Eight Mile Style, LLC v New Zealand National Party
[2017] NZHC 2603
•25 October 2017
IN THE HIGH COURT OF NEW ZEALAND WELLINGTON REGISTRY
I TE KŌTI MATUA O AOTEAROA
TE WHANGANUI-Ā-TARA ROHE
CIV-2014-485-11220 [2017] NZHC 2603
UNDER The Copyright Act 1994 BETWEEN
EIGHT MILE STYLE, LLC First Plaintiff
MARTIN AFFILIATED, LLC Second Plaintiff
AND
NEW ZEALAND NATIONAL PARTY First Defendant
GREG HAMILTON Second Defendant
AND
STAN 3 LIMITED First Third Party
SALE STREET STUDIOS LIMITED Second Third Party
Continued
Hearing: 1–8 May 2017 and 11–12 May 2017 Appearances:
G C Williams, A M Simpson and C M Young for plaintiffs
G F Arthur, G M Richards and P T Kiely for defendants
A J Holmes for second third party
T P Mullins and C I Hadlee for third and fourth third parties
L M Kelly for fifth third party R K P Stewart for fourth party No appearance for fifth party
Judgment:
25 October 2017
JUDGMENT OF CULL J
EIGHT MILE STYLE v NEW ZEALAND NATIONAL PARTY [2017] NZHC 2603 [25 October 2017]
ANDAMCOS NEW ZEALAND LIMITED Third Third Party
AUSTRALASIAN MECHANICAL COPYRIGHT OWNERS SOCIETY LIMITED
Fourth Third Party
BEATBOX MUSIC PTY LIMITED Fifth Third Party
ANDLABRADOR ENTERTAINMENT INC Fourth Party
ANDMICHAEL ALAN COHEN Fifth Party
INDEX
The musical works............................................................................................................................. [8] Lose Yourself .................................................................................................................................. [9] Eminem Esque .............................................................................................................................. [12] Audio comparison of both works .................................................................................................. [14] What happened?.............................................................................................................................. [17] Issues ................................................................................................................................................ [28] FIRST ISSUE: IS THERE ACTIONABLE COPYRIGHT IN LOSE YOURSELF?................. [30]
1.1 Can Eight Mile Style enforce copyright in New Zealand? ................................................. [33]
Conclusion 1.1.............................................................................................................................. [36]
1.2 Does copyright subsist in the musical work Lose Yourself?................................................ [37] Conclusion 1.2.............................................................................................................................. [45] SECOND ISSUE: WAS THERE COPYING OF LOSE YOURSELF? ....................................... [46] Legal principles on “copying” ........................................................................................................ [49] Substantiality ................................................................................................................................ [50] Objective similarity ...................................................................................................................... [53] Causal connection ........................................................................................................................ [60] Musical copyright principles ........................................................................................................ [63] Parties’ positions.............................................................................................................................. [76]
2.1 How original is Lose Yourself? .............................................................................................. [84] Is there originality in popular music? .......................................................................................... [92] Are borrowed musical elements protected by copyright? ........................................................... [105] Does an alteration in melody avoid copying? ............................................................................ [123] Is Lose Yourself original? .......................................................................................................... [132] Conclusion 2.1............................................................................................................................ [155]
2.2 Has Eminem Esque substantially copied Lose Yourself?................................................... [158] Dr Ford’s analysis of Lose Yourself ........................................................................................... [160] Dr Zemke’s evidence ................................................................................................................... [175] Points of difference between the musicologists .......................................................................... [194] Analysis ...................................................................................................................................... [198] Conclusion 2.2............................................................................................................................ [218]
2.3 Do the parts of Eminem Esque used in the National Party’s election advertisements and
conference video reproduce the whole or a substantial part of Lose Yourself? ........................ [219]
National Party advertisements ................................................................................................... [222]
Conclusion 2.3............................................................................................................................ [229]
2.4 Does Eminem Esque sound objectively similar to Lose Yourself? .................................... [230] Subjective assessment ................................................................................................................. [235] Evidence of Drs Ford and Zemke ............................................................................................... [237] Replication of the beat in Lose Yourself..................................................................................... [241] Recognition of Lose Yourself ..................................................................................................... [244] Eminem Esque was synchronised as a sound-alike track........................................................... [251] Conclusion 2.4............................................................................................................................ [273]
2.5 Is there a causal connection between Lose Yourself and Eminem Esque? ....................... [274] Conclusion 2.5............................................................................................................................ [279] Summary of findings on issue two ............................................................................................... [280] THIRD ISSUE: WAS THERE COPYRIGHT INFRINGEMENT ........................................... [281]
3.1 Have any restricted acts taken place? ................................................................................ [281]
Relevant facts ............................................................................................................................. [291]
Analysis ...................................................................................................................................... [297] Conclusion 3.1............................................................................................................................ [300] Positive defence of innocent infringement................................................................................... [301] FOURTH ISSUE: WHAT RELIEF, IF ANY, SHOULD BE AWARDED? ............................... [302]
4.1 If the National Party has infringed copyright, are Eight Mile Style entitled to relief and if so, what are the damages? ............................................................................................................ [302]
Legal principles of damages....................................................................................................... [308] United Kingdom ......................................................................................................................... [313] Australia ..................................................................................................................................... [331] Summary of user principle factors.............................................................................................. [336] Relevant fact chronology ............................................................................................................ [348] Evidence on licensing fees .......................................................................................................... [349] Licensing of Lose Yourself ......................................................................................................... [351] Licensing experts’ evidence ........................................................................................................ [371] Analysis ...................................................................................................................................... [379] Value of Lose Yourself in New Zealand...................................................................................... [383] Use in a political election campaign .......................................................................................... [390] Rare use ...................................................................................................................................... [398] Degree of reproduction............................................................................................................... [400] Duration ..................................................................................................................................... [401] New Zealand territory ................................................................................................................ [404] Willing licensee........................................................................................................................... [410] Quality of product........................................................................................................................[411] Settlement figures ....................................................................................................................... [414] Target audience .......................................................................................................................... [415] Analysis ...................................................................................................................................... [417] Conclusion 4.1............................................................................................................................ [442]
4.2 Are Eight Mile Style entitled to additional damages? ...................................................... [443] Analysis ...................................................................................................................................... [453] Conclusion 4.2............................................................................................................................ [459] SUMMARY OF CONCLUSIONS ............................................................................................... [460] Costs ............................................................................................................................................... [469]
APPENDIX I
You better lose yourself in the music, the moment
You own it, you better never let it go …1
[1] So raps Eminem to the musical work Lose Yourself. The plaintiffs claim their copyright in Lose Yourself has been infringed by the New Zealand National Party, by its use of a “sound-alike” track called Eminem Esque in its 2014 election campaign advertising and promotion.
[2] This case concerns the use of production music, sourced from production music libraries, for synchronisation with television or media advertisements. Such use is subject to a synchronisation licence and fee, which is issued and collected by copyright collecting societies. Here, the production soundtrack used by the National Party is described as a “sound-alike” and is called Eminem Esque, which was composed by Mr Cohen, the fifth party who holds copyright in that work.
[3] The plaintiffs (whom I will refer to as Eight Mile Style) allege that in the lead up to the 2014 election, the National Party infringed Eight Mile Style’s copyright, by using Lose Yourself or a substantially similar version or adaptation of it, called Eminem Esque, in National Party campaign advertisements on television, the internet and a National Party video. Eight Mile Style seek damages for the National Party’s copyright infringement.
[4] The National Party and the Party Secretary (both of whom I will refer to as the National Party) deny there has been any copyright infringement because there was no reproduction or copying of Lose Yourself; that not every aspect of Lose Yourself was original; and the National Party had paid for a synchronisation licence to use the music sound-alike Eminem Esque.
[5] There are three separate copyrights in Lose Yourself, namely, the original sound recording, the lyrics and the music. Copyright is a property right that exists in original works. This case concerns the copyright in the music only. The references to Lose Yourself in this decision, therefore, are to the musical work of Lose Yourself,
unless otherwise stated.
1 An excerpt from the lyrics to Lose Yourself. Marshall Mathers III (Eminem) Lose Yourself (composed by Jeffrey Bass, Luis Resto and Marshall Mathers III, ©Kobalt Music Publishing Ltd, 2002).
[6] This proceeding is being heard in two parts. The first is a hearing to determine the liability of the National Party and the quantum of damages, if any. The second concerns a separate hearing to determine third party liability, if any. This decision deals with the first hearing only, namely, the issues of liability and quantum against the National Party as the alleged publisher of the infringing work. The third party liability hearing awaits the outcome of this trial. However, three of the third parties adduced evidence and made submissions in this hearing. Beatbox Music, an Australian based production music library and the fifth third party, adduced evidence
on the musical history of “borrowing”. AMCOS New Zealand and AMCOS,2 the
third and fourth third parties, which are the copyright collecting societies providing centralised copyright licensing services, adduced evidence and made submissions on the range of industry licence fees, in the event damages may be awarded.
[7] During the hearing, a number of witnesses gave evidence on confidential agreements and commercially sensitive information in relation to artist and industry practices and licence fees. To protect this confidential information, this decision will be delivered with the analysis of the confidential material being released to the parties only. This will form Appendix II to the decision.
The musical works
[8] The principle focus in this case is to determine whether Lose Yourself has been substantially copied or reproduced in Eminem Esque. Each of the respective musical works are described below. The relevant sound tracks to the works, the 30 second National Party advertisement and the comparative tracks have been made available by hyperlink, to enable public access to the sound tracks that were produced during the hearing.
Lose Yourself
[9] Lose Yourself was composed by Marshall Mathers III (Eminem), Jeffrey Bass and Luis Resto in 2002. The musical work, accompanied by lyrics, was recorded and released as a single in the United States of America in September 2002.
Following an exclusive artist recording agreement and an operating agreement, Eight
2 AMCOS is the Australasian Mechanical Copyright Owners Society Ltd.
Mile Style ultimately became the owner of 50 per cent and exclusive licensee of the other 50 per cent of Lose Yourself. This arrangement was finalised on 9 January
2003.
[10] The original recording of Lose Yourself, which includes both the musical work and lyrics can be accessed at the following hyperlink: Lose Yourself – original recording of music and lyrics.3
[11] The musical work only, being the original Interscope recording, is the focus of the determination in this decision. The musical work only is available at the following hyperlink: Lose Yourself – musical work only.4
Eminem Esque
[12] Sometime prior to 8 March 2007, Michael Cohen (the fifth party) produced a track that he called Eminem_abbr, which was later renamed SQ mc Eminem Esque. Mr Cohen holds copyright in this track. On 14 February 2008, Mr Cohen granted Labrador Entertainment Inc (Labrador), a Californian-based production music library and the fourth party, the rights to licence his work commercially. Labrador in turn licensed Beatbox Music to make the track available in Australia, New Zealand and Fiji. Mr Cohen’s track is referred to in this judgment as Eminem Esque.
[13] The sound track of Eminem Esque can be accessed at the following hyperlink: Eminem Esque sound track.5
Audio comparison of both works
[14] Two further sound tracks were produced by the plaintiffs, to assist in comparing the two works. The first comparative track is a sequential playing of an
excerpt of Lose Yourself, which has a duration of 56 seconds, followed by an excerpt
3 The hyperlinks, when clicked, will play the identified track. Alternatively, the website addresses are available as follows. Lose Yourself original recording and lyrics:
< align="center">4 Lose Yourself musical work only: < align="center">5 Eminem Esque sound track: < Eminem Esque. Eminem Esque then starts at 57 seconds. The tracks can then be compared, one following the other. The sequential track can be accessed at the following hyperlink: Lose Yourself – Eminem Esque sequential track.6
[15] The second comparative track is called an overlay track.7 This track has Lose Yourself and Eminem Esque overlayed, allowing both tracks to be heard together. Each of those tracks can be heard separately by Lose Yourself being channelled through a left headphone or speaker and Eminem Esque played through the right headphone or speaker. This track can be accessed at the following hyperlink: Lose Yourself – Eminem Esque overlay.8
[16] Finally, the 30 second National Party advertisement can also be accessed at the following hyperlink: 30 second National Party advertisement.9
What happened?10
[17] Prior to the 2014 New Zealand election, the National Party engaged three experienced advertising and media consultants to provide their expertise and services for the production of broadcast advertisements for the National Party’s election campaign. They worked for Stan 3 Ltd (first third party), which was incorporated to develop and produce the National Party’s 2014 election campaign advertisements.
[18] In February 2014, Mr Jameson of Stan 3 prepared animatics, which comprise still photographs to convey “the look and feel” of the advertisement, and incorporated an extract from the music of Lose Yourself. The attraction was the steady, syncopated beat and rhythm to Lose Yourself, giving a sense of momentum to accompany the rowing strokes in the advertisement. Mr Jameson sought other possible tracks that could be tested for use in the advertisement. Sale Street Studios
6 Lose Yourself – Eminem Esque sequential track: < documents/judicial/lose-yourself-eminem-esque-sequential1.mp3>.
7 Lose Yourself has an orchestral introduction of 30 seconds, before the commencement of the
main part of the song. Eminem Esque is alleged to be a copy of the main part of Lose Yourself
and does not contain the orchestral introduction.
8 Lose Yourself – Eminem Esque overlay: < National Party advertisement: < documents/judicial/national-party-advertisement.mp4>.
10 This section contains an abridged sequence of events, which are more fully detailed in the chronology in Appendix I to this decision.
Ltd (Sale Street Studios), a New Zealand audio production studio and the second third party, located two tracks of music according to Mr Jameson’s specification. The first was a classical track. The other was a modern track called Eminem Esque.
[19] In February and March 2014, Sale Street Studios synchronised the two tracks respectively with the animatics and tested them on focus groups. The preference was for the modern track, Eminem Esque. Between March 2014 and May 2014 election advertisements were produced.
[20] In late May 2014, when the proposed election advertisement was shown to the campaign manager and staff, a staff member told the campaign manager that the track sounded like Eminem and Eminem had been accused of using hate speech.
[21] The campaign manager asked Stan 3 for full details of the musical track, being concerned about the association with Eminem and any copyright issues.
[22] On or about 13 June 2014, the campaign committee listened to several music options and decided Eminem Esque suited the advertisement best, because the track fitted with the visuals of the advertisement. The committee however wanted reassurance that the National Party could safely use Eminem Esque.
[23] In late June 2014, Stan 3 sought reassurance about the track’s copyright and obtained it from Sale Street Studios, Beatbox Music, APRA AMCOS,11 among others. Stan 3 organised through Beatbox Music that an APRA AMCOS licence was paid to use Mr Cohen’s track Eminem Esque. In particular, Stan 3 received a written assurance on 18 June 2014 from Mr Mackenzie of Beatbox that “[t]he agreement we have with the publisher gives us assurance that the music does not infringe on
copyright and is free to be used for production purposes.”
[24] On 28 June 2014, a campaign video with the Eminem Esque track synchronised to it was played to the National Party conference.
11 APRA AMCOS is the Australian Performing Right Association / Australasian Mechanical
Copyright Owners Society Ltd.
[25] On 20 August 2014, the first of the election advertisements was uploaded to YouTube and to the National Party’s Facebook page. Between 20 to 30 August, the advertisements, with the Eminem Esque track synchronised to them, were played 186 times on New Zealand television. Eminem Esque was also played eight times for a total period of seven minutes during a 15 minute opening broadcast on TV1, occurring on 23 August 2014.
[26] Following suggestions in the media that the music sounded like Lose Yourself, on 25 August 2014, Eight Mile Style’s lawyers wrote to the National Party complaining of the unlicensed use of Lose Yourself.
[27] On or about 27 August 2014, the National Party decided to replace the Eminem Esque track on its advertisements with alternative music, which were aired from 30 August 2014.
Issues
[28] The parties have agreed on the following issues for determination in this proceeding. I have summarised them into four principal issues as follows:
1. Is there actionable copyright in Lose Yourself?
1.1 Can Eight Mile Style enforce the copyright of Lose Yourself in
New Zealand?
1.2 Does copyright subsist in the musical work known as Lose Yourself?
2. Was there copying of Lose Yourself?
2.1 How original is Lose Yourself?
2.2 Has Eminem Esque substantially copied or reproduced Lose Yourself?
2.3 Does Eminem Esque sound objectively similar to Lose Yourself?
2.4 Is there a causal connection between Eminem Esque and Lose
Yourself?
3. Was there copyright infringement?
3.1 Have any restricted acts taken place?
3.2 Did the National Party infringe the copyright of Lose Yourself?
4. What relief, if any, should be awarded?
4.1If the National Party has infringed copyright, are Eight Mile Style entitled to relief and if so, what damages should be awarded?
4.2 Are Eight Mile Style entitled to additional damages?
[29] In this judgment, I will deal with each of the issues in four sections. Under each of the principal issues, the legal principles, any sub-issues arising, the parties’ positions in relation to those issues, and the relevant evidence will be analysed, with my conclusions recorded at the end of each sub-issue. A summary of conclusions appears at the end of the judgment.
FIRST ISSUE: IS THERE ACTIONABLE COPYRIGHT IN LOSE YOURSELF?
[30] Eight Mile Style claim they are eligible to enforce copyright in New Zealand under ss 18, 230 and 232 of the Copyright Act 1994 (the Act). The composers are United States’ citizens.12
[31] Eight Mile Style say that the musical work Lose Yourself was an original work composed by Marshall Mathers III, Luis Resto and Jeffrey Bass. They are the exclusive licensee and co-owner of copyright in the musical work.
[32] The National Party does not substantively challenge determining the first issue in favour of Eight Mile Style. The National Party accepts that Lose Yourself is an original musical work in which copyright can subsist under the Act. It also accepts that at least Mr Bass was an author of the musical work and, because he is a United States’ citizen, New Zealand copyright subsists in the musical work Lose Yourself. It further accepts that Eight Mile Style are exclusive licensees and can enforce copyright in New Zealand.
1.1 Can Eight Mile Style enforce copyright in New Zealand?
[33] To enforce a copyright claim the requirements in either ss 18, 19 or 20 of the
Act regarding qualification for copyright must be satisfied.13 Eight Mile Style
12 Copyright Act 1994, s 18. Under s 18, a work qualifies for copyright if any of the authors satisfy the requirements in subsection (1) or (2). In this case, the authors are the composers of Lose Yourself, namely, Mr Mathers, Mr Bass and Mr Resto, as they created the work. See definition of “author” in s 5 of the Act.
satisfies s 18 of the Act, and in particular s 18(2), where a work qualifies for copyright if the author is, at the material time, a citizen or subject of a prescribed foreign country. A prescribed foreign country includes a convention country, to which s 230 applies.14 A convention country is defined as “an entity that is a party to an international agreement or arrangement relating to copyright.”15
[34] The composers of Lose Yourself are citizens of the United States. Both New Zealand and the United States are state parties to the Universal Copyright Convention.16 The United States is therefore a prescribed foreign country (and a convention country) pursuant to ss 18(2) and 230 of the Act.
[35] Eight Mile Style derive their status as a copyright owner by being the exclusive licensee. Under s 120 of the Act, copyright infringement is actionable by the copyright owner. Section 123 gives an exclusive licensee the same rights and remedies that a copyright owner has within s 120. Therefore, copyright infringement is actionable by both the copyright owner and the exclusive licensee, who own the copyright jointly.
Conclusion 1.1
[36] The findings are:
(a) Eight Mile Style are the owners of 50 percent and are exclusive licensees of the other 50 per cent of the musical work Lose Yourself. They are therefore the exclusive licensees of copyright in the musical work Lose Yourself; and
(b)Eight Mile Style are entitled to bring this action for copyright infringement in New Zealand as the authors of Lose Yourself are
citizens of a prescribed foreign country under the Act.
13 Copyright Act 1994, s 17.
14 Section 2, definition of “prescribed foreign country”.
15 Section 2, definition of “convention country”.
16 Universal Copyright Convention 943 UNTS 178 (opened for signature 6 September 1952, entered into force 16 September 1955).
1.2 Does copyright subsist in the musical work Lose Yourself?
[37] To bring an action for copyright infringement, Eight Mile Style must accurately identify the copyright work in respect of which they are claiming infringement.
[38] Section 14 of the Act defines copyright as a property right that exists in original works. The original work in this case is a musical work.17
[39] Having identified the work for which it is claiming copyright, Eight Mile Style must establish that the work is an original work. The Act prescribes when a work is not original, under s 14(2), which provides:
(2) A work is not original if—
(a) it is, or to the extent that it is, a copy of another work; or
(b) it infringes the copyright in, or to the extent that it infringes the copyright in, another work.
[40] However, the Act does not define originality or how the common law principles apply. The Supreme Court has identified the relevant elements of originality.18 First, originality must be carefully distinguished from novelty. The Court said there “need be nothing novel in a work to qualify it for copyright protection.”19
[41] Secondly, the Court emphasised that to be original for copyright purposes, the work must originate from its author. Section 21(1) of the Act stipulates “the person who is the author of a work is the first owner of any copyright in the work”. Eight Mile Style submit that the composers (and first owners) of any copyright in the work Lose Yourself are Marshall Mathers III, Luis Resto and Jeffrey Bass, who
created the work through musical composition.20
17 Copyright Act 1994, s 14(1)(a).
18 Henkel KGaA v Holdfast New Zealand Ltd [2006] NZSC 102, [2007] 1 NZLR 577 at [37]–[38].
19 At [37].
20 This satisfies the meaning of “author” pursuant to the Copyright Act 1994, s 5.
[42] Thirdly, Lose Yourself must be “the product of more than minimal skill and labour.”21 Eight Mile Style adduced evidence about the composition of the work from Mr Jeffrey Bass, one of the composers, who emphasised that Lose Yourself was an original composition.
[43] The National Party accept that the total combination of the introduction, the guitar chord progression (known as the guitar riff), the drum track, bass, keyboard, piano and violin of Lose Yourself reflects sufficient skill and labour to meet the low threshold to be an original work under the Act and as identified by the Supreme Court.22
[44] From the evidence of Mr Bass and his demonstration of the guitar riff in Lose Yourself, together with the combination of the other instruments and the distinctive rhythm and beat, I am satisfied that the low qualifying threshold under the Act of an “original work” has been met.
Conclusion 1.2
[45] Copyright subsists in the musical work Lose Yourself as it meets the definition and threshold of being an original musical work under s 14(1)(a) of the
Act.
21 Henkel KGaA, above n 18, at [37].
22 At [38]. The threshold for originality is a low one and it can be material for other purposes how original the work is; that is, how much skill and labour has gone into its creation.
SECOND ISSUE: WAS THERE COPYING OF LOSE YOURSELF?
[46] In order to succeed in their action for breach of copyright, Eight Mile Style must establish two things:
(a) that it is the owner of a copyright work; and
(b) that the defendant has infringed the plaintiff’s copyright in that
work.23
[47] Having established that they are the owners of the copyright in Lose Yourself, Eight Mile Style must then establish the second element, which requires:
(a) proof of copying (which incorporates the common law test regarding how to determine if a work is a copy);24 and
(b) that a restricted act has taken place.25
[48] This section focuses on whether there has been copying of Lose Yourself. I
now turn to consider the legal principles applicable to proof of copying.
Legal principles on “copying”
[49] “Copying” is defined in the Act as “reproducing, recording, or storing the work in any material form”.26 The common law has developed alongside the Act in respect of what qualifies as infringement by copying. Three elements must be proved:27
(a) The reproduction must be either of the entire work or of a
substantial part.
(b) There must be sufficient objective similarity between the infringing work and the copyright work, or a substantial part thereof.
23 Henkel KGaA, above n 18, at [34].
24 At [42]–[44]; Oraka Technologies Ltd v Geostel Vision Ltd [2013] NZCA 111 at [83]–[88]; and
Fisher & Paykel Financial Services Ltd v Karum Group LLC (No 4) [2012] NZHC 3314, [2013]
2 NZLR 266 at [145]–[147].
25 Copyright Act 1994, s 29.
26 Section 2(1).
27 These elements were first set out by the Court of Appeal in Wham-O MFG Co v Lincoln Industries Ltd [1984] 1 NZLR 641 (CA) at 666 (emphasis added) and confirmed more recently by the Supreme Court in Napier Tool & Die Ltd v Oraka Technologies Ltd [2013] NZSC 86, which affirmed Oraka Technologies, above n 24.
(c) There must be some causal connection between the copyright work and the infringing work. The copyright must be the source from which the infringing work is derived.
Substantiality
[50] The first element, substantiality, does not require the work to be copied in its entirety. The Supreme Court has reinforced that it is not necessary for a plaintiff to show the defendant copied the whole of the copyright work or that the copying was exact.28 It is enough if the plaintiff demonstrates that the defendant copied a substantial part of the copyright work. What amounts to a substantial part in an artistic work depends more on qualitative visual impression rather than on quantitative analysis.
[51] Once the act of copying has been established, the issue of substantiality should be decided “on the basis of what is actually found to have been copied rather than on what may be wider allegations of copying.”29 The question of whether a substantial part has been copied must be decided by its quality rather than its quantity. The High Court has held that “[w]hat must have been copied is the essence of the copyright work. It is the cumulative effect of the copied features that is important.” 30
[52] The House of Lords in Ladbroke (Football) Ltd v William Hill (Football) Ltd focused on whether the original work, the bookmakers coupons, being compilations, were “original” for copyright purposes.31 In canvassing the principles of copyright infringement, their Lordships approached the issue of substantiality as follows:
(a) the substantiality depends on quality, not quantity;32
(b) substantiality is a matter of fact and degree;33
(c) where there may be a question of originality, one looks at the
“collocation” of elements taken;34 and
28 Henkel KGaA, above n 18, at [44].
29 Oraka Technologies, above n 24, at [87].
30 Fisher & Paykel, above n 24, at [174] per Rodney Hansen J.
31 Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 (HL).
32 At 276, 279, 288 and 293 per Lord Reid, Lord Hodson and Lord Pearce.
33 At 283 per Lord Evershed.
34 At 293 per Lord Pearce.
(d)the reproduction of a part which by itself has no originality will not normally be copying of a substantial part.35
Objective similarity
[53] The second element, objective similarity, requires that the whole or substantial part taken of the original work looks objectively similar to the copy. Whether there is objective similarity is largely a matter of impression for the Court to determine.
[54] In Designers Guild Ltd v Russell Williams (Textiles) Ltd, the House of Lords reinforced the need to compare the two works through the following process:36
(a) identify the features of the infringing work which are alleged to have been copied from the copyright work;
(b)undertake a comparison of the two works, noting the similarities and differences. Similarities may be disregarded if they are commonplace, unoriginal, or consist of general ideas; and
(c) finally, determine whether the parts taken constitute a substantial part of the copyright work.
[55] Under step (b), the House of Lords confirmed the reason for the comparison:37
The purpose of the examination is not to see whether the overall appearance of the two designs is similar, but to judge whether the particular similarities relied on are sufficiently close, numerous or extensive to be more likely to be the result of copying than of coincidence.
[56] In comparing the similarities, courts have cautioned that the focus in the inquiry into objective similarity is on the number and nature of the similarities, rather than the differences.38 There must be a “sufficient degree of resemblance”
between the similarities within the two works.39
35 At 293 per Lord Pearce.
36 Designers Guild Ltd v Russell Williams (Textiles) Ltd [2000] 1 WLR 2416 (HL) at 2425–2426.
37 At 2425.
38 At 2425; and Fisher & Paykel, above n 24, at [173].
39 Fisher & Paykel, above n 24, at [173].
[57] In Thornton Hall Manufacturing Ltd v Shanton Apparel (No 2), Hillyer J identified that the numerous coincidences between the two works were such that it could not be accidental that the infringing work was a copy of the original.40
[58] The High Court considered the best test was whether the copy brought to mind the original.41 Hillyer J put it succinctly like this:42
… a copy is a copy if it looks like a copy …
[59] In a musical copyright case such as the present one, with the authorities reinforcing that the test is one of hearing and “ear recognition,”43 the Hillyer J formulation can more appropriately be adapted to this test:
a copy is a copy if it sounds like a copy.
Causal connection
[60] The third element, causal connection, requires proof that the National Party has directly or indirectly made an unlawful use of Eight Mile Style’s copyright work.
[61] To establish causal connection between the original and copied works, the Supreme Court in Henkel KGaA focused on the close similarity between the two works and the ability of the alleged infringer to have access to and an opportunity to copy the original work.44 The Supreme Court said:
[43] The ultimate issue in a breach of copyright case concerns derivation not similarity, albeit the degree of similarity between the copyright work and the allegedly infringing work has evidentiary significance. Proof of copying will seldom be direct; in most cases the Court will rely on inference. The closer the similarity between the two works the stronger the inference is likely to be that the one was copied from the other. If the alleged infringer has had access to, and therefore an opportunity to copy, the copyright work, and the similarity between the works supports an inference of copying, it may well be appropriate for the Court to conclude, on the balance of probabilities, that there was indeed copying …
40 Thornton Hall Manufacturing Ltd v Shanton Apparel Ltd (No 2) [1989] 1 NZLR 239 (HC) at
246.
41 Fisher & Paykel, above n 24, at [173].
42 Thornton Hall, above n 40, at 246.
43 D’Almaine v Boosey (1835) 1 Y&C Ex 288 (KB) at 301, 160 ER 117 at 123.
44 Henkel KGaA, above n 18, at [43].
[62] The copying need not be direct copying but what must be shown is that the copier has appropriated the labours of the original creator, either directly or indirectly. The Court of Appeal formulated this approach in Wham-O MFG Co v Lincoln Industries Ltd:45
The copying need not be direct copying. It may be indirect. What must be shown, however, is that either directly or indirectly the alleged defendant copier has in making his copies appropriated the labours of the plaintiff. That copying has taken place is for the plaintiff to establish and prove as a matter of fact. The beginning of the necessary proof normally lies in the establishment of similarity combined with proof of access to the plaintiff’s productions …
Musical copyright principles
[63] As this case concerns proof of copying in music, the following principles have been gleaned from the authorities where musical copyright infringement was in issue.46 They are condensed from authorities collected primarily from the United Kingdom, Canada and Australia.47 There is one reference to the California District Court’s decision upholding the jury verdict in the challenge by Marvin Gaye’s children to the Robin Thicke and Pharrell Williams song Blurred Lines.48
The test is whether the substance of the work is taken, not a note for note comparison
[64] Infringement does not depend upon making a note-for-note comparison to determine whether the actual notes have been taken, but rather whether the substance
of the work has been taken.49
45 Wham-O MFG Co, above n 27, at 668.
46 A helpful summary can also be found in Emmett J’s decision in EMI Songs Australia Pty Ltd v
Larrikin Music Publishing Pty Ltd [2011] FCAFC 47, (2011) 191 FCR 444 at [45]–[57]; and
Francis Day & Hunter Ltd v Bron [1963] Ch 587 (CA) at 609–610.
47 Many of the United States’ authorities are not included here, because there are jurisdictional differences in the availability of copyright defences, such as fair use, which is not available under the New Zealand legislation. Further, all first instance copyright cases are conducted by way of jury trial, so the Court’s decisions are either pre-trial or post-verdict as in Williams v
Bridgeport Music Inc USDC CD California LA CV13-6004 JAK (AGRx), 30 October 2014.
48 Williams, above n 47. This judgment is under appeal to the Federal Courts of Appeals (9th circuit) and is the subject of considerable criticism by the legal and music communities. This case is discussed further at [128] of this judgment.
49 Austin v Colombia Graphophone Co Ltd [1917–1923] Mac CC 398 (Ch) at 408 and 415; and
EMI, above n 46, at [47].
The sounds of the works are determinative
[65] Determining substantial reproduction does not involve a note-by-note textual comparison of scores, but involves listening to and comparing the sounds of the two works.50
[66] A comparison of musical works is a subjective test of hearing for a judge to determine similarity.51
[67] Copyright infringement is where the appropriated music, though adapted to a different purpose from the original, may still be “recognised by the ear.”52 Adding variations makes no difference to the principle.
[68] A sufficient test of definite or considerable degree of similarity is “such that an ordinary reasonably experienced listener might think that perhaps one had come from the other”.53
[69] Merely changing an air to a dance, or transferring the tune from one instrument to another, does not alter the original subject because “[t]he ear tells you that it is the same.”54
The copying must be substantial
[70] If the part that has been taken is so small a part of the original musical work, and it is not a substantial part of the musical copyrighted work it does not constitute an infringement.55
A combination of non-copyright elements can amount to substantial similarity
[71] A “constellation” of extrinsic similarities between two works, for example in terms of bass lines, keyboard chords, and vocal contours and hooks, amounts to
50 Sawkins v Hyperion Records Ltd [2005] EWCA Civ 565, [2005] 1 WLR 3281 at [54].
51 Grignon v Roussel (1991) 38 CPR (3d) 4 (FC) at 20–21.
52 D’Almaine, above n 43, at 123 (emphasis added).
53 Francis Day, above n 46, at 596.
54 D’Almaine, above n 43, at 123 (emphasis added).
55 EMI, above n 46; and G Ricordi & Co (London) Ltd v Clayton & Waller Ltd [1928–1935] MCC
154 (Ch) at 162.
substantial similarity because of the combination of elements, even if those elements are not individually protected.56
The hook of a musical work is protected
[72] The “signature” or the “distinctive or important” or “vital and essential” part of an original work is protected.57 There will be infringement where a new work is arrived at by way of imitation and appropriation.58
The degree of similarity must be considerable
[73] To determine whether one musical work infringes another’s copyright, it is necessary to analyse the musical features and structure of each, nothing points of similarity or difference. The question is whether the degree of similarity can be said to be definite or considerable.59
There must be causal connection, not just coincidence
[74] Causal connection can be inferred where the degree of objective similarity between the works was sufficient, determined by examining factors such as the degree of familiarity, the original work, the character of the work, the probability of coincidence and the existence of other influences upon the defendant.60
Coincidence is not infringement where there is no conscious copying
[75] Reproduction by subconscious copying may amount to infringement, provided it is shown the composer of the offending work was familiar with the original and there was a causal connection between the two pieces.61
Parties’ positions
[76] Before determining whether Lose Yourself was copied, I will consider the
parties’ positions in relation to the claim for breach of copyright.
56 Williams, above n 47, at 21.
57 EMI, above n 46, at [48], [49] and [85].
58 Austin, above n 49, at 421.
59 Francis Day, above n 46, at 610.
60 At 614–615.
61 At 614.
[77] Eight Mile Style submit that the elements of copyright infringement have been met. Specifically:
(a) the objective similarity between the relevant parts of Lose Yourself
and Eminem Esque is obvious;
(b)Eminem Esque and the music synchronised with the relevant campaign advertisements substantially reproduced Lose Yourself;
(c) there is a causal connection between the two works, indicated by the names of the copied tracks (Eminem Esque and Eminem_abbr); and
(d)restricted acts (including authorisation) have taken place without a licence. This allegation will be dealt with under the third issue of copyright infringement.62
[78] The National Party submits that Eminem Esque does not reproduce any substantial part of Lose Yourself. It submits further that not every aspect of Lose Yourself is original and a number of the aspects of Lose Yourself are borrowed.
[79] The National Party says Eminem Esque is not an “adaptation” of Lose Yourself as an adaptation is an arrangement or transcription of the work. As Eminem Esque is in the same medium as Lose Yourself, there has been no adaptation.
[80] The National Party accepts that it did authorise the television broadcast of the advertisement and also authorised the synchronising of Eminem Esque to the advertisement. However, those acts of communicating to the public or publishing the election advertisements do not constitute copyright infringement if Eminem Esque does not reproduce a substantial part of Lose Yourself.
[81] I now turn to consider whether Lose Yourself was copied. The first part of that analysis requires a determination of originality. Although Lose Yourself has met the low threshold of an “original work” under s 14 of the Act, the Court is required to determine how original the work is and whether there are features in the work that
are not original. To establish infringement, there must be substantial copying of the
62 See [281]–[301] of this judgment.
original parts of the work. Any copying of a part of the work, which by itself has no originality, will not normally be protected.
[82] Under the broad heading of “How original is Lose Yourself” I will analyse the
following matters:
(1) Is there originality in popular music?
(2) Are borrowed musical elements protected by copyright? (3) Does an alteration in melody avoid copying?
(4) Is Lose Yourself original? [83] I will deal with each in turn.
2.1 How original is Lose Yourself?
[84] The National Party relies on the observations and findings of the House of Lords in Ladbroke for the general proposition that there is no copyright in some unoriginal part of a whole that has copyright protection.63 On that basis, the National Party submits that the correct approach is to determine whether the plaintiffs’ work as a whole is original and protected by copyright, and then to enquire whether the part they used was substantial.
[85] The National Party also relies on the Supreme Court’s decision in Henkel KGaA, where the Court emphasised that the greater the originality, the wider will be the scope of protection which copyright affords.64 This differs from the low
threshold test under the Act for an original work.65 The Supreme Court said:66
The threshold for originality is a low one and it can be material for other purposes how original the work is; that is, how much skill and labour has gone into its creation. In general terms the greater the originality, the wider will be the scope of the protection which copyright affords and vice versa.
63 Ladbroke, above n 31, at 293.
64 Henkel KGaA, above n 18.
65 Copyright Act 1994, s 14.
66 Henkel KGaA, above n 18, at [38].
[86] Both the Henkel KGaA and Ladbroke decisions involved a collocation or arrangement of features which were not original in themselves.67 Henkel KGaA involved packaging for an adhesive and was a arrangement or collocation of packaging with graphic work. The Ladbroke decision concerned coupons on which were printed columns of squares for betting customers to complete. The primary focus of both cases was whether or not the collocation or compilation was original
for copyright purposes and whether they were protected by copyright at all.
[87] In Henkel KGaA, the appellant had to prove that the graphic work was original in the sense explained and that it owned the copyright in that work.68 In dismissing the appeal, the Supreme Court found that:69
The skill and labour which has given rise to the arrangement is what gives the work its originality, and if that skill and labour is not great, another arrangement of the same unoriginal underlying features may not have to depart greatly from the copyright arrangement in order to avoid infringement. If the level of originality in the copyright arrangement is low, the amount of originality required to qualify another arrangement of the same elements as original is also likely to be low.
[88] Of importance to the present case, the Supreme Court reinforced that:70
Substantial reproduction of those aspects of the work in which the originality lies must be shown to establish infringement. This is consistent with the purpose of the law of copyright, which is to recognise and protect the skill and labour of the author of the copyright work.
[89] What the cases all reinforce is that the issue of originality in the context of copyright must be assessed by looking at all those elements together – the “collocation” of the elements, as Lord Pearce said in Ladbroke.71 In that case, the House of Lords emphasised that it is incorrect to approach originality by subdividing a work into component parts and asking whether copyright attached to the individual parts.
[90] The National Party called evidence to demonstrate that musical elements in popular music, alone or in combination, are too common place and too commonly
67 At [40]; and Ladbroke, above n 31, at 293.
68 Henkel KGaA, above n 18, at [38].
69 At [41] (emphasis added).
70 At [41].
71 Ladbroke, above n 31, at 293.
combined to be original. The National Party argues that if the parts comprising Lose Yourself have a low level of originality, then Eminem Esque does not have to be too different to avoid copyright infringement. Reproduction of the non-original aspects of those parts, it submits, does not infringe copyright.
[91] To deal with this submission, I will analyse the evidence provided by the parties on originality in popular music and the originality of Lose Yourself.
Is there originality in popular music?
[92] Both expert musicologists who gave evidence at the hearing described and referred to various components of a song, which include timbre, texture, rhythm, metre, time signature, tempo, melody and feel. As the components are relevant to understanding the respective analyses, their definitions are summarised below.
Articulation refers to the manner in which a note or chord is played. For example, it might be very short, long or accentuated.
Duple metre is when the music is felt in groups of two (or multiples of two), as opposed to a triple metre.
Feel can be a combination of texture, timbre and rhythm. These elements are the recognisable characteristics of a genre such as reggae, samba or rock. There are particular sounds, instruments, textures and rhythm bases which make a song easily placed into its genre.
Figure is a sample of notes or a phrase of music. Here it refers to the recurring six note piano feature. It was also referred to in the evidence as a piano “doodle”.
A hook or riff is a musical phrase that is repeated and often intended to be memorable and catchy.
A measure or bar of music refers to the division of the music into segments of time, delineated on a sheet of music by bar lines usually in accord with the musical metre. Dr Ford describes an example where a bar of four beats would tend to have a strong beat followed by three weaker beats.
Melody refers to the notes a singer uses for the versus and chorus. Many backing instruments often play small melodic fragments (usually repeated often), but these are not often distinctive enough to detract from the primary song melody. Sometimes the backing instruments simple melody can be called the hook if it stands out.
Metre is the accent within a rhythmic bar. In a bar of four beats, the types of metre are very limited and most songs would use the same metre.
Sonic bed refers to a combination of chords, tempo, harmony, instrumentation, metre and articulation (for example staccato use of guitar).
Tempo is the speed with which one would count out a beat.
Timbre is the particular “sound” of an instrument and means tone colour or the quality of sound. It is more than instrumentation. When the same note is played on a number of instruments, the difference in the quality of sound is timbre.
[93] Dr Zemke, an expert musicologist,72 was called by Beatbox Music to give evidence on behalf of the National Party on the general concept of originality in popular music. Her evidential thesis was that there is a history of borrowing in Western musical traditions, which has led to the development of musical genres throughout the ages.
[94] In particular, Dr Zemke described drum patterns, distinctive timbre and chord patterns as musical building blocks, which are too universal and simple to be subject to ownership. The borrowing, quoting and constant reworking throughout classical music and other western music traditions, has resulted in the genres of jazz, and rock and roll. She describes the development of genres based on universal musical building blocks as follows:
A constant amalgam of borrowing, quoting, and re-working is rife throughout classical music and other Western music traditions. For instance, the whole style of jazz is based on re-working musical “quotations”.
[95] Dr Zemke pointed to early rock and roll songs, which all used the same musical elements and were not “owned” by any one:
Another example would be early rock and roll songs, which all used similar beats, bass lines, chord progressions, guitar strums and collections of instruments. This is what created the sound of the genre itself. No one is considered to “own” or have solely invented the rock and roll basslines, piano chord styles, timbre collections, or drum patterns.
[96] The rock and roll musical elements were then adapted, as Dr Zemke described:
… rock and roll stylistic “backing” aspects were all in turn used by British rockers in the 60’s and 70’s, becoming the British Rock Tradition (The Beatles, The Rolling Stones, Led Zeppelin). These British bands fully acknowledge that they lifted their sounds and musical backing elements directly from the American Blues Tradition.
[97] Dr Zemke gave an example of musical integration and borrowing, where the
Beatles’ album Sergeant Pepper’s Lonely Hearts Club Band used recognised quotes and borrowing from a number of genres:
72 Dr Zemke is a Senior Lecturer in ethnomusicology in the Department of Anthropology, University of Auckland. Dr Zemke completed her PhD at the University of Auckland in sociology and ethnomusicology on the topic of rap music in New Zealand.
That album “quoted” from numerous pop, folk and classical sources. Its eclectic mixing is a part of the work’s genius, and it is usually considered the greatest and most important rock album of all time. The album simply would not exist if the Beatles had to delete or legally reimburse every recognisable musical influence or pattern on the album.
[98] In summary, Dr Zemke highlighted:
(a) numerous examples of tracks that sound like each other;73
(b)that many genres have stereotypical rhythms which characterise the genre;
(c) the time signatures for pop songs and the metre for most rhythm and blues songs are typically the same for the genre;
(d)harmonic progressions in pop music are not usually very complex and there are a limited number of patterns used by “a huge majority of the music we hear”;
(e) backing instrumentals are not typically considered part of a song that is owned, namely the drum beats and guitar chord patterns could be recopied, without payment or composition credit; and
(f) typically it is the melody, melodic components and/or lyrics, which can be considered original in a pop song.
[99] Dr Zemke explained that she understood only the lyrics and melody can be considered original and are subject to copyright and payment goes to the composer (not the singer or instrumentalists). If, for example, Dr Zemke wanted to record a new version of Bob Marley’s I Love You, she understood she would only have to pay the composer of the lyrics and melody. If her band musicians copy the base lines, drum patterns, backing vocals and the like, those original performers do not get paid. On that basis, that element of the song is not owned and nor would it be considered
to be subject to copyright.
73 Some of the examples given by Dr Zemke included songs with the same melody: Twinkle Twinkle Little Star and The ABC Song; songs with a similar bass riff: What Makes You Beautiful (One Direction) and Summer Nights (Grease); songs with similar piano parts: Clocks (Coldplay) and When Love Takes Over (David Guetta featuring Kelly Rowland); and songs with the same harmonic structure: Don’t Stop Believing (Journey), You’re Beautiful (James Blunt), Where is the Love (Black Eyed Peas), Forever Young (Alphaville) and I’m Yours (Jason Marz) amongst others.
[100] Dr Zemke observed that Eminem has been inspired by, and has acknowledged, other musicians. Masta Ace for example, is a big influence. Dr Zemke described Lose Yourself as using similar elements to previous songs. In oral evidence, she gave an example of a similar guitar chord change and timbre to the song Kashmir by Led Zeppelin. Noting that it is simply a similar timbre and rhythm which are not considered owned and it is too small a musical fragment to be credited as composed, Dr Zemke stated these elements “are generally not considered as important or substantial or original as the song melody and lyrics.”
[101] Thus, Dr Zemke believed that if Eminem Esque mimics only some of the instrumental backing of the musical elements of Lose Yourself, these are not considered to have been copied, because they form part of the shared use of such features in all music.
[102] Dr Ford,74 the musicologist called by Eight Mile Style, acknowledged that it is not impossible for pop songs to have similar tempo, metre, structure and chords. Examples were played to Dr Ford under cross-examination, including La Bamba (Los Lobos) and Twist and Shout (the Beatles). Dr Ford acknowledged that they had the same chords and the same progressions, but noted they did not have the same tempo and the sound of the instruments were not similar. Dr Ford disagreed that Led Zeppelin’s Kashmir had the same chords as Lose Yourself and they were not staccato equal quavers. He thought Kashmir was different to Lose Yourself. He acknowledged that every aspect of chords, beat, tempo and drum patterns have a common function, but when you put them together you get something very distinctive:
Everything, every aspect of this has a common function as I said and as Dr Zemke says, it’s only when you put them all together you get something very distinctive. If you take them separately then we’re back to my analogy of saying that somebody has got big ears which doesn’t really narrow it down very much. You need to put all of the information together before you get something distinctive.
74 Dr Ford is a composer, writer and broadcaster. He studied musical composition at the University of Lancaster, United Kingdom and completed a doctorate at the University of Woolongong, Australia. He was a composer in residence with the Australian Chamber Orchestra and has received multiple fellowships as a resident and visiting composer in Australia and at Yale University. He appeared as an expert witness in EMI, above n 46.
[103] Mr Bass, one of the composers of Lose Yourself and the creator of the guitar riff, acknowledged the influence of other musicians that is reflected in their music. He also agreed under cross-examination that there is a history of borrowing musical building blocks when writing music, including drum patterns, chord patterns, guitar strum techniques and the sounds of an instrument. Mr Bass rejected, however, that when he was composing Lose Yourself, he considered other influences or referenced any particular music. He also disagreed that Led Zeppelin’s Kashmir was like his guitar riff in Lose Yourself.
[104] Before analysing the originality of Lose Yourself as a musical work, I consider it is important to address two general themes that underpinned the National Party’s position during the hearing. The first is whether musical components that are borrowed from a genre or other musicians can qualify for ownership or engage copyright protection. The second is whether alterations to a melody in a musical work are sufficient to avoid copyright infringement. I deal with each in turn.
Are borrowed musical elements protected by copyright?
[105] The House of Lords cautioned that similarities may be disregarded because they are commonplace, unoriginal, or consist of general ideas.75 Here, the National Party rely on Dr Zemke’s evidence to show that the musical elements in Lose Yourself were unoriginal and commonplace because they were borrowed. Therefore, they say, those elements cannot be protected and nor can they be included in the assessment of what has been substantially copied.
[106] Eight Mile Style submit that the Court should disregard Dr Zemke’s evidence about the practices of borrowing in the music industry and her opinion of what can and cannot be protected by copyright as they are matters outside her expertise (which she has admitted). Atomising the component parts of Lose Yourself into musical elements that were commonplace and not protectable by copyright, Eight Mile Style
contend, was contrary to the proper legal test.
75 Designers Guild, above n 36, at 2425.
[107] In Austin v Columbia Graphophone Co Ltd, Astbury J in the English Court of Chancery said it is important to avoid an overly technical analysis and determining infringement is not a question of note for note comparison but whether the substance of the original copyright work has been taken.76 The approach in Austin was confirmed in Sawkins v Hyperion Records Ltd, where the Court of Appeal of England and Wales said the test of substantial reproduction involves listening to and comparing the sounds of the copyright work and of the infringing work.77 It is therefore possible to infringe the copyright in a musical work without taking the actual notes.
[108] However, the issue of borrowing in the music tradition has permeated the evidence in this case, not just from Dr Zemke, but also from the other parties to this litigation who are involved in licensing musical works for reproduction and synchronisation for advertising or film purposes, as well as owning and managing music libraries. Musical borrowing has also been the subject of much legal and musical analysis. Far from disregarding the evidence or the issue, I consider this debate is relevant in defining the boundaries of copyright protection and brings the dichotomy of copying versus borrowing into sharp relief.
[109] The history of musical borrowing has been the subject of many academic treatises, books and articles by musical scholars, legal academics and copyright experts.78 As early as 1739, Johan Mattheson wrote on the topics of imitation and
borrowing in The Perfect Chapel Master:79
Borrowing is permissible; but one must return the thing borrowed with interest, i.e., one must so construct and develop imitations that they are prettier and better than the pieces from which they are derived.
[110] Music historian J Peter Burkholder characterises musical borrowing, or the
uses of existing music, as encompassing everything “from direct quotation to the use
76 Austin, above n 49, at 415.
77 Sawkins, above n 50, at [54].
78 See for example Johann Mattheson Der Vollkommene Capellmeister (Ernest C Harriss (trans), UMI Research Press, Michigan, 1981); J Peter Burkholder All Made of Tunes: Charles Ives and the Uses of Musical Borrowing (Yale University Press, New Haven, 1995); and J Peter Burkholder, Donald Grout and Claude V Palisca A History of Western Music (9th ed, W W Norton, New York, 2014).
79 Mattheson, above n 78, at 298.
of an older work as a model without over reference”.80 The latter form of borrowing, using older musical works as a model, is overtly seen in the recent work of Professors James Boyle and Jennifer Jenkins.81 The two copyright professors from Duke University presented their research and thesis in a music/comic, which graphically depicts the dichotomy between borrowing and copying. They capture the very issues raised by the parties in this hearing and illustrate the current tension in the music industry, namely, the copyright protections to preserve the integrity of an artist’s work, as against the creative freedom for artists to develop musical works and genres.82
[111] Most relevantly, one of the examples included by the Professors is an example also referred to by Dr Zemke in her evidence, of the British rock bands borrowing their sounds and musical backing elements directly from the American blues tradition. They portray Chuck Berry as the forefather of rock and roll, by mixing country, rhythm and blues and inventing a new guitar style, with two famous British musicians acknowledging their debt to Chuck Berry’s innovation.83
[112] Professor Boyle reinforces that the history of music is intertwined with borrowing and that history also involves regulation of musical borrowing. He says:84
You can’t tell the history of music without telling the history of musical borrowing. And you can’t tell the history of music without telling the history of attempts to regulate musical borrowing.
[113] The copying of musical ideas and commonplace building blocks and motifs from a musical work, which are not themselves original, has been considered by the English and Australian courts in determining whether there has been copyright infringement of a musical work.85 The use of commonplace elements or clichés has
formed part of the determination of the originality of musical works, with an
80 J Peter Burkholder “The Uses of Existing Music: Musical Borrowing as a Field” (1994) 50
Second Series 851 at 861.
81 James Boyle, Jennifer Jenkins and Keith Aoki Theft: A History of Music (Duke University Law
School: Center for the Study of the Public Domain, Durham, NC, 2017).
82 At 111.
83 At 135.
84 James Boyle as cited in Francis Presma “Remix or Robbery: two copyright scholars present the History of Music as an epic battle between creativity and control” (2017) 36(1) Duke Law Magazine 46 at 48.
85 EMI, above n 46, at [11]; and Francis Day, above n 46, at 594.
acknowledgement that many writers of great music have used clichés to produce masterpieces.86
[114] In EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd, Emmett J referred to copyright legislation as striking a balance of competing interests and competing policy considerations.87 Significantly, his Honour noted that copyright is concerned with rewarding authors of original literary, artistic and musical works with commercial benefits, having regard to the fact that such works, in turn, benefit the public.88 In IceTV Pty Ltd v Nine Network Australia Pty Ltd, the High Court of Australia observed similar purposes to copyright law, balancing the public interest in promoting the encouragement of musical and other works by providing a just reward for the creator, with the public interest in maintaining a robust public domain in which further works are produced.89
[115] In the present case, the National Party essentially submitted that Lose Yourself is not an original work, or has a low level of originality, as it is substantially borrowed from other music and genres. It submits, therefore, Eminem Esque cannot have infringed Eight Mile Style’s copyright as the parts copied are too general or non-original to be entitled to copyright protection.
[116] Unlike the examples involving the use of musical building blocks, or “reference” or “quotes” from other musical works, the present case concerns the sale of production music (sound-alike tracks) for commercial use in advertising. The tension between illegitimate copying versus permissive borrowing and the resulting copyright consequences, therefore, are at the forefront of this case.
[117] It is beyond dispute, that musicians are influenced by countless other songs and artists and borrow from them, as Dr Zemke described and the academic works
confirm. It is correct that music history and “musical childhoods”, as Dr Zemke
86 Francis Day, above n 46, at 594–595.
87 EMI, above n 46.
88 At [29], with reference to IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14, (2009) 239 CLR 458 at [24].
89 IceTV, above n 88, at [71]. See also Ian Finch James & Wells Intellectual Property Law in New Zealand (3rd ed, Thomson Reuters, Wellington, 2017) at [4.1] where it is observed that copyright protection provides “an incentive for authors to create more original works. It also provides them with recognition for their creative efforts.”
described, create a platform for any artist to build upon to create his or her own works. Those works often are the legacies of others.
[118] However, the “borrowed” platforms, genres or chords must create distinctive musical works to obtain copyright protection. On behalf of the defendants, Beatbox Music played a number of tracks during the Court hearing, including La Bamba (Los Lobos), Twist and Shout (the Beatles), Total Control (the Motels) and Kashmir (Led Zeppelin), among many others. This served to illustrate that the similarities of sound, when the songs were created from the influence of other artists and used the same chords, which are not in themselves original and are common among many such songs. The chords and musical elements were said to be similar to those used in Lose Yourself.
[119] The musicologists were not in agreement about the similarities of sound in the songs that were played. Dr Ford described the differences in sound and tempo between La Bamba and Twist and Shout; the different guitar chords and beat between Led Zeppelin’s Kashmir and Lose Yourself; and the different guitar chords in Total Control to Lose Yourself, even though there was similar staccato articulation in both.
[120] I agree with Dr Ford’s evidence. Although these songs use the same musical elements as each other, to my ear they are distinctly different songs. La Bamba and Twist and Shout are each original and recognisably distinctive musical works in their own right. They sound different to each other.
[121] The songs also provide a modern day demonstration of Johann Mattheson’s thesis that permissive “borrowing” must return the object borrowed with “interest”.90
They have transformed the “borrowings”, the same musical elements, to make something different with them.
[122] Consistent with the authorities, musical components that are borrowed from a music genre or from other musicians can engage copyright protection, where the compilation of those components produces a distinctive and recognisably different
musical work. The evidence above demonstrates this.
90 Mattheson, above n 78, at 298.
Does an alteration in melody avoid copying?
[123] The second issue permeating Dr Zemke’s evidence is whether a change in the
“melodic line” alters the copied work sufficiently to avoid a finding of copying.
[124] In her evidence, Dr Zemke accepted that ordinary listeners who had heard both the National Party advertisement track and Lose Yourself more than once and had the resemblance pointed out would likely find resemblance between the two works. She acknowledged that the similarity seems intentional by the composer of Eminem Esque, as if to present an echo of Lose Yourself.
[125] However, Dr Zemke points to an intention to alter the “melodic” elements so as not to infringe copyright. It is on this basis that she describes the music industry creating derived works quickly for cheaply-made television shows or advertisements, with melodic changes to avoid infringement. Her evidence was:
… there has also been an intention to alter any melodic elements so as not to infringe upon what would general[ly] be considered to be the “owned” elements of the “composition”. This is done endlessly in the advertising and television sector. There is a segment of the music industry which is not about creating original works for sales and popularity, but instead creates simplistic often derived works to quickly fill time for cheaply made television shows, or to use in advertisements.
[126] In the same way, when Dr Zemke reviewed the piano figure in Eminem Esque, she agreed there was a similar use of a high pitched “melodic” line. In her view, however, it was “altered enough so the melody is not a direct copy.” Dr Zemke said further:
The pianist on “Lose Yourself” did not invent the use of a single piano line running along the top of other instruments. And “Eminem Esque” is not playing the same exact melody.
[127] The American cases appear to have placed the focus on the melody of the original work as attracting copyright. In a recent article, an American academic,
Joseph Fishman begins by citing French philosopher Jean-Jacques Rousseau:91
91 Joseph Fishman “Music as a Matter of Law” (2018) 131 Harv L Rev (forthcoming) at 3, citing Alfred Richard Oliver The Encyclopedists as Critics of Music (Columbia University Press, New York, 1947) at 43.
Any disinterested judge will have to admit that melody is, after all, the soul of music.
[128] In his article, Fishman follows a series of cases from as early as 1765 and focuses on the verdict and decision in relation to the song Blurred Lines in Williams v Bridgeport Music.92 He notes that a trend in recent United States District Court cases has emerged, where copyright protection has been extended beyond the melody of a song.93 From those recent District Court decisions, he writes that copyright protection in the American courts could extend to a piece’s rhythm, percussion, or instrumental riffs,94 as well as permutations of chord progression, key, tempo and genre.95 Of the Williams decision, he says Blurred Lines is a symptom, not a cause, of confusion over what copyright covers. He concludes that in the United States “[t]he notion that melody today is the primary locus of music’s value,
however defined, is a fiction” and that the primacy of melody in infringement cases is weakening.96
[129] As discussed above,97 the authorities on musical copyright, since at least
1835, have focused on what the ear tells the listener about the similarity of the original song.98 The decisions, which have been followed in the United Kingdom and Australia, have applied the principle of aural recognition and upheld that variations or alterations to the original air or tune will not avoid infringement if the two works sound the same. These decisions have also noted that it is wrong in principle to single out the notes as uniquely significant for copyright purposes.99
[130] However, the distinctive hook of a song or musical riff appearing in the context of another song, as in EMI v Larrikin, has attracted copyright protection,
because the sound is distinctive and the ear can recognise it from the original. The
92 Williams, above n 47.
93 Fishman, above n 91, at 9.
94 See New Old Music Group Entertainment Inc v Gottwald 122 F Supp 3d 78 (SD NY 2015) (drumbeat); BMS v Bridges 2005 WL 1593013 at 3–5 (SD NY July 7, 2005) (combination of rhythmic elements); and ZZ Top v Chrysler Corp 54 F Supp 2d 983 (WD Wash 1999) (guitar
riff).
95 Swirskey v Carey 376 F 3d 841 (9th Cir 2004) at 848–850.
96 Fishman, above n 91, at 46.
97 See [65]–[69] of this judgment.
98 D’Almaine, above n 43.
99 Sawkins, above n 50, at [56]; EMI, above n 46.
opening two bars copied in the EMI case, which were held to be the signature of the original Kookaburra work, “sticks in your head.”100
[131] As the musical copyright authorities reinforce, it is not sufficient, therefore, to simply alter a melody line, to show that notes have been changed, when the sound remains the same or similar to the original.
Is Lose Yourself original?
[132] Eight Mile Style rejects the National Party’s submission that Lose Yourself has a low level of originality and adduced evidence from Mr Bass about the composition of Lose Yourself.
[133] Mr Bass gave evidence on how the composition of Lose Yourself took place over a year and a half. His evidence described the opening guitar riff of Lose Yourself and the steps taken by the composers to finalise the work. He told the Court that he was one of the people who composed the original musical composition entitled Lose Yourself, which was incorporated in a sound recording that was first released as a single in the United States sometime in or around September 2002. This was the original Interscope recording of Lose Yourself.
206 Vestergaard Frandsen A/S v Bestnet Europe Ltd [2014] EWHC 3159 (Ch) at [94].
[425] A further factor which I consider relevant to this hypothetical bargain is the willing licensee. The National Party campaign committee approved the use of Lose Yourself and, despite the options of other musical works available to them, sought to have the sound of Lose Yourself accompany its election advertising and video provided it had no legal impediment. At the time of the hypothetical negotiation, Mr Foster from Sale Street Studios sent an email to Extreme Music on 3 June 2014, saying “They wanted to use Eminem’s Lose Yourself.”
[426] Mr Jameson described the “steady beat” of the music, which was the preferred accompaniment to the rowing advertisement. The evidence demonstrates that the National Party was a willing licensee and the wish to procure the Lose Yourself sound is a factor that would lead the parties to have agreed on a higher figure for the hypothetical fee.
[427] Against the factors that support a higher fee is the evidence on duration and the territory of use. It is plain that in a larger territory such as the United States, a licensing fee for Lose Yourself would be higher. I consider that Mr Martin’s view of a starting point, which is reflected in United States currency, would apply to the use in the United States. Generally, the experts were in agreement that the larger the territory, the higher the fee, but both Mr Donlevy and Ms Zamoyska were of the view that the territory does not matter where a song like Lose Yourself, being a high value but rarely used work, is licensed. Further, it is being licensed for an election campaign in a territory unassociated with the artist and is available on the internet through a website and YouTube.
[428] As Ms Zamoyska accepted, the media on which the song will be used, the duration of use and the territory of use are normally relevant factors to the negotiation of the fee. In this case, however, she considered those details would have limited impact because of the availability of the advertisement over the internet. It would be seen by audiences outside of New Zealand and such extra-territorial leakage is a risk to the global commercial value of the music. There is also a fast social media sharing on political campaigns, through Twitter and Facebook for example, and this emphasises the significant potential commercial risks in licensing a high value work like Lose Yourself in return for a low figure. I consider the
evidence of Eminem’s following, the reaction of an artist’s fan base and the wide
reach of the internet distribution. I accept Ms Zamoyska’s evidence on this issue.
[429] The duration or period of use was 11 days, although it was an intensive use. The 30 second National Party advertisement was screened 186 times and in the opening broadcast Eminem Esque was played eight times. That is less than the duration of other licence fees adduced in evidence before the Court. The advertisements were also widely available on the internet. The experts agreed that the longer the period of use of a song in an advertisement, the higher the licence fee. However, I acknowledge Ms Zamoyska’s evidence that it is not a linear relationship and that most of the value of using a song is in the first short period of use. Although I accept her evidence that territory and duration would have a limited impact on the fee, in my view there must be some discount for the duration in this case.
[430] I have taken into account that Australian and New Zealand licences have included some legacy artists, for licensing in Australia and/or New Zealand but prefer Ms Zamoyska’s expert evidence. Although each of the other experts had legacy artists and high value works in their repertoire, Ms Zamoyska considered the factors relevant to Eight Mile Style, Eminem’s reputation and works. She acknowledges the significance of Lose Yourself as a high value work, its rarity of use, and the fact that Eight Mile Style retains control directly over licensing and any re-recording of the song.
[431] A number of the New Zealand/Australian licences given were not comparable for a number of factors. In some instances, artists were licensing their songs for products which they endorsed. In others, songs which had been rarely used were licensed some considerable years before. No evidence was adduced that the songs in the instances given were “the jewel in the crown” of an artist’s repertoire (apart from one artist’s song, which was used to advertise products the artists endorsed). Finally, none of the licence fees for New Zealand, Australia or international use had involved a licence for political use.
[432] As the authorities warn, caution should be exercised in looking at other comparable rates or licence fees, because they must be relevant.207 For reasons set out above,208 I do not take into account the evidence on settlement agreements for infringement, as they are different in character and have different considerations to the determination of a hypothetical licence.
[433] Fletcher Moulton LJ in Meters Ltd said it “is the duty of the defendant to respect the monopoly rights of the plaintiff” and believed it was right for the Court to consider “what would have been the price which – although no price was actually quoted – could have reasonably been charged for that permission, and estimate the
damage in that way.”209 This is consistent with Pumfrey J in Ludlow Music, who
said the true measure of damages “is either a rate that represents the going rate or a rate that it would be reasonable to demand in all the circumstances.”210
[434] In summary, the factors which I consider relevant to this case, therefore are: (a) Eight Mile Style have retained exclusive control of licensing, with
Mr Martin responsible for negotiating the use of Lose Yourself;
(b)Lose Yourself has been rarely licenced: three times willingly and many requests have been denied;
(c) the purpose for the use was a political use in an unassociated country to Eminem;
(d)the nature of the use is not what Eminem or Eight Mile Style would endorse;
(e) the use was political advertising over 11 days and the advertisements were placed on YouTube, the National Party website and Facebook page;
(f) despite the availability of other music, and the potential association with Eminem, the National Party wanted the sound of Lose Yourself or
an equivalent;
207 32 Red, above n 173, at [64], [68], [72] and [82]–[83].
208 At [318], [344] and [361] of this judgment.
209 Meters, above n 149, at 164–165.
210 Ludlow, above n 158, at [53].
(g)if an artist wishes to retain control and rarely entertains licenses, the price for a hypothetical licence fee is higher rather than lower, despite the territory or the duration; and
(h) the musical significance of copying the musical work was significant.
[435] In my view, balancing all of the factors, I consider that, of the range of potential licence fees adduced in evidence and submitted to the Court, I am guided most by the suggested licence fee proposed by Ms Zamoyska.
[436] I consider that Ms Zamoyska’s minimum baseline fee for a high value work such as Lose Yourself is appropriate. I also consider her uplift reasonable for the factors she identifies, particularly political use, no opportunity to re-record and loss of control for a high value work.
[437] However, I have discounted this fee for the duration of use in the circumstances. I accept Ms Zamoyska’s view that uplifting political advertisements onto websites and YouTube takes the publication beyond the territory of New Zealand and makes the factor of “territory” of limited impact on the fee. The political campaign with all its attendant publicity and high focus, particularly in the lead up to an election, is also relevant to “duration.” I have given a discount for the
11 day use nevertheless.
[438] In doing so, I have adjusted Ms Zamoyska’s proposed figure, which was given in another currency, by discounting for the short duration of use. It is less than the minimum fee proposed by Mr Martin and more than the fee range suggested by the other experts, although Mr Donlevy considered that a significantly higher figure here would likely be required. There has been no premium given for unwillingness or reluctance by either party.
[439] I find that a reasonable licence fee for the use of Lose Yourself by the
National Party in its election campaign is NZ$600,000.
[440] This licence fee is an award of damages against the National Party for copyright infringement. The ultimate liability for damages, however, is to be
determined among the third parties, who have been joined to this proceeding. This will be the subject of a further hearing.
[441] The award of NZ$600,000 is dated from the first copyright breach on 28 June
2014. To that figure, I award three years interest at five per cent to the date of payment, under s 87 of the Judicature Act 1908.211
Conclusion 4.1
[442] The findings are:
(a) Eight Mile Style is entitled to damages on a user principle basis in the sum of NZ$600,000 for copyright infringement; and
(b) interest is payable at the Judicature Act rate of five per cent from
28 June 2014 to date of payment.
4.2
Are Eight Mile Style entitled to additional damages?
[443]
Section 121 of the Act makes provision for additional damages
in
infringement proceedings and, of relevance, states:
(1) Where, in proceedings for infringement of copyright, it is proved or admitted that at the time of the infringement the defendant did not know, and had no reason to believe, that copyright existed in the work to which the proceedings relate, the plaintiff is not entitled to damages but, without prejudice to the award of any other remedy, is entitled to an account of profits.
(2) In proceedings for infringement of copyright, the court may, having regard to all the circumstances and in particular to—
(a) the flagrancy of the infringement; and
(b) any benefit accruing to the defendant by reason of the infringement,—
award such additional damages as the justice of the case may require.
211 From 1 January 2018, the Interest on Money Claims Act 2016 will enter into force. However, until that time s 87(3) of the Judicature Act 1908 and cl 4 of the Judicature (Prescribed Rate of Interest) Order 2011 continue to apply here. See Interest on Money Claims Act, s 2 and sch 1, cl 1.
[444] In relation to the predecessor of s 121, s 24 of the Copyright Act 1962, the
Court of Appeal in Wellington Newspapers Ltd v Dealers Guide Ltd observed:212
The ordinary dictionary meaning of flagrant is “glaring, scandalous, or outrageous”. Flagrancy was described by Brightman J in Ravenscroft v Herbert [1980] RPC 193, 208 as:
Flagrancy in my view implies the existence of scandalous conduct, deceit and such like; it includes deliberate and calculated copyright infringements.
...
The additional damages referred to in s 24(3) are to be awarded where the Court is satisfied that the remedies otherwise provided by the section for an action brought under it do not provide effective relief. This would suggest that there may be some damage or loss suffered by a plaintiff which compensatory damages, injunction, the taking of accounts or other remedy would not assuage. It is difficult to see what is contemplated by the additional damages unless it is something in the nature of punishment to the defendant for the hurt done to the plaintiff which the conventional remedies would not provide.
[445] In that case an additional sum of $7,500 damages was upheld to reflect that the infringement was deliberate, calculated, done for commercial advantage, and accompanied by attempts at concealment.213
[446] The Court of Appeal in Feltex Furnishings of New Zealand Ltd v Brintons Ltd further noted that damages for flagrancy are in the nature of aggravated or punitive damages to be fixed, if at all, after compensatory damages have been determined.214
[447] Endorsing the approach in Feltex, Rodney Hansen J in Electroquip Ltd
highlighted that:215
Flagrancy, accordingly, goes beyond mere awareness. It is not to be found simply because the defendants have been unable to prove that they did not know or had no reason to believe that copyright existed in the works.
[448] The Court of Appeal recently confirmed the high standard required for an award of additional damages to be made in the case of Skids Programme
212 Wellington Newspapers Ltd v Dealers Guide Ltd [1984] 2 NZLR 66 (CA) at 69–70.
213 At 76 per Somers J.
214 Feltex Furnishings of New Zealand Ltd v Brintons Ltd (1992) 4 NZBLC 102,913 at 102,921.
215 Electroquip, above n 145, at [56].
Management Ltd v McNeill.216 The Court endorsed the discussion in Wellington Newspapers and confirmed the following principles apply in relation to additional damages:217
(a) section 121(2) gives the Court the power to award additional damages, not linked to compensation damages, which is exercised by applying principles that govern exemplary damages at common law;
(b)there is no temporal limitation as to what is relevant in making this assessment and all of the parties’ conduct at the time of judgment can be considered;
(c) it must be shown that the claimant was the victim of punishable behaviour;
(d) there should be moderation in additional damage awards given, taking
into account the nature of the claimant’s business; and
(e) the means of the parties should be considered.
[449] In that case, the Court awarded additional damages of $20,000 for the copyright infringement to reflect “outrageous behaviour”.218 The Court considered that the defendant was involved in extensive and deliberate copying, had repeatedly denied her conduct, that the only penalty available was an award of additional damages, and the claimant’s business was modest.219
[450] As the Court of Appeal confirmed in Skids Programme, common law principles that govern exemplary damages generally are relevant here.220
[451] The Supreme Court in Couch v Attorney-General held that the primary purpose of exemplary damages is to punish a defendant for wrongful conduct and there must be conscious wrongdoing and not merely inadvertence.221 The majority of the Court reaffirmed that the test for whether an award of exemplary damages
should be granted is whether the defendant acted outrageously, either intentionally or
216 Skids Programme Management Ltd v McNeill [2012] NZCA 314, [2013] 1 NZLR 1.
217 At [102]–[110].
218 At [119].
219 At [118].
220 At [102]–[110].
221 Couch v Attorney-General (No 2) [2010] NZSC 27, [2010] 3 NZLR 149 at [117] and [238].
with subjective recklessness.222 This test applies across all causes of action for which exemplary damages are sought. Tipping J also confirmed that the consequences of the defendant’s actions are not the primary assessment of blameworthiness. Rather, the defendant’s state of mind is the focus.
[452] In Jeans West Corp (New Zealand) Ltd v G-Star Raw CV, the Court of Appeal awarded additional damages of $50,000, which is understood to be the highest award in New Zealand.223 The relevant factors included flagrant infringement by blatant copying by the infringer, significant but unquantified financial benefit to the infringer, the actions of the infringer were very damaging to the business of the copyright owner, and the infringement was to test the market with a view to further importation of infringing material for sale. The conduct of Jeans West, in defending the claim, by late discovery of a critical document and failure to
call evidence from relevant witnesses, was also relevant.
Analysis
[453] The above authorities clearly indicate that there is a high threshold for the award of additional damages for copyright infringement. Here, the National Party sought the copyright work, Eminem Esque, from a professional company specialising in production music for sale. The National Party obtained advice from experienced professionals within the advertising and music licensing industries, in relation to the use of the track.
[454] Eight Mile Style allege that the National Party should have sought legal advice to determine whether there was a risk of copyright infringement.
[455] I do not accept Eight Mile Style’s submission. The National Party took appropriate steps in seeking professional and industry advice from experienced music licensing companies and obtained a synchronisation licence to use Eminem Esque in their advertising. The extent to which the National Party was entitled to rely on that advice and the liability of the third parties for the award of damages is a
matter for the second hearing.
222 At [178]–[179], per Tipping J.
223 Jeans West Corp (New Zealand) Ltd v G-Star Raw CV [2015] NZCA 14, (2015) 13 TCLR 787.
[456] While copyright infringement of Lose Yourself did occur, the National Party’s
actions do not demonstrate:
(a) flagrant or intentional infringement;
(b) contumelious or total disregard for the plaintiffs’ rights; or
(c) conduct that is so bad that it should be punished.
[457] The compensatory and restitutionary damages awarded are appropriate in this case.
[458] Although the National Party, in communicating and/or reproducing a copy of Lose Yourself, is responsible for the actual copyright infringement, in doing so, the National Party was acting on industry advice and was not acting in flagrant disregard of Eight Mile Style’s rights nor, as the authorities describe, acting in an outrageous manner. An award of additional damages against the National Party is not justified in these circumstances.
Conclusion 4.2
[459] The findings are:
(a) although copyright infringement did occur, the National Party’s actions were taken after receiving professional, commercial and media advice and were not reckless or contumelious of the rights of the copyright owner; and
(b) no additional damages are awarded.
SUMMARY OF CONCLUSIONS
[460] There is actionable copyright in Lose Yourself because:
(a) Eight Mile Style are the owners of 50 percent and are exclusive licensees of the other 50 per cent of the musical work Lose Yourself. They are therefore the exclusive licensees of copyright in the musical work Lose Yourself;
(b)Eight Mile Style are entitled to bring this action for copyright infringement in New Zealand as the authors of Lose Yourself are citizens of a prescribed foreign country; and
(c) copyright subsists in the musical work Lose Yourself as it meets the definition and threshold of being an original musical work under s 14(1)(a) of the Act.
[461] Lose Yourself is a highly original musical work, for the following reasons:
(a) Lose Yourself is an original musical composition, with a distinctive guitar strum and drum beat, which creates an insistent tense hypnotic rhythm, with a heightened sense of anticipation, as originally created and intended;
(b) Lose Yourself is a highly original musical work; and
(c) the melody in Lose Yourself is not the dominant feature.
[462] Eminem Esque has substantially copied Lose Yourself and is a substantial copy of Lose Yourself because:
(a) the differences between Eminem Esque and Lose Yourself are minimal;
(b)the close similarities and the indiscernible differences in drum beat, the “melodic” line and the piano figures between Lose Yourself and Eminem Esque make Eminem Esque strikingly similar to Lose Yourself; and
(c) Eminem Esque substantially reproduces the essence of Lose Yourself.
[463] The parts of Eminem Esque used in the National Party’s election
advertisements also substantially reproduce Lose Yourself.
[464] Eminem Esque is objectively similar to Lose Yourself because:
(a) Eminem Esque is objectively similar to Lose Yourself, with minimal discernible differences;
(b) Eminem Esque sounds like a copy and I find it is a copy of Lose
Yourself; and
(c) Eminem Esque was designed to “sound like” Lose Yourself as production music and a sound-alike track.
[465] There is a causal connection between Lose Yourself and Eminem Esque: (a) it was no coincidence that the works sounded the same;
(b)the undeniable inference to be drawn from the evidence is that the composer of Eminem Esque had Lose Yourself in front of him at the time of composition; and
(c) the original title Eminem_abbr; the title of Eminem Esque, and the fact that Eminem Esque is a sound-alike track reinforces the finding that there is a causal connection between the two works, supporting a finding of copying.
[466] In terms of copyright infringement:
(a) The National Party carried out the following restricted acts which amount to copyright infringement:
(i)communicating a copy, or a reproduction of a substantial part, of Lose Yourself to the public without licence;
(ii)authorising the copying of Lose Yourself by authorising the synchronisation of Eminem Esque with the National Party election campaign advertisements; and
(iii)authorising the use and/or deployment of the relevant advertisements, the conference video and opening broadcast.
(b)Eminem Esque is not an adaptation of Lose Yourself, as there has been no adaptation for use from one medium to another.
[467] Eight Mile Style is entitled to damages on a “user principle” basis in the sum of NZ$600,000, from 28 June 2014. Interest is payable at the Judicature Act rate of five per cent from 28 June 2014 to date of payment.
[468] Although copyright infringement did occur, the National Party’s actions were taken after receiving professional, commercial and media advice and were not reckless or contumelious of the rights of the copyright owner. No additional damages are awarded.
Costs
[469] Counsel are to file memoranda on costs.
Cull J
Solicitors:
Lindsay Litigation and Arbitration Ltd, Auckland
Kiely Thompson Caisley, Auckland
Dominion Law, Auckland
LeeSalmonLong, Auckland
Rennie Cox, Auckland
Izard Weston, Wellington
APPENDIX I
Chronology of events
| November 1995 | FBT Productions and Marshall Mathers III entered into an Exclusive Artist Recording Agreement (the Recording Agreement). |
| 22 February 1999 | The Recording Agreement was subsequently amended by an |
| 19 April 2000 | The Bass brothers entered into the Eight Mile Style Operating |
| 18 July 2001 | Mr Jeffrey Bass entered into a Writer Co-Publisher Agreement with Eight Mile Style. |
| 2001–2002 | The musical work Lose Yourself was composed. |
| September 2002 | A sound recording featuring the musical work was first released as a single in the United States of America. |
| 9 January 2003 | Mr Resto assigned to Eight Mile Style an undivided 50 per cent interest in his share of the copyright and all other rights, title and interest, in and to a number of compositions, including the musical work known as Lose Yourself. |
| 9 January 2003 | Mr Resto entered into a Writer-Co-publisher Agreement with |
| Eight Mile Style and Martin Affiliated entered into a copyright assignment by which Eight Mile Style assigned to Martin Affiliated an undivided 33 per cent interest in Eight Mile Style’s share of the copyright and all other rights, title and interest, in and to the musical compositions acquired, owned, controlled or administered by Eight Mile Style. The assignment expressly recorded that the musical work Lose Yourself was one of the compositions covered by it. | |
| Prior to 8 March | Mr Cohen produced a track that he called Eminem_abbr. The work was renamed SQ mc Eminem Esque at around this time. |
| 14 February 2008 | Mr Cohen entered into an arrangement whereby he purported to grant Labrador Entertainment Inc the rights listed in cl 1.1 of the Composer’s Agreement bearing that date. |
| Late 2013 | Stan 3 Ltd pitched to the National Party and its campaign committee members the idea of using a rowing crew as a visual representation of the National Party and its record as a governing party. Stan 3 Ltd was directed to develop this idea into a fully thought through concept for advertisements. |
| Late February | Mr Jameson of Stan 3 Ltd prepared animatics that were synchronised with two musical tracks: the classical track and the modern track (Eminem Esque), provided by Sale Street Studios Ltd. |
| 28 February 2014 | These animatics were sent to Ms Worthington. They were then forwarded to Mr Foster at Sale Street Studios Ltd. |
| Mr Foster located the track called Eminem Esque after conducting a search of production music libraries. | |
| The Eminem Esque track was then synchronised with certain animatics that were to be tested with a focus group. | |
| March 2014 | The animatics were tested by the focus group for the National Party campaign committee. The group showed a preference for the modern track, being the animatic with Eminem Esque synchronised to it. |
| 27 March 2014 | Mr Jameson needed to make another animatic, and requests Lose |
| Mr Foster provides Mr Jameson the relevant music file. | |
| March 2014–May | The National Party election advertisements were produced by Stan |
| Late May 2014 | Mr Jameson showed the proposed election advertisement to Ms de Joux, campaign manager for the National Party. The proposed election advertisement used Eminem Esque and a staff member of the National Party heard the track and said it sounded like Eminem. He also said Eminem is perceived to be into hate speech. Mr Jameson advised Ms de Joux that the music was production music named something like Eminem Esque. |
| 27 May 2014 | Ms Worthington of Stan 3 emailed Mr Foster of Sale Street Studios asking him for a copy of the Eminem Esque track and forwarded the file to Ms de Joux. |
| Ms de Joux asked for full details of the musical track, which were supplied by Stan 3. She was concerned about the National Party being associated with Eminem and copyright issues so asked Stan 3 to locate other music for consideration. |
| Ms Worthington sends correcting email indicating “Eminem” not “eminent”. | |
| Mr Foster provides the file. | |
| Ms Worthington forwards the file to Ms de Joux. | |
| 29 May 2014 | Mr Jameson was instructed to find alternative music choices and contacted Mr Foster to do so. |
| 2 June 2014 | Mr Foster provided alternative tracks by WeTransfer. |
| 3 June | Mr Foster emailed Extreme Music indicating they had wanted to use Eminem’s Lose Yourself because it was something harder and more edgy. Mr Foster provided an alternative track to Mr Jameson. |
| 13 June 2014 | The National Party campaign committee listened to several music options and decided that the advertisement with Eminem Esque synchronised to it was the best option because the track clearly fitted best with the visuals of the advertisement, particularly the rowing strokes. However, the committee wanted detailed reassurance that the National Party could safely use Eminem Esque. |
| 13–18 June 2014 | Stan 3 was asked to obtain reassurances that Eminem Esque could be used in the National Party’s advertisement. Stan 3 obtained reassurance from: (a) Mr Collins, a freelance experienced television advertising producer; (b) Mr Foster at Sale Street Studios; (c) Mr Mackenzie of Beatbox Music; (d) Mr Chunn, former head of APRA; and (e) Ms Benoit at APRA/AMCOS. |
| 18 June 2014 | Stan 3 reassured the National Party that Eminem Esque could be used. A written assurance from Mr Mackenzie of Beatbox Music was obtained, stating that the “agreement we have with the publisher gives us assurance that the music does not infringe on copyright and is free to be used for production purposes.” |
| 18–23 June 2014 | The National Party confirmed that it would proceed to use the Eminem Esque track, as the use of Eminem Esque in its campaign advertisements and other materials had been cleared “by the Party or members of its Campaign Committee.” |
| 23 June 2014 | That the use of Eminem Esque in its campaign advertisements and other materials had been cleared by the National Party or members of its campaign committee was communicated to Sale Street Studios Ltd by Ms Worthington by email. That email outlined the uses to which the track would be put. |
| Ms Worthington confirmed to Mr Foster by email that the Eminem Esque track was to be synchronised with the National Party’s broadcast opening address – a 15 minute political party advertisement. | |
| Ms Worthington confirmed that the Eminem Esque track was to be synchronised with a 2.5 minute video that was to be shown at the National Party’s conference that was taking place that weekend. | |
| 25 June 2014 | Ms Worthington emailed Sale Street Studios Ltd asking whether they had done the final mix and purchased the Eminem Esque track for use with the video that was to be shown at that weekend’s conference. |
| 28 June 2014 | The video that had been produced which had the Eminem Esque track synchronised to it was played to those in attendance at the National Party conference. |
| 5 August 2014 | Ms Worthington sent another email to Mr Foster which set out details on the use to which the Eminem Esque track was to be put. Those uses included synchronisation with the video shown at the National Party conference, the broadcasting opening address, six 30 second TVC’s (including the framing TVC), and three 15 second cutdown TVCs. |
| The requested advertisements had the track Eminem Esque (or parts of it) synchronised to them, were finalised and copies of them were provided to T-Cab and then the broadcasters so that they could be aired. | |
| 20 August 2014 | The first of the advertisements that had Eminem Esque synchronised to it (the Framing Advertisement) was uploaded to YouTube and the National Party’s Facebook page. The 15 minute long opening address advertisement was also uploaded to YouTube and social media. |
| 20–30 August | Advertisements which had the Eminem Esque track synchronised to them were played at least 186 times on New Zealand television. |
| 23 August 2014 | The 15 minute opening broadcast aired on TV1. |
| The media in New Zealand began to run stories suggesting that the music used in the relevant advertisements sounded like the musical work. |
| 25 August 2014 | Eight Mile Style’s United States attorneys formally wrote to the National Party complaining of the unlicensed use of the musical work. |
| 26–27 August | The National Party seeks to replace the Eminem Esque track on its advertisements with alternative music. |
| 27–30 August | The National Party, Stan 3 Ltd and subcontractors commission and approve alternative music, apply the alternative music to the advertisement and submit the advertisement to broadcasters for approval. |
| 30 August 2014 | The National Party ceased airing or otherwise publicising advertisements with the Eminem Esque track |
| 17 September | Mr Baker of Beatbox Music sent an email to APRA saying: “Please note that today we have emailed our clients requesting them to delete the Spider Cues album SPID039 which contains the work Eminem Esque by Mr Cohen from their hard drive storage devices and that the music can no longer be licensed.” |
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