical work may be sufficient to establish infringement, even if the resemblance is not resounding or obvious.
- The “essential air”, “principal melody” or “signature” of the copyright work may constitute a substantial part of that work.
- The question of whether a part of a copyright work is a substantial part is to be determined by considering the quality of the relevant part of the work and that in turn may require consideration of whether that part is original in the sense that it was the product of the composer’s own independent intellectual effort and not copied from another source or commonplace.
Emmett J expressed some disquiet about his findings on infringement, expressing the view that the quotation of Kookaburra appears by way of tribute to one of a number of other Australian icons referred to in Down Under:
“If, as I have concluded, the relevant versions of Down Under involve an infringement of copyright, many years after the death of Ms Sinclair, and enforceable at the behest of an assignee, then some of the underlying concepts of modern copyright may require rethinking. While there are good policy reasons for encouraging the intellectual and artistic effort that produces literary, artistic and musical works, by rewarding the author or composer with some form of monopoly in relation to his or her work (see Ice TV at ), it may be that the extent of that monopoly, both in terms of time and extent of restriction, ought not necessarily be the same for every work. For example, it is arguably anomalous that the extent of the monopoly granted in respect of inventions under the Patents Act 1990 (Cth), being a limited period following disclosure, is significantly less than the monopoly granted in respect of artistic, literary or musical works, being a fixed period following the death of the author or composer, irrespective of the age of the author or composer at the time of publication. … one may wonder whether the framers of the Statute of Anne and its descendants would have regarded the taking of the melody of Kookaburra in the impugned recordings as infringement, rather than as a fair use that did not in any way detract from the benefit given to Ms Sinclair for her intellectual effort in producing Kookaburra.” (at -).
Such considerations appear to have informed how the trial judge exercised his Honour’s discretion in determining quantum. That aspect of the case has not been appealed.