EMI Songs Australia Pty Limited v Larrikin Music Publishing Pty Limited [2011] FCAFC 47 FEDERAL COURT OF AUSTRALIA EMMETT, JAGOT AND NICHOLAS JJ EMMETT J: INTRODUCTION ...................................................................................................... [1] THE WORKS IN QUESTION ................................................................................. [9] Kookaburra ............................................................................................................ [13] Down Under ............................................................................................................ [17] The Qantas Advertisements .................................................................................. [27] DEVELOPMENT OF COPYRIGHT ...................................................................... [28] THE RELEVANT STATUTORY PROVISIONS .................................................. [40] SOME LEGAL PRINCIPLES .................................................................................. [45] THE DECISION OF THE PRIMARY JUDGE ...................................................... [58] THE ISSUES IN THE APPEALS AND THE CROSS-APPEAL .......................... [62] INFRINGEMENT BY THE IMPUGNED RECORDINGS .................................. [66] The Complaints of the EMI Companies and Mr Hay ........................................ [67] Whether the Full Court Should Reconsider Infringement ................................ [71] Comparison between Kookaburra and Relevant Versions of Down Under ..... [82] Conclusion as to Infringement .............................................................................. [98] INFRINGEMENT BY QANTAS ADVERTISEMENTS ....................................... [102] AUTHORISATION OF INFRINGEMENT IN RESPECT OF OTHER WORKS ...................................................................................................................... [103] CONCLUSION ........................................................................................................... [104] INTRODUCTION 1 The principal question in these two appeals is whether recordings of performances of an iconic Australian musical work known as “Down Under”, performed by a group known as “Men At Work”, involved the reproduction in a material form of a substantial part of another iconic Australian musical work, “Kookaburra Sits in the Old Gum Tree” (Kookaburra), so as to constitute infringement of the copyright subsisting in Kookaburra under the Copyright Act 1968 (Cth) (the Copyright Act). Larrikin Music Publishing Pty Limited (Larrikin), a respondent in both appeals, is the owner of the copyright in Kookaburra. Larrikin contends that the copyright has been infringed by EMI Songs Australia Pty Limited and EMI Music Publishing Australia Pty Limited (together the EMI Companies), the first and second appellants in both appeals, and by Mr Colin Hay and Mr Ronald Strykert, respectively an appellant and a respondent in one of the appeals. 2 Larrikin commenced a proceeding in the Court (NSD 145 of 2008) against the EMI Companies and Messrs Hay and Strykert in which it claimed relief for infringement of its copyright in Kookaburra. Larrikin alleged that the EMI Companies and Messrs Hay and Strykert infringed its copyright in Kookaburra by making two recordings of Down Under, one in 1979 (the 1979 Recording) and one in 1981 (the 1981 Recording). It also alleged that the EMI Companies infringed its copyright in Kookaburra by authorising acts of infringement in relation to other works, including two advertisements published by Qantas Airways Limited (the Qantas Advertisements). Subsequently, the EMI Companies commenced a proceeding against Larrikin (NSD 340 of 2008), alleging unjustifiable threats on the part of Larrikin. The two proceedings, NSD 145 of 2008 and NSD 340 of 2008, had overlapping issues, and were managed in tandem by a judge of the Court (the primary judge). Discrete issues were dealt with by the primary judge in three separate hearings. 3 For reasons published on 30 July 2009, the primary judge determined, as a preliminary issue, that, with effect from 21 March 1990, Larrikin has been the owner of the copyright in Kookaburra. That question was common to both NSD 145 of 2008 and NSD 340 of 2008. While that determination was originally the subject of grounds of appeal, those grounds have been abandoned. Thus, it is common ground, for present purposes, that Larrikin is the owner of the copyright in Kookaburra. 4 On 27 October 2009, the primary judge made orders that certain further issues be determined separately from the other remaining issues in the two proceedings. Those issues included whether the 1979 Recording and the 1981 Recording (together the Impugned Recordings) and the Qantas Advertisements involved the reproduction in a material form of a substantial part of Kookaburra. For reasons published on 4 February 2010, the primary judge concluded that the Impugned Recordings infringed Larrikin’s copyright in Kookaburra. However, his Honour determined that the Qantas Advertisements did not involve the doing of any act comprised in the copyright in Kookaburra. In the light of the conclusion that the Impugned Recordings infringed copyright, his Honour ordered that NSD 340 of 2010 be dismissed, since Larrikin’s threats were not, in those circumstances, unjustified. 5 On 17 March 2010, the primary judge made orders to reflect his conclusions of 4 February 2010 and also made orders for the further conduct of NSD 145 of 2008. On that day, his Honour gave reasons for those orders. On 6 July 2010, his Honour made orders in NSD 145 of 2008 on the issue of quantum, for reasons that he published on that day. It will be necessary to refer to the reasons of 6 July 2010 in so far as they reflect upon his Honour’s approach to questions of infringement. However, there is presently no appeal from the orders of 6 July 2010. 6 On 25 February 2010, the EMI Companies filed notice of appeal (NSD 183 of 2010) from the order made on 4 February 2010 dismissing NSD 340 of 2008. Larrikin is the respondent to that appeal. That notice of appeal was filed as of right. 7 Since the orders made on 17 March 2010 did not finally dispose of NSD 145 of 2008, they are interlocutory and, accordingly, there is no appeal as of right. The EMI Companies and Mr Hay filed an application for leave to appeal (NSD 350 of 2010) from those orders. Larrikin and Mr Strykert are named as respondents to that application. The proposed grounds of appeal in NSD 350 of 2010 were identical to those in NSD 183 of 2010. Larrikin foreshadowed a cross-appeal in NSD 350 of 2010 from the orders made on 17 March 2010 in relation to the Qantas Advertisements and other issues of alleged infringement. 8 The application for leave to appeal in NSD 350 of 2010 and the appeal in NSD 183 of 2010 were listed for hearing together. Larrikin did not oppose the grant of leave. Mr Strykert has not appeared. In the circumstances, since the orders of 17 March 2010 determined substantive questions against the EMI Companies and Mr Hay, the Full Court granted leave to appeal (see EMI Songs Australia Pty Limited v Larrikin Music Publishing Pty Limited [2010] FCAFC 110), and heard full argument, on the notice of appeal and the notice of cross-appeal filed in NSD 350 of 2010, at the same time as hearing the argument in NSD 183 of 2010. THE WORKS IN QUESTION 9 In considering whether an alleged infringing work constitutes an infringement of a musical work, it is necessary to regard music as a language, with its own vocabulary and structure. Music must be understood, by analogy, in the way in which traditional language is understood. 10 It is important to identify precisely the relevant work in which copyright subsists. The Copyright Act offers no definition of musical work. The musical work in which copyright subsists is an abstract concept. That concept may be indicated or evidenced by a notated musical score or a sound recording. However, the musical score or sound recording is not the musical work. 11 It is necessary, when identifying the precise work in which copyright subsists, to identify also that part of the musical work that manifests its originality. A melody, excerpt or phrase in a completed work is capable of manifesting originality. However, the copying of musical ideas and commonplace building blocks and motifs from a musical work, which are not themselves original, will not normally constitute infringement of that musical work (see, for example, Ronald S. Rosen, Music and Copyright (Oxford University Press, 2008) at 2-3). 12 It is convenient to describe separately each of the musical works in issue in the appeals. Kookaburra 13 Kookaburra was written and composed by Ms Marion Sinclair. It was published in 1934 in the Girl Guides publication, “Three Rounds by Marion Sinclair”, in the form set out in Schedule 1 to these reasons. As notated in Schedule 1, the music of Kookaburra is in the key of F major. Dr Andrew Ford, a composer, writer and broadcaster, who gave evidence before the primary judge, transposed Kookaburra into the key of D major. Dr Ford’s transposition, which was referred to as Example A, is set out in Schedule 2 to these reasons. Aside from the transposition, the versions of Kookaburra in Schedules 1 and 2 exhibit several small differences. However, the differences are irrelevant for present purposes. 14 Kookaburra, clearly enough, is a short musical work. When notated as shown in Schedule 1, it consists of eight bars. In Schedule 2, it consists