Men at Work go down (under) in Kookaburra copyright claim

The Federal Court of Australia has ruled that Men at Work's famous song "Down Under" infringes the copyright in the 1934 children's round "Kookaburra Sits in the Old Gum Tree" (Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd [2010] FCA 29 (4 February 2010)).

Two iconic Australian songs

Kookaburra is a four bar tune written in 1934 by Marion Sinclair. Larrikin Music Publishing, to whom the musical work had been assigned, alleged that the musical work had been reproduced in both the 1979 and 1981 recordings of "Down Under" on the basis that both of those recordings reproduced a substantial part of "Kookaburra".

In 2007, following the broadcast of the ABC program "Spicks and Specks", Larrikin became aware of the resemblance between two bars of the "Kookaburra" musical work and the flute riff in the recordings of "Down Under". Larrikin then brought claims of copyright infringement and breaches of the Trade Practices Act against the composers and against the owner and licensor of the copyright of the words and music of "Down Under".

Breach of copyright

Two bars from "Kookaburra" were reproduced in the 1979 recording of "Down Under" and appear once in a flute riff. In the 1981 recording, two bars of the composition were reproduced again as part of a flute riff. However, in the 1981 recording the reference to "Kookaburra" appears three times in various forms.

There are three steps which a judge has to take before making a finding of infringement:

(a) identify the work in which copyright subsists;

(b) identify that part of the allegedly infringing work said to be derived or copied from the copyright work; and

(c) determine whether what has been taken is a substantial part of the copyright work.

Justice Jacobson followed the decision of the High Court of Australia in SW Hart & Co Pty Ltd v Edwards Hot Water Systems (1985) 159 CLR 466 and Francis Day & Hunter Ltd v Bron [1963] 1 Ch 587 in finding that there must be an objective similarity between the two works and some causal connection between the applicant's work and that of the respondent. Ultimately, the issues covered by (a) and (b) were not the subject of contention. What was in issue however was whether a substantial part of the copyright work had been taken.

Justice Jacobson found that there was a sufficient degree of objective similarity between the bars of "Kookaburra" seen and heard in "Down Under" to amount to a substantial reproduction of Ms Sinclair's work. The comparison made was both visual and aural. Justice Jacobson further found that in this case the fact that "Down Under" was in a different key, had a different harmony, and was played in a different rhythm was not relevant. He also found that the fact that there was a different structural context (in that the relevant bars were separated) did not prevent a finding of reproduction. He found that the melody was the same and that the separation or punctuation did not overcome the conclusion of reproduction.

Reliance was placed on the recent High Court judgment in Ice TV Pty Ltd v Nine Network Australia Pty Ltd as the most recent authority for the long-held proposition that substantiality is determined more by quality than by quantity. Justice Jacobson was most influenced by the fact that for a period of time when Colin Hay, the lead singer of Men at Work, performed "Down Under", he sang the words of "Kookaburra" at the point where the flute riff would otherwise be played. He found that the reproduction of two bars from "Kookaburra" amounted to a substantial reproduction of that work. It should be noted that two bars amounted to 50% of that work.

Somewhat surprisingly however, Justice Jacobson did not find that a Qantas advertisement which reproduced one bar, that is 25% of "Kookaburra", amounted to a substantial reproduction. In making his finding he appeared to be influenced by the fact that he found it difficult to detect the bar of "Kookaburra" in the advertisement.

Breach of the Trade Practices Act 1974

The Australian Performing Rights Association (APRA) and the Australian Mechanical Copyright Owners Society (AMCOS) are collection societies established to collect royalty payments payable to performers and publishers of musical works. Both organisations have in place agreements where members notify them of the correct recipients of the royalty payments.

In the case of "Down Under" Larrikin asserted that the respondents who were members of both APRA and AMCOS misrepresented to those organisations that they were entitled to all of the royalty income. Justice Jacobson agreed with this allegation and found that APRA and AMCOS relied on those representations and would not otherwise have paid all of the income to the respondents.

Importantly, Justice Jacobson found that as the representation was a continuing representation the claim for royalties was not statute-barred, even though more than six years had elapsed since the representations were first made.

Other claims against the respondents

Larrikin had also made a claim against the EMI parties for general damages and against the respondents generally for unjust enrichment. Both of those claims failed. The claim for general damages against EMI failed on the basis that Justice Jacobson was not satisfied that the EMI parties knew of the use of "Kookaburra" in "Down Under" and the unjust enrichment claim failed because there was no relevant mistake or error. APRA paid the performing rights income to the respondent in accordance with the directions that it had been given.

Determining the damages

Larrikin has asked that it be paid between 40-60% of all income earned by the respondents in relation to "Down Under". This question (and that of costs) is yet to be determined. Pertinent to this determination will be Justice Jacobson's decision that a finding of copyright infringement did not mean that the flute riff was a substantial part of "Down Under" or that it was the "hook" or that part of the song that lingers in a listener's memory.

In short

• Copyright in a work can be infringed even if it is not a substantial part of the infringing work
• The determining issue will be quality, not quantity
• The fact that the infringing work was available in the market for over 30 years did not mean that the composers and publishers were freed from liability; and
• Where there is a continuing representation, here, that no change had been made to the direction given to the collection societies as to the recipient of income, damages may be payable even if more than six years have passed since the representations were made. The claim will not be statute-barred.

26 February 2010: The decision in this case is being appealed to the Full Federal Court.