EMI Songs Australia Pty Limited & Anor v Larrikin Music Publishing Pty Ltd; EMI Songs Australian Pty Ltd & Ors v Larrikin Music Publishing Pty Ltd

[2011] HCATrans 284

[2011] HCATrans 284

IN THE HIGH COURT OF AUSTRALIA

Office of the Registry
  Sydney  No S153 of 2011

B e t w e e n -

EMI SONGS AUSTRALIA PTY LIMITED (ACN 000 063 267)

First Applicant

EMI MUSIC PUBLISHING AUSTRALIA PTY LIMITED (ACN 000 040 951)

Second Applicant

and

LARRIKIN MUSIC PUBLISHING PTY LTD (ACN 003 839 432)

Respondent

Office of the Registry
  Sydney  No S154 of 2011

B e t w e e n -

EMI SONGS AUSTRALIAN PTY LTD (ACN 000 063 267)

First Applicant

EMI MUSIC PUBLISHING AUSTRALIA PTY LTD (ACN 000 040 951)

Second Applicant

COLIN JAMES HAY

Third Applicant

and

LARRIKIN MUSIC PUBLISHING PTY LTD (ACN 003 839 432)

First Respondent

RONALD GRAHAM STRYKERT

Second Respondent

Applications for special leave to appeal

GUMMOW J
BELL J

TRANSCRIPT OF PROCEEDINGS

AT SYDNEY ON FRIDAY, 7 OCTOBER 2011, AT 11.44 AM

Copyright in the High Court of Australia

____________________

MR J.T. GLEESON, SC:   May it please the Court, I appear with MR R.A. YEZERSKI for the applicant in both applications.  (instructed by TressCox Lawyers)

MR R.P.L. LANCASTER, SC:   May it please the Court, I appear with MR N.R. MURRAY and MS P.M. BLACKADDER for the respondent in S153/2011 and for the first respondent in S154/2011.  (instructed by Simpson Solicitors)

GUMMOW J:   We have an affidavit as to attempts to serve the second respondent in the second matter.  I think nothing probably turns on that.  Yes, Mr Gleeson.

MR GLEESON:   Your Honours, the three questions that we seek to raise are set out at page 301 of the application book.  Could I deal with them in turn?  The first question ‑ ‑ ‑

GUMMOW J:   Why do we have two applications?

MR GLEESON:   Only because there was a proceeding for unlawful threats and there was a proceeding for infringement.  They were heard together.  There is no difference.  The first question involves whether the trial judge, following some Federal Court authority, has imposed an incorrect test on the question of infringement.  The trial judge’s ‑ ‑ ‑

GUMMOW J:   Before you get too much further, I should indicate that the Court has listened to the relevant recordings.

MR GLEESON:   Thank you, your Honour, I appreciate that.  The part of the judgment is at page 53 and our attack is upon paragraphs 10 and 11.  What his Honour has said is, apart from any questions of causal connection between the works, there are two discrete stages to the inquiry.  At the first stage, one looks for sufficient objective similarity between not the infringing work as a whole, that is “Down Under” but between a part of it, the flute riff, so one narrows the inquiry down to the flute riff within a four minute work and seeks similarity between two bars of “Kookaburra”.  So, at that point, one does not look at the whole of the copyright work which is a four‑bar round but looks at two bars within it.  Our essential complaint is that having narrowed or truncated the first step in that manner, one has departed from the statute. 

At the second stage, which is paragraph 11, one treats the question of whether it is a substantial part discretely and one only looks at the two bars in “Kookaburra” within their role in that work.  Your Honours, that is central to the trial judge’s approach as one can see it at page 76, paragraph 157 where he commences the first stage and he is looking only at the bar on bar analysis.

GUMMOW J:   What do you say about Mr Lancaster’s paragraph 21 on page 321?  He says you are the person with the sleight of hand, namely, the punch is in the last sentence.

MR GLEESON:   No, no, we do not contend for a test that it must be a substantial part of our work as well as their work.  That would be erroneous.  What we do say is that it is a single inquiry in which one asks does the infringing work, that is “Down Under”, reproduce the whole or a substantial part of the copyright work.  Your Honours, that is the way it was framed in the context of ‑ ‑ ‑

GUMMOW J:   How does that become a special leave question?

MR GLEESON:   For this reason, that if this test is correct and it is said to be the test in the Federal Court it does four erroneous things.  Firstly, it departs from ‑ ‑ ‑

GUMMOW J:   Where is the particular passage in the Full Court that you say has this heresy in it?

MR GLEESON:   Yes, it is in Justice Jagot’s judgment between pages 263 to 265.  Page 263 is an analysis of Ice TV which erroneously says, in effect, that case was only about compilations, that the references to legitimate appropriation in that case are uninformative in carrying out the inquiry.  If your Honour looks at the very end of paragraph 195, which is the test as posed in Ice, if we transpose that test here it would be, “looking at ‘Kookaburra’ as a whole, has there been a substantial reproduction in the particular use made by “Down Under”?  Then, what her Honour does is record our complaint and the critical paragraph is 198 to 199, and in 198 her Honour says in the middle:

It is true that the trial judge defined the relevant melodies (at [163]) as involving a comparison between, first, the flute riff in Down Under –

and the second – and then second and fourth bars of “Kookaburra”.  That was doing no more than implementing the test.  So the three‑stage test is then followed and adopted yet again as the Full Federal Court authority in all copyright cases and the effect of it is one never gets to look at the infringing work as a whole and one never gets to look at the copyright work as a whole.  Did your Honours see in page 265 at about line 25 her Honour reaffirms this:

As the trial judge correctly said (at [195]), the question of structure is not concerned with the entirety of the three-minute recording of Down Under.  It is concerned [only] with the flute riff –

So it is central to the case because one does not look at each work as a whole.  One of the points the Court made in Ice TV is that it is an error to not look at the copyright work as a whole.  This case, in effect, has a double error.  Neither the copyright work nor the alleged infringing work has been looked at as a whole.

GUMMOW J:   It depends what you mean by this phrase “as a whole”, you see.  That is what agitated your opponent to provoke paragraph 21.

MR GLEESON:   Yes.  What we submit is that if one compares the statutory language which is at tab 1 of the materials, the question under section 36 is whether we have done an act comprised in the copyright and by reference to sections 31 and 14 that produces a single question, is the recording of “Down Under” a four minute recording, a reproduction in a material form of the whole or a substantial part of the copyright work.  That is the sense in which we submit that the whole of the work has to be focused on.

GUMMOW J:   Well, it may be a reproduction of the whole of Mr Lancaster’s client’s work. 

MR GLEESON:   It is not that, your Honour. 

GUMMOW J:   May have other things as well.  That is your problem, I think.

MR GLEESON:   The first of our three points is how one sets up the inquiry.  The second point concerns the question of the manner in which reproduction is assessed.  What has occurred is the trial judge has said, “When I listened to the recordings I was dependent upon the experts educating me and leading me to detect a similarity before I could find one”.  His Honour says that is enough to determine that a reproduction has occurred.

GUMMOW J:   What is the role of experts in these matters, actually?

MR GLEESON:   Our submission would be that in the present case the role of the experts properly considered was close to nil.  We were not an architect type case with designs where the role of the expert might be to assist ‑ ‑ ‑

GUMMOW J:   Who led this expert evidence?

MR GLEESON:   It was led, primarily, by Mr Lancaster.  We had to respond because there was evidence led.  But the question was not ‑ ‑ ‑

GUMMOW J:   When I was a trial judge there was a pretty tight rein on this sort of activity.

MR GLEESON:   Exactly, your Honour, and the question was not whether some expert musicologists could see relevant similarities in musical theory between the two bars and the question was not whether the trial judge, having received that ‑ ‑ ‑

GUMMOW J:   You are both complicit in what happened, so there we are.

MR GLEESON:   And so with that material on the record it still remains open to us, with respect, to make the submission that the legal test enunciated by the trial judge “Is it is enough to show reproduction if I, as a tribunal of fact, can detect similarities only after I have been educated by expert musicologists”, does not match section 36.  That is the legal question, your Honour.

BELL J:   Where do we find his Honour’s finding in that respect?

MR GLEESON:   In two places.  The clearest place is in his subsequent judgment at page 149, paragraph 139.  The legal test which his Honour applied, notwithstanding that finding, is found back in the first judgment at pages 82 and 83.  After discussing the manner in which the detection or the similarity was not observed for 30 years and that it was picked up in a TV program when some experts were led to pick it up, his Honour concluded at paragraph 207, the fact:

that there are difficulties in the recognition of the work, but a sensitised listener –

by which he appears to mean a listener who has been directed to consider particular parts of each work, has been educated as to possible musical similarities and has then concluded resemblance reaches a conclusion.  So, his Honour’s legal test is that is enough for reproduction.

Your Honours, the third aspect that we would seek to raise is that when you narrow the frame as occurs here, the use that is actually made of the material within the second work becomes irrelevant.  This was the matter that troubled Justice Emmett but ultimately he said under the current law it is not a relevant consideration.  Your Honours will see that in two places, at page 226, paragraph 92.  His Honour accepted that what the material was doing in the second work was to serve as a quotation and as a tribute or reference to an Australian cliché or iconic melody, so he characterised it correctly.  At page 228, paragraph 99, he made a correct finding that the material was not taken, “animus furandi”, and it was done:

by way of tribute to the iconicity of Kookaburra, and as one of a number of references made in Down Under to Australian icons.

We agree.  His Honour then says at paragraph 101, the fact that that is an infringement troubles him.  Our answer to that question is legally it should not have troubled his Honour for this reason, that the act of creation of the second work involved a sufficient degree of transformation of the part taken from the first work so as to place it within the territory of legitimate appropriation outside the statutory monopoly.  Your Honours, that is where the question raises ‑ ‑ ‑

GUMMOW J:   …..attributed to the so‑called “iconicity”, whatever that is, of “Kookaburra”, you might ask yourself, “Gee, is this in copyright still?”

MR GLEESON:   Where the issue then arises, your Honour, which goes well beyond music to ‑ ‑ ‑

GUMMOW J:   Anyhow, these are all questions of policy of a copyright statute.

MR GLEESON:   Yes, and our submission is that the – in the manner in which the Court in Ice traced the concept of substantial part to the 1911 UK statute and to the 19th century common law principles, consistent with that the notion that you would incorporate something in a transformative act which, at most, might be appreciated by some as a tribute or reference, lies outside the concept of reproduction and that is of importance in relation to many works of music, literature and art.  If I could conclude, your Honour, if one thinks of an example of say, a painting, with Ned Kelly’s helmet referenced subtly within a much larger painting, we would submit, that would not be an infringement of copyright.

GUMMOW J:   Just before you sit down, there is another problem in this case.  It is not yet at an end, is it?  It has to go back, has it not, for the question of further relief on account of profits or damages?

MR GLEESON:   Your Honour is correct that on one issue only which does not affect these matters ‑ ‑ ‑

GUMMOW J:   You say it does not affect these matters.  It will produce finality in the case.  For all I know, this use was very extensive and the royalty or whatever the damages were might be considerable.

MR GLEESON:   The figure accorded by the trial judge in the second set of reasons was 5 per cent.  Your Honour is correct that that calculation of the 5 per cent has not occurred.  We would submit that in relation to the issue of principles we raise it will not be influenced by that further stage of inquiry.

GUMMOW J:   Yes, but you will be familiar with the Apple Computer Case a long while ago?

MR GLEESON:   Yes.

GUMMOW J:   All right.  Yes, Mr Lancaster.

MR LANCASTER:   May it please the Court.  There are three primary reasons we contend special leave should not be granted in these proceedings.  The first is there are features of the case that make it unsuitable for any general examination of the question of infringement of copyright in musical works and referring there specifically to the concession made by the applicants as to the causal connection or actual use of “Kookaburra” in “Down Under”.  That would become significant ‑ ‑ ‑

GUMMOW J:   What was that concession, actually?

MR LANCASTER:   It is recorded by Justice Jacobson in paragraph 9 at application book 53:

a causal connection between the works, is not disputed ‑

That concession was expressed in language that accepted the orthodox, as we submit, understanding of reproduction of a work as described in SW Hart among other cases, namely, involving the two components of resemblance and actual use of the work in suit, actual use being some causal connection between the work in suit and the other work. 

Now, the concession was made by reference to and with an understanding of that application of the law.  It does not sit comfortably for our learned friends now to say there is some inappropriate, undue mechanistic approach of his Honour in approaching the elements of reproduction when the concession made at trial was done by reference to those very elements.

GUMMOW J:   It would be irrelevant whether there was a tribute to iconicity of “Kookaburra”, I would have thought.

MR LANCASTER:   Yes, there was no finding at trial as to tribute but it is irrelevant in application of the statute, we contend, and ‑ ‑ ‑

BELL J:   There was some evidence, was there not, to the effect that that is what it was?

MR LANCASTER:   Mr Ham, the flautist, said he was trying to get an Aussie cliché flavour by putting the tune in, in that sense, and he certainly did, but there was no finding in terms that that was done for the purpose of a tribute rather than a simple taking, for example.  The second reason, we contend ‑ ‑ ‑

GUMMOW J:   People have a lack of proper awareness of the duration of copyright protection, I am afraid.

MR LANCASTER:   No point was taken ‑ ‑ ‑

GUMMOW J:   No, of course.

MR LANCASTER:   The other reason, we contend, special leave should not be granted is the criticism that the judgments below were unduly mechanistic is not compelling.  All inquiries of this sort start with the statutory question that may be broken up into sub‑questions convenient for the resolution of the broader question and, we submit, that properly understood, all of the judges of the Federal Court started with each of the works as a whole and then applied the correct statutory tests to them.

Justice Emmett did it explicitly, just to address what was put orally by my learned friend a moment ago, at application book 222, for example, paragraph 82, line 60.  His Honour states the question in a conventional and acceptable - even on our friend’s test – terms.  Similarly, at application book 261 and following, Justice Jagot, with whom Justice Nicholas agreed, sets out the principles that, of course, begin with the Metricon Homes correct approach that her Honour adopts but, we submit, did not play mechanistically, or erroneously, but that those steps involve the identification of the work in suit; the identification in the alleged infringing work of the part taken and in the substantial part question.  They are convenient, analytical or conceptual tools by which to answer the question posed by the statute and addressing it by addressing various sub-questions, is not a badge of error.

The third reason special leave should be refused, in our submission, is that, on the evidence, including the concession, there is no real doubt about the result, namely, that “Down Under” did reproduce a substantial part of “Kookaburra”.  Justice Emmett, in the Full Court, who found arguable error by the trial judge and then addressed the question himself, came to the same conclusion. 

Can I take your Honours briefly to the findings that indicate that each of the judges heard “Kookaburra” in “Down Under”.  My learned friend has taken your Honours to application book 83 where Justice Jacobson at paragraph 207 indicates that he could hear it.  If your Honours then go to application book 224 at paragraph 86, Justice Emmett indicates that the reference to being a sensitised listener does not, itself, constitute any error:

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.

Then at paragraph 92, which appears on application book 226, in the second part of that paragraph at about line 30 his Honour indicates that the listener will hear a reproduction of part of “Kookaburra” in his Honour’s view, so his Honour could hear it.  Likewise, Justice Jagot, application book 274 about line 30:

Accordingly, while it may be accepted that there is not a “ready” aural perception of the bars of Kookaburra in the flute riff of Down Under, the bars are there and, as the trial judge found, can be heard once attention is directed to them.

Even if my learned friends suggested the correct test were applied in the circumstances of this case, we do contend that there is no real doubt about the result and it would be the same result as presently exists on the record in the Federal Court. 

Your Honours, can I say one other thing about the references to tributes or references as an explanation for the appearance of part of “Kookaburra” in “Down Under”.  Apart from no explicit finding about that, the statute itself sets out the defences of fair dealing that are regarded by the legislature as appropriate to accord protection in the same way that, in our submission, our learned friends do not precisely put the correct appreciation of what this Court said in Ice TV about some measure of legitimate appropriation. 

The answer is the same when considering the proposition that it is a tribute, namely, the Act has determined what can legitimately be appropriated.  It is what is insubstantial in another work or it is what can be done under licence or it is what can be done by attracting a defence of fair dealing under the statute.  There is no warrant to read in or create some other protection to those who seek to use parts of copyright works.  Those are my submissions.

GUMMOW J:   Thank you.  Yes, Mr Gleeson.

MR GLEESON:   Four points, your Honour.  The so‑called concession was not a concession about the part of the legal reasoning we now complain about.  That is clear from the reading of it.  Secondly, the suggestion that all judges in the Full Federal Court have applied the same test is not correct.  Justice Emmett at page 223, paragraph 82 has stated a test at least broadly consistent with Ice TV and where his Honour has expressly said you can

have regard to the context in which it appears in the impugned recordings and you must have regard of the whole of each work.  That is the very matter that Justice Jagot has denied at pages 264 to 265, paragraphs 198 to 199 that I took the Court to.

Thirdly, as to no real doubt, that raises squarely the second issue because the findings by the trial judge and those appeal judges were based on having been sensitised in the manner I have mentioned.  As to the fourth matter which is fair dealing at page 308 we submitted that the progressive introduction of limited fair dealing defences may have produced some overlap with the territory covered by the pre‑1911 common law concept of substantiality and the post‑1911 statutory concept.  In the end, the simplistic way Mr Lancaster put it to you, “Can you hear ‘Kookaburra’?” does not do justice to the real issues raised.  May it please the Court.

GUMMOW J:   We are not satisfied that any question of principle respecting copyright infringement in musical works would be presented upon an appeal in this case rather than questions to the application of settled principle to the particular facts.  Special leave is refused with costs.

AT 12.10 PM THE MATTER WAS CONCLUDED