Boomerang Investments Pty Ltd v Padgett (Liability)

[2020] FCA 535

FEDERAL COURT OF AUSTRALIA

Boomerang Investments Pty Ltd v Padgett (Liability) [2020] FCA 535

File number:

NSD 1738 of 2017

Judge:

PERRAM J

Date of judgment:

24 April 2020

Catchwords:

COPYRIGHT – musical works – identification of copyright work – whether sound of lyrics as sung forms part of musical work – ‘love is in the air’ as both lyric carrying meaning and phonetic instruction to vocalist – objective similarity between copyright work and allegedly infringing works – consideration of ordinary, reasonably experienced listener – relevance of expert evidence and chambers’ heightened familiarity with works – causal connection – whether conscious or unconscious copying – consideration of process of creation of allegedly infringing works – whether part taken a substantial part of copyright work – originality – whether sung lyric ‘love is in the air’ and accompanying music ‘essential air’ of copyright work – whether part taken ‘too short’ to be substantial

COPYRIGHT – musical works – where allegedly infringing works created outside Australia – where reproduction and communication rights alleged to have been infringed by streaming, downloading and telephone hold music – effect of assignment and licensing arrangements – whether authorisation infringement possible without primary infringement

COPYRIGHT – literary works – whether lyric reproduced in allegedly infringing works a substantial part of literary work – originality of lyric taken – whether ‘love is in the air’ an obvious, commonplace or prosaic expression

COPYRIGHT – moral rights – right not to have work subjected to derogatory treatment – meaning of ‘reputation’ and ‘honour’ – consideration of territoriality requirements

CONTRACTS – construction of assignment and licensing arrangements concerning rights in copyright work and allegedly infringing works involving Fourth and Fifth Applicants – relevance of extrinsic materials – effect on standing of First Applicant to sue

DAMAGES – whether sufficient prospect of entitlement to real pecuniary award to justify inquiry for damages or account of profits – entitlement to additional damages – whether copying flagrant – where further hearing as to relief necessary

EVIDENCE – standard of proof in civil proceedings – allegations of conscious copying and falsified evidence – gravity of allegations – Evidence Act 1995 (Cth) s 140

PRACTICE AND PROCEDURE – application for leave to file rejoinder submissions – where various complaints made about nature and quality of Reply submissions – consideration of standard for leave to be granted

Legislation:

Copyright Act 1968 (Cth) ss 10, 14, 31, 32, 35, 36, 115, 119, 189, 190, 195AI, 195AJ, 195AQ, 195AU, 195AX, 196, 197

Copyright Amendment (Digital Agenda) Act 2000 (Cth)

Evidence Act 1995 (Cth) ss 97, 140

Copyright (International Protection) Regulations 1969 (Cth) reg 4

Copyright, Designs and Patents Act 1988 (UK)

Copyright Law of the United States 17 USC §104

Cases cited:

BP Refinery (Westernport) Pty Ltd v Shire of Hastings (1977) 180 CLR 266

Browne v Dunn (1893) 6 R 67

Codelfa Construction Pty Ltd v State Rail Authority of NSW [1982] HCA 24; 149 CLR 337

D’Almaine v Boosey (1835) 1 Y&C Ex 288

Eastman v Director of Public Prosecutions (ACT) [2003] HCA 28; 214 CLR 318

El-Ajou v Dollar Land Holdings Plc [1994] 2 All ER 685

EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd [2011] FCAFC 47; 191 FCR 444

Feltner v Columbia Pictures Television Inc 523 US 340 (1998)

Francis Day & Hunter Ltd v Bron [1963] Ch 587

Franklins Pty Ltd v Metcash Trading Ltd [2009] NSWCA 407; 76 NSWLR 603

Hayes v Phonogram Limited [2002] EWHC 2062 (Ch)

Howard v Commissioner of Taxation [2012] FCAFC 149; 206 FCR 329

IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14; 239 CLR 458

Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273

Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd [2010] FCA 29; 83 IPR 582

Long Leys Co Pty Ltd v Silkdale Pty Ltd (1991) 5 BPR 11,512

Ludlow Music v Williams [2000] EWHC 456 (Ch)

Newton v Diamond 388 F3d 1189 (9th Cir 2004)

Roadshow Films Pty Ltd v iiNet Limited (No 2) [2012] HCA 16; 248 CLR 42

Performing Right Society Ltd v London Theatre of Varieties Ltd [1924] AC 1

Ron Englehart Pty Ltd v Enterprise Constructions (Aust) Pty Ltd [2012] FCAFC 4; 95 IPR 64

Sawkins v Hyperion Records Ltd (2005) 64 IPR 627

Secured Income Real Estate (Australia) Limited v St Martins Investments Pty Limited [1979] HCA 51; 144 CLR 596

RCA Corporation v Custom Cleared Sales Pty Ltd [1978] FSR 576

Summers v Commonwealth [1918] HCA 33; 25 CLR 144

Telstra Corporation Ltd v Australasian Performing Right Association Ltd [1997] HCA 41; 191 CLR 140

Union Fidelity Trustee Company of Australia Limited v Commissioner of Taxation [1969] HCA 36; 119 CLR 177

Walker Group Constructions Pty Ltd v Tzaneros Pty Ltd [2017] NSWCA 27; 94 NSWLR 108

Williamson Music Ltd v Pearson Partnership [1987] FSR 97

Date of hearing:

4-7, 13 and 18 March, 5 and 12 April and 26 June 2019

Date of last submissions:

26 April 2019 (Fourth Respondent)
6 June 2019 (Third Respondent)
26 June 2019 (Applicants and First and Second Respondents)

Registry:

New South Wales

Division:

General Division

National Practice Area:

Intellectual Property

Sub-area:

Copyright and Industrial Designs

Category:

Catchwords

Number of paragraphs:

434

Counsel for the Applicants:

Mr M R Hall SC with Ms J M Beaumont

Solicitor for the Applicants:

Banki Haddock Fiora

Counsel for the First and Second Respondents:

Mr R Cobden SC with Mr W H Wu

Solicitor for the First and Second Respondents:

Gilbert + Tobin

Counsel for the Third Respondent:

Mr P Flynn

Solicitor for the Third Respondent:

Simpsons Solicitors

Counsel for the Fourth Respondent:

Mr C Dimitriadis SC with Ms E E Whitby

Solicitor for the Fourth Respondent:

HWL Ebsworth Lawyers

ORDERS

NSD 1738 of 2017

BETWEEN:

BOOMERANG INVESTMENTS PTY LTD ACN 009 670 919

First Applicant

JOHANNES VAN DEN BERG

Second Applicant

ALEXSANDRA MILLER MALCOLM YOUNG
Third Applicant

AUSTRALASIAN PERFORMING RIGHT ASSOCIATION LTD ACN 000 016 099

Fourth Applicant

AUSTRALASIAN MECHANICAL COPYRIGHT OWNERS SOCIETY LTD
Fifth Applicant

AND:

JOHN PADGETT

First Respondent

LORI MONAHAN

Second Respondent

KOBALT MUSIC PUBLISHING AUSTRALIA PTY LTD ACN 144 996 609

Third Respondent

SOCIÉTÉ AIR FRANCE, SA
Fourth Respondent

JUDGE:	PERRAM J
DATE OF ORDER:	24 APRIL 2020

THE COURT ORDERS THAT:

1.The parties bring in short minutes of order to give effect to these reasons within 14 days.

2.The matter be listed for a case management hearing on Friday 8 May 2020 at 9.30 am.

Note:   Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

PERRAM J:

INTRODUCTION	[1]
The works in question	[2]
Love	[2]
Warm and France	[7]
The copyright case	[9]
The allegation of copying	[9]
The way the case has been pleaded	[14]
The case about Warm	[14]
The case about France	[21]
The parties to this litigation	[23]
The Applicants	[23]
The Respondents	[27]
A summary of the result	[28]
THE EVIDENCE	[36]
The Applicants’ witnesses	[36]
Mr Johannes van den Berg	[37]
Mr David Robert Albert	[38]
Dr Nicholas Paul Vines	[40]
Glass Candy’s witnesses	[42]
Mr John David Padgett	[43]
Ms Lori Dale Monahan	[44]
Mr Michael John Williams	[45]
Kobalt’s witnesses	[46]
Mr Simon Anthony Moor	[47]
Mr Sebastian David Tonkin	[48]
Dr Andrew Ford	[49]
Air France’s witnesses	[50]
Mme Fabienne Castelli	[51]
Mme Tiphaine Du Plessis	[52]
Mme Caroline Fontaine	[53]
M Christophe Caurret	[54]
Documentary evidence	[55]
The Course of the Trial	[57]
WARM AND THE MUSICAL WORK IN LOVE	[62]
First step: Identification of the work in suit	[65]
Second step: Identification of the portions of Warm said to have been taken from Love	[78]
Objective similarity	[80]
Causal connection	[110]
Mr Padgett’s evidence	[111]
The 2005 Recording	[114]
Glass Candy’s familiarity with Love	[124]
The Airplane Baby CD	[148]
The creation process from 2009	[181]
The sampling debate	[182]
The case on copying	[193]
Third step: Whether the part taken in Warm constitutes a substantial part of Love	[203]
Originality of the part taken	[203]
Substantiality of the part taken to the copyright work	[207]
WARM AND THE LITERARY WORK IN LOVE	[215]
FRANCE AND THE MUSICAL WORK IN LOVE	[221]
The creation of France	[221]
The musical work in France	[236]
Objective similarity	[238]
Causal connection	[241]
Conscious or unconscious copying	[241]
Can BETC’s knowledge be imputed to Air France?	[265]
Conclusion on causal connection	[266]
Substantial part	[268]
Conclusion on France	[269]
INFRINGEMENT ON THE BASIS OF STREAMING AND DOWNLOADING	[270]
The rights relevant to this litigation	[270]
Who owns these rights?	[278]
The 1972 assignments by the composers to APRA	[281]
The 1977 assignment from the composers to Alberts	[288]
The 1986 licence from Alberts to AMCOS	[289]
The 1992 assignment from Alberts to APRA	[294]
The 2005 assignment from Alberts to APRA	[295]
The 2016 assignment from Alberts to Boomerang	[296]
The 2016 licence from Boomerang to AMCOS	[299]
The 2016 assignment from Boomerang to APRA	[301]
Conclusion on the relevant rights	[302]
Can Boomerang sue for infringements of the digital streaming rights?	[306]
Can Boomerang sue for infringements of the digital download rights?	[327]
What was Boomerang’s standing to sue prior to 30 August 2016?	[336]
Can Boomerang sue for infringement in the telephone hold music?	[338]
What are the consequences for Boomerang, APRA and AMCOS?	[339]
Which services allowed streaming or digital downloading of Warm?	[343]
The IDIB and Big Cartel websites	[345]
iTunes	[349]
Google Play	[353]
Spotify	[359]
Apple Music	[361]
SoundCloud	[362]
YouTube	[363]
Summary of conclusions on the streaming or downloading of Warm	[365]
What are the implications for the case in relation to France?	[378]
THE CASE AGAINST KOBALT	[381]
THE MORAL RIGHTS CLAIM	[393]
CONCLUSION	[412]
The rejoinder debate	[412]
Result	[426]
Orders	[434]

INTRODUCTION

1. This case concerns three songs, ‘Love is in the Air’ (‘Love’), ‘Warm in the Winter’ (‘Warm’) and an adaptation of Warm called ‘France is in the Air’ (‘France’), which was made for the airline Société Air France, SA (‘Air France’) for the purposes of a marketing campaign.  The first two songs both include the lyric ‘love is in the air’ (or perhaps ‘love’s in the air’) arguably to the same melody.  The third song, France, is similar to, although shorter than, Warm but with the lyric ‘love is in the air’ replaced with ‘France is in the air’.

   The works in question

   Love

2. Love was composed by Mr Johannes van den Berg (who is often called, as I will call him, Mr Vanda) and the late Mr George Young in Sydney in 1977.  As I explain later, the musical work comprises both the instrumental music and the sung sound of the lyrics.  The lyrics also comprise a separate literary work.  A distinct copyright subsists in each: Copyright Act 1968 (Cth) (‘Copyright Act’) s 31(1).

3. The original publisher of Love in September 1977 was J Albert & Sons Pty Limited (‘Alberts’).  That company was at that time controlled by the Albert family who have been music publishers in Sydney since the 1890s.

4. In 2016 the Albert family sold their music publishing business to a German multinational, Bertelsmann Music Group (‘BMG’), but decided to retain for the family the back catalogue in relation to a number of Australian pop songs including Love.  On 30 August 2016, prior to it being sold to BMG, one of Alberts’ final acts whilst still under control of the family was therefore to assign to an entity controlled by them the copyright in, inter alia, Love.  That entity was Boomerang Investments Pty Ltd (‘Boomerang’).

5. It will be necessary to identify the Applicants more precisely in due course for there is a dispute as to which of them owns which aspects of the copyright in Love, but for now it is convenient to refer to them globally as ‘the Applicants’ and thereby to denote the owners of that copyright.

6. In Australia, Love is a famous song not only from its original release in 1977 when the recording by Mr John Paul Young went to the top of the charts, but also because its fortunes (and those of Messrs Vanda and Young) were somewhat revived in 1992 by the release of the Baz Luhrmann film Strictly Ballroom, the soundtrack for which heavily featured Love.  The Albert family was involved in the production of that film.

   Warm and France

7. Warm was composed by the instrumentalist Mr John Padgett and the vocalist Ms Lori Monahan in Portland, Oregon, sometime between 2005 and 2011.  Mr Padgett and Ms Monahan together constitute the duo known as ‘Glass Candy’.  Mr Padgett is the owner of a Californian company called Italians Do It Better, Inc (‘IDIB’) which appears to be Mr Padgett’s personal publishing company.  IDIB subsequently licensed the copyright in Warm to a US publisher, Kobalt Music Services America, Inc (‘Kobalt US’), which then licenced the Australian copyright in, inter alia, Warm to an Australian music publisher in the same group of companies, Kobalt Music Publishing Australia Pty Limited (‘Kobalt Australia’ or simply ‘Kobalt’).

8. France is an adaptation of Warm which was made by Glass Candy for the Fourth Respondent, Air France, for use in the airline’s international marketing campaign ‘France is in the Air’, which took place between March 2015 and March 2018.  A number of short cinematographic films in which France has been synchronised as the soundtrack were created by Air France’s advertising agency, EURO RSCG BETC (‘BETC’).

   The copyright case

   The allegation of copying

9. The Applicants allege numerous acts of copyright infringement which hinge on their allegation that Warm contains a reproduction of a substantial part of Love in two ways.  First, the Applicants focus on the music in Love corresponding to the phrase ‘love is in the air’.  This line is sung to a series of five notes, and as the song progresses it returns repeatedly to the line ‘love is in the air’.  On each occasion the line is sung in one of three slightly different variations.  It is also the title of the song.  The Applicants submit that it is the song’s central feature.  The Applicants then submit that the line ‘love is in the air’ to the same melody appears in Warm on four occasions, and that the same melodic line with the lyric ‘France is in the air’ appears in France.  They say that Glass Candy copied it from Love.  The Respondents submitted that the lyrics as they appeared in Warm and France were, in fact, their contracted equivalents ‘love’s in the air’ and ‘France’s in the air’.  I do not regard the aural differences between these as significant.

10. The second way the case is put is that a somewhat longer portion of Love, consisting of the following couplet and accompanying melody, has been copied by Glass Candy in Warm:

    Love is in the air, everywhere I look around
    Love is in the air, every sight and every sound

    
    

11. The Applicants say that this part of Love has been copied by Glass Candy in this part of Warm:

    Love’s in the air, whoa-oh
    Love’s the air, yeah

    
    

12. The Applicants also say that this part of Love has been copied in France:

    France’s in the air, whoa-oh
    France’s in the air, yeah

    
    

13. Glass Candy denies that they copied either portion of Love.  In any event, they say the sections in Love on the one hand and in Warm and France on the other are not objectively similar and, even if they were, neither section of Love is sufficiently original to warrant copyright protection.

    The way the case has been pleaded

    The case about Warm

14. As will be seen, Warm was first commercially recorded in September 2011.  The Applicants do not allege that Glass Candy’s initial recording of Warm was an infringement of the copyright in Love.  This may be contrasted with EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd [2011] FCAFC 47; 191 FCR 444 (‘EMI’).  In that case, the owner of the copyright in ‘Kookaburra Sits in the Old Gum Tree’ sued the persons responsible for the first recording of ‘Down Under’ in 1979.  The applicants sought a portion of the royalty income that had been earned by Men at Work and their publisher EMI, but they did not claim that the sale of each record or cassette was an infringement of the copyright.  They relied on only one breach of copyright—the initial recording—and characterised all the later sales activity as a matter going merely to quantification rather than separate legal wrongs.

15. In this case, the Applicants have taken a different course and allege that the copyright in Love was infringed each time Warm was made available for streaming or downloading on a number of online music platforms (specifically, iTunes, Spotify, Apple Music, Google Play and SoundCloud) and on two websites operated by IDIB, being the domain names italiansdoitbetter.com and italiansdoitbetter.bigcartel.com, which I refer to as the ‘IDIB website’ and the ‘Big Cartel website’ respectively.

16. It is not at once clear (nor is it necessary to consider) why it is that the Applicants have not brought a suit concerning the creative act of making the original recording of Warm in September 2011.  Such a suit would, by operation of the Copyright (International Protection) Regulations 1969 (Cth) reg 4(3) and the Copyright Law of the United States 17 USC §104(b)(2), probably have had to have been brought in the United States and under United States copyright law.  This might have been enough of a basis for the Applicants to have avoided such an option.  It might also have been seen as an unattractive strategic decision on the basis of Glass Candy’s Seventh Amendment entitlement to demand a jury trial, given that it would have been a copyright infringement suit involving more than US$20 sought in damages: Feltner v Columbia Pictures Television Inc 523 US 340 (1998). All this, however, is speculation.

17. The right to stream Love and the right to permit copies of it to be downloaded over the internet are rights which are comprised in the copyright in Love, respectively, as parts of the right to reproduce Love in a material form (Copyright Act s 31(1)(a)(i)) and as part of the right to communicate Love to the public: s 31(1)(a)(iv). It is an infringement of a copyright to do an act comprised within it without the licence of the owner of that right: s 36(1). A reference to the doing of an act in relation to a work in s 36(1) includes, by s 14, a reference to the doing of an act in relation to a substantial part of the work. The allegation therefore is that because Warm contains a reproduction of a substantial part of Love, making Warm available for streaming and downloading infringes the copyright in Love.

18. The Applicants do not sue the online music platforms for permitting the streaming and downloading of Warm by their customers. They do not do so because such a case would fail. The reason for this is that each of the online platforms not only provides Warm to the music listening public but also Love and they do so, as it happens, with the express permission of the relevant Applicants. To the extent that the Applicants succeed in demonstrating that Warm has taken parts of Love, this cannot matter from the online music platforms’ perspective since they already have the right to stream Love. That right includes, by s 14, the right to stream a substantial part of Love. Ordinarily that might be thought to cover a situation such as where the streaming of Love might be terminated half way through the song. But because the Applicants’ case theory is that Warm contains a substantial part of Love, the permission from the Applicants to stream and make available for downloading Love therefore immunises the online platforms against any allegation of an infringement arising from their activities with Warm. This is so because it is not an infringement of the copyright in Love to do something which the Applicants have already authorised. To put it in a way which will offend purists but hopefully illustrate the problem at hand, proving that selling Warm to the public is really the same as selling a little bit of Love is pointless against a vendor who has the right to sell both.

1. The allegation that the Applicants make against Glass Candy is that the band itself made Warm available in Australia via these platforms (and that streaming and downloading in Australia occurred), or alternatively, that Glass Candy authorised the platforms to distribute their song in Australia. As to this alternative way of putting the case, it is useful to observe that by s 36(1), it is an infringement of a copyright to authorise another person to do something which itself is an infringement.

2. In addition to the allegations concerning the well-known platforms the Applicants also allege that Mr Padgett’s entity IDIB infringed their rights by allowing customers to download copies of Warm in Australia from two websites.  The first of these in time was the Big Cartel website, which is a generic service which permits artists to set up their own online store, and the second (and current) site is the IDIB website, which is operated by IDIB itself.  In both cases, IDIB is responsible for the content.  Unlike the other platforms, IDIB does not have the permission of the Applicants to stream Love or make it available for downloading so the problem described above does not arise.

   The case about France

3. As explained above, a number of short films were produced by BETC, the advertising agency engaged by Air France, to which France was set as the soundtrack.  These vignettes have been made available for streaming (but not for downloading) by Air France on its YouTube Channel.  Air France admits that they have been viewed by Australian internet users and although Glass Candy submits that this has not been proved against them I am inclined to regard Air France’s admissions about its own conduct as reliable.  The Applicants allege that this is an infringement of the copyright in Love.  As in the case of the streaming and downloading of Warm from the online music platforms, YouTube has permission from the Applicants to stream Love.

4. Air France does not have any scheduled services which operate to or from Australia although it is involved in code share arrangements as part of the SkyTeam alliance.  Consequently, the Applicants do not allege that Air France has played France in Australian airspace as part of its in-flight entertainment.  Air France does not have a physical ticketing office in Australia but it is possible to ring Air France in Australia on a toll-free number, 1300 390 190, to purchase a ticket.  Those who call this number and have the misfortune not to have their inquiry immediately handled are placed on hold and, whilst there, music is played to them to make the wait more pleasant.  That music includes France.  The Applicants allege that this use by Air France also infringes the copyright in Love.

   The parties to this litigation

   The Applicants

5. The Applicants fall into three classes: first, Mr Vanda and the estate of the late Mr George Young.  They do not assert ownership of the copyright in Love which they long ago assigned to their publisher, Alberts, and they do not therefore complain that Warm or France infringes their copyright.  But they do claim that France has infringed their moral rights in Love (a term of art in the copyright field which I explain later in these reasons but which, briefly, entitles authors of works to be recognised as such and not to have their works shabbily treated); secondly, Boomerang, which is the successor in title to the original publisher of the song, Alberts, and which claims therefore to be the owner of the Australian copyright in Love; and, thirdly, two collecting societies, the Australasian Performing Right Association Ltd (‘APRA’) and the Australasian Mechanical Copyright Owners Society Ltd (‘AMCOS’).

6. APRA, generally speaking, collects royalties on behalf of the owners of the copyright in music where that music is communicated to the public.  It usually operates by providing blanket licences to persons whose businesses involve the communication of musical works to the public such as, for example, radio and television stations and online streaming services such as Spotify.  For practical reasons, most artists enter into arrangements with APRA to collect royalties on their behalf.  These arrangements usually include the artist assigning the copyright to APRA.  Sometimes, where an artist already has a music publisher, the copyright will already have been assigned by the artist to the publisher and it is the publisher in such cases which deals with APRA.  As will be seen, it is the former which has happened in this case.

7. The second collecting society, AMCOS, is a similar body but it provides blanket licences to persons who, as part of their business, need to make copies of musical works such as persons making a film or television commercial in which a musical work accompanies the images (so-called ‘synchronisation’ of the music with the film) or services which permit copies of a musical work to be downloaded over the internet, such as iTunes.  As with APRA, most artists enter into arrangements with AMCOS to licence these uses and AMCOS then collects royalties on their behalf.  Unlike arrangements with APRA, arrangements with AMCOS do not involve an assignment of the artist’s copyright to AMCOS but merely the grant to it of an exclusive licence.  Again, sometimes the artist will deal directly with AMCOS and sometimes the artist’s publisher will.

8. Both Love and Warm are subject to blanket licences granted by APRA and AMCOS.  The collecting societies have been joined as the Fourth and Fifth Applicants to the proceeding as a tactical response to a submission made by the Respondents that Boomerang has no title to sue for infringement because the relevant rights holders in Love are APRA and AMCOS.  As will be seen, the issues involving APRA and AMCOS are complex.

   The Respondents

9. This cluster of five Applicants has sued four respondents.  The First and Second Respondents are the two current members of Glass Candy, Mr Padgett and Ms Monahan.  The Third Respondent is Kobalt.  Kobalt is the publisher of Warm in Australia, although, as will be seen, that is the beginning of the inquiry rather than its end.  It is said to have authorised the streaming and downloading of Warm in Australia.  The Fourth Respondent is Air France.

   A summary of the result

10. For the reasons which follow, I conclude on the copyright case that:

    (1)the music and the sound of the accompanying lyric ‘love is in the air’ (or perhaps ‘love’s in the air’) in Warm is objectively similar to the same melody and lyric in Love;

    (2)Glass Candy consciously copied that portion of the musical work in Love;

    (3)the part taken from Love is original for the purposes of assessing substantiality; and

    (4)the part taken is a substantial part of Love from a qualitative perspective, such that the taking by Glass Candy of this portion was the taking of a substantial part of the musical work in Love within the meaning of s 14 of the Copyright Act.

11. On the other hand, I do not find that:

    (1)the longer musical couplet in Love has been reproduced in Warm, as they are not objectively similar; or

    (2)there has been infringement of the literary work comprised in the lyrics of Love, as the portion alleged to have been copied is not original.

12. However, and leaving to one side the position of the IDIB and Big Cartel websites, I conclude that the Applicants’ case against Glass Candy insofar as it involves streaming or downloading from digital platforms such as Spotify or YouTube must fail.  The Applicants’ case that Glass Candy themselves are responsible for the streaming and downloading from these websites fails as those sites are operated by their owners and not by Glass Candy.  The Applicants’ case that Glass Candy is liable for secondary infringement on the basis that it authorised the platforms to stream and download Warm also fails.  Those platforms were authorised by APRA and AMCOS to stream and make available for download Love as well as Warm.  Since the platforms cannot be liable for infringement, Glass Candy cannot be liable for authorising them to do what the Applicants had already authorised them to do.  There can be no secondary infringement (authorisation) without primary infringement (making available for streaming or downloading).

13. The only relevant activity on the IDIB and Big Cartel websites was some limited acts of downloading.  Glass Candy authorised those downloads because Mr Padgett and Ms Monahan knew that Mr Padgett was making Glass Candy songs available for download from the IDIB website (and before that the Big Cartel website).  The owner of the right to authorise the downloading of Love is Boomerang and AMCOS holds an exclusive licence of the same right.  Both may sue Glass Candy for facilitating the download of Warm from the IDIB and Big Cartel websites because neither IDIB nor Mr Padgett had permission from Boomerang (or its predecessor in title) or AMCOS to permit users to download Love and because Warm infringes Love.  The Applicants’ case against Glass Candy in relation to the downloading and streaming of Warm from the other digital platforms otherwise fails.  The attempt to make Kobalt liable for Glass Candy’s actions also fails for the additional reason that the collection of Australian royalties from Warm by Kobalt is not sufficient to make it liable for secondary infringement and Kobalt is not the owner or licensee of the relevant rights.

14. In relation to France, the melody and lyric ‘France is in the air’ are substantially identical to the same line in Love and were copied by Air France from Love.  In any event, it is clear that Warm was copied from Love and France was copied from Warm.  For the same reasons as in relation to Warm I conclude that the part copied was a substantial part of Love.  The case against Air France in relation to the streaming of France as part of its commercials on YouTube fails as YouTube held an APRA licence which authorised it to stream Love (and hence the substantial part of Love which was copied in France).  The case in relation to the hold music, however, succeeds.  The only party entitled to sue Air France in relation to that, however, is APRA and Boomerang lacks title.

15. The claim by Mr Vanda and the estate of Mr Young against Glass Candy and Air France for infringement of their moral rights is to be dismissed.

16. Boomerang and AMCOS are entitled to an injunction restraining Glass Candy from permitting the downloading of Warm from the IDIB website.  AMCOS does not claim damages, however, but Boomerang does and it is entitled to damages or an account of profits for the 13 downloads of Warm which took place from the IDIB and Big Cartel websites.  The copying was flagrant and Boomerang is entitled to be heard on additional damages.  APRA is entitled to an injunction restraining Air France from using Warm as its telephone hold music but nothing else.  APRA does not claim damages in that regard and although Boomerang does claim damages in relation to France it has no title to sue.  Mr Vanda and the executor of the estate of the late Mr Young are not entitled to damages in relation to their moral rights claim against Glass Candy.

17. There will need to be a further hearing to assess damages.  I will hear the parties on costs.

    THE EVIDENCE

    The Applicants’ witnesses

18. The Applicants relied upon the evidence of three witnesses.

    Mr Johannes van den Berg

19. Mr Vanda swore an affidavit dated 14 September 2018 and a supplementary affidavit dated 30 January 2019 on the eve of the trial.  He was cross-examined on the first day of trial, Monday 4 March 2019.  Mr Vanda, together with the late Mr Young, are the composers of Love and a large number of other well-known pop songs.  He and Mr Young formed The Easybeats in 1964 whilst residing at the Villawood Migrant Hostel, after Mr Vanda emigrated from The Netherlands to Australia the previous year.  He gave evidence of the history of The Easybeats including the band’s runaway hits, ‘She’s So Fine’ and ‘Friday On My Mind’, the band’s sojourn in the United Kingdom in the 1970s, and its subsequent breakdown there.  He also explained the role of their publisher, Alberts, and its record label Boomerang in the pop music industry generally.  Mr Vanda gave evidence of how he and Mr Young had composed Love, the role of Mr John Paul Young who performed the original recording, and the role of Alberts in the song’s promotion and distribution.  He told the Court of his longstanding membership of the collecting society APRA and gave evidence about the licensing of Love.  It was, in his opinion, the most valuable song that he and Mr Young had written and he was clear that although they were happy for the song to be licensed by their publisher, Alberts, to third parties, they never once agreed to a change in its lyrics.  He was shocked when he first heard Warm and France and he reported that the late Mr Young had also been shocked, indeed shocked enough to swear.

    Mr David Robert Albert

20. Mr Albert swore an affidavit dated 17 September 2018.  A second affidavit of Mr Albert, sworn 1 April 2019, was also read.  Mr Albert is a Director and the Chief Executive Officer of the Albert Group of Companies which includes Boomerang.  He explained the history of the Albert family in music publishing in Australia which commenced in 1894 with the work of his great-great-grandfather, Jacques Albert, and his son, Michel Francois (Frank) Albert.  He explained the role of the Boomerang trade mark in the various Alberts businesses, the setting up of the Boomerang sound recording studio on King Street in Sydney and the construction by Frank Albert of Boomerang House in Elizabeth Bay in Sydney.  His evidence was that his family had worked with Mr Vanda and the late Mr Young for over 50 years.  His uncle, the late Mr Ted Albert, had been instrumental in setting up Albert Productions in 1964, an entity which had been focussed on signing up and producing Australian artists.  It was Mr Albert’s view that Mr Vanda, the late Mr Young and his family members Malcolm and Angus Young, together with Bon Scott, are the most successful Australian songwriters of all time.

21. Mr Albert also explained the process by which Alberts was sold to BMG in 2016 and the decision that the family would retain, through Boomerang, the Vanda and Young back catalogue including Love.  He gave evidence about the licensing of Love including for very many covers by well-known artists as disparate as Tom Jones and Richard Clayderman, its significant commercial success and its place in various charts around the world.  He also gave evidence about Strictly Ballroom, his uncle’s decision to invest heavily in that film and the use of Love as part of its soundtrack.  He also gave brief evidence about the roles of APRA and AMCOS and, like Mr Vanda, he reported statements by the late Mr Young consistent with considerable anger on his part about the Air France campaign.  Mr Albert was called on Tuesday 5 March 2019 and cross-examined that day.

    Dr Nicholas Paul Vines

22. Dr Vines is a musicologist and composer.  He holds a number of degrees in music and composition including a doctorate in composition from Harvard University and a bachelor of music from the University of Sydney for which he was awarded the university medal.  He has received a large number of awards and prizes and principally practices in musical and compositional education.  Dr Vines affirmed an affidavit on 17 September 2018 attached to which were attached to two expert reports dated 21 September 2016 and 17 September 2018 (‘Vines 1’ and ‘Vines 2’ respectively).  He swore a subsequent affidavit on 30 January 2019 to which he attached another expert report (‘Vines 3’) of that same date.  At trial, the Applicant did not rely upon Vines 1.

23. In Vines 2 and Vines 3, Dr Vines gave evidence about the extent and nature of the similarities between Love, Warm and France.  He also joined in the preparation of a joint expert report with Dr Andrew Ford, the expert musicologist called by Kobalt (‘the Joint Report’).  The Joint Report set out the matters upon which they were able to agree and those upon which they disagreed together with a brief explanation of the nature of their disagreement.  Dr Vines and Dr Ford were called to give their evidence together so that they could respond to each other’s evidence in real time.  This concurrent session took place on the fourth day of the trial, Thursday 7 March 2019.

    Glass Candy’s witnesses

24. Glass Candy relied upon the evidence of three witnesses.

    Mr John David Padgett

25. Mr Padgett swore an affidavit dated 19 November 2018.  He gave evidence about his background as a composer, the formation of Glass Candy and his collaboration with Ms Monahan.  Mr Padgett’s stage name is ‘Johnny Jewel’ (and occasionally ‘John David V’).  He gave detailed evidence about how Warm was composed between 2005 and 2011.  His evidence was that he had not heard Love prior to September 2011 and could not therefore have copied it when he composed Warm.  He also gave evidence about the commercial launch of Warm in September 2011 on iTunes and the website of his music publishing business IDIB, on which he made the song available for downloading.  His evidence is centrally important to the resolution of the case.  If his account of the manner in which Warm was composed is accepted then the Respondents will succeed.  He was cross-examined at length on the second and third days of the trial, Tuesday 5 and Wednesday 6 March 2019.  I deal with his evidence about the manner in which the song was composed in more detail below.

    Ms Lori Dale Monahan

26. Ms Monahan swore an affidavit dated 21 November 2018.  She is a vocalist and lyricist based in Altadena, Los Angeles County, California.  Her stage name is ‘Ida No’, and together with Mr Padgett they form Glass Candy.  Ms Monahan gave evidence about the circumstances of her collaboration with Mr Padgett to create Warm.  It was Ms Monahan who wrote and sang the lyrics.  She also gave evidence about the creation of a French version of Warm for Air France.  Ms Monahan gave her evidence on the third day of the trial, Wednesday 6 March 2019.

    Mr Michael John Williams

27. Mr Williams is the solicitor for Glass Candy in this proceeding.  He swore an affidavit on 21 November 2018 which was received in evidence.  He gave evidence about the US charts from 1977-1978 and what certain copyright registration and other internet searches revealed in relation to Love.  Mr Williams was not required for cross-examination and did not testify at the trial.

    Kobalt’s witnesses

28. Kobalt relied upon the evidence of three witnesses.

    Mr Simon Anthony Moor

29. Mr Moor is the Managing Director of Kobalt Australia and a related entity, Kobalt Music Services Australia Pty Ltd.  He affirmed an affidavit dated 1 November 2018.  Mr Moor explained that Kobalt Australia is part of a multinational group which is a rights management and publishing group.  Kobalt Australia licensed Warm from another member of the group, Kobalt US, on terms which permit it to commercialise and collect income on that song in Australia.  Mr Moor gave evidence about the contractual mechanics of that licensing arrangement, the role of the collecting societies APRA and AMCOS, and of the circumstances in which he became aware of the dispute about the similarities between Love, Warm and France.  He also explained what had been happening with the royalties due on Warm since Kobalt Australia was notified of the dispute.  Mr Moor gave his evidence on the fourth day of the trial, Thursday 7 March 2019.

    Mr Sebastian David Tonkin

30. Mr Tonkin is Kobalt’s solicitor.  He affirmed an affidavit on 2 November 2018 which was received in evidence.  His evidence was largely of a formal nature and consisted of various searches about the appearance of the phrase ‘love is in the air’ in music, literature and marketing which he either made or caused to be made within his office.  He was not required for cross-examination and did not testify at the trial.

    Dr Andrew Ford

1. Dr Ford is a composer, writer and broadcaster with a significant academic and practical background in musicology.  Amongst other achievements, he has been the Poynter Fellow and Visiting Composer at Yale University and a guest lecturer at the Juilliard School in New York, and was in 2018 the HC Coombs Creative Arts Fellow at the Australian National University.  He swore an affidavit on 2 November 2018 to which were attached two expert reports of 3 May 2018 and 2 November 2018 (‘Ford 1’ and ‘Ford 2’ respectively).  His evidence related to the similarities and differences between Love, Warm and France.  As mentioned above, he prepared a joint report with Dr Vines and gave his evidence concurrently with Dr Vines on the fourth day of the trial, Thursday 7 March 2019.

   Air France’s witnesses

2. Air France relied on the evidence of four witnesses.

   Mme Fabienne Castelli

3. Madame Castelli is the Chief Legal Officer (Distribution-Intellectual Property-Transport) of Air France.  She swore an affidavit on 15 November 2018.  Mme Castelli was not available for cross-examination but the parties agreed that certain parts of her affidavit could still be read.  Largely these parts related to her identification of formal documentation and correspondence about the dispute.  She also gave evidence that Air France did not conduct any legal due diligence on the creative content of the Air France television commercial created by BETC.

   Mme Tiphaine Du Plessis

4. Madame Du Plessis is the Managing Director of BETC.  She swore an affidavit on 4 December 2018.  She gave evidence about the relationship between BETC and Air France, the latter’s decision to launch a new global advertising campaign in 2013, the work which BETC did on that campaign, the creation of the campaign including its signature ‘France is in the Air’, and the decision to change the lyric in Warm from ‘love is in the air’ to ‘France is in the air’.  Mme Du Plessis gave her evidence on the seventh day of the trial, Friday 5 April 2019.

   Mme Caroline Fontaine

5. Madame Fontaine is the Director of Communications at the City of Paris but at the times relevant to this litigation she was the Advertising Director at Air France.  She swore an affidavit on 16 November 2018 which was received in evidence.  She gave evidence about Air France’s operations in Australia, the decision by Air France in 2013 to launch a new global advertising campaign and the decision to choose the signature ‘France is in the Air’.  She also gave evidence about her dealings with BETC on the development of the campaign and its various constituent elements.  Mme Fontaine testified on the seventh day of the trial, Friday 5 April 2019.

   M Christophe Caurret

6. Monsieur Caurret is the Music Creative Director at BETC.  He swore an affidavit on 15 November 2018.  He gave evidence about the work he did for Air France for a new advertising campaign in 2013.  M Caurret was responsible for the music used in the campaign and it was M Caurret who chose to use a modified version of Warm in that campaign with the lyric changed to ‘France is in the air’.  He gave his evidence on the seventh day of the trial, Friday 5 April 2019.

   Documentary evidence

7. Many of the affidavits were accompanied by exhibits.  The affidavits and those exhibits were incorporated into a Court Book which I received on the first day of the trial as Exhibit 1.  As a matter of formality the affidavits were read and the tender of them in the Court Book did not result in them being received as documents but was done for the sake of convenience.  The exhibits to the affidavits were not separately tendered apart from their tender as part of Exhibit 1.  Objections, where upheld, were marked on the Court Book which was maintained electronically.

8. In addition to Exhibit 1 there were ten other exhibits which were separately tendered during the course of the trial. The most significant of these was the Applicants’ updated tender bundle which was Exhibit 4 and Glass Candy’s tender bundle which was Exhibit 6. I have also made a copy of a notice to produce provided to the parties on my request Exhibit 12, to which point see below at [348].

   The Course of the Trial

9. The evidence was taken over seven days between Monday 4 March 2019 and Friday 5 April 2019.  Closing submissions were made on Friday 12 April 2019.  The parties then progressively delivered some 416 pages of written submissions and related documents titled as follows:

   ·Applicants’ consolidated outline of closing submissions filed 26 April 2019 (85 pages);

   ·Applicants’ supplementary closing submissions filed 18 April 2019 (7 pages);

   ·Applicants’ chronology provided on 12 April 2019 (8 pages);

   ·Glass Candy’s consolidated closing submissions filed 1 May 2019 (111 pages);

   ·Glass Candy’s chronology filed 1 May 2019 (8 pages);

   ·Glass Candy’s musical elements annotation filed 1 May 2019 (8 pages);

   ·Kobalt’s outline of closing submissions filed 11 April 2019 (65 pages);

   ·Kobalt’s supplementary closing submissions filed 26 April 2019 (5 pages);

   ·Air France’s outline of closing submissions filed16 April 2019 (44 pages);

   ·Air France’s supplementary closing submissions filed 26 April 2019 (7 pages); and

   ·Applicants’ submissions in reply dated 13 May 2019 (36 pages)

10. On 12 June 2019, Glass Candy sought leave to file submissions in rejoinder to Boomerang’s submissions in reply and on 14 June 2019 Kobalt sought leave to do the same.  Those submissions were as follows:

    ·Glass Candy’s outline of submissions in rejoinder dated 26 June 2019 (12 pages),

    ·Glass Candy’s response to the Applicants’ chronology dated 26 June 2019 (10 pages); and

    ·Kobalt’s outline of submissions in rejoinder dated 19 June 2019 (8 pages).

11. Boomerang’s position is that Glass Candy and Kobalt should not be permitted to rely upon the submissions.  It prepared a two-page written submission about these written submissions entitled ‘Applicants’ note on First to Third Respondents’ applications for leave to reopen’ dated 26 April 2019.

12. On 26 June 2019 a further hearing took place to determine whether the rejoinder submissions should be received.  At the hearing I indicated that I would decide these procedural issues whilst I was considering the substance of the matter and would, if necessary, call for further submissions from Boomerang in the event that the outcome of the debate was that Glass Candy and Kobalt were entitled to file the rejoinder submissions.  My conclusion on that debate is at the conclusion of these reasons at [412]ff.

13. I reserved judgment in this matter on 26 June 2019 at the conclusion of the hearing on the subject of rejoinder.

    WARM AND THE MUSICAL WORK IN LOVE

14. The copyright in the lyrics is separate from the copyright in the musical work in Love.  I begin with the musical work and then deal with the literary work in the lyrics subsequently.

15. As Emmett J explained in EMI, exactly what constitutes a ‘musical work’ is an ‘abstract concept’, and though it may be ‘evidenced by a noted musical score or a sound recording’, neither of these is the work itself: at 448 [10]. In Sawkins v Hyperion Records Ltd (2005) 64 IPR 627, Mummery LJ observed at 638 [53] that in the absence of a statutory definition, ‘ordinary usage assists’, and that ‘the essence of music is combining sounds for listening to’, adding wistfully that ‘[m]usic is not the same as mere noise’. The absence of a statutory definition is particularly relevant when it comes to considering the relationship (if any) between the sound of the lyrics as sung (the lyrics, of course, being a separate copyright work) and the instrumental portions of a musical work.

16. In EMI at 459-460 [66], Emmett J explained the correct approach in a case of alleged infringement of copyright in a musical work: see also 491 [187] per Jagot J (Nicholas J agreeing at 506 [254]). The first step is to identify the work in which copyright subsists.  There must be an original musical work and it must have the necessary connection with Australia.  The second step is to identify the part of the allegedly infringing work which is said to have been reproduced from the copyright work.  For reproduction to be proved there must be sufficient objective similarity between the two works and there must be a causal link between them (i.e. taking, copying or reproducing).  The third step is to determine whether the part taken constitutes a substantial part of the copyright work. This is primarily a qualitative matter; ‘[t]he question is whether the alleged infringement reproduces that which made the copyright work an original musical work’: at 460 [66]. That is, it ‘depends much more on the quality than on the quantity’ said to have been taken: at 457 [52].

    First step: Identification of the work in suit

17. The Applicants rely upon the musical work constituted by the song Love.  However, the parties disagreed at length over what, exactly, constitutes the musical work, namely whether or to what extent the lyrics, whilst their own separate literary work, may be taken into account as part of the musical work when sung.

18. Although the words constituting the lyrics form a separate literary work, I consider that the sound of those words being sung is part of the musical work.  Words may have two relevant functions for present purposes.  They are instructions on what sounds to say but they are also bearers of meaning.  Thus the word ‘love’ is an instruction to make the sound denoted by the phonetic symbol ‘lʌv’.  This is a very complicated manoeuvre only able to be mastered by years of practice.  It involves putting one’s tongue just behind the front teeth touching the front of the palette and, whilst sounding with one’s voice box, moving the tongue smoothly into the middle of the mouth not contacting any other part of the mouth whilst simultaneously moving the front teeth lightly on to the middle of the bottom lip; there is also a slight unsounded exhalation once the teeth make contact with the lip.  It is not for beginners.

19. But the word ‘love’ is also a symbol which denotes a range of abstract concepts relating to affection between people.  Thus ‘lʌv’ is both a complex performance of human anatomy and a sound which bears symbolic meaning to a human listener.  Although the musician who is a vocalist is not altogether deaf to the meaning of the words of a song their direct interest is in the former use of a word and not the latter.  Indeed, often people are made to sing in languages they could not possibly speak (‘Frère Jacques / Frère Jacques / Dormez-vous? / Dormez-vous?’).  This is because the human voice is, quite apart from being a device for communicating information by means of symbols conveyed phonically, also a musical instrument.

20. Like most musical instruments the voice is capable of playing various pitches to various rhythms and, like most musical instruments, it is also capable of different forms of articulation.  Thus just as a violin may be played pizzicato or by bowing so too may the human voice be projected from the mouth in a large of variety of phonetic structures.  The voice may be pitched (‘m’ sounds, for example) or unpitched (‘t’ sounds); the mouth may be bounded in some way to produce consonant sounds or unbounded so as to produce vowels.  Different consonant sounds may be made in different parts of the mouth: guttural sounds at the back of the throat (‘g’), labial sounds on the lips (‘m’) and dental sounds (‘t’) using the teeth and the tongue.  More than one sound may be rolled together (as in ‘gr’).  The options are very many.

21. Viewed as instructions to the singer on what sounds to make with the mouth, the words of a song could not, in my view, more obviously be part of a musical work.  In answering the questions posed by the Full Court in EMI it would seem to me to be surreal to ask about the various qualities of the musical work constituted by a song whilst insisting that one must put the activities of the instrument which is the human voice entirely from one’s mind and consider the song only as a non-human instrumental episode.  For example, the lyrics of Love may be written out as these non-literary phonetic instructions:

    lʌv ɪz ɪn ði eə, ˈɛvri weər aɪ lʊk əˈraʊnd
    lʌv ɪz ði eə, ˈɛvri saɪt ænd ˈɛvri saʊnd

    
    

22. I have no doubt that this runic utterance is part of the musical work comprised in Love.  Combined with the rhythm and melody of the vocal line (typically illustrated for the singer on staves beneath which the lyrics are written with generous use of hyphens to show how the syllables are strung together) this tells the musician what to do with his or her mouth as a musical instrument.  That some people are better at this than others is why there is such a thing as a famous singer.

23. The symbols by which these mouth articulation instructions are usually conveyed are words in one sense (cf ‘have you learnt the words to this song?’) but they are also words in the sense of having the purpose of conveying meaning (cf ‘the words of this song are quite profound’).  This distinction is not at once obvious but neither is it especially difficult to grasp once it is pointed out.  It underpins, for example, the phenomenon of mondegreens in which the listener mishears the lyrics of a song and spends much of their life wondering why Olive, the other reindeer, always laughed at Rudolph and called him names.  Thus one may accept entirely, as I do, that the above set of phonetic instructions when read aloud is a short Montaignian contemplation on the ubiquitous nature of love and its presence in everything that one can see and hear.  But that does not deny their simultaneous quality as quite a catchy pop song, and the average soul jiving around the disco floor to Love in flares would hardly have given that meditation a moment’s thought.

24. I would accept, therefore, that it in assessing the qualities of the musical work one should put from one’s mind the qualities of the words qua literary work but excluding the instrumentation for the human voice seems entirely unsound.  Given that a song tends to be a melody with words, ordinary members of the public might be surprised to hear that copyright litigation about songs was being conducted under a jurisprudence which denied that this was the case.

25. The root of the parties’ disagreement over this issue was that it is not subject to any authority in Australia which binds the Court one way or the other.  The fact that there is a separate copyright in the music and the lyrics is, of course, accepted: Telstra Corporation Ltd v Australasian Performing Right Association Ltd [1997] HCA 41; 191 CLR 140 (‘Telstra v APRA’).  But the present question takes as its point of departure that distinction and I do not see that that decision throws any light on the current question.  Decisions in the United Kingdom after 1988 are also of no use since s 3(1) of the Copyright Designs and Patents Act 1988 (UK) specifically provides that a musical work does not include ‘any words or action intended to be sung, spoken or performed with the music’.  Such a carve-out does not appear in the Copyright Act.  I have not derived benefit from the Applicants’ or Glass Candy’s submissions about the construction of the Copyright Act on this issue or its history.

26. The distinction I have drawn between words as meaning and sung lyrics as part of the music was accepted in Williamson Music Ltd v Pearson Partnership [1987] FSR 97 at [109] by Judge Baker QC:

    I should here say something about my understanding of the relationship between the words and the music. It is, I think, misleading to think of them in mutually exclusive compartments. The words by themselves are or may be the subject of literary copyright. But those same words when sung are to me part of the music. After all one gets enjoyment from hearing a song sung in a language with which one is totally unfamiliar. The enjoyment could well be diminished if the vocal line were replaced by another instrument, e.g., the piano or a flute …

27. However, that statement did not attract universal acceptance.  Blackburne J in Hayes v Phonogram Limited [2002] EWHC 2062 (Ch) took Judge Baker QC to have meant that the human voice can constitute part of the overall orchestration of a musical work but cautioned that:

    … one must beware of confusing the way in which the work is performed with the work itself. In the case of a song where the words take the form of rap lyrics, the fact that the performer expresses the lyrics in a particular manner, giving emphasis to their rhythmic or alliterative qualities in some distinctive manner, does not mean that the words become part of the musical work. Equally, the fact that the musical component of a song reflects the meaning and mood conveyed by the words of the song does not mean that the words somehow become a part of the musical work.

28. That caution is important.  The question which arises here is not whether Ms Monahan singing ‘love is in the air’ in Warm is objectively similar to Mr John Paul Young singing ‘love is in the air’ in Love.  It is whether the portion of Warm including the sung lyric as part of the orchestration is objectively similar to the corresponding portion in Love.  In that analysis the identity of the singer is unimportant.  Thus, the actual recordings of Warm and Love are sound recordings in which a separate copyright inheres under Pt IV of the Copyright Act (and with which this case is not concerned).  No doubt, some changes in the lyrics to a song can be made without the song losing its essential nature.  As Kobalt correctly pointed out, a musical work can be represented in other works such as foreign language covers.  But to accept that is not to accept the much larger proposition that follows that a musical work which is a song does not include its sung lyrics.

29. In identifying the work in suit, therefore, I propose to take into account as part of the musical work the instrumentation including sung lyrics.  But I will not include in that analysis the performance of the works which must remain separate from the works themselves.  Returning to the musical work in suit, that work is Love.  Love was composed in 1977 by Mr Vanda and the late Mr Young who, at that time, recorded the backing track and instrumentals.  In 1978 they recorded a copy of the song with the lyrics sung by the singer, Mr John Paul Young.  At the beginning of the recording session the lyrics were not quite complete and Mr Young was told to sing ‘whoa, whoa, whoa’ for the incomplete section.  As it happened, this sounded quite good and a decision to maintain it in the final recording was made.  In their submissions, the version the Applicants relied upon was referred to as the ‘master recording’ and was Exhibit DRA-1 in the Court Book (being a USB stick).

    Second step: Identification of the portions of Warm said to have been taken from Love

30. Having identified the work in suit, one must identify in the work which is alleged to infringe the part taken, derived or copied from Love.  The evidence included several copies of a recording of Warm including an audio recording and a music video.  The infringements relied upon included the streaming and downloading of a recording Warm from various online music platforms as well as a small number of downloads from Mr Padgett’s former Big Cartel website and IDIB’s current website.  Mr Padgett gave evidence that the commercial recording of Warm was first uploaded to iTunes in September 2011 (the ‘September 2011 Commercial Recording’) and the music video featuring the same soundtrack was uploaded to YouTube in November 2011.  There was no direct evidence that the recordings of Warm available from Spotify, Google Play and Apple Music were, in fact, the September 2011 Commercial Recording but no party submitted that they differed and I will proceed on the basis that they are the same.  The September 2011 Commercial Recording of Warm was provided to Dr Vines and Dr Ford along with a copy of the master recording of Love and it was those two competing versions to which they confined their analysis.

1. Next, as explained in EMI at 459 [66], there are then two questions to be answered about the allegedly infringing work: are the impugned portions of Warm objectively similar to their equivalent portions in Love, and is there a causal connection between those parts and Love (the causal connection in this case being said to consist of conscious or subconscious copying)?

   Objective similarity

2. Here the Applicants pursued two cases, the first of which was that the sung lyric ‘love is in the air’ and its accompanying music in Warm was objectively similar to the line ‘love is in the air’ and its accompanying music in Love.  That line, which first appears at Bar 5 on the score, appears fourteen times throughout Love, being twice in each of the four verses and three choruses.  As I shortly explain, it appears in three slightly different variants which were referred to by Dr Vines as ‘H1’, ‘H2’ and ‘H3’.  Dr Ford referred to it in all of its forms as the ‘musical phrase’.

3. The four verses in Love are functionally equivalent and the first verse is sufficient to understand the issues which arise:

   Love is in the air, everywhere I look around
   Love is in the air, every sight and every sound
   And I don’t know if I’m bein’ foolish
   Don’t know if I’m bein’ wise
   But it’s something that I must believe in
   And it’s there when I look in your eyes

   
   
   
   
   
   

4. The score for the first two lines is as follows:

5. Although the musical work is distinct from the sheet music and any performance of that sheet music, nevertheless it is useful to hear what they sound like.  A link to an audio file of the first two lines is here.

6. The second verse is similar to the first and need not be set out.  Whereas in the first verse love was ubiquitous and present in all sights and sounds, now it is to be found in the whisper of trees and the thunder of the seas, as it so often is.  As in the first verse, the speaker then lingers on some personal doubts before finding certainty in the object of his affections.  I make these remarks just to explain the structure of the song.  Because the meaning of the lyrics is irrelevant to an assessment of the qualities of the musical work it must be kept firmly in mind that these textual observations must not inform that assessment.

7. The second verse is then followed by an uplifting chorus in which the phrase again appears:

   Love is in the air
   Love is in the air
   Whoa, oh, oh, oh

   
   
   

8. The score for this chorus is as follows:

9. An audio file of the chorus is here.

10. Dr Vines and Dr Ford agreed that the last line of the chorus is known as a melisma, that is, an example of a single syllable sung over several notes.

11. After this first iteration of the chorus, there is then sung a third verse which also begins with a repetition of the line ‘love is in the air’ in the first of its two lines.  The third verse gives way immediately to the fourth and final verse of the song which repeats the line in the same way as each of the first through third verses.  After the fourth verse the chorus is then repeated twice although on the second occurrence the melisma is truncated somewhat and an ‘ooh’ and ‘oh’ omitted.

12. It will be seen (and heard) that the line ‘love is in the air’ appears in Love in three slightly different ways: first, in the first two lines of each of the four verses (H1); secondly, as the first line of the choruses (H2); and, thirdly, as the second line of the choruses (except for the last slightly truncated choral iteration) (H3).  These three variants are not identical though they are, as Dr Vines put it, ‘connected aurally’.

13. Each of H1, H2 and H3 are underpinned by the tonic chord, C major, but the pitches of the vocal line are slightly different.  Dr Vines’ transcription of the pitch classes and contours of the variants was as follows:

14. One of the central features of the vocal line in H1 is the minor third drop which occurs on the fourth note of the bar, being the note to which ‘the’ is sung.  That interval is different in H2 and H3, though it remains constant that all words except for ‘the’ are sung to the one note.  In H2, it is a tone drop, and in H3, it is a minor third rise.

15. The Applicants submit that parts of Warm are objectively similar to H1, H2 and H3.  Warm is structured into four blocks.  The line ‘love is in the air’ appears only in the first two blocks, the lyrics of which are as follows:

    Block 1
    

    Love’s in the air, whoa-oh
    Love’s in the air, yeah
    We’re warm in the winter
    Sunny on the inside
    We’re warm in the winter
    Sunny on the inside.
    Woo!

    
    
    
    
    
    
    

    Block 2
    

    Love’s in the air, whoa-oh
    Love’s in the air, yeah
    I’m crazy like a monkey, ee, ee, oo, oo!
    Happy like a new year, ee yeah yeah, woo hoo!
    I’m crazy like a monkey, ee, ee, oo, oo!
    Happy like a new year, yeah, yeah, woo hoo!

    
    
    
    
    
    

16. As it is relevant to an issue later about the composition of the lyrics, it might be noted for now that each of lines 3-6 in Block 2 is a cliché.  A score of the first two lines of these two blocks is thus:

17. An audio file of the first two lines of Blocks 1 and 2 is here.

18. In the September 2011 Commercial Recording of Warm the sung line ‘love is in the air’ appears at about 1:00-1:02, 1:07-1:09, 2:00-2:02 and 2:08-2:10.

19. Is the sung line ‘love is in the air’ in Warm objectively similar to H1, H2 and H3?  This question is not to be determined by a ‘note-for-note comparison’, and depends ‘in large degree upon the aural perception of the judge’: Francis Day & Hunter Ltd v Bron [1963] Ch 587 at 608 and 618; see also EMI at 475 [121(5)]. This analysis requires me to put myself in the shoes of the ‘ordinary, reasonably experienced listener’: EMI at 497 [209]. It is not clear (though not strictly necessary to answer in the present circumstances) whether that hypothetical person refers to an ordinary, reasonably experienced listener of death disco, regular disco, fem pop or all of the above. Nor does the requirement that I position myself as the ordinary, reasonably experienced listener necessitate pretending that my Associate and I have not been subjected to repeated and seemingly interminable renditions of the three works the subject of this proceeding, or that I have not been assisted by expert evidence (EMI at 466 [86]):

    Sensitised though the primary judge may have been to the similarity, it is not erroneous to direct oneself to the relevant parts of the works, to listen to the works a number of times, and to accept the assistance of the views of experts, in determining the question of objective similarity …

20. I turn first to a comparison between H1 and the corresponding phrase in Warm.  Whilst recourse to a score of both phrases is not determinative, it is nonetheless instructive.  Dr Ford’s transcriptions of H1 and the impugned phrase in Warm are thus (Love being on the left, and Warm on the right):

1. For completeness, I note that Dr Vines’ transcription of the vocal line in H1 and Warm were slightly different, but the differences merely highlight the limitations of a comparison of the scores of two musical works for the purposes of assessing objective similarity.  That is particularly so when dealing with pop or disco music, as compared to (say) a Baroque étude, because rhythmic precision (at least for the voice) is less important.  Dr Vines’ transcriptions of H1 and the impugned phrase are thus (again, Love being on the left, and Warm on the right):

1. There are, one may accept, differences between them but I do not believe that these are significant.  I do accept that the rhythmic underpinning of constant semiquavers in each work is caused by different instruments or synthesised sounds.  In the same sense I accept that Love has a moving bass line whereas Warm does not.  It was not to the point, as Dr Ford suggested, that a listener would be able to recognise Love even before the entry of the tambourine due to the bass line as the opening of Love is not alleged to have been taken.  I also accept that Warm and Love are in very different styles.  But the fact that in Love the line forms part of a song which is in the 1970s disco genre and that Warm has been described as a species of ‘death disco’ does not mean that the single line ‘love is in the air’ in both songs is not objectively similar.  For example, the bass note progression from the air in Bach’s Orchestral Suite No 3 (BWV 1068) is clearly discernible in the organ line in Procul Harum’s ‘A Whiter Shade of Pale’ and that conclusion is not slightly dented by the stylistic gulf between the two works.  Nor did such a difference in genre prevent the outcome in EMI.

2. However, the differences between H1 on the one hand and H2 and H3 on the other prevent a similar conclusion about those iterations of ‘love is in the air’ and accompanying music.  The ordinary, reasonably experienced listener would hear that their contours are distinct.  Having regard to the factors considered appropriate for comparison in EMI, the similarities between H2 and H3 and the corresponding part of Warm could not be described by that hypothetical listener as ‘definite’ or ‘considerable’: at 456 [50]. Consequently, I conclude that the sung line ‘love is in the air’ and its accompanying music in Warm is objectively similar to H1, but not H2 and H3.

3. My conclusion in this regard is supported by the evidence of Dr Vines and Dr Ford who agreed that ‘the pitch and rhythmic content of the opening vocal phrase is notably similar’ between Love and Warm and that ‘there is a basic aural connection between this phrase and the corresponding phrases in Warm’.  Glass Candy sought to limit that agreement to similarity between the vocal parts only, and not the music underlying them, on the basis of a clarification made by Dr Ford at the hearing.  However, the experts separately agreed that the rhythmic profile of that bar was the same, and that each vocal part was sung atop a tonic chord.

4. Glass Candy also sought to diminish the similarity between the vocal lines on the basis of a potential glissando (that is, a vocal slide) between the notes on which ‘the’ and ‘air’ were sung in Warm, whereas the minor third drop and upward return on ‘the’ and ‘air’ in Love was more precise.  As the excerpts above show, the ‘slide’ was represented in Dr Vines’ transcription as an appoggiatura, and in Dr Ford’s transcription as the E returning to the E# to the G# via an F# quaver).  To the ordinary, reasonably experienced listener, however, that is of little import.  As Glass Candy submitted:

   … it is common ground that the vocal lines of both … comprise five notes, the first two or three notes … being in same pitch, the next note dropping down in pitch by a minor third, and the next note returning up in pitch by a minor third.

5. I accept the experts’ evidence, too, that the metre of both songs is the same (common time, or 4/4), both share a composite rhythm of constant semiquavers, both have a similar tempo in terms of beats per minute and that the two works are in keys which differ by only a semitone (Love in C major and Warm either in C# major or its enharmonic equivalent, D♭ major).  I agree with Dr Ford that the similarities in metre, rhythmic structure and tempo probably do not take one very far in the case of music of the present kind as it a common feature of a lot of modern dance-style music.  It is hard, when all is said and done, to dance to 5/4 as the self-referentially entitled theme from Mission Impossible shows.  I find that the sung line ‘love is in the air’ in Warm is objectively similar to H1.

6. The Applicant’s second case on objective similarity concerns the sung couplet in Love:

   Love is in the air, everywhere I look around
   Love is in the air, every sight and every sound

   
   

7. It is said that this part has been taken and reproduced in Warm as follows:

   Love’s in the air, whoa-oh
   Love’s in the air, yeah

   
   

8. In the September 2011 Commercial Recording of Warm this section is about 12 seconds long and appears at 1:00-1:12 and 2:00-2:13.  I have laid out the relevant portions of the scores above at [82] and [94].

9. There is no substitute for listening to these competing parts.  An audio file of the relevant portion of Love is here and of Warm is here.

10. I do not accept that, beyond the line ‘love is in the air’, these portions are objectively similar.  The melody to which Love’s ‘everywhere I look around’ is sung is quite different to Warm’s melismatic rendering of ‘whoa-oh-oh’ and the same is true as between Love’s ‘every sight and every sound’ and Warm’s lengthy ‘yeah’.  They just do not sound the same to me.  I accept, as Dr Vines and Dr Ford agreed, that there are similarities in tempo, rhythm, the contour of the phrasal structure, chord progression and the harmonic rate of change but to the comparatively untrained ear of the ordinary, reasonably experienced listener, they sound entirely different.  I find that they are not objectively similar.

    Causal connection

11. This requires consideration of the detailed evidence surrounding the composition of Warm.  The broad thrust of that evidence is clear.  Glass Candy say that they had never heard of Love until just before Warm’s commercial release in 2011 which was well after they had written it.  Consequently, they certainly had not copied it or any part of it in Warm.  The Applicants’ primary case, by contrast, is that the evidence that Mr Padgett and Ms Monahan have given as to how they came up with Warm is false.  Their secondary case is that Glass Candy is mistaken and that Love, in effect, was sufficiently known to them that, even if they did not do it deliberately, they had subconsciously taken from Love in composing Warm.

    Mr Padgett’s evidence

12. Mr Padgett is a self-taught musician.  He has had no formal musical training and he cannot read sheet music or write a musical score.  His evidence was that he was born in 1974 in Houston, Texas, to parents who were ordained ministers of the Southern Baptist Church.  Consequently, whilst he listened to gospel music and Christmas carols he did not get to listen to pop music until his teenage years when he began to frequent independent record stores looking for experimental vinyl records.  He says his tastes in music lie on the periphery and he told the Court that he was interested in the recordings of modern composers like John Cage.  His interest in experimental music continued in the early 1990s but he then became involved in skateboarding which led him into ‘non-mainstream punk rock’, pop art such as Andy Warhol and his association with The Velvet Underground.  He described his work as ‘usually highly experimental’.

13. He explained his method of composition this way: he usually records the songs he plays on an electric keyboard or piano and later adds other sounds such as electronic hand-claps, drum lines or vocals.  However, he is clear that he never writes the lyrics for Glass Candy—that is done by Ms Monahan.  He has performed with a number of bands including Glass Candy, the Chromatics, Desire and Symmetry.  All of these bands have been signed to his publishing company, IDIB.  His music has been commercially successful and has been released as vinyl records, CDs and in digital formats such as are available from platforms such as iTunes and Spotify.

14. Mr Padgett says that he composed the music for Warm over a six year period between 2005 and 2011 as part of an iterative process involving multiple recordings.  It is therefore necessary to trace that chronology.

    The 2005 Recording

15. Mr Padgett says that he composed the first musical elements of Warm in 2005 whilst working on a song then entitled ‘I Always Say Yes’.  He says that he made multitrack recordings of this music on to 16-track tape.  Three different versions were made but two of these have been lost as they have been overwritten.  The surviving version did not make its way into evidence, however.  Instead, Mr Padgett produced extracts from his notebook which explained each track.

16. According to the notes, one of the tracks on the tapes was a vocal recording of Ms Monahan singing ‘I Always Say Yes’ to the music of what he now says was the proto-version of Warm.  This is why the notebook records his early work on the song under the title ‘I Always Say Yes’.  These lyrics were eventually used for a different song entitled ‘I Always Say Yes’ which was released on a 12” vinyl record in 2007 and is an entirely different song.

17. Mr Padgett’s notes state that the taped recordings were made on 7 July 2005.  On 8 July 2005 he burned a live copy of the musical elements of what was then called ‘I Always Say Yes’ but which, according to Mr Padgett, would go on to become Warm as Track 6 on a CD entitled the ‘Pink CD’.  Perhaps confusingly, Track 6 has the working title ‘I Always Say Yes’.  The date of this recording is known because the Pink CD bears that date on it.

18. A link to Track 6 of the Pink CD is here.  The recording is 7:26 in duration.  I will refer to it as the ‘2005 Recording’.

19. I do not accept Mr Padgett’s evidence that the 2005 Recording is a precursor to Warm.  As a matter of overall impression this track has nothing to do with Warm.

20. Detailed analysis of it leads to the same conclusion.  To begin with, the chord progression in the 2005 Recording consists of the triads I-VI-IV whereas the chord progression of Warm is most commonly I-IV with the occasional interjection of VI.  Mr Padgett initially said during cross-examination that the chord progression of the two tunes was the same but eventually accepted that they were not:

    So it’s not the same chord progression at all is it?---Not technically, no.

21. Not technically, not at all.  Glass Candy’s eventual submission was that both tunes used the same three chords, I, IV and VI, which feature in ‘doo wop’.  But doo wop is a chord progression and what matters in it is not only the identity of the chords but the order in which they appear.  Also missing altogether from a typical doo wop progression in either work is the dominant (V) chord.  The ‘doo wop’ language is of little use.  Nor do I accept that the melody of the 2005 Recording is the same as in Warm or even remotely reminiscent of the melody in Warm.  Initially Mr Padgett said that the melody was the same and what differed between the two tunes was the ‘sonic choices’.  Although Mr Padgett thought the melodies were the same, to listen to the 2005 Recording is to hear that they are not at all the same.  I reject this aspect of Mr Padgett’s evidence.  Eventually Mr Padgett also accepted that the tempo and the rate of harmonic change were different to which one might as well add that they are in a different key (although for myself I would rate that of less importance).

22. Glass Candy submitted that the 2005 Recording had in common with Warm the following: chirping synthesizer melody played on three notes, the same three doo wop chords, hand clapping, the use of a melisma, the use of the spoken word, a glissando, a falsetto, a minor third drop happening in an entirely different part of the instrumentation, and common instrumentation in the form of a synthesizer and Ms Monahan’s vocals.  I accept the chirpy synthesizer on the three notes and the three doo wop chords (although not in the same order).  Whilst I accept Ms Monahan’s voice appears in the recording I have been unable to detect a falsetto or a glissando but the fault is probably mine.  Even so, this does not alter my conclusion that Warm is not in any way related to the 2005 Recording.  Vast swathes of pop music have features of this kind and although it is perhaps not quite as lame as the submission that the 2005 Recording and Warm have in common the fact that they are both songs, these points do not lie very far to the south of such a submission.

23. This conclusion is also inconsistent with statements made by Mr Padgett prior to the commencement of this litigation.  When the September 2011 Commercial Recording of Warm was released, Mr Padgett wrote the accompanying sleeve for the CD and vinyl record release.  That sleeve said that the song ‘was written and recorded between May 2008 and August 2011 in Portland and Montreal’.  The same statement was also provided to an online publication, Discogs.  Further, in an email dated 3 March 2015 Mr Padgett said that the song was ‘written and recorded in Montreal during the coldest winter of my life.’  Under cross-examination he agreed that this was a reference to the winter of 2008-2009.  I reject the submission made on Glass Candy’s behalf I should downplay the importance of this contemporaneous material on the basis that Mr Padgett’s promotional materials exhibited a certain degree of ‘artistic licence’.

1. The only part of the case which remains therefore is the case relating to Air France’s use of France as its hold music.  The use of France as telephone hold music only involves the communication of France to the public.  Air France does not hold an APRA licence.  The fact that Air France has no APRA licence means that it has no right to play France to the extent that it includes a reproduction of a substantial part of Love.  APRA is entitled to a declaration to that effect but does not claim damages.  Boomerang claims damages but has no title to sue.

2. The Applicants also alleged that Glass Candy was liable for authorising Air France to communicate France to the public.  This would appear to be the unavoidable inference flowing from the fact that Glass Candy licensed Air France’s use of France on 25 February 2015.  I reject Glass Candy’s submission that the Applicants have not proved that France was communicated via Air France’s YouTube channel or as part of its telephone hold music.  Air France admitted both.  As I understood the submission was that because Glass Candy did not admit that matter it was not relevant that Air France had admitted it.  I do not agree.  The fact that the Air France admitted that it had done both is powerful evidence that Air France had in fact done both.  Absent some attempt by Glass Candy to prove that Air France’s admission did not prove what it obviously appeared to prove, this submission goes nowhere.

   THE CASE AGAINST KOBALT

3. Boomerang and APRA’s case on this is the allegation at FASOC §23 that Kobalt authorised the infringements which occurred.  However, apart from IDIB that case was predicated on the activities of the online music platforms and I have concluded that that case fails.  In relation to the IDIB website, the case depended on the proposition that Kobalt had authorised AMCOS to licence digital downloading of Warm.  IDIB did not hold such a licence so that case cannot succeed.

4. In relation to the online platforms I would have rejected the case against Kobalt even if infringement had been established.  The evidence on this topic came from Kobalt’s witness Mr Moor.  In his affidavit of 1 November 2018 he explained that he had asked his assistant Ms Blight to inquire of APRA and AMCOS how much income had been generated by Warm in total.  An email was sent on behalf of APRA and AMCOS to Kobalt on 27 September 2018 indicating that Kobalt had received $386.43 in total in respect of Warm for the exercise of the rights owned by APRA and $266.60 is respect of the rights exclusively licenced to AMCOS.

5. Subsequently, Kobalt asked APRA and AMCOS for a more detailed breakdown of these figures which became Annexure SAM-12 to Mr Moor’s affidavit.  This exhibit throws no light on who was doing the streaming or downloading in question.  It does show, however, that between November 2013 and November 2017 there were 17 occasions on which Warm was downloaded and 16 occasions on which it was streamed.  The evidence does not link any of these streaming or downloading activities to any particular streaming service.  In particular, the evidence does not itself establish that the streaming which occurred was, as the Applicants allege at FASOC §11, via iTunes, Google Play, Spotify, Apple Music, YouTube or SoundCloud and via the IDIB website.

6. In the case of Kobalt it has, however, admitted that streaming occurred as alleged in FASOC §11 except that no admission is made about streaming from SoundCloud or the IDIB website.  On the basis of that admission I am prepared to infer that the 16 occasions on which Warm was streamed it was streamed from each of iTunes, Google Play, Spotify, Apple Music and YouTube but I cannot say how many were streamed from which provider.  Because it is not admitted and there is no other evidence I cannot make any finding against Kobalt that Warm was streamed from SoundCloud.  I do accept however that downloading from the IDIB website has been proved.  During the cross-examination of Mr Moor, Mr Hall SC invited Mr Cobden SC to state whether Glass Candy now accepted that Warm had been downloaded and streamed in Australia.  Glass Candy’s position was reserved.

7. On 6 August 2013, IDIB entered into an agreement with Kobalt US, under which it exclusively licensed to Kobalt US in both the US and Australia the full and entire copyright in a number of works including Warm: cl 4(i).  The width of the grant was sufficient to authorise Kobalt US to arrange for the streaming and downloading of Warm: cl 4(ii).  The grant did not operate as an assignment of the copyright but assumed that the title to the copyright would remain with IDIB although permitting Kobalt US to use IDIB’s name as the owner: see, eg, cl 4(ii).  Under cl 4(xiv), Kobalt US agreed to use its best commercial endeavours to register Warm with all relevant collecting societies and to collect monies earned thereby in the US and Australia.  Under cl 5(iii)(b) Kobalt US agreed to pay a royalty to IDIB of 90% for all revenue it derived from the downloading or streaming of Warm in Australia.  Under cl 7(i)(a) IDIB warranted that it had in place agreements with Mr Padgett and Ms Monahan granting to IDIB all rights necessary to enter into the agreement with Kobalt US.

8. Mr Moor gave evidence in his affidavit that Kobalt US had entered into an agreement with Kobalt Australia in relation to a number of works including Warm. The agreement was dated 3 December 2010. The agreement relates to ‘Compositions’ which is defined in such a way in cl 1(a) to pick up any works which during the life of the agreement Kobalt US might acquire either the ownership or control of in Australia. Since Kobalt US had acquired an exclusive licence of the copyright in Warm in Australia on 6 August 2013 during the term of the agreement it follows that it was a ‘Composition’ within the meaning of cl 1(a). Under the agreement Kobalt US granted to Kobalt Australia the exclusive right in Australia to make, inter alia, ‘electrical reproductions’ of Warm and the right to licence that right: cl 2(a)(i). Kobalt US also granted Kobalt Australia the right to grant licences for the digital distribution of Warm: cl 2(b)(vi). Under cl 5(a)(i) Kobalt Australia was to remit 95% of the income generated from streaming or downloading Warm to Kobalt US.

9. On 15 July 2010 Kobalt Australia became a member of APRA.  That agreement was Annexure SAM-1 to Mr Moor’s affidavit.  As with the other APRA agreements referred to in these reasons, the manner in which APRA operates involves an assignment of the copyright in a work to APRA.  In relation to Warm, the agreement between IDIB and Kobalt US and between Kobalt US and Kobalt Australia could not result downstream in a valid assignment to APRA of such a copyright.  Both Kobalt Australia and Kobalt US were licensees and the owner remained IDIB.  In APRA’s records the owner of the copyright in Warm is recorded as BMI which is a US collecting society.  This is consistent with agreements attached as exhibits to the affidavits of Mr Padgett and Ms Monahan, each dated 4 November 2010 and each licensing their rights in works (which would come to include Warm) to BMI.  It follows, as Mr Moor suggested, that Kobalt Australia was not responsible for the licensing of the streaming of Warm in Australia because it could not have assigned the right to APRA.  It would appear that the owner of streaming right is either BMI or Kobalt US.  The former would be consistent with Mr Padgett’s evidence that Glass Candy had licensed the song to BMI.  However, it does not matter.  The streaming of Warm is not legally related to Kobalt Australia.

10. Despite that, it appears that APRA in fact paid Kobalt Australia for fees collected by it in relation to the performance of Warm which I would assume includes the streaming of Warm by various online music services.  The amount collected received by Kobalt Australia in this way was $386.43.  Mr Moor understood that it was usual for a music publisher to collect royalties from a collecting society on behalf of a composer.

11. The downloading of Warm is a different matter.  Kobalt Australia has entered into an AMCOS licence in relation to the right to download Warm.  It did not require an assignment of the reproduction right and operated only as an exclusive licence.  Consequently, I accept that during its currency Kobalt Australia would have licenced AMCOS to collect royalties on its behalf in relation to Warm.  Consistent with that conclusion, it appears that AMCOS paid Kobalt Australia $266.60 in relation to the making of copies of Warm which I assume includes digital downloads.

12. The evidence therefore suggests that Kobalt Australia authorised AMCOS to licence Warm for downloading in Australia.  Had I concluded that any of the downloading from the online platforms (apart from the IDIB and Big Cartel websites) involved an infringement I would have concluded that Kobalt Australia had authorised that infringement.  In relation to IDIB, it did not hold an AMCOS licence and Kobalt Australia cannot therefore have authorised the downloading which took place on the IDIB or Big Cartel websites.  I would have concluded that Kobalt Australia could be liable for secondary infringement to Boomerang.  I would not have accepted that it could be liable to AMCOS.  The case theory that Kobalt Australia is liable to AMCOS for authorising AMCOS to licence third parties to provide digital downloads of Warm makes no sense.

13. In relation to streaming, Kobalt Australia is not the correct party.  The only party who could authorise APRA to stream Warm was BMI (or perhaps Kobalt US) and APRA’s records suggested that it was BMI who had done so.

14. In relation to both cases I would not have accepted that receipt of royalties was sufficient to justify the conclusion that Kobalt Australia had authorised the infringements.

    THE MORAL RIGHTS CLAIM

15. It is then useful to turn to the question of moral rights.

16. Part IX of the Copyright Act deals with ‘moral rights’. One of these rights is the right of integrity of authorship: s 189, definition of ‘moral right’, subpara (a)(iii). By s 195AI(2) this is the right not to have the work subjected to derogatory treatment. ‘Derogatory treatment’ is defined in ss 189 and 195AJ(a) to mean, relevantly, the doing of anything ‘that results in a material distortion of … or a material alteration to’ the work which is ‘prejudicial to the author’s honour or reputation’. By s 190 it is provided that only individuals have moral rights. Mr Vanda and the estate of Mr Young submit that France involved the material distortion of or material alteration to Love by changing the lyric from ‘love is in the air’ to ‘France is in the air’ and that this was prejudicial to their honour or reputation.

17. I do not accept this argument. By s 195AX it is not an infringement of an author’s moral right in respect of a work to do something outside Australia. Although I have found that Air France did copy the sung lyric ‘love is in the air’ from Love and did alter it to ‘France is in the air’ it is clear that this all occurred in France (where M Caurret was), the United States (where Ms Monahan and sometimes Mr Padgett were) or Canada (where Mr Padgett sometimes was). None of it happened in Australia and therefore assuming everything in Mr Vanda and the estate’s favour, there could be no infringement of their moral rights by reason of s 195AX. Where a person’s moral right of integrity of authorship has been infringed a communication of the infringing work will also infringe the right of integrity of authorship: s 195AQ(3). In this case that would encompass both the playing by Air France of France as telephone hold music and the streaming of France to Australian viewers from its YouTube channel (the APRA analysis not creating in this context any defence). However, the premise for such an infringement is that there is an initial infringement and the effect of s 195AX is to prevent any such infringement occurring.

18. The Applicants did not allege that Air France had imported an electronic copy of France into Australia and therefore did not rely upon s 195AU. Where an ‘article’ (which includes an electronic copy of a musical work) is imported into Australia and is subsequently disseminated, this provision deems the author’s moral rights to have been infringed if the importer knew or ought reasonably to have known that if the article had been made in Australia it would have infringed. Sections 195AX and 195AU are complements. The former prevents extra-territorial conduct from giving rise to an infringement of an author’s moral rights and then s 195AU, taking that as its stepping off point, creates a deemed infringement of the author’s moral rights upon importation in Australia where the importer ought to have known of the infringement.

19. For such a case to have been run it would have been necessary for Mr Vanda and the estate to have alleged that: (a) Air France had imported an electronic copy of France into Australia; and (b) Air France ought reasonably to have known that if France had been made in Australia that it would have infringed their moral rights. Such a case on the current facts is not impossible to imagine. But it would require more evidence about how Air France’s YouTube channel operates and how France came to be on its hold music. Such a case was not pursued and I do not think it would be appropriate for me to reengineer the Mr Vanda’s and Mr Young’s estate’s claim to circumvent s 195AX through the use of s 195AU.

20. The Applicants did make a submission about s 195AU, however. They submitted that it proved that s 195AX did not mean that an extra-territorial act could not constitute an infringement of an author’s moral rights because otherwise s 195AU would be left with no work to do. I do not accept this submission. Section 195AU is entirely necessary precisely because of s 195AX.

21. It follows that Mr Vanda’s and the estate’s claim for infringement of their moral rights, as articulated, is barred by s 195AX.

22. Were I wrong in that conclusion, I would have reasoned as follows. I would have accepted that the change of ‘love’ to ‘France’ was a material alteration or distortion. I would also have accepted, perhaps with some hesitation, that this was prejudicial to their honour although not their reputation. This involves a conclusion that ‘honour or reputation’ in s 195AJ involves two distinct concepts and it is not a composite expression. No question of reputation arises in this case but it would appear to me to be something which can be objectively determined. It does not necessarily precisely correspond with the concept of reputation in defamation law. For example, an artist may well have a reputation for being a dangerous person which could be damaged by depicting their work in a wholesome light.

23. Honour, on the other hand, as a matter of ordinary language connotes in this context a personally held set of high-minded principles (‘she was a woman of honour’).  Inherently this is subjective but it is circumscribed by an objective standard.  Just because a person believes themselves to have a sense of honour does not meant that they do.  For example, a person who believes it is honourable to betray their friends for money is not, despite their belief, an honourable person.  The test for honour is therefore both subjective and objective.

24. I do not accept that any harm was done to Mr Vanda’s reputation or the reputation of the estate of Mr Young by France.  To the contrary, most listeners would have made the connection to Love and thought it was an example of the commercial use of the song.  There was nothing unsavoury about the Air France advertisement, indeed it is, as it was intended to be, quite classy and one might have thought it a feather in one’s cap for it to be used as the music for a well-known international airline.  There is flattery in imitation.

25. The question then is one of honour.  Mr Vanda and the estate endeavoured to persuade me that their sense of honour was prejudiced by the change to their lyrics.  Some cases of this kind will be clear.  For example, an author’s sense of honour might well be prejudiced when the author being of one political persuasion finds their work used without permission to promote political values which they find repellent; or a DJ with an edgy reputation (perhaps Mr Simonetti) finds his work borrowed by an advertising agency and used to sell incontinence aids.

26. Although Mr Vanda says he was shocked when he heard France (and similar remarks are attributed to the late Mr Young which I am prepared to accept) I initially found it somewhat hard to conceive that their sense of honour was prejudiced by the change in the lyric and I thought it more likely that they were shocked at the outrage of being plagiarised.

27. But the evidence largely showed that Mr Vanda and the late Mr Young had never agreed to a change in the lyrics of Love when they had licenced its use.  Further, Mr Vanda was proud of Love and I have no doubt Mr Young was too.  For both, it is hard to avoid the conclusion that its composition and success have been lifetime highlights.  It is not far-fetched to imagine that Mr Vanda did not wish to see the central lyric altered and there is therefore good reason to accept that evidence unless it otherwise be shown not to be so.

28. Some attempt was made to prove that it was not so.  The Respondents located an advertisement for Volkswagen in which it was said the lyrics had been changed but I do not think it really cuts across Mr Vanda’s point.  There are actually two songs being played at once in the advertisement—one is Love and the other is a rap version of Love.  The point of the advertisement is one of contrast.  Even if that is not the correct interpretation, I think one example of changed lyrics across the long working career of Love does not detract from Mr Vanda’s point and that is even assuming that the use was an authorised one (there being some doubt about that).

29. I therefore accept that Mr Vanda’s sense of honour was prejudiced by the change in the lyrics and I make the same finding in relation to Mr Young. Although I am not sure my sense of honour would be offended by having the lyrics of a song changed, I have never written a song and the question is whether Mr Vanda and Mr Young’s sense of honour is an objectively reasonable one. In my view, it is. That would be sufficient to establish derogatory treatment under s 195AJ, as it requires prejudice to honour or reputation.

30. Mr Vanda was cross-examined about this question by being shown a licensed use of Love in a commercial for a deodorant Anuncio de Axe (‘Axe’).  This light hearted advertisement shows a young man preparing for a night out.  He applies Axe liberally in accordance with the directions.  Once on the town he is immediately waylaid by two buxom women who are apparently unable to resist him because of the scent of Axe.  Whilst enjoying their company on a couch he is a bitten by a mosquito.  The mosquito, tainted with the scent of Axe, is then eaten by a frog.  The frog is driven wild by the taste of Axe and the next scene is of two frogs, as counsel put, copulating.  But nothing is for ever and the advertisement then cuts to the frogs’ legs being served as a dish at what appears to be an expensive restaurant possibly with a side of cauliflower and what may once have been a tomato (here the evidence is unclear).  The frogs’ legs are then consumed by an older man wearing a white dinner jacket.  Two more buxom women are then helplessly attracted to him by the power of Axe and the scene cuts to him being aggressively thrown on to a bed by one of them in a sexually provocative, or at least promising, fashion.  He then dies in the style of Pope Leo VIII and the advertisement cuts to his tombstone.  Throughout this story of passion and fine dining gone awry, Love plays in the background.

31. Mr Vanda was not shocked by this advertisement but that does not surprise me.  As counsel for the Applicants put it, he was a former pop star who had written a song about love so it would be surprising if he were prudish.  I do not think that the Axe advertisement assists the Respondents.

1. Had it not been barred by s 195AX, therefore, I would have found the moral rights case made good in relation to the telephone hold music and the streaming of the commercial (and other variants).

2. The case against Glass Candy for authorising an infringement of moral rights under s 195AQ(2) does not therefore arise. Had it arisen I would have accepted it for the reasons I have already given since they authorised Air France’s conduct by licensing the use of France.

   CONCLUSION

   The rejoinder debate

3. Glass Candy submitted that it is entitled to file a rejoinder to the reply submissions on four bases, being that they contain new submissions in chief; submissions that mischaracterise their submissions; submissions for which there is no evidence; or submissions which ‘are otherwise not properly in reply’.  Kobalt sought leave on a slightly more confined and continent basis.

4. I am not aware of any principle which would give Glass Candy or Kobalt an entitlement to file a rejoinder in the first two of those bases.  The third does not identify an actual ground and is therefore empty.  As the Applicants submitted, and Glass Candy and Kobalt accepted, leave to file rejoinder submissions will only be granted in ‘very exceptional circumstances’: Eastman v Director of Public Prosecutions (ACT) [2003] HCA 28; 214 CLR 318 at 330 [29]. Ultimately, these three bases impugned many paragraphs not on the basis that they are not in reply but rather on the basis that they are wrong or weak. I disregard those submissions.

5. As to the fourth basis, the paragraphs of the reply submissions which were said not to be in reply were [23], [33]-[34], [36]-[37] and [91].  There was a related spat about chronologies which I have resolved by ignoring both.

6. Turning to those actual paragraphs attacked as not being in reply, the first is [23]. It is a response to [171] of Glass’s Candy’s submissions. They say this:

   If there ever was a person who had the power to drill down deep into the public performance income figures to find individual returns showing where public performances took place and the income generated by them, conceivably down to the level of individual cities, it is a publisher in the position of Alberts and a music publishing collecting society like APRA. Yet the information provided by the Applicants here, which now include APRA, all of whom have the ability to request more granular information from overseas collecting societies such as BMI, never descends to a level below that of “United States of America”.

7. At [23] the Applicants say this:

   Contrary to GCCS [171] and thereabouts, as explained in oral address (T 744.44-746.39) it a was condition of joinder of APRA and AMCOS that they led no evidence, and in any event, APRA records obtained from US collecting societies are not granular enough to indicate the precise location of the playing of copyright works (see eg Ex 4 tab 35). However, the evidence plainly shows that Love was well known and often played beyond Australia and well after 1978, including extensively in the US in the early-mid 2000s. This evidence included:

   (a)a plethora of evidence summarised at ACS [213] including records showing that royalties for performances of Love in the US exceeded Australian royalties (and Glass Candy accept that Love is a “very popular”, even “iconic” song here: T 755.22-3) and a number licenses of the song for ads on US television;

   (b)the fact that Boomerang’s (Alberts’) business records show that in 2005, Love was the top royalty earning work over a host of other well-known songs: see Ex DA-9 to Albert#2. Even if (as contended at [GCCS [163]), some of the figures in the Albert#1 exhibits include synchronisation fees for US recordings of Love Ex 4 tab 14 shows the APRA performance royalties alone for Love broken down by the top 10 earning countries in the years since 1993. When considered with the more granular records at Ex 4 tab 35 which give a sense of the small fee payable per performance (some entries record a royalty of only a few cents), it is apparent that for example, a total of $88,230 in 2002 represents many thousands of performances. Ex 4 tab 14 also shows that the royalties over that period for US performances exceeded those for both Australia and France;

   (c)the fact that M. Caurret, a professional music director working in advertising in France, described Love as a “famous track”: T 624.36;

   (d)the fact that many covers of Love have been performed all over the world by singers as famous as Tom Jones (see T 757.30-36 and ACS [212]);

   (e)the use of Love’s opening vocal phrase alone in an episode of the US sitcom Gilmore Girls in 2002/3: see ACS [136] and T 747.14-46;

   (f)its prevalence in US television programs and films broadcast in the US over the past more than 2 decades, as demonstrated by the APRA records from one of the US collecting societies, ASCAP, at Ex 4 tab 35:  see ACS [213(c)];

   (g)he fact that the co-owner in Italians Do it Better at the relevant time, Mike Simonetti, a DJ, played Love at a 2007/8 New Years’ Eve event in New York City at midnight: see ACS [194] (GCCS at [116] criticise the applicants for not adducing evidence from Mr Simonetti but he is not in the applicants’ camp);

   (h)the fact that the reviewer of Warm in the 2013 article in ‘Popmatters’ described it as “[r]ising from the ashes of John Paul Young’s ‘Love is in the Air’”: ACS [203] and [211]; and

   (i)the fact that following the launch of the ‘France is in the Air’ signature, at least two French journalists associated the phrase ‘France is in the air’ with Love even before the France film was created to the music of Warm: see ex 11 tabs 7 and 8 and ACS [244], ACS Supp [7]-[17] (see also below at [121] onwards) and the Adage journalist who attended the launch of the film described it at Ex 9 as “to the tune of” Love.

8. The first sentence is in reply but the balance of the paragraph is not and I disregard it.

9. The next paragraphs are [33]-[34].  Here Glass Candy (and Kobalt)’s point is that in their submissions in chief the Applicants had submitted that the assignments to APRA did not include ‘any right in relation to an infringing copy of a literary work or musical work’ whereas in reply they had said the assignments did ‘not extend to those rights necessary to prevent performance of infringing works, including arrangements or transcriptions so substantial as to constitute a new work’.

10. I do not think these differ in any way which is material to the case.  As will be seen, I have rejected the Applicants’ argument about this in any event.  No rejoinder will be permitted.

11. The next paragraphs were [36]-[37].  These were in reply to Kobalt’s submissions at [4.13]:

    To the best of KMPA’s knowledge there are no cases on similar facts in Australia in which a music publisher of an Australian song (that is, one in which rights have been assigned to APRA), such as the First Applicant, has sued for infringement of the communication right.  It is submitted that the reason is clear enough.  Consistently with the plain construction of the standard-form assignment to APRA as set out below, the industry, including APRA, proceeds on the basis that APRA owns and administers the communication right, with no relevant rights being retained by the songwriter or music publisher.

    (Citations omitted.)

12. To this the Applicants replied at [36]-[37]:

    [4.13] of KCS is worded with exquisite care.  KMPA is fully aware of a recent case on similar facts in New Zealand in which it, Kobalt, took action in the name of one of the writers it represents, Eminem, without involving the New Zealand collecting societies. The decision, Eight Mile Style LLC v New Zealand National Party (2017) 127 IPR 318 is in the Applicants’ bundle of authorities at Tab 19. It does not provide a full list of the parties, but AMCOS and AMCOS New Zealand Ltd were joined as third parties not by the plaintiffs in that case but by the first defendant, National Party. Her Honour makes clear at paragraph 6 that the only issue in relation to them is whether they had any liability to the National Party, not whether their involvement affected the standing or rights of the plaintiffs. There are various references to the licensing regime that was in place in respect of the work “[Eminem] Esque” and it appears at paragraphs 255 to 256 that it was directly equivalent to the arrangement in place in respect of Warm in the Winter. That passage also deals with the submission at KCS [6.23], which complains of a lack of evidence of Lose Yourself having been licensed to AMCOS.

    Kobalt was the publisher of the plaintiff’s music: see the decision of Cull J at paragraph 5.  The plaintiffs were represented by, amongst others, Mr Adam Simpson of Simpsons who also appears for Kobalt in this case.  The plaintiffs put, and both Cull J and the Court of Appeal of New Zealand accepted, that notwithstanding that arrangement it was Eight Mile Style and not APRA or AMCOS who had the right to sue for the infringement.  The communication right was relied upon.

13. The submission was that there was no such case in Australia.  It is not in reply to say ‘true, but there is one in New Zealand’.  I will disregard [36]-[37].

14. The next paragraph said not to have been in reply was [91]. However, it is clear from Glass Candy’s rejoinder submission that their complaint is that they do not agree with [91]. They do not develop any submission that it is not in reply and this is because it is plain that it is, in fact, in reply.

15. I therefore conclude that I will not receive [36]-[37] and all but the first sentence of [23] of the reply submissions since they were not in reply.  Since they will not be relied on there is no need for a rejoinder from the Glass Candy or Kobalt.  The balance of the rejoinder submissions were attempts to have the last word and I will disregard them.

16. I do not think this case required 416 pages of written submissions.

    Result

17. In relation to the digital streaming of Warm, the claim is to be dismissed.

18. In relation to the downloading of Warm, the claim in respect of the IDIB website and the Big Cartel website succeeds.  AMCOS and Boomerang are entitled to an injunction restraining Glass Candy from authorising IDIB to make digital copies of Warm available for downloading in Australia.  Boomerang is entitled to damages or an account of profits and, as discussed below at [432], a further hearing on the question of additional damages.  The balance of the claim in relation to the downloading of Warm is to be dismissed.

19. In relation to the digital streaming of France, the claim is to be dismissed.

20. In relation to the use of France as telephone hold music, APRA is entitled to an injunction restraining it from playing France as its telephone hold music.  Boomerang’s claim is to be dismissed.

21. In relation to the moral rights claim concerning France, the claim is to be dismissed.

22. In relation to Kobalt, the claim is to be dismissed.

23. In relation to damages, because the Applicants have demonstrated that the copying is deliberate, I conclude that the infringements were flagrant.  I will hear further argument on their entitlement to additional damages.  It was submitted on Glass Candy’s behalf that relief should be withheld because the amounts of money involved appeared to be de minimis.  I would not be disposed to accept this submission.  The question of damages is yet to be determined but will include a contention by the Applicants that they are entitled to additional damages and, on the findings I have made, this claim is not self-evidently implausible.  Further, whilst it is tempting to think that the damages might be limited by the apparently modest infringements I have found, the Respondents (other than Kobalt) will no doubt have to deal with a contention by the Applicants that their damages should be assessed on a foregone licence basis.  Without wishing to lend colour to that contention, damages on that basis may not be so modest.

24. I will also hear the parties on costs.

    Orders

25. The only orders I will make are that the parties bring in short minutes of order to give effect to these reasons within 14 days, and that the matter be listed for a case management hearing on Friday 8 May 2020 at 9.30 am.

I certify that the preceding four hundred and thirty-four (434) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perram.

Associate: 

Dated:       24 April 2020