Use of "sound-alike" music in advertising ‒ key legal issues

Have you ever heard music used in an ad and thought: "I know that song", only to realise a moment later that it is not that song but actually a very similar piece of music?

Unsurprisingly, musicians and record labels don't like this very much. For example, Eminem (who sued Audi) and a New Zealand political party, and The Black Keys (who sued Pizza Hut, among others) have taken legal action in relation to the use of sound-alike songs in TV ads. However, this does not mean that music rights holders can always prevent advertisers from using a piece of music that might have some resemblance to their song - popular or not.

In this article, we'll give advertisers some guidance on some of the key legal issues in this area.

What rights do musicians and record labels have?

Music, lyrics and sound recordings are separate

It's important to remember that there are a range of rights associated with music.

First, if the music has lyrics, those lyrics will generally enjoy copyright protection as a "literary work", just like a book.

Second, there is the "musical work" which comprises the notes of the song and its arrangement, which is separate from the lyrics and any particular recording of the song.

Third, there is each individual "sound recording" of the song, which has its own protection.

These all need to be considered separately, as they are often owned by different parties. Just because you have the right to use one, doesn't mean you have the right to use the others.

Key exclusive rights

The key exclusive rights (among others) held by owners of copyright in musical or literary works are the rights to "reproduce the work in a material form" and to "communicate the work to the public" (e.g. by including the music in a broadcast or online commercial ("TVC"), even if it is recorded by different musicians).

In relation to copyright in a particular sound recording, the key exclusive rights held by owners are to "cause the recording to be heard in public" and to "communicate the recording to the public" (e.g. by including that sound recording in a TVC).

If you do anything that falls within the exclusive rights of a copyright owner without their permission, and don’t have a defence under the Copyright Act, you could be found to have infringed the owner's copyright.

In addition, you should also consider the "moral rights" of the composer of the music and the author of the lyrics, such as the right to be identified and named as the composer / author and the right not to have the work subjected to derogatory treatment. This is separate to copyright ownership and, again, may in some circumstances require you to get appropriate permissions from separate parties.

Causal link

In order to establish copyright infringement, it is necessary to establish that there is a causal link between the allegedly infringing material and the copyright work. In other words, the allegedly infringing material must have been derived from the copyright work in some way in order for there to have been an infringement, even if it occurred indirectly or subconsciously. If no regard was had to the original work or subject matter, there will be no infringement.

What about part of a song that only sounds like another song?

You can still infringe copyright if you:

• only use part of a song; or
• have different musicians record part of a song that is not the same as, but sounds similar to, part of another song - i.e. "sound-alike" music.

The copyright owner just needs to show (assuming the causal link described above exists) that you copied a "substantial part" of their copyright work. This is a complex legal issue that needs to be assessed on a case by case basis. Helpfully, however (unless you were a member of the band Men At Work - see below), the courts have given some useful guidance on this issue in recent years. The key principles are as follows:

• The issue is primarily one of quality, not quantity - a reproduced part of a musical work may still be a "substantial part" of that work, and the reproduction amount to an infringement, even though the part that is reproduced is only a small proportion of the complete musical work.
• What is relevant is whether the part that is reproduced by the alleged infringement is "an essential air or melody" of the original work. This is to be determined objectively, in the sense of whether there is an aurally perceptible similarity between the two pieces of music.
• In a court case, the relevant similarity will be assessed by reference to a range of factors - including melody, key, tempo, harmony and structure. This will normally be determined by a court with assistance from experts (usually musicologists) engaged by each side to give their opinion on the alleged similarities and differences.

For example, in the Men At Work Case,^[1] the owner of copyright in the song "Kookaburra Sits In the Old Gum Tree" brought copyright infringement proceedings in respect of the popular Men At Work song "Down Under". There, the Court accepted that the relevant section of "Down Under" was "[a] bit like shining a different light" on the relevant melodic phrase of "Kookaburra Sits In the Old Gum Tree", and that Men At Work in their song "Down Under" had reproduced "an essential air or melody" of the "Kookaburra Sits In the Old Gum Tree" music.

Accordingly, an advertiser who has regard to and uses music which sounds like an "essential air or melody" of part of another song will run a serious risk of being found liable for copyright infringement.

Fair dealing defences

There are some defences to copyright infringement which may be relevant in this context.

For example, it is not an infringement of copyright in a musical work, literary work or sound recording to reproduce it as part of a "fair dealing" and for the purposes of parody or satire. The same applies where the purpose is for criticism or review. However, these defences are quite narrow and should only be relied upon after giving them serious consideration (and obtaining legal advice). For example, it may be difficult to rely on the "parody or satire" defence in the context of a TVC given that:

• the main purpose of the TVC is likely to be commercial; and
• in the case of a popular song, reproducing it (even if varied for a parodic or satirical purpose) is unlikely to be fair to the copyright owners given that they would normally receive a licence fee for use of their material in an ad.

These defences do not apply to the moral rights of composers and authors. As a result, even if a defence applies, you may still need to obtain further permissions from relevant parties.

Do I have to consider anything other than copyright?

Even if you're in the clear from a copyright perspective, there are other potential legal risks of using "sound-alike" music. In particular, a musician or band might allege that you have engaged in misleading or deceptive conduct (which is prohibited by the Australian Consumer Law) or committed the tort of passing off. This could be the case if consumers - when they see or listen to your ad - would believe that there is some sort of commercial connection or association (endorsement, licence or otherwise) between the advertised product or business and the creators or performers of the "real" song, when that is not the case. However, if copyright infringement can't be established because a substantial part has not been copied, normally it will also be difficult for a musician or band to succeed under these grounds.

Allegations of this kind were made a few years ago by New Zealand band OMC against Audi, who alleged that Audi's use of a song that (allegedly) sounded like OMC's hit "Land of Plenty", in its TVC, constituted misleading and deceptive conduct.

How can appropriate authorisations be obtained?

If you've decided that using a "sound-alike" song is just going to be too hard (or risky), and want to use the actual song you're interested in, you'll need to pay a licence fee to the relevant copyright owners. This of course assumes that the musicians in question are prepared for their song to be used in your ad at all, which may not be the case for a range of reasons.

There are various resources available to assist with the licence negotiation process. For example, copyright collection societies like APRA AMCOS can assist you to identify who to contact to obtain a licence for the music. Alternatively, if you don't have the budget to license a well-known song, a less expensive option could be to obtain a licence for "production music" - which may be just as effective at generating the desired emotive response to your advertisement.

And for our finale…

Music and advertising are natural partners. Just as music can be an effective means of attracting consumers' attention to an advertisement, shrewd licensing of music to be used in particular advertising can be a very effective avenue for musicians and record labels to increase market awareness of particular songs - witness, for example, Moby's selective licensing of his music for particular advertisements earlier in his career.

However, as marketing budgets tighten, it seems the scope for disputes between musicians, record labels and advertisers is broader than ever. As a result, it is vital to ensure that appropriate authorisations are in place wherever you are proposing to use music in advertising. And if you are considering using sound-alike music that may be cheaper to license than the real song, great care needs to be taken and legal advice should be sought.