FEDERAL COURT OF AUSTRALIA
Boomerang Investments Pty Ltd v Padgett (Liability) [2020] FCA 535
ORDERS
DATE OF ORDER: |
THE COURT ORDERS THAT:
1. The parties bring in short minutes of order to give effect to these reasons within 14 days.
2. The matter be listed for a case management hearing on Friday 8 May 2020 at 9.30 am.
Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.
PERRAM J:
1 This case concerns three songs, ‘Love is in the Air’ (‘Love’), ‘Warm in the Winter’ (‘Warm’) and an adaptation of Warm called ‘France is in the Air’ (‘France’), which was made for the airline Société Air France, SA (‘Air France’) for the purposes of a marketing campaign. The first two songs both include the lyric ‘love is in the air’ (or perhaps ‘love’s in the air’) arguably to the same melody. The third song, France, is similar to, although shorter than, Warm but with the lyric ‘love is in the air’ replaced with ‘France is in the air’.
2 Love was composed by Mr Johannes van den Berg (who is often called, as I will call him, Mr Vanda) and the late Mr George Young in Sydney in 1977. As I explain later, the musical work comprises both the instrumental music and the sung sound of the lyrics. The lyrics also comprise a separate literary work. A distinct copyright subsists in each: Copyright Act 1968 (Cth) (‘Copyright Act’) s 31(1).
3 The original publisher of Love in September 1977 was J Albert & Sons Pty Limited (‘Alberts’). That company was at that time controlled by the Albert family who have been music publishers in Sydney since the 1890s.
4 In 2016 the Albert family sold their music publishing business to a German multinational, Bertelsmann Music Group (‘BMG’), but decided to retain for the family the back catalogue in relation to a number of Australian pop songs including Love. On 30 August 2016, prior to it being sold to BMG, one of Alberts’ final acts whilst still under control of the family was therefore to assign to an entity controlled by them the copyright in, inter alia, Love. That entity was Boomerang Investments Pty Ltd (‘Boomerang’).
5 It will be necessary to identify the Applicants more precisely in due course for there is a dispute as to which of them owns which aspects of the copyright in Love, but for now it is convenient to refer to them globally as ‘the Applicants’ and thereby to denote the owners of that copyright.
6 In Australia, Love is a famous song not only from its original release in 1977 when the recording by Mr John Paul Young went to the top of the charts, but also because its fortunes (and those of Messrs Vanda and Young) were somewhat revived in 1992 by the release of the Baz Luhrmann film Strictly Ballroom, the soundtrack for which heavily featured Love. The Albert family was involved in the production of that film.
7 Warm was composed by the instrumentalist Mr John Padgett and the vocalist Ms Lori Monahan in Portland, Oregon, sometime between 2005 and 2011. Mr Padgett and Ms Monahan together constitute the duo known as ‘Glass Candy’. Mr Padgett is the owner of a Californian company called Italians Do It Better, Inc (‘IDIB’) which appears to be Mr Padgett’s personal publishing company. IDIB subsequently licensed the copyright in Warm to a US publisher, Kobalt Music Services America, Inc (‘Kobalt US’), which then licenced the Australian copyright in, inter alia, Warm to an Australian music publisher in the same group of companies, Kobalt Music Publishing Australia Pty Limited (‘Kobalt Australia’ or simply ‘Kobalt’).
8 France is an adaptation of Warm which was made by Glass Candy for the Fourth Respondent, Air France, for use in the airline’s international marketing campaign ‘France is in the Air’, which took place between March 2015 and March 2018. A number of short cinematographic films in which France has been synchronised as the soundtrack were created by Air France’s advertising agency, EURO RSCG BETC (‘BETC’).
9 The Applicants allege numerous acts of copyright infringement which hinge on their allegation that Warm contains a reproduction of a substantial part of Love in two ways. First, the Applicants focus on the music in Love corresponding to the phrase ‘love is in the air’. This line is sung to a series of five notes, and as the song progresses it returns repeatedly to the line ‘love is in the air’. On each occasion the line is sung in one of three slightly different variations. It is also the title of the song. The Applicants submit that it is the song’s central feature. The Applicants then submit that the line ‘love is in the air’ to the same melody appears in Warm on four occasions, and that the same melodic line with the lyric ‘France is in the air’ appears in France. They say that Glass Candy copied it from Love. The Respondents submitted that the lyrics as they appeared in Warm and France were, in fact, their contracted equivalents ‘love’s in the air’ and ‘France’s in the air’. I do not regard the aural differences between these as significant.
10 The second way the case is put is that a somewhat longer portion of Love, consisting of the following couplet and accompanying melody, has been copied by Glass Candy in Warm:
Love is in the air, everywhere I look around Love is in the air, every sight and every sound
11 The Applicants say that this part of Love has been copied by Glass Candy in this part of Warm:
Love’s in the air, whoa-oh Love’s the air, yeah
12 The Applicants also say that this part of Love has been copied in France:
France’s in the air, whoa-oh France’s in the air, yeah
13 Glass Candy denies that they copied either portion of Love. In any event, they say the sections in Love on the one hand and in Warm and France on the other are not objectively similar and, even if they were, neither section of Love is sufficiently original to warrant copyright protection.
The way the case has been pleaded
14 As will be seen, Warm was first commercially recorded in September 2011. The Applicants do not allege that Glass Candy’s initial recording of Warm was an infringement of the copyright in Love. This may be contrasted with EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd [2011] FCAFC 47; 191 FCR 444 (‘EMI’). In that case, the owner of the copyright in ‘Kookaburra Sits in the Old Gum Tree’ sued the persons responsible for the first recording of ‘Down Under’ in 1979. The applicants sought a portion of the royalty income that had been earned by Men at Work and their publisher EMI, but they did not claim that the sale of each record or cassette was an infringement of the copyright. They relied on only one breach of copyright—the initial recording—and characterised all the later sales activity as a matter going merely to quantification rather than separate legal wrongs.
15 In this case, the Applicants have taken a different course and allege that the copyright in Love was infringed each time Warm was made available for streaming or downloading on a number of online music platforms (specifically, iTunes, Spotify, Apple Music, Google Play and SoundCloud) and on two websites operated by IDIB, being the domain names italiansdoitbetter.com and italiansdoitbetter.bigcartel.com, which I refer to as the ‘IDIB website’ and the ‘Big Cartel website’ respectively.
16 It is not at once clear (nor is it necessary to consider) why it is that the Applicants have not brought a suit concerning the creative act of making the original recording of Warm in September 2011. Such a suit would, by operation of the Copyright (International Protection) Regulations 1969 (Cth) reg 4(3) and the Copyright Law of the United States 17 USC §104(b)(2), probably have had to have been brought in the United States and under United States copyright law. This might have been enough of a basis for the Applicants to have avoided such an option. It might also have been seen as an unattractive strategic decision on the basis of Glass Candy’s Seventh Amendment entitlement to demand a jury trial, given that it would have been a copyright infringement suit involving more than US$20 sought in damages: Feltner v Columbia Pictures Television Inc 523 US 340 (1998). All this, however, is speculation.
17 The right to stream Love and the right to permit copies of it to be downloaded over the internet are rights which are comprised in the copyright in Love, respectively, as parts of the right to reproduce Love in a material form (Copyright Act s 31(1)(a)(i)) and as part of the right to communicate Love to the public: s 31(1)(a)(iv). It is an infringement of a copyright to do an act comprised within it without the licence of the owner of that right: s 36(1). A reference to the doing of an act in relation to a work in s 36(1) includes, by s 14, a reference to the doing of an act in relation to a substantial part of the work. The allegation therefore is that because Warm contains a reproduction of a substantial part of Love, making Warm available for streaming and downloading infringes the copyright in Love.
18 The Applicants do not sue the online music platforms for permitting the streaming and downloading of Warm by their customers. They do not do so because such a case would fail. The reason for this is that each of the online platforms not only provides Warm to the music listening public but also Love and they do so, as it happens, with the express permission of the relevant Applicants. To the extent that the Applicants succeed in demonstrating that Warm has taken parts of Love, this cannot matter from the online music platforms’ perspective since they already have the right to stream Love. That right includes, by s 14, the right to stream a substantial part of Love. Ordinarily that might be thought to cover a situation such as where the streaming of Love might be terminated half way through the song. But because the Applicants’ case theory is that Warm contains a substantial part of Love, the permission from the Applicants to stream and make available for downloading Love therefore immunises the online platforms against any allegation of an infringement arising from their activities with Warm. This is so because it is not an infringement of the copyright in Love to do something which the Applicants have already authorised. To put it in a way which will offend purists but hopefully illustrate the problem at hand, proving that selling Warm to the public is really the same as selling a little bit of Love is pointless against a vendor who has the right to sell both.
19 The allegation that the Applicants make against Glass Candy is that the band itself made Warm available in Australia via these platforms (and that streaming and downloading in Australia occurred), or alternatively, that Glass Candy authorised the platforms to distribute their song in Australia. As to this alternative way of putting the case, it is useful to observe that by s 36(1), it is an infringement of a copyright to authorise another person to do something which itself is an infringement.
20 In addition to the allegations concerning the well-known platforms the Applicants also allege that Mr Padgett’s entity IDIB infringed their rights by allowing customers to download copies of Warm in Australia from two websites. The first of these in time was the Big Cartel website, which is a generic service which permits artists to set up their own online store, and the second (and current) site is the IDIB website, which is operated by IDIB itself. In both cases, IDIB is responsible for the content. Unlike the other platforms, IDIB does not have the permission of the Applicants to stream Love or make it available for downloading so the problem described above does not arise.
21 As explained above, a number of short films were produced by BETC, the advertising agency engaged by Air France, to which France was set as the soundtrack. These vignettes have been made available for streaming (but not for downloading) by Air France on its YouTube Channel. Air France admits that they have been viewed by Australian internet users and although Glass Candy submits that this has not been proved against them I am inclined to regard Air France’s admissions about its own conduct as reliable. The Applicants allege that this is an infringement of the copyright in Love. As in the case of the streaming and downloading of Warm from the online music platforms, YouTube has permission from the Applicants to stream Love.
22 Air France does not have any scheduled services which operate to or from Australia although it is involved in code share arrangements as part of the SkyTeam alliance. Consequently, the Applicants do not allege that Air France has played France in Australian airspace as part of its in-flight entertainment. Air France does not have a physical ticketing office in Australia but it is possible to ring Air France in Australia on a toll-free number, 1300 390 190, to purchase a ticket. Those who call this number and have the misfortune not to have their inquiry immediately handled are placed on hold and, whilst there, music is played to them to make the wait more pleasant. That music includes France. The Applicants allege that this use by Air France also infringes the copyright in Love.
The parties to this litigation
23 The Applicants fall into three classes: first, Mr Vanda and the estate of the late Mr George Young. They do not assert ownership of the copyright in Love which they long ago assigned to their publisher, Alberts, and they do not therefore complain that Warm or France infringes their copyright. But they do claim that France has infringed their moral rights in Love (a term of art in the copyright field which I explain later in these reasons but which, briefly, entitles authors of works to be recognised as such and not to have their works shabbily treated); secondly, Boomerang, which is the successor in title to the original publisher of the song, Alberts, and which claims therefore to be the owner of the Australian copyright in Love; and, thirdly, two collecting societies, the Australasian Performing Right Association Ltd (‘APRA’) and the Australasian Mechanical Copyright Owners Society Ltd (‘AMCOS’).
24 APRA, generally speaking, collects royalties on behalf of the owners of the copyright in music where that music is communicated to the public. It usually operates by providing blanket licences to persons whose businesses involve the communication of musical works to the public such as, for example, radio and television stations and online streaming services such as Spotify. For practical reasons, most artists enter into arrangements with APRA to collect royalties on their behalf. These arrangements usually include the artist assigning the copyright to APRA. Sometimes, where an artist already has a music publisher, the copyright will already have been assigned by the artist to the publisher and it is the publisher in such cases which deals with APRA. As will be seen, it is the former which has happened in this case.
25 The second collecting society, AMCOS, is a similar body but it provides blanket licences to persons who, as part of their business, need to make copies of musical works such as persons making a film or television commercial in which a musical work accompanies the images (so-called ‘synchronisation’ of the music with the film) or services which permit copies of a musical work to be downloaded over the internet, such as iTunes. As with APRA, most artists enter into arrangements with AMCOS to licence these uses and AMCOS then collects royalties on their behalf. Unlike arrangements with APRA, arrangements with AMCOS do not involve an assignment of the artist’s copyright to AMCOS but merely the grant to it of an exclusive licence. Again, sometimes the artist will deal directly with AMCOS and sometimes the artist’s publisher will.
26 Both Love and Warm are subject to blanket licences granted by APRA and AMCOS. The collecting societies have been joined as the Fourth and Fifth Applicants to the proceeding as a tactical response to a submission made by the Respondents that Boomerang has no title to sue for infringement because the relevant rights holders in Love are APRA and AMCOS. As will be seen, the issues involving APRA and AMCOS are complex.
27 This cluster of five Applicants has sued four respondents. The First and Second Respondents are the two current members of Glass Candy, Mr Padgett and Ms Monahan. The Third Respondent is Kobalt. Kobalt is the publisher of Warm in Australia, although, as will be seen, that is the beginning of the inquiry rather than its end. It is said to have authorised the streaming and downloading of Warm in Australia. The Fourth Respondent is Air France.
28 For the reasons which follow, I conclude on the copyright case that:
(1) the music and the sound of the accompanying lyric ‘love is in the air’ (or perhaps ‘love’s in the air’) in Warm is objectively similar to the same melody and lyric in Love;
(2) Glass Candy consciously copied that portion of the musical work in Love;
(3) the part taken from Love is original for the purposes of assessing substantiality; and
(4) the part taken is a substantial part of Love from a qualitative perspective, such that the taking by Glass Candy of this portion was the taking of a substantial part of the musical work in Love within the meaning of s 14 of the Copyright Act.
29 On the other hand, I do not find that:
(1) the longer musical couplet in Love has been reproduced in Warm, as they are not objectively similar; or
(2) there has been infringement of the literary work comprised in the lyrics of Love, as the portion alleged to have been copied is not original.
30 However, and leaving to one side the position of the IDIB and Big Cartel websites, I conclude that the Applicants’ case against Glass Candy insofar as it involves streaming or downloading from digital platforms such as Spotify or YouTube must fail. The Applicants’ case that Glass Candy themselves are responsible for the streaming and downloading from these websites fails as those sites are operated by their owners and not by Glass Candy. The Applicants’ case that Glass Candy is liable for secondary infringement on the basis that it authorised the platforms to stream and download Warm also fails. Those platforms were authorised by APRA and AMCOS to stream and make available for download Love as well as Warm. Since the platforms cannot be liable for infringement, Glass Candy cannot be liable for authorising them to do what the Applicants had already authorised them to do. There can be no secondary infringement (authorisation) without primary infringement (making available for streaming or downloading).
31 The only relevant activity on the IDIB and Big Cartel websites was some limited acts of downloading. Glass Candy authorised those downloads because Mr Padgett and Ms Monahan knew that Mr Padgett was making Glass Candy songs available for download from the IDIB website (and before that the Big Cartel website). The owner of the right to authorise the downloading of Love is Boomerang and AMCOS holds an exclusive licence of the same right. Both may sue Glass Candy for facilitating the download of Warm from the IDIB and Big Cartel websites because neither IDIB nor Mr Padgett had permission from Boomerang (or its predecessor in title) or AMCOS to permit users to download Love and because Warm infringes Love. The Applicants’ case against Glass Candy in relation to the downloading and streaming of Warm from the other digital platforms otherwise fails. The attempt to make Kobalt liable for Glass Candy’s actions also fails for the additional reason that the collection of Australian royalties from Warm by Kobalt is not sufficient to make it liable for secondary infringement and Kobalt is not the owner or licensee of the relevant rights.
32 In relation to France, the melody and lyric ‘France is in the air’ are substantially identical to the same line in Love and were copied by Air France from Love. In any event, it is clear that Warm was copied from Love and France was copied from Warm. For the same reasons as in relation to Warm I conclude that the part copied was a substantial part of Love. The case against Air France in relation to the streaming of France as part of its commercials on YouTube fails as YouTube held an APRA licence which authorised it to stream Love (and hence the substantial part of Love which was copied in France). The case in relation to the hold music, however, succeeds. The only party entitled to sue Air France in relation to that, however, is APRA and Boomerang lacks title.
33 The claim by Mr Vanda and the estate of Mr Young against Glass Candy and Air France for infringement of their moral rights is to be dismissed.
34 Boomerang and AMCOS are entitled to an injunction restraining Glass Candy from permitting the downloading of Warm from the IDIB website. AMCOS does not claim damages, however, but Boomerang does and it is entitled to damages or an account of profits for the 13 downloads of Warm which took place from the IDIB and Big Cartel websites. The copying was flagrant and Boomerang is entitled to be heard on additional damages. APRA is entitled to an injunction restraining Air France from using Warm as its telephone hold music but nothing else. APRA does not claim damages in that regard and although Boomerang does claim damages in relation to France it has no title to sue. Mr Vanda and the executor of the estate of the late Mr Young are not entitled to damages in relation to their moral rights claim against Glass Candy.
35 There will need to be a further hearing to assess damages. I will hear the parties on costs.
36 The Applicants relied upon the evidence of three witnesses.
37 Mr Vanda swore an affidavit dated 14 September 2018 and a supplementary affidavit dated 30 January 2019 on the eve of the trial. He was cross-examined on the first day of trial, Monday 4 March 2019. Mr Vanda, together with the late Mr Young, are the composers of Love and a large number of other well-known pop songs. He and Mr Young formed The Easybeats in 1964 whilst residing at the Villawood Migrant Hostel, after Mr Vanda emigrated from The Netherlands to Australia the previous year. He gave evidence of the history of The Easybeats including the band’s runaway hits, ‘She’s So Fine’ and ‘Friday On My Mind’, the band’s sojourn in the United Kingdom in the 1970s, and its subsequent breakdown there. He also explained the role of their publisher, Alberts, and its record label Boomerang in the pop music industry generally. Mr Vanda gave evidence of how he and Mr Young had composed Love, the role of Mr John Paul Young who performed the original recording, and the role of Alberts in the song’s promotion and distribution. He told the Court of his longstanding membership of the collecting society APRA and gave evidence about the licensing of Love. It was, in his opinion, the most valuable song that he and Mr Young had written and he was clear that although they were happy for the song to be licensed by their publisher, Alberts, to third parties, they never once agreed to a change in its lyrics. He was shocked when he first heard Warm and France and he reported that the late Mr Young had also been shocked, indeed shocked enough to swear.
38 Mr Albert swore an affidavit dated 17 September 2018. A second affidavit of Mr Albert, sworn 1 April 2019, was also read. Mr Albert is a Director and the Chief Executive Officer of the Albert Group of Companies which includes Boomerang. He explained the history of the Albert family in music publishing in Australia which commenced in 1894 with the work of his great-great-grandfather, Jacques Albert, and his son, Michel Francois (Frank) Albert. He explained the role of the Boomerang trade mark in the various Alberts businesses, the setting up of the Boomerang sound recording studio on King Street in Sydney and the construction by Frank Albert of Boomerang House in Elizabeth Bay in Sydney. His evidence was that his family had worked with Mr Vanda and the late Mr Young for over 50 years. His uncle, the late Mr Ted Albert, had been instrumental in setting up Albert Productions in 1964, an entity which had been focussed on signing up and producing Australian artists. It was Mr Albert’s view that Mr Vanda, the late Mr Young and his family members Malcolm and Angus Young, together with Bon Scott, are the most successful Australian songwriters of all time.
39 Mr Albert also explained the process by which Alberts was sold to BMG in 2016 and the decision that the family would retain, through Boomerang, the Vanda and Young back catalogue including Love. He gave evidence about the licensing of Love including for very many covers by well-known artists as disparate as Tom Jones and Richard Clayderman, its significant commercial success and its place in various charts around the world. He also gave evidence about Strictly Ballroom, his uncle’s decision to invest heavily in that film and the use of Love as part of its soundtrack. He also gave brief evidence about the roles of APRA and AMCOS and, like Mr Vanda, he reported statements by the late Mr Young consistent with considerable anger on his part about the Air France campaign. Mr Albert was called on Tuesday 5 March 2019 and cross-examined that day.
40 Dr Vines is a musicologist and composer. He holds a number of degrees in music and composition including a doctorate in composition from Harvard University and a bachelor of music from the University of Sydney for which he was awarded the university medal. He has received a large number of awards and prizes and principally practices in musical and compositional education. Dr Vines affirmed an affidavit on 17 September 2018 attached to which were attached to two expert reports dated 21 September 2016 and 17 September 2018 (‘Vines 1’ and ‘Vines 2’ respectively). He swore a subsequent affidavit on 30 January 2019 to which he attached another expert report (‘Vines 3’) of that same date. At trial, the Applicant did not rely upon Vines 1.
41 In Vines 2 and Vines 3, Dr Vines gave evidence about the extent and nature of the similarities between Love, Warm and France. He also joined in the preparation of a joint expert report with Dr Andrew Ford, the expert musicologist called by Kobalt (‘the Joint Report’). The Joint Report set out the matters upon which they were able to agree and those upon which they disagreed together with a brief explanation of the nature of their disagreement. Dr Vines and Dr Ford were called to give their evidence together so that they could respond to each other’s evidence in real time. This concurrent session took place on the fourth day of the trial, Thursday 7 March 2019.
42 Glass Candy relied upon the evidence of three witnesses.
43 Mr Padgett swore an affidavit dated 19 November 2018. He gave evidence about his background as a composer, the formation of Glass Candy and his collaboration with Ms Monahan. Mr Padgett’s stage name is ‘Johnny Jewel’ (and occasionally ‘John David V’). He gave detailed evidence about how Warm was composed between 2005 and 2011. His evidence was that he had not heard Love prior to September 2011 and could not therefore have copied it when he composed Warm. He also gave evidence about the commercial launch of Warm in September 2011 on iTunes and the website of his music publishing business IDIB, on which he made the song available for downloading. His evidence is centrally important to the resolution of the case. If his account of the manner in which Warm was composed is accepted then the Respondents will succeed. He was cross-examined at length on the second and third days of the trial, Tuesday 5 and Wednesday 6 March 2019. I deal with his evidence about the manner in which the song was composed in more detail below.
44 Ms Monahan swore an affidavit dated 21 November 2018. She is a vocalist and lyricist based in Altadena, Los Angeles County, California. Her stage name is ‘Ida No’, and together with Mr Padgett they form Glass Candy. Ms Monahan gave evidence about the circumstances of her collaboration with Mr Padgett to create Warm. It was Ms Monahan who wrote and sang the lyrics. She also gave evidence about the creation of a French version of Warm for Air France. Ms Monahan gave her evidence on the third day of the trial, Wednesday 6 March 2019.
45 Mr Williams is the solicitor for Glass Candy in this proceeding. He swore an affidavit on 21 November 2018 which was received in evidence. He gave evidence about the US charts from 1977-1978 and what certain copyright registration and other internet searches revealed in relation to Love. Mr Williams was not required for cross-examination and did not testify at the trial.
46 Kobalt relied upon the evidence of three witnesses.
47 Mr Moor is the Managing Director of Kobalt Australia and a related entity, Kobalt Music Services Australia Pty Ltd. He affirmed an affidavit dated 1 November 2018. Mr Moor explained that Kobalt Australia is part of a multinational group which is a rights management and publishing group. Kobalt Australia licensed Warm from another member of the group, Kobalt US, on terms which permit it to commercialise and collect income on that song in Australia. Mr Moor gave evidence about the contractual mechanics of that licensing arrangement, the role of the collecting societies APRA and AMCOS, and of the circumstances in which he became aware of the dispute about the similarities between Love, Warm and France. He also explained what had been happening with the royalties due on Warm since Kobalt Australia was notified of the dispute. Mr Moor gave his evidence on the fourth day of the trial, Thursday 7 March 2019.
48 Mr Tonkin is Kobalt’s solicitor. He affirmed an affidavit on 2 November 2018 which was received in evidence. His evidence was largely of a formal nature and consisted of various searches about the appearance of the phrase ‘love is in the air’ in music, literature and marketing which he either made or caused to be made within his office. He was not required for cross-examination and did not testify at the trial.
49 Dr Ford is a composer, writer and broadcaster with a significant academic and practical background in musicology. Amongst other achievements, he has been the Poynter Fellow and Visiting Composer at Yale University and a guest lecturer at the Juilliard School in New York, and was in 2018 the HC Coombs Creative Arts Fellow at the Australian National University. He swore an affidavit on 2 November 2018 to which were attached two expert reports of 3 May 2018 and 2 November 2018 (‘Ford 1’ and ‘Ford 2’ respectively). His evidence related to the similarities and differences between Love, Warm and France. As mentioned above, he prepared a joint report with Dr Vines and gave his evidence concurrently with Dr Vines on the fourth day of the trial, Thursday 7 March 2019.
50 Air France relied on the evidence of four witnesses.
51 Madame Castelli is the Chief Legal Officer (Distribution-Intellectual Property-Transport) of Air France. She swore an affidavit on 15 November 2018. Mme Castelli was not available for cross-examination but the parties agreed that certain parts of her affidavit could still be read. Largely these parts related to her identification of formal documentation and correspondence about the dispute. She also gave evidence that Air France did not conduct any legal due diligence on the creative content of the Air France television commercial created by BETC.
52 Madame Du Plessis is the Managing Director of BETC. She swore an affidavit on 4 December 2018. She gave evidence about the relationship between BETC and Air France, the latter’s decision to launch a new global advertising campaign in 2013, the work which BETC did on that campaign, the creation of the campaign including its signature ‘France is in the Air’, and the decision to change the lyric in Warm from ‘love is in the air’ to ‘France is in the air’. Mme Du Plessis gave her evidence on the seventh day of the trial, Friday 5 April 2019.
53 Madame Fontaine is the Director of Communications at the City of Paris but at the times relevant to this litigation she was the Advertising Director at Air France. She swore an affidavit on 16 November 2018 which was received in evidence. She gave evidence about Air France’s operations in Australia, the decision by Air France in 2013 to launch a new global advertising campaign and the decision to choose the signature ‘France is in the Air’. She also gave evidence about her dealings with BETC on the development of the campaign and its various constituent elements. Mme Fontaine testified on the seventh day of the trial, Friday 5 April 2019.
54 Monsieur Caurret is the Music Creative Director at BETC. He swore an affidavit on 15 November 2018. He gave evidence about the work he did for Air France for a new advertising campaign in 2013. M Caurret was responsible for the music used in the campaign and it was M Caurret who chose to use a modified version of Warm in that campaign with the lyric changed to ‘France is in the air’. He gave his evidence on the seventh day of the trial, Friday 5 April 2019.
55 Many of the affidavits were accompanied by exhibits. The affidavits and those exhibits were incorporated into a Court Book which I received on the first day of the trial as Exhibit 1. As a matter of formality the affidavits were read and the tender of them in the Court Book did not result in them being received as documents but was done for the sake of convenience. The exhibits to the affidavits were not separately tendered apart from their tender as part of Exhibit 1. Objections, where upheld, were marked on the Court Book which was maintained electronically.
56 In addition to Exhibit 1 there were ten other exhibits which were separately tendered during the course of the trial. The most significant of these was the Applicants’ updated tender bundle which was Exhibit 4 and Glass Candy’s tender bundle which was Exhibit 6. I have also made a copy of a notice to produce provided to the parties on my request Exhibit 12, to which point see below at [348].
57 The evidence was taken over seven days between Monday 4 March 2019 and Friday 5 April 2019. Closing submissions were made on Friday 12 April 2019. The parties then progressively delivered some 416 pages of written submissions and related documents titled as follows:
Applicants’ consolidated outline of closing submissions filed 26 April 2019 (85 pages);
Applicants’ supplementary closing submissions filed 18 April 2019 (7 pages);
Applicants’ chronology provided on 12 April 2019 (8 pages);
Glass Candy’s consolidated closing submissions filed 1 May 2019 (111 pages);
Glass Candy’s chronology filed 1 May 2019 (8 pages);
Glass Candy’s musical elements annotation filed 1 May 2019 (8 pages);
Kobalt’s outline of closing submissions filed 11 April 2019 (65 pages);
Kobalt’s supplementary closing submissions filed 26 April 2019 (5 pages);
Air France’s outline of closing submissions filed16 April 2019 (44 pages);
Air France’s supplementary closing submissions filed 26 April 2019 (7 pages); and
Applicants’ submissions in reply dated 13 May 2019 (36 pages)
58 On 12 June 2019, Glass Candy sought leave to file submissions in rejoinder to Boomerang’s submissions in reply and on 14 June 2019 Kobalt sought leave to do the same. Those submissions were as follows:
Glass Candy’s outline of submissions in rejoinder dated 26 June 2019 (12 pages),
Glass Candy’s response to the Applicants’ chronology dated 26 June 2019 (10 pages); and
Kobalt’s outline of submissions in rejoinder dated 19 June 2019 (8 pages).
59 Boomerang’s position is that Glass Candy and Kobalt should not be permitted to rely upon the submissions. It prepared a two-page written submission about these written submissions entitled ‘Applicants’ note on First to Third Respondents’ applications for leave to reopen’ dated 26 April 2019.
60 On 26 June 2019 a further hearing took place to determine whether the rejoinder submissions should be received. At the hearing I indicated that I would decide these procedural issues whilst I was considering the substance of the matter and would, if necessary, call for further submissions from Boomerang in the event that the outcome of the debate was that Glass Candy and Kobalt were entitled to file the rejoinder submissions. My conclusion on that debate is at the conclusion of these reasons at [412]ff.
61 I reserved judgment in this matter on 26 June 2019 at the conclusion of the hearing on the subject of rejoinder.
WARM AND THE MUSICAL WORK IN LOVE
62 The copyright in the lyrics is separate from the copyright in the musical work in Love. I begin with the musical work and then deal with the literary work in the lyrics subsequently.
63 As Emmett J explained in EMI, exactly what constitutes a ‘musical work’ is an ‘abstract concept’, and though it may be ‘evidenced by a noted musical score or a sound recording’, neither of these is the work itself: at 448 [10]. In Sawkins v Hyperion Records Ltd (2005) 64 IPR 627, Mummery LJ observed at 638 [53] that in the absence of a statutory definition, ‘ordinary usage assists’, and that ‘the essence of music is combining sounds for listening to’, adding wistfully that ‘[m]usic is not the same as mere noise’. The absence of a statutory definition is particularly relevant when it comes to considering the relationship (if any) between the sound of the lyrics as sung (the lyrics, of course, being a separate copyright work) and the instrumental portions of a musical work.
64 In EMI at 459-460 [66], Emmett J explained the correct approach in a case of alleged infringement of copyright in a musical work: see also 491 [187] per Jagot J (Nicholas J agreeing at 506 [254]). The first step is to identify the work in which copyright subsists. There must be an original musical work and it must have the necessary connection with Australia. The second step is to identify the part of the allegedly infringing work which is said to have been reproduced from the copyright work. For reproduction to be proved there must be sufficient objective similarity between the two works and there must be a causal link between them (i.e. taking, copying or reproducing). The third step is to determine whether the part taken constitutes a substantial part of the copyright work. This is primarily a qualitative matter; ‘[t]he question is whether the alleged infringement reproduces that which made the copyright work an original musical work’: at 460 [66]. That is, it ‘depends much more on the quality than on the quantity’ said to have been taken: at 457 [52].
First step: Identification of the work in suit
65 The Applicants rely upon the musical work constituted by the song Love. However, the parties disagreed at length over what, exactly, constitutes the musical work, namely whether or to what extent the lyrics, whilst their own separate literary work, may be taken into account as part of the musical work when sung.
66 Although the words constituting the lyrics form a separate literary work, I consider that the sound of those words being sung is part of the musical work. Words may have two relevant functions for present purposes. They are instructions on what sounds to say but they are also bearers of meaning. Thus the word ‘love’ is an instruction to make the sound denoted by the phonetic symbol ‘lʌv’. This is a very complicated manoeuvre only able to be mastered by years of practice. It involves putting one’s tongue just behind the front teeth touching the front of the palette and, whilst sounding with one’s voice box, moving the tongue smoothly into the middle of the mouth not contacting any other part of the mouth whilst simultaneously moving the front teeth lightly on to the middle of the bottom lip; there is also a slight unsounded exhalation once the teeth make contact with the lip. It is not for beginners.
67 But the word ‘love’ is also a symbol which denotes a range of abstract concepts relating to affection between people. Thus ‘lʌv’ is both a complex performance of human anatomy and a sound which bears symbolic meaning to a human listener. Although the musician who is a vocalist is not altogether deaf to the meaning of the words of a song their direct interest is in the former use of a word and not the latter. Indeed, often people are made to sing in languages they could not possibly speak (‘Frère Jacques / Frère Jacques / Dormez-vous? / Dormez-vous?’). This is because the human voice is, quite apart from being a device for communicating information by means of symbols conveyed phonically, also a musical instrument.
68 Like most musical instruments the voice is capable of playing various pitches to various rhythms and, like most musical instruments, it is also capable of different forms of articulation. Thus just as a violin may be played pizzicato or by bowing so too may the human voice be projected from the mouth in a large of variety of phonetic structures. The voice may be pitched (‘m’ sounds, for example) or unpitched (‘t’ sounds); the mouth may be bounded in some way to produce consonant sounds or unbounded so as to produce vowels. Different consonant sounds may be made in different parts of the mouth: guttural sounds at the back of the throat (‘g’), labial sounds on the lips (‘m’) and dental sounds (‘t’) using the teeth and the tongue. More than one sound may be rolled together (as in ‘gr’). The options are very many.
69 Viewed as instructions to the singer on what sounds to make with the mouth, the words of a song could not, in my view, more obviously be part of a musical work. In answering the questions posed by the Full Court in EMI it would seem to me to be surreal to ask about the various qualities of the musical work constituted by a song whilst insisting that one must put the activities of the instrument which is the human voice entirely from one’s mind and consider the song only as a non-human instrumental episode. For example, the lyrics of Love may be written out as these non-literary phonetic instructions:
lʌv ɪz ɪn ði eə, ˈɛvri weər aɪ lʊk əˈraʊnd
lʌv ɪz ði eə, ˈɛvri saɪt ænd ˈɛvri saʊnd
70 I have no doubt that this runic utterance is part of the musical work comprised in Love. Combined with the rhythm and melody of the vocal line (typically illustrated for the singer on staves beneath which the lyrics are written with generous use of hyphens to show how the syllables are strung together) this tells the musician what to do with his or her mouth as a musical instrument. That some people are better at this than others is why there is such a thing as a famous singer.
71 The symbols by which these mouth articulation instructions are usually conveyed are words in one sense (cf ‘have you learnt the words to this song?’) but they are also words in the sense of having the purpose of conveying meaning (cf ‘the words of this song are quite profound’). This distinction is not at once obvious but neither is it especially difficult to grasp once it is pointed out. It underpins, for example, the phenomenon of mondegreens in which the listener mishears the lyrics of a song and spends much of their life wondering why Olive, the other reindeer, always laughed at Rudolph and called him names. Thus one may accept entirely, as I do, that the above set of phonetic instructions when read aloud is a short Montaignian contemplation on the ubiquitous nature of love and its presence in everything that one can see and hear. But that does not deny their simultaneous quality as quite a catchy pop song, and the average soul jiving around the disco floor to Love in flares would hardly have given that meditation a moment’s thought.
72 I would accept, therefore, that it in assessing the qualities of the musical work one should put from one’s mind the qualities of the words qua literary work but excluding the instrumentation for the human voice seems entirely unsound. Given that a song tends to be a melody with words, ordinary members of the public might be surprised to hear that copyright litigation about songs was being conducted under a jurisprudence which denied that this was the case.
73 The root of the parties’ disagreement over this issue was that it is not subject to any authority in Australia which binds the Court one way or the other. The fact that there is a separate copyright in the music and the lyrics is, of course, accepted: Telstra Corporation Ltd v Australasian Performing Right Association Ltd [1997] HCA 41; 191 CLR 140 (‘Telstra v APRA’). But the present question takes as its point of departure that distinction and I do not see that that decision throws any light on the current question. Decisions in the United Kingdom after 1988 are also of no use since s 3(1) of the Copyright Designs and Patents Act 1988 (UK) specifically provides that a musical work does not include ‘any words or action intended to be sung, spoken or performed with the music’. Such a carve-out does not appear in the Copyright Act. I have not derived benefit from the Applicants’ or Glass Candy’s submissions about the construction of the Copyright Act on this issue or its history.
74 The distinction I have drawn between words as meaning and sung lyrics as part of the music was accepted in Williamson Music Ltd v Pearson Partnership [1987] FSR 97 at [109] by Judge Baker QC:
I should here say something about my understanding of the relationship between the words and the music. It is, I think, misleading to think of them in mutually exclusive compartments. The words by themselves are or may be the subject of literary copyright. But those same words when sung are to me part of the music. After all one gets enjoyment from hearing a song sung in a language with which one is totally unfamiliar. The enjoyment could well be diminished if the vocal line were replaced by another instrument, e.g., the piano or a flute …
75 However, that statement did not attract universal acceptance. Blackburne J in Hayes v Phonogram Limited [2002] EWHC 2062 (Ch) took Judge Baker QC to have meant that the human voice can constitute part of the overall orchestration of a musical work but cautioned that:
… one must beware of confusing the way in which the work is performed with the work itself. In the case of a song where the words take the form of rap lyrics, the fact that the performer expresses the lyrics in a particular manner, giving emphasis to their rhythmic or alliterative qualities in some distinctive manner, does not mean that the words become part of the musical work. Equally, the fact that the musical component of a song reflects the meaning and mood conveyed by the words of the song does not mean that the words somehow become a part of the musical work.
76 That caution is important. The question which arises here is not whether Ms Monahan singing ‘love is in the air’ in Warm is objectively similar to Mr John Paul Young singing ‘love is in the air’ in Love. It is whether the portion of Warm including the sung lyric as part of the orchestration is objectively similar to the corresponding portion in Love. In that analysis the identity of the singer is unimportant. Thus, the actual recordings of Warm and Love are sound recordings in which a separate copyright inheres under Pt IV of the Copyright Act (and with which this case is not concerned). No doubt, some changes in the lyrics to a song can be made without the song losing its essential nature. As Kobalt correctly pointed out, a musical work can be represented in other works such as foreign language covers. But to accept that is not to accept the much larger proposition that follows that a musical work which is a song does not include its sung lyrics.
77 In identifying the work in suit, therefore, I propose to take into account as part of the musical work the instrumentation including sung lyrics. But I will not include in that analysis the performance of the works which must remain separate from the works themselves. Returning to the musical work in suit, that work is Love. Love was composed in 1977 by Mr Vanda and the late Mr Young who, at that time, recorded the backing track and instrumentals. In 1978 they recorded a copy of the song with the lyrics sung by the singer, Mr John Paul Young. At the beginning of the recording session the lyrics were not quite complete and Mr Young was told to sing ‘whoa, whoa, whoa’ for the incomplete section. As it happened, this sounded quite good and a decision to maintain it in the final recording was made. In their submissions, the version the Applicants relied upon was referred to as the ‘master recording’ and was Exhibit DRA-1 in the Court Book (being a USB stick).
Second step: Identification of the portions of Warm said to have been taken from Love
78 Having identified the work in suit, one must identify in the work which is alleged to infringe the part taken, derived or copied from Love. The evidence included several copies of a recording of Warm including an audio recording and a music video. The infringements relied upon included the streaming and downloading of a recording Warm from various online music platforms as well as a small number of downloads from Mr Padgett’s former Big Cartel website and IDIB’s current website. Mr Padgett gave evidence that the commercial recording of Warm was first uploaded to iTunes in September 2011 (the ‘September 2011 Commercial Recording’) and the music video featuring the same soundtrack was uploaded to YouTube in November 2011. There was no direct evidence that the recordings of Warm available from Spotify, Google Play and Apple Music were, in fact, the September 2011 Commercial Recording but no party submitted that they differed and I will proceed on the basis that they are the same. The September 2011 Commercial Recording of Warm was provided to Dr Vines and Dr Ford along with a copy of the master recording of Love and it was those two competing versions to which they confined their analysis.
79 Next, as explained in EMI at 459 [66], there are then two questions to be answered about the allegedly infringing work: are the impugned portions of Warm objectively similar to their equivalent portions in Love, and is there a causal connection between those parts and Love (the causal connection in this case being said to consist of conscious or subconscious copying)?
80 Here the Applicants pursued two cases, the first of which was that the sung lyric ‘love is in the air’ and its accompanying music in Warm was objectively similar to the line ‘love is in the air’ and its accompanying music in Love. That line, which first appears at Bar 5 on the score, appears fourteen times throughout Love, being twice in each of the four verses and three choruses. As I shortly explain, it appears in three slightly different variants which were referred to by Dr Vines as ‘H1’, ‘H2’ and ‘H3’. Dr Ford referred to it in all of its forms as the ‘musical phrase’.
81 The four verses in Love are functionally equivalent and the first verse is sufficient to understand the issues which arise:
Love is in the air, everywhere I look around Love is in the air, every sight and every sound And I don’t know if I’m bein’ foolish Don’t know if I’m bein’ wise But it’s something that I must believe in And it’s there when I look in your eyes
82 The score for the first two lines is as follows:
83 Although the musical work is distinct from the sheet music and any performance of that sheet music, nevertheless it is useful to hear what they sound like. A link to an audio file of the first two lines is here.
84 The second verse is similar to the first and need not be set out. Whereas in the first verse love was ubiquitous and present in all sights and sounds, now it is to be found in the whisper of trees and the thunder of the seas, as it so often is. As in the first verse, the speaker then lingers on some personal doubts before finding certainty in the object of his affections. I make these remarks just to explain the structure of the song. Because the meaning of the lyrics is irrelevant to an assessment of the qualities of the musical work it must be kept firmly in mind that these textual observations must not inform that assessment.
85 The second verse is then followed by an uplifting chorus in which the phrase again appears:
Love is in the air Love is in the air Whoa, oh, oh, oh
86 The score for this chorus is as follows:
87 An audio file of the chorus is here.
88 Dr Vines and Dr Ford agreed that the last line of the chorus is known as a melisma, that is, an example of a single syllable sung over several notes.
89 After this first iteration of the chorus, there is then sung a third verse which also begins with a repetition of the line ‘love is in the air’ in the first of its two lines. The third verse gives way immediately to the fourth and final verse of the song which repeats the line in the same way as each of the first through third verses. After the fourth verse the chorus is then repeated twice although on the second occurrence the melisma is truncated somewhat and an ‘ooh’ and ‘oh’ omitted.
90 It will be seen (and heard) that the line ‘love is in the air’ appears in Love in three slightly different ways: first, in the first two lines of each of the four verses (H1); secondly, as the first line of the choruses (H2); and, thirdly, as the second line of the choruses (except for the last slightly truncated choral iteration) (H3). These three variants are not identical though they are, as Dr Vines put it, ‘connected aurally’.
91 Each of H1, H2 and H3 are underpinned by the tonic chord, C major, but the pitches of the vocal line are slightly different. Dr Vines’ transcription of the pitch classes and contours of the variants was as follows:
92 One of the central features of the vocal line in H1 is the minor third drop which occurs on the fourth note of the bar, being the note to which ‘the’ is sung. That interval is different in H2 and H3, though it remains constant that all words except for ‘the’ are sung to the one note. In H2, it is a tone drop, and in H3, it is a minor third rise.
93 The Applicants submit that parts of Warm are objectively similar to H1, H2 and H3. Warm is structured into four blocks. The line ‘love is in the air’ appears only in the first two blocks, the lyrics of which are as follows:
Block 1 Love’s in the air, whoa-oh Love’s in the air, yeah We’re warm in the winter Sunny on the inside We’re warm in the winter Sunny on the inside. Woo!
Block 2 Love’s in the air, whoa-oh Love’s in the air, yeah I’m crazy like a monkey, ee, ee, oo, oo! Happy like a new year, ee yeah yeah, woo hoo! I’m crazy like a monkey, ee, ee, oo, oo! Happy like a new year, yeah, yeah, woo hoo!
94 As it is relevant to an issue later about the composition of the lyrics, it might be noted for now that each of lines 3-6 in Block 2 is a cliché. A score of the first two lines of these two blocks is thus:
95 An audio file of the first two lines of Blocks 1 and 2 is here.
96 In the September 2011 Commercial Recording of Warm the sung line ‘love is in the air’ appears at about 1:00-1:02, 1:07-1:09, 2:00-2:02 and 2:08-2:10.
97 Is the sung line ‘love is in the air’ in Warm objectively similar to H1, H2 and H3? This question is not to be determined by a ‘note-for-note comparison’, and depends ‘in large degree upon the aural perception of the judge’: Francis Day & Hunter Ltd v Bron [1963] Ch 587 at 608 and 618; see also EMI at 475 [121(5)]. This analysis requires me to put myself in the shoes of the ‘ordinary, reasonably experienced listener’: EMI at 497 [209]. It is not clear (though not strictly necessary to answer in the present circumstances) whether that hypothetical person refers to an ordinary, reasonably experienced listener of death disco, regular disco, fem pop or all of the above. Nor does the requirement that I position myself as the ordinary, reasonably experienced listener necessitate pretending that my Associate and I have not been subjected to repeated and seemingly interminable renditions of the three works the subject of this proceeding, or that I have not been assisted by expert evidence (EMI at 466 [86]):
Sensitised though the primary judge may have been to the similarity, it is not erroneous to direct oneself to the relevant parts of the works, to listen to the works a number of times, and to accept the assistance of the views of experts, in determining the question of objective similarity …
98 I turn first to a comparison between H1 and the corresponding phrase in Warm. Whilst recourse to a score of both phrases is not determinative, it is nonetheless instructive. Dr Ford’s transcriptions of H1 and the impugned phrase in Warm are thus (Love being on the left, and Warm on the right):
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99 For completeness, I note that Dr Vines’ transcription of the vocal line in H1 and Warm were slightly different, but the differences merely highlight the limitations of a comparison of the scores of two musical works for the purposes of assessing objective similarity. That is particularly so when dealing with pop or disco music, as compared to (say) a Baroque étude, because rhythmic precision (at least for the voice) is less important. Dr Vines’ transcriptions of H1 and the impugned phrase are thus (again, Love being on the left, and Warm on the right):
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100 There are, one may accept, differences between them but I do not believe that these are significant. I do accept that the rhythmic underpinning of constant semiquavers in each work is caused by different instruments or synthesised sounds. In the same sense I accept that Love has a moving bass line whereas Warm does not. It was not to the point, as Dr Ford suggested, that a listener would be able to recognise Love even before the entry of the tambourine due to the bass line as the opening of Love is not alleged to have been taken. I also accept that Warm and Love are in very different styles. But the fact that in Love the line forms part of a song which is in the 1970s disco genre and that Warm has been described as a species of ‘death disco’ does not mean that the single line ‘love is in the air’ in both songs is not objectively similar. For example, the bass note progression from the air in Bach’s Orchestral Suite No 3 (BWV 1068) is clearly discernible in the organ line in Procul Harum’s ‘A Whiter Shade of Pale’ and that conclusion is not slightly dented by the stylistic gulf between the two works. Nor did such a difference in genre prevent the outcome in EMI.
101 However, the differences between H1 on the one hand and H2 and H3 on the other prevent a similar conclusion about those iterations of ‘love is in the air’ and accompanying music. The ordinary, reasonably experienced listener would hear that their contours are distinct. Having regard to the factors considered appropriate for comparison in EMI, the similarities between H2 and H3 and the corresponding part of Warm could not be described by that hypothetical listener as ‘definite’ or ‘considerable’: at 456 [50]. Consequently, I conclude that the sung line ‘love is in the air’ and its accompanying music in Warm is objectively similar to H1, but not H2 and H3.
102 My conclusion in this regard is supported by the evidence of Dr Vines and Dr Ford who agreed that ‘the pitch and rhythmic content of the opening vocal phrase is notably similar’ between Love and Warm and that ‘there is a basic aural connection between this phrase and the corresponding phrases in Warm’. Glass Candy sought to limit that agreement to similarity between the vocal parts only, and not the music underlying them, on the basis of a clarification made by Dr Ford at the hearing. However, the experts separately agreed that the rhythmic profile of that bar was the same, and that each vocal part was sung atop a tonic chord.
103 Glass Candy also sought to diminish the similarity between the vocal lines on the basis of a potential glissando (that is, a vocal slide) between the notes on which ‘the’ and ‘air’ were sung in Warm, whereas the minor third drop and upward return on ‘the’ and ‘air’ in Love was more precise. As the excerpts above show, the ‘slide’ was represented in Dr Vines’ transcription as an appoggiatura, and in Dr Ford’s transcription as the E returning to the E# to the G# via an F# quaver). To the ordinary, reasonably experienced listener, however, that is of little import. As Glass Candy submitted:
… it is common ground that the vocal lines of both … comprise five notes, the first two or three notes … being in same pitch, the next note dropping down in pitch by a minor third, and the next note returning up in pitch by a minor third.
104 I accept the experts’ evidence, too, that the metre of both songs is the same (common time, or 4/4), both share a composite rhythm of constant semiquavers, both have a similar tempo in terms of beats per minute and that the two works are in keys which differ by only a semitone (Love in C major and Warm either in C# major or its enharmonic equivalent, D♭ major). I agree with Dr Ford that the similarities in metre, rhythmic structure and tempo probably do not take one very far in the case of music of the present kind as it a common feature of a lot of modern dance-style music. It is hard, when all is said and done, to dance to 5/4 as the self-referentially entitled theme from Mission Impossible shows. I find that the sung line ‘love is in the air’ in Warm is objectively similar to H1.
105 The Applicant’s second case on objective similarity concerns the sung couplet in Love:
Love is in the air, everywhere I look around Love is in the air, every sight and every sound
106 It is said that this part has been taken and reproduced in Warm as follows:
Love’s in the air, whoa-oh Love’s in the air, yeah
107 In the September 2011 Commercial Recording of Warm this section is about 12 seconds long and appears at 1:00-1:12 and 2:00-2:13. I have laid out the relevant portions of the scores above at [82] and [94].
108 There is no substitute for listening to these competing parts. An audio file of the relevant portion of Love is here and of Warm is here.
109 I do not accept that, beyond the line ‘love is in the air’, these portions are objectively similar. The melody to which Love’s ‘everywhere I look around’ is sung is quite different to Warm’s melismatic rendering of ‘whoa-oh-oh’ and the same is true as between Love’s ‘every sight and every sound’ and Warm’s lengthy ‘yeah’. They just do not sound the same to me. I accept, as Dr Vines and Dr Ford agreed, that there are similarities in tempo, rhythm, the contour of the phrasal structure, chord progression and the harmonic rate of change but to the comparatively untrained ear of the ordinary, reasonably experienced listener, they sound entirely different. I find that they are not objectively similar.
110 This requires consideration of the detailed evidence surrounding the composition of Warm. The broad thrust of that evidence is clear. Glass Candy say that they had never heard of Love until just before Warm’s commercial release in 2011 which was well after they had written it. Consequently, they certainly had not copied it or any part of it in Warm. The Applicants’ primary case, by contrast, is that the evidence that Mr Padgett and Ms Monahan have given as to how they came up with Warm is false. Their secondary case is that Glass Candy is mistaken and that Love, in effect, was sufficiently known to them that, even if they did not do it deliberately, they had subconsciously taken from Love in composing Warm.
111 Mr Padgett is a self-taught musician. He has had no formal musical training and he cannot read sheet music or write a musical score. His evidence was that he was born in 1974 in Houston, Texas, to parents who were ordained ministers of the Southern Baptist Church. Consequently, whilst he listened to gospel music and Christmas carols he did not get to listen to pop music until his teenage years when he began to frequent independent record stores looking for experimental vinyl records. He says his tastes in music lie on the periphery and he told the Court that he was interested in the recordings of modern composers like John Cage. His interest in experimental music continued in the early 1990s but he then became involved in skateboarding which led him into ‘non-mainstream punk rock’, pop art such as Andy Warhol and his association with The Velvet Underground. He described his work as ‘usually highly experimental’.
112 He explained his method of composition this way: he usually records the songs he plays on an electric keyboard or piano and later adds other sounds such as electronic hand-claps, drum lines or vocals. However, he is clear that he never writes the lyrics for Glass Candy—that is done by Ms Monahan. He has performed with a number of bands including Glass Candy, the Chromatics, Desire and Symmetry. All of these bands have been signed to his publishing company, IDIB. His music has been commercially successful and has been released as vinyl records, CDs and in digital formats such as are available from platforms such as iTunes and Spotify.
113 Mr Padgett says that he composed the music for Warm over a six year period between 2005 and 2011 as part of an iterative process involving multiple recordings. It is therefore necessary to trace that chronology.
114 Mr Padgett says that he composed the first musical elements of Warm in 2005 whilst working on a song then entitled ‘I Always Say Yes’. He says that he made multitrack recordings of this music on to 16-track tape. Three different versions were made but two of these have been lost as they have been overwritten. The surviving version did not make its way into evidence, however. Instead, Mr Padgett produced extracts from his notebook which explained each track.
115 According to the notes, one of the tracks on the tapes was a vocal recording of Ms Monahan singing ‘I Always Say Yes’ to the music of what he now says was the proto-version of Warm. This is why the notebook records his early work on the song under the title ‘I Always Say Yes’. These lyrics were eventually used for a different song entitled ‘I Always Say Yes’ which was released on a 12” vinyl record in 2007 and is an entirely different song.
116 Mr Padgett’s notes state that the taped recordings were made on 7 July 2005. On 8 July 2005 he burned a live copy of the musical elements of what was then called ‘I Always Say Yes’ but which, according to Mr Padgett, would go on to become Warm as Track 6 on a CD entitled the ‘Pink CD’. Perhaps confusingly, Track 6 has the working title ‘I Always Say Yes’. The date of this recording is known because the Pink CD bears that date on it.
117 A link to Track 6 of the Pink CD is here. The recording is 7:26 in duration. I will refer to it as the ‘2005 Recording’.
118 I do not accept Mr Padgett’s evidence that the 2005 Recording is a precursor to Warm. As a matter of overall impression this track has nothing to do with Warm.
119 Detailed analysis of it leads to the same conclusion. To begin with, the chord progression in the 2005 Recording consists of the triads I-VI-IV whereas the chord progression of Warm is most commonly I-IV with the occasional interjection of VI. Mr Padgett initially said during cross-examination that the chord progression of the two tunes was the same but eventually accepted that they were not:
So it’s not the same chord progression at all is it?---Not technically, no.
120 Not technically, not at all. Glass Candy’s eventual submission was that both tunes used the same three chords, I, IV and VI, which feature in ‘doo wop’. But doo wop is a chord progression and what matters in it is not only the identity of the chords but the order in which they appear. Also missing altogether from a typical doo wop progression in either work is the dominant (V) chord. The ‘doo wop’ language is of little use. Nor do I accept that the melody of the 2005 Recording is the same as in Warm or even remotely reminiscent of the melody in Warm. Initially Mr Padgett said that the melody was the same and what differed between the two tunes was the ‘sonic choices’. Although Mr Padgett thought the melodies were the same, to listen to the 2005 Recording is to hear that they are not at all the same. I reject this aspect of Mr Padgett’s evidence. Eventually Mr Padgett also accepted that the tempo and the rate of harmonic change were different to which one might as well add that they are in a different key (although for myself I would rate that of less importance).
121 Glass Candy submitted that the 2005 Recording had in common with Warm the following: chirping synthesizer melody played on three notes, the same three doo wop chords, hand clapping, the use of a melisma, the use of the spoken word, a glissando, a falsetto, a minor third drop happening in an entirely different part of the instrumentation, and common instrumentation in the form of a synthesizer and Ms Monahan’s vocals. I accept the chirpy synthesizer on the three notes and the three doo wop chords (although not in the same order). Whilst I accept Ms Monahan’s voice appears in the recording I have been unable to detect a falsetto or a glissando but the fault is probably mine. Even so, this does not alter my conclusion that Warm is not in any way related to the 2005 Recording. Vast swathes of pop music have features of this kind and although it is perhaps not quite as lame as the submission that the 2005 Recording and Warm have in common the fact that they are both songs, these points do not lie very far to the south of such a submission.
122 This conclusion is also inconsistent with statements made by Mr Padgett prior to the commencement of this litigation. When the September 2011 Commercial Recording of Warm was released, Mr Padgett wrote the accompanying sleeve for the CD and vinyl record release. That sleeve said that the song ‘was written and recorded between May 2008 and August 2011 in Portland and Montreal’. The same statement was also provided to an online publication, Discogs. Further, in an email dated 3 March 2015 Mr Padgett said that the song was ‘written and recorded in Montreal during the coldest winter of my life.’ Under cross-examination he agreed that this was a reference to the winter of 2008-2009. I reject the submission made on Glass Candy’s behalf I should downplay the importance of this contemporaneous material on the basis that Mr Padgett’s promotional materials exhibited a certain degree of ‘artistic licence’.
123 I find Mr Padgett’s evidence about the 2005 Recording to be implausible. It has nothing to do with Warm and Mr Padgett’s own statements are inconsistent with what he put on the sleeve of the CD of Warm. I reject his evidence about this and find that the 2005 Recording is not a precursor to Warm. I do not find that the 2005 Recording was made up. Instead, I find that it was produced by Mr Padgett in 2005 but that it has nothing to do with Warm and that Mr Padgett’s evidence that it forms an integer in the creative process leading to Warm is false. However, as I explain later in these reasons, the fact that I have found the earliest evidence of the sung line ‘love is in the air’ to have been from between May 2008 and May 2009 means that the correctness of this conclusion does not matter.
Glass Candy’s familiarity with Love
124 There is some debate about the timing of the next step in Glass Candy’s creation of Warm. The background to that debate is the need to be able to identify when Mr Padgett first heard Love and in what circumstances. Mr Padgett’s evidence at §80 was that he had not heard Love until an evening at a Portland club called Rotture shortly before the release of the September 2011 Commercial Recording and, importantly, after he had completed work on its vocal melody. However, an email and article about Glass Candy suggest that Mr Padgett had heard Love by 2007. Mr Padgett denied that this was the effect of these materials and it is therefore necessary to assess the matter.
125 On 16 January 2008 Mr Padgett sent an email to a Mr Byrne. As will be seen, Mr Byrne was the author of an article entitled ‘Glass Candy: Mystical Death Disco’ which was published online in a publication known as XLR8R. This article was a piece on Glass Candy which was written in a playful and relaxed manner, referred to them by their stage names Johnny Jewel and Ida No, and was intended to convey that it was the result of an interview with them. For example, at one point it says this:
Straining across the couch to grab a silver-blue Christmas tree bulb, Johnny explains, “The songs are like this; the songs are made from the reach.” And the reaching is endless – the two estimate that’ve only met perfectly in the middle of the songwriting process less than 10 times (in over 10 years).
126 At the end of the article there is a section headed ‘Ida’s Tape for Johnny’ which is a list of songs for Mr Padgett ostensibly crafted by Ms Monahan, each of which is accompanied by a jocular remark about the significance of the song for Mr Padgett. Thus:
Diana Ross “Do You Know Where You’re Going To”
Do we know where we’re going to? Hell is not an actual place that force outside yourself sends you to – it’s a state of mind. We learned this together. I’m so glad everyday we decide to keep smiling, no matter what life is showing us.
127 Following this list there then appears a similar list of songs headed ‘Johnny’s Tape for Ida’. The significance of Mr Padgett’s email to Mr Byrne of 16 January 2008 is that it contains both of these lists. The reference in the interview to Mr Padgett grabbing a silver-blue Christmas tree bauble suggests to me that Mr Byrne’s interview was conducted in the preceding December in 2007. In the email, one of the songs on Johnny’s Tape for Ida is entitled ‘“LOVE IS IN THE AIR” > MIKE SIMONETTI’S WHITE LABEL VERSION’.
128 As the article itself explained, at this time Mr Padgett ran IDIB with Mr Mike Simonetti. Mr Byrne did not publish his article until 11 March 2008. When it was published the two lists were identical to those in Mr Padgett’s email except that instead of saying ‘“Love is in the Air” (Mike Simonetti’s White Label Version)’ it now read ‘John Paul Young “Love is in the Air” (Mike Simonetti’s White Label Version)’. Mr Padgett denied that he had told Mr Byrne that what he had in mind was the John Paul Young performance of Love. His evidence was that Mr Byrne must have added that information himself or that it had been added by an editor somewhere between the email on 16 January 2008 and the publication of the article on 11 March 2008. Mr Padgett had to say this to maintain the apparent truthfulness of his clear evidence that he had not heard of Love until 2011.
129 His explanation raises the question of why he had referred to ‘Love is in the Air’ as a song on Johnny’s Tape for Ida when he did not know Love. His explanation was that he had picked up the song title ‘Love is in the Air’ from a blog on the IDIB website dated 2 January 2008 which, so Mr Padgett said, had been written by Mr Simonetti. This piece was a report of Mr Simonetti’s performance as a DJ at a New Year’s Eve party at the end of 2007 at Rubulad, an underground club in Brooklyn (which, I am informed, has since permanently closed). The relevant portion is as follows:
A HAPPY NEW YEAR MIX FOR YOU
Happy New Year from the Italians crew. all reports from San Francisco were that the Glass Candy New Years Eve blowout was indeed a blowout and it was full of New Years madness. Wish i was there.
But I had my thing at Rubulad and it was pretty crazy. Also apologies for those of you who came out late to see me and left when the cops came. After they left we started up and went well into the late morning. Next time I play Rubulad I’ll put you on the list and buy you a drink, so email me (you know who you all are).
ps: the midnight NYE tune was “Love is in the Air”…
Anyway, to celebrate the arrival of 2008, we offer you a mix by our own Qlint, who happens to be in TIEDYE. Our pal Pilcoski of Dirty Edits fame posted it on his blog and we are sending you to his website to grab it. Its a zshare file so you can stream it live or download it. The mix is pretty great. Look out for the third track, which is a Tiedye edit of Tom Petty “Dont Come Around Here No More”. Its an Italians favorite!
(Errors in original.)
130 The hypothesis Mr Padgett’s evidence requires one to embrace is that he included ‘Love is in the Air’ on Johnny’s Tape for Ida not ever having heard the song and not knowing to what it was a reference. Why would he do this? Mr Padgett’s evidence was that Mr Simonetti’s blog had omitted the identity of the performer of ‘Love is in the Air’ quite deliberately. Here the thinking was that DJs like to play music the origins of which are unclear to their audience. In that endeavour it was important for Mr Simonetti not to let on that ‘Love is in Air’ had been performed by John Paul Young as the mystery of its actual origins gave him a competitive edge over other DJs. Viewed in this way, the fact that Mr Simonetti had let on that the piece was called ‘Love is in the Air’ but had not gone so far as to disclose the identity of the performer was, Mr Padgett thought, ‘a wink, like a coded sort of Easter Egg’. That evidence is consistent with the ellipsis in the blog ‘ps: the midnight NYE tune was “Love is in the Air”…’
131 The competitive edge explanation and Mr Padgett’s evidence that it was a ‘wink’ or an ‘Easter Egg’ are not, however, consistent. There are two problems. First, if keeping the origin of tracks really was a question of competitive edge in the DJ market, it would not be profit-maximising to disclose, even by way of hint, those origins. Secondly, in 2008 it was a trivial matter for a person to look up ‘Love is in the Air’ on Google and immediately to see that it was performed by John Paul Young.
132 Mr Padgett’s evidence that it was a ‘wink’ or ‘coded sort of Easter egg’ makes a little more sense to me. On that view, Mr Simonetti was playing a game with his audience. I should say for completeness that Mr Padgett accepted under cross-examination that he now knew that Mr Simonetti had been playing the John Paul Young performance of Love but he testified that he found this out only subsequently to the creation of Warm.
133 In any event, accepting either of those explanations for Mr Simonetti’s decision not to include the name of John Paul Young in the blog does not throw any light on why Mr Padgett would himself decide to include in his list the name of a song he had not heard and did not know on Johnny’s Tape for Ida. There were several other songs mentioned in Mr Simonetti’s blog. Indeed, at the end of the blog he proffered for the reader a tape mix of 14 songs as follows:
TRACK LISTING FOR YOU:
1. Fabio Frizzi & Giorgio Cascio – Zombie Attack
2. Mythos – When the Show Just Begun
3. Tom Petty – Don’t Come Around (Tiedye dub-version)
4. Paul McCartney – Check My Machine
5. A Mountain of One – Ment Goes Nothing
6. Klaus Schulze – Tango-Saty
7. Brigade Mondaine – Generique
8. Joe Cocker – Sweet Little Woman (12” Mix)
9. SKY – Westway
10. Crosby Stills & Nash – Dark Star
11. Peter Green – In the Skyes
12. Cat Gang – Locomotive Breath (Special Rock Version)
13. It’s Immaterial – Driving Away From Home
14. B. B Band – All Night Long (Instrumental Version)
134 Mr Padgett was pressed on why he decided to include on Johnny’s Tape for Ida the name of a song which he did not know or thought was not real rather than one he did and knew to be real. Here Mr Padgett’s explanation was that he had not mentioned any of those tracks in Johnny’s Tape for Ida because none of them was a track mixed by Mr Simonetti. Mr Padgett says that he listed Mr Simonetti’s ‘white label’ version of ‘Love is in the Air’ in Johnny’s Tape for Ida because Mr Simonetti was increasingly frustrated that his career as a DJ was not taking off. In that regard, by referring in the list to a version of ‘Love is in the Air’ which was Mr Simonetti’s ‘white label version’ he was intending to convey a connotation that Mr Simonetti was a DJ who was a renegade or rebel with it being Mr Padgett’s intention of ‘trying to promote him as this sort of muscular DJ in the sense, like, cool.’
135 It is then useful to return to the remarks Mr Padgett made about ‘“LOVE IS IN THE AIR” > MIKE SIMONETTI’S WHITE LABEL VERSION’ appearing on the list he provided to Mr Byrne in his email. The comment on the song was in these terms:
this is written on ida’s oxygen tank she keeps backstage. when mike spins records at our shows…he always plays this song, and hot chocolate. ida immediately lights up, and starts doing this fucked up dance. i can’t describe it. it’s like clockwork. since we made the rule that glass candy members had to be air signs. it’s been smooth sailing.
(Errors in original.)
136 The second line and third lines of this suggest that Mr Simonetti had played Love as a DJ at shows at which Glass Candy had performed, indeed, more than once and that Ms Monahan had danced to it, I take it with some enthusiasm. It is an unavoidable deduction from Mr Padgett’s evidence that this statement cannot be correct on the account he has given. On Mr Padgett’s evidence Mr Simonetti could not have played Love at Glass Candy performances and Ms Monahan most assuredly could not have danced to it. Yet Mr Padgett gave other evidence that Mr Simonetti had played sets with Glass Candy several times and in 2007. So on this view of the facts, the statement that Mr Simonetti had played with Glass Candy would not be false, merely the statement that he always played Love at these performances. Mr Padgett’s explanation for this is that it was a joke about ‘DJ culture’.
137 Finally, it is useful to set out the full list of songs on Johnny’s Tape for Ida laid out in Mr Padgett’s email to Mr Byrne:
“I DREAM OF JEANIE THEME SONG” > TV SHOW DEMO “ROW, ROW, ROW YOUR BOAT” > TRADITIONAL LP VERSION “I WISH I WERE AN OSCAR MEYER WIENER” > COMMERCIAL PEEL VERSION “SILENT NIGHT” > TRADITIONAL CHRISTMAS 12” EDIT “LOVE IS IN THE AIR” > MIKE SIMONETTI’S WHITE LABEL VERSION
138 The first four songs on this list are certainly famous in at least the limited sense that even I have heard of them. The same is true of all of the songs in Ida’s Tape for Johnny (which included hits such as Survivor’s ‘Eye of the Tiger’ and the theme song for the Benny Hill Show). Mr Byrne’s article sought, by its inclusion of Ida’s Tape for Johnny and Johnny’s Tape for Ida to have Mr Padgett and Ms Monahan give some light-hearted insight into their respective personalities and their relationship. The point of each song on the lists was to provide the occasion for a brief, and often humorous, account of the other performer’s personality. An implication may be open that this objective would not be achieved if the relevant musical reference was to a song which was unknown to the person painting the picture or, on Mr Padgett’s evidence, was not real.
139 Having explained Mr Padgett’s evidence and its implications, it is then necessary to assess whether it is an account which ought to be embraced. To do so it would be necessary to accept all of the following propositions:
(1) Although as at 16 January 2008 Mr Padgett did not know Love and had not heard it, he nevertheless included a song by the same name as a joke on a list of songs he designed for Ms Monahan.
(2) Although Mr Padgett accepted that Mr Simonetti had played sets with Glass Candy many times and in 2007 he included in his comment on the song the joke statement that Mr Simonetti always played Love on those occasions and that when this occurred, Ms Monahan had lit up and danced to it, this was because he obtained the reference to the song from a blog written by Mr Simonetti dated 2 January 2008 and did not know what song Mr Simonetti was talking about.
(3) Although he did not know whether the song was a real one, Mr Padgett included the song on Johnny’s Tape for Ida because he was seeking to bolster Mr Simonetti’s career as a DJ which was not going as well as it might.
(4) He did not inform Mr Byrne that the performer of ‘Love is in the Air’ was John Paul Young and the source of the reference to him in Mr Byrne’s article was either Mr Byrne himself or an editor of XLR8R.
140 As to (1), it seems to me unlikely that he would include a song on Johnny’s Tape for Ida that he did not know or a statement that Mr Simonetti had performed Love with them when he had not. Humour is a personal matter of course but Mr Padgett’s evidence that he had been joking when he said that Mr Simonetti had played Love at Glass Candy sets and that Ida had provocatively danced to it suffers from the problem, at least from my perspective, that it is not especially funny.
141 As to (2) and (3), it is, I suppose, also possible that Mr Padgett had decided to increase the muscularity of Mr Simonetti’s career as a DJ. And it may be possible too that he did so by combing the IDIB website the two of them ran together so as to find a song that Mr Simonetti had mixed and to slap on it the ‘white label’ moniker thereby augmenting the limping DJ’s edginess. But this seems to me quite unlikely.
142 As to (4), whilst I would not dismiss as entirely impossible the idea that Mr Byrne had decided to touch up Mr Padgett’s list by adding the performer John Paul Young to it, it seems to me to be a surprising thing for him, or the editor of XLR8R, to do so without first speaking to Mr Padgett. As Glass Candy’s counsel pointed out during the trial there are several songs with the title ‘Love is the Air’ such that it is questionable how Mr Byrne could be sure, particularly given the very eclectic nature of the songs on Johnny’s Tape for Ida, that Mr Padgett had not intended to refer, for example, to the song of the same title in Stephen Sondheim’s revue Side by Side. And then there is the question of why Mr Byrne or the editor would wish to add Mr John Paul Young’s name to the article from an editorial perspective. None of the other songs on Johnny’s Tape for Ida as it appears in the article (or the email) include the name of the performer so I do not think that it can be notions of editorial consistency which could have driven Mr Byrne (or the editor) to add John Paul Young’s name to Mr Padgett’s joke. No other explanation obviously suggests itself for such an act.
143 Each of these matters is unlikely but not impossible. However, for Mr Padgett’s evidence about this to be accepted, I would need to accept all of them for if any of them fails they all fail. I do not accept that it is remotely credible that they could all be true. I therefore conclude that they are false. I note for completeness that Mr Simonetti is a person who could have thrown light on the matter. However, Mr Padgett and Mr Simonetti have had a falling out and it seems to me that Glass Candy’s failure to call him as a witness does not necessarily imply that they did not do so because they thought his evidence would not assist them. In that circumstance it is not appropriate to have regard to Mr Simonetti’s non-appearance in the witness box in reaching the conclusion I have reached.
144 The implications of that conclusion are grave within the meaning of s 140(2)(c) of the Evidence Act 1995 (Cth) (‘Evidence Act’). In particular, the nature of Mr Padgett’s account is such that one cannot say, having rejected it, that he was mistaken or that he misunderstood some aspect of the matter. The only inference is that the evidence was given knowing it not to be true. Nor is it a casual untruth such as may slip out from time to time when speaking with difficult friends. To the contrary Mr Padgett’s evidence about Johnny’s Tape for Ida was a very carefully thought through and entirely pre-meditated attempt to explain away what appears to be obvious about that list.
145 I have not overlooked Kobalt’s submission that the importance of the email should be downplayed. The first element in this was the suggestion that Mr Padgett would have been unlikely voluntarily to have included such damaging evidence in his affidavit, as he appears to have done. The second was that the email was too slender a basis to infer that Mr Simonetti regularly played at Glass Candy sets or that the Applicants had failed to prove that Love had been played at such events. I reject the first argument which does not engage with the contents of the email. I reject the second for largely the same reason—the email is evidence of these facts. Whilst I accept that the email is humorous, I am unable to dismiss its entire contents as a joke and I am strengthened in that conclusion by Mr Padgett’s absurd evidence about it.
146 Indeed, as will be seen, Mr Padgett had strong instrumental reasons for wishing away Johnny’s Tape for Ida. I conclude below that Warm was composed in 2009. The XLR8R article shows that Mr Padgett had heard Love before 2008 and that his partner in IDIB had in fact played it at Glass Candy sets. If the Court were to reject Mr Padgett’s implausible evidence that the 2005 Recording was the urtext for Warm then it became vital for him to be able deny the apparent meaning of Johnny’s Tape for Ida. I must conclude therefore that Mr Padgett is a witness who does not hesitate to make up elaborate evidence when it suits him. In that circumstance, it seems to me that I should not rely on any of Mr Padgett’s evidence unless it is contrary to his interests or independently corroborated.
147 I therefore do not accept Mr Padgett’s evidence that he had not heard Love prior to 16 January 2008. This does not, of course, mean that Mr Padgett had heard Love prior to the date; just that his evidence is of no value in assessing the correctness of that proposition. However, once his denial is removed from the picture it seems to me that Mr Padgett’s email to Mr Byrne and the article allow me to infer that by 16 January 2008 Mr Padgett had certainly heard Love on each occasion that Mr Simonetti had played at performances of Glass Candy. In that circumstance, I conclude that Mr Padgett was well acquainted with Love prior to 16 January 2008.
148 With Mr Padgett’s discredited evidence about the 2005 Recording out of the way, the first extant recording made by Glass Candy of a song resembling Love is to be found as Track 7 on a CD entitled Airplane Baby for Europe (‘Airplane Baby CD’). The debate now to be resolved is whether that recording was made in 2007, before Johnny’s Tape for Ida was produced, or afterwards. I conclude that the recording found in Track 7 of Airplane Baby was first made somewhere between May 2008 and May 2009. I will refer to Track 7 of Airplane Baby as the ‘Airplane Recording’ or just ‘Airplane’.
149 Mr Padgett’s evidence was that the Airplane Baby CD was a compilation CD he had burned before he left to go on a tour of Europe in April 2008. The purpose of the CD was so that he could listen to various recordings which had been made whilst travelling on tour. But his evidence was also that the Airplane Recording had been made most likely in the first half of September 2007 and no later than September 2007.
150 It does not appear to be in dispute between the parties that the Airplane Recording is a predecessor to Warm. Mr Padgett accepted this in his affidavit at §43 where he said that the vocal melody closely matched the vocal melody and lyrics used in the September 2011 Commercial Recording of Warm. Dr Vines gave evidence to a similar effect and it is consistent with my own assessment of the relationship between the Airplane Recording and Warm. I therefore accept Glass Candy’s submission that I should regard this recording as a progenitor of Warm despite its differences in the accompanying orchestration. It contains the same line as in Warm which is alleged to have been copied from Love.
151 Mr Padgett’s evidence was that the development of the musical elements of Warm occurred in the first six months of 2007. He says that during a session in his studio with Ms Monahan she presented him with some lyrics that she had written as a poem and he had then experimented with composing a vocal melody to fit with those lyrics. During the same session he had recorded Ms Monahan singing these lyrics and overlaid this on top of the music that he had composed. It is clear from the evidence of Mr Padgett and Ms Monahan that the creation of their songs was a joint enterprise in which he was principally but not solely responsible for the music and she was responsible for the lyrics and the singing. But Ms Monahan had influence on the music too and it is clear that in their sessions the process was collaborative. Apart from the issue of timing I therefore accept that this first recording was made more or less as Mr Padgett says. It is clear the recording had to be made somehow and Mr Padgett had no motive to paint a false picture of what the process actually was. The collaborative process described by him was also consistent with the general thrust of Ms Monahan’s evidence and about which she also had no motive to lie.
152 Mr Padgett’s evidence about the timing of this first recording was that it had to have been recorded before September 2007. In November 2007 Glass Candy had released an album entitled B/E/A/T/B/O/X (‘Beatbox’). Its release was accompanied in November 2007 by a promotional tour of North America. Mr Padgett says that he was working intensively on the album in the lead up to its release and it was only just finished before the tour commenced. He testified that when he went on tour in October 2007 he did not take his Roland F-50 electric piano with him.
153 There is a minor inconsistency in his evidence. At §45 he says the tour was in October 2007 but at §44 he says the album was released in November 2007. It is difficult to see that the tour could have been a promotional tour if the album had not been released. This is probably a minor slip which can be accounted for by the time which elapsed between the events in question and the trial. The importance of the Roland F-50 electric piano is that it was used to make the Airplane Recording. Mr Padgett says that he could not have made the recording whilst he was on tour because he did not have that piano with him and he did not have access to his studio which was in Portland, Oregon. It is for this reason that he says that he believes the recording took place before September 2007.
154 As I have already explained, I do not accept that Mr Padgett’s uncorroborated evidence is reliable unless it is contrary to his interest. Hence, I would not regard the above account as useful in establishing when the Airplane Recording was made accept to the extent that it is corroborated elsewhere. However, Mr Padgett’s evidence about a 2007 date is partially corroborated by an email he sent to Mr Simonetti on 9 August 2009. The relevant portions of that email are as follows:
here’s a rough rough sketch of a new glass candy track for the comp. “WARM IN THE WINTER” i started writing it before beatbox was even done. it’s getting close to being done. i think it’s totally sick. short and sweet. no bullshit…just a girorgio meets phil specter type sing along. the lyrics ida wrote are really good too. “we’re warm in the winter…sunny on the inside…yellow chickadees is life’s special gift for you…love is in the air…we’re warm in the winter…sunnyon the inside…i’m crazy like a moneky…ee ee ooh ooh…and happy like a new year…yeah yeah woo woo…”
(Errors in original.)
155 Attached to the email was an MP3 file entitled ‘WARM IN THE WINTER SKETCH.mp3’ which is purely instrumental and does not include the sung lyric ‘love is in the air’ (in these reasons, for convenience, I will call this the ‘sung lyric’ but that is to be understood as encompassing the accompanying music). There is no doubt that the Beatbox tour did take place in November 2007. So this email supports Mr Padgett having started work on what would become Warm prior to November 2007. But the email does not make clear whether that work at that time included a lyric with Ms Monahan singing ‘love is in the air’ to H1 of Love or indeed whether his work prior to 2007 included any work with Ms Monahan at all and it is clear that the MP3 file does not contain such a line.
156 It is then necessary to turn to Ms Monahan’s evidence about the process. In her affidavit evidence Ms Monahan explained that she began to write the lyrics for Warm in 2005 and 2006 (at §21) and first showed them to Mr Padgett in 2006 or early 2007: at §25. In another part of her affidavit, at §24(b), she said the lyrics had been written in 2004. She was provided with a copy of the Airplane Recording by her lawyers and confirmed that it was her singing. In her affidavit she said that she did not remember making that recording: at §27. The recording was referred to in the affidavit as the ‘October 2009 Recording’ although the affidavit contained no evidence that was when the recording had been made and, as will be seen, this turned out to be a typographical error on the part of her solicitors. That she did not give any evidence about when the recording was made is consistent with the fact that she did give evidence that she did not remember when the first recording of Warm had been made. It would be difficult to accept that Ms Monahan would be able to say when she did something that she could not recall doing.
157 There are substantial differences between the lyrics of the Airplane Recording and the lyrics of Warm but approximately 50% are the same with some organisational differences. The evidence of Mr Padgett was that the lyrics of Airplane were cut down by him in October 2009.
158 At trial Ms Monahan’s evidence was clarified to an extent. Under examination in chief she corrected the reference in §24(b) from 2004 to 2005-2006 and she narrowed that down further to ‘Mostly 2006’. She then gave evidence correcting the reference to the ‘October 2009 Recording’ to the ‘October 2007 Recording’. But she did so in a way which involved a substantial change to her original affidavit. She now said that she thought that the recording had been made in 2007 when, in her affidavit, she had said she did not recall making the recording at all. She repeated this evidence under cross-examination—‘I remember it being in 2007’—and was then asked about her affidavit evidence that she did not remember making the recording:
And you don’t even - - -?--- - - - a – a general timeframe.
And you don’t even remember the year that you – that you recorded this, do you, Ms Monahan?---I believe it’s 2007.
But what has changed your belief from when you swore this affidavit when you said you don’t remember making the recording and now?---Okay. Well, I think that I was just confused about – because I don’t remember a specific day. Like, I didn’t write it on a calendar or something like that but I remember the basic timeframe of when the song first began being worked on.
You can’t sit here today in the courtroom and say to the court that it is 2007 that this recording was made without doubt?---I’m sorry, can you rephrase that?
159 This raised an immediate issue as to why she could remember at trial what she could not remember when she had prepared her affidavit. The cross-examination continued:
You cannot say that this recording was made in 2007 and be certain of that fact?---I cannot say that it was - - -
You are not certain that it was done in 2007, are you?---That’s the basic time range that I believe that it was made.
But it could have been made in 2008?---If it was, it would have to have been very early 2008.
And it could have been made in 2009?---I’m sorry, but that’s not how I remember that.
And you can’t remember either, clearly, the year that you wrote the lyrics of Warm In the Winter, can you?---It was basically 2006. I remember because of the boyfriend I was dating at the time.
160 I do not accept this evidence. The evidence that she did not remember the specific day it was done but that she did remember ‘the basic timeframe of when the song first began being worked on’ conceals two different concepts, one the recording of Airplane Baby, the other the timeframe of the process of creating Warm (not the Airplane Recording). The fact is that her evidence in her affidavit was that she did not remember making the Airplane Recording. I do not accept that it is possible for her now to say that she can place the timing of that recording in 2007. I do not make any particular finding about when Ms Monahan wrote the lyrics which I do not think is material. The real question is when the well-known phrase ‘love is in the air’ first came into contact with a musical phrase resembling H1.
161 There are other aspects of Ms Monahan’s evidence that are problematic. The first concerns the way that Ms Monahan sings the phrase ‘love is in the air’ in Warm. In her affidavit she gave evidence at §24(d) that:
My performance of the phrase “love’s in the air” in WITW has a natural down-up cadence. When I say the phrase “love’s in the air” I cannot say or sing it any other way, or it sounds strange to me.
162 But the fact is that to listen to the Airplane Recording is to hear that Ms Monahan did, at several points in that song, sing the phrase in quite a different way to the way she sang it in Warm (although she also sang it at several points in the same way). I note here (though nothing turns on this) that one of the different ways in which she sang the line very closely resembles H3 in Dr Vines’ transcription of Love. Ms Monahan was challenged about this under cross-examination and she accepted that she had sung the phrase in a different way at some points in the Airplane Recording but that it sounded ‘weird to me’ or ‘really unnatural’ and then ‘It doesn’t sound good though’. At this point counsel objected and pointed out in front of the witness that the cross-examiner ought to have read the entirety of the sentence in her affidavit, that is, including the rider ‘or it sounds strange’. Following that objection she then gave evidence that the recording ‘sounded strange’ and that it was possible to sing it that way ‘but it’s painful’. I disregard the evidence after the objection which was tainted by the objection.
163 The tenor of her affidavit evidence was that there was no other way for her to sing the phrase. It is true that Ms Monahan added the rider ‘or it sounds strange to me’ but the meaning of that evidence was not to suggest that she could sing the phrase several ways but when she sung it in a non-preferred embodiment it sounded strange. What she was saying was that she could not sing it any other way because it would sound strange to her, i.e. the strangeness was not being put forward as evidence as to how she would react when she sang it in alternative modes, it was being put forward to demonstrate that she would never sing it in such a mode.
164 That evidence is therefore not correct. It is not apparent to me how the making of this incorrect statement can have been other than deliberate. I take the import of her affidavit evidence to have been that the melody which came out of the creative process could not have involved borrowing the chorus from Love because that melody had been dictated to Ms Monahan by the expression’s own internal imperatives. As such, it was an important piece of evidence because it was being advanced precisely to resist the suggestion of copying. Therefore that it turns out to have been incorrect is not as trivial as it may appear at first blush.
165 A third difficulty with her evidence emerged from the terms of her own affidavit. At §32 Ms Monahan explained that she had been familiar with the expression ‘love is in the air’ throughout her life:
I thought that “love is in the air” was a common phrase used in ordinary language in various contexts such as in yoga practice. I had heard the phrase many times throughout my life in ways that were unconnected with the Applicants or [Love].
166 But at §24(a) Ms Monahan gave a much more detailed account of how she had been inspired to use the phrase:
“Love’s/love is in the air” – The lyrics “love’s/love is in the air” were inspired by Eastern philosophy, traditional Chinese medicine philosophy, yogic philosophy, and astrology. My life and creative process are strongly influenced by a belief that love is a metaphysical phenomenon that is ‘in the air’ all around us, and inherent in all aspects of human existence. I recall first being exposed to this idea as an element of Eastern philosophy when I began practicing yoga in Portland, Oregon around 2003. I attended numerous yoga classes in Portland where the teachers would give discourse at the end of class about “chakras”, which are different areas of the body that connect with an essential energy or life force. I recall going to a yoga class centred on heart chakra opening where the teacher said the phrase “love’s in the air, love is everywhere”. I do not remember specifically which teacher or the date of that class, but it would have been around 2005. ‘Love's in the air’ also has connotations with Chinese zodiac and astrology. John and I are both air signs in astrology.
167 Again, I do not think these are consistent. I would certainly accept Ms Monahan’s evidence in §32 is very likely to be true. I have already found that §24(d) was incorrect in suggesting that Ms Monahan could only sing the phrase one way. It seems to me that §24(a) falls into a similar category, that is to say, an elaborate embellishment. Glass Candy submitted that it had not been put to Ms Monahan that she was not telling the truth. However, it is very plain from the way that the case had been conducted that the Applicants were suggesting that Glass Candy’s evidence was concocted. I do not think that the rule in Browne v Dunn (1893) 6 R 67 required the obvious to be put to her.
168 For those reasons, I do not think that Ms Monahan’s evidence about the creation of the Airplane Recording or of Warm is reliable. I do not accept her evidence that Airplane was recorded in 2007. As I have said, I do not need to decide when Ms Monahan created the lyric and I do not.
169 Be that all as it may, it is an indisputable fact that Airplane was recorded at some time. Mr Padgett’s evidence was that the actual Airplane Baby CD itself had been created in April 2008 (from the 2007 recording) so he could take it to Europe with him on tour at that time. But the Airplane Baby CD is not dated and we have only his word for that. Mr Padgett appeared to accept under cross-examination that he usually placed dates on CDs but he then added that this was not so in the case of CDs which were, as the Airplane Baby CD was, a compilation. He thought the Airplane Baby CD as more of a ‘disposable CD’. There is no doubt that other non-compilation CDs created by Mr Padgett are dated. But the rejection of his evidence that he does not date compilation CDs (on reliability grounds) does not prove that he did, just that his evidence that he did not is not safe to rely upon.
170 Accepting that Mr Padgett had started work on what would become Warm prior to November 2007 does not necessarily imply that this was when the Airplane Recording was made. It is clear from Mr Padgett’s and Ms Monahan’s evidence that whilst Mr Padgett did work alone on the instrumental aspects of Glass Candy’s music the song writing was done in a collaborative fashion between the two of them together. If Mr Padgett had worked together with Ms Monahan prior to November 2007 to produce the Airplane Recording as a progenitor to Warm I believe he would have said, if asked, that the song was written between November 2007 and 2011.
171 This matters because there is independent evidence that this is not what Mr Padgett thought. On 3 March 2015 he sent an email, possibly to Air France, although this is not altogether clear. This email is something of a puff piece about Warm and begins ‘this song is pure euphoria’ and ends with ‘it’s contagious’, an adjective which has recently lost some of its appeal. In the second line Mr Padgett said that Warm had been ‘written and recorded in Montreal during coldest winter of my life’ (my emphasis). He agreed under cross-examination that the coldest winter in his life had been the winter of 2008-2009.
172 On the other hand, when the September 2011 Commercial Recording of Warm was released, Mr Padgett wrote the accompanying sleeve for the CD and vinyl record release. That sleeve said that the song ‘was written and recorded between May 2008 and August 2011 in Portland and Montreal’. This statement was made just after Warm had undoubtedly been completed. For that reason I believe it is more reliable than the email sent four years later.
173 In that circumstance, I conclude that the sung lyric ‘love is in the air’ in Warm (in all its various creative phases) was composed between May 2008 and August 2011. Whilst I accept that Mr Padgett did some work on what would become the song prior to November 2007 I do not think these early efforts included Ms Monahan singing ‘love is in the air’ to H1. Thus I do not accept that the Airplane Recording was made before November 2007. If it had been the sleeve on the CD would have said that the song was written and recorded between October 2007 (not May 2008) and August 2011.
174 I therefore find that the Airplane Recording was made at some time after May 2008.
175 There is another version of the Airplane Recording available in the evidence. Mr Padgett said in his affidavit that he had uncovered this copy in his preparations for the case and it was dated 4 May 2009. I have not seen any evidence that it was dated 4 May 2009 but it appears not to be in dispute. Whereas Mr Padgett said that the song on the undated Airplane Baby CD was entitled ‘Love is in the Air’, the May 2009 version was entitled ‘Warm in the Winter’. The two recordings are identical. Mr Padgett said he ‘had changed the working title’ of the song (which had been ‘Love is in the Air’) because the lyric ‘Warm in the Winter’ was more relevant to him in May 2009. This was because ‘I had just come through the coldest winter of my life in Montreal’: at §50.
176 It is possible therefore to say that the Airplane Recording was made at some time between May 2008 and May 2009. Mr Padgett did not, therefore, take the Airplane Baby CD with him to Europe in April 2008 because it did not exist in April 2008. Mr Padgett accepted under cross-examination that he did not actually know when the recording of Airplane had occurred and had worked it out deductively by reasoning back from the Beatbox tour of North America in November 2007.
177 Mr Padgett also went on tour in June 2009. There is no particular reason to doubt Mr Padgett’s evidence that the Airplane Baby CD was created for touring purposes (and this is consistent with its title). The identical recording of ‘Love is in the Air’ but retitled ‘Warm in the Winter’ is dated 4 May 2009. It seems to me that the most likely inference is that the Airplane Baby CD was created by Mr Padgett in May 2009 from that version so that he could take it on tour to Europe in June 2009. This is squarely inside the date range of May 2008 to August 2011 that Mr Padgett himself nominated on the CD sleeve as the period during which the song was written and recorded.
178 This does not answer the question of when the original recording of the song which is on the Airplane Baby CD was itself made. About that all one can say with certainty is that it was between May 2008, as the sleeve on the September 2011 Commercial Recording stated, and May 2009, prior to the June 2009 tour. Since the song is in a fairly developed form one might also conclude that it was not made at the beginning of that period, but much further than that one cannot go.
179 It is this initial Airplane Recording which is, however, important for it contains the first appearance of the phrase ‘love is in the air’ to the line said to be taken from Love. But about the composition of the original Airplane Recording (as opposed to the progeny of the Airplane Baby CD) little more is known. Ms Monahan does not remember recording it and Mr Padgett’s evidence did not extend into any particularity about what had happened during this session. Mr Padgett’s account of the recording of Airplane was, as he accepted, reconstructed from which one may also infer that he too did not have an actual recollection.
180 For completeness I should note that Glass Candy pointed to similarities between the 2005 Recording and the Airplane Recording to show, contrary to my earlier conclusion, that the 2005 Recording was a precursor to Warm. The primary similarity was said to be its minor third fall in the chirping synthesizer (that is, the repetition on the synthesizer of ‘C-C-C, A-A-A’). However, that feature does not appear in Warm. It is not sufficient to say that because the Airplane Recording contains both a feature of the 2005 Recording (the synthesizer pattern) and a feature of Warm (the vocal line accompanying ‘love is in the air’) then the 2005 Recording and Warm must somehow be connected. As I have found, the 2005 Recording was clearly a prototype of ‘I Always Say Yes’. The fact that a feature of what would become Warm appeared for the first time in the Airplane Recording only traces Warm back to that recording, and not all previous recordings which share entirely different features with the Airplane Recording.
The creation process from 2009
181 The remaining history of the creation of Warm is relatively uncontroversial and may be more briefly stated. In July 2009 Mr Padgett created a further developed instrumental version of what was by then entitled ‘Warm in the Winter’. It was this version that he sent to Mr Simonetti on 9 August 2009. Between August and October 2009 he then created three different versions of Warm being an instrumental mix, a recording including Ms Monahan singing in October 2009 and a live backing track for an upcoming European tour. The October 2009 recording did not make its way into evidence, but its lyrics did and it is apparent that they lie somewhere between the lyrics of the Airplane Recording and Warm itself. Although Mr Padgett said these lyrics were rerecorded in January 2010 and a copy of that was included in the evidence it is apparent that the lyrics in that recording are not the lyrics he says were sung in October 2009. Since nothing turns on this, it is not necessary to resolve this anomaly. In July 2010 Mr Padgett mixed the instrumental mix with that vocal mix to create an unmastered mix which is recognisably Warm. This version was then mastered in August 2010 and commercially released to the public in September 2011 (that is, the September 2011 Commercial Recording).
182 On these findings Glass Candy were certainly aware of Love when they first created the vocal line in Warm. I reject Kobalt’s submission that it was not put to Ms Monahan that she knew of Love because of the email to Mr Byrne. She was cross-examined about that email and it was clear what the implication of that email was.
183 Despite that adverse conclusion, it does not follow, however, that just because they were aware of Love that they consciously copied it.
184 However, there is more evidence which may bear upon this issue. In February 2011, not very long after the mastered version of Warm had been completed and only six months before its commercial release, Mr Padgett and Ms Monahan were interviewed by Bianca Valencia for thescenestar.com. This recording is on YouTube and a copy of it was included in the evidence.
185 During this interview Mr Padgett explained Glass Candy’s methods. He explained the genesis of a Glass Candy song called ‘Geto Boys’. He told the interviewer that he had been listening to the music of the Geto Boys ‘on repeat’. The Geto Boys are a hip hop band. According to Mr Padgett, the Glass Candy song ‘Geto Boys’ samples the actual Geto Boys. He then very clearly said that ‘it’s kind of a taboo to sample hip hop’ but ‘everybody loved it’. He thought it was ‘really shocking’. The song was a ‘real breakthrough for us’ with the consequence that there were now ‘no rules’. He then said that ‘Glass Candy’s really unconventional’ and ‘anything’s possible – sampling, writing…’ I have listened to this interview and it is clear that Mr Padgett is saying that it is a taboo to sample hip hop and Glass Candy were sampling hip hop. What is not clear is who held the taboo.
186 Mr Padgett was cross-examined about this:
MR HALL: Now, having seen that, does that assist you in correcting the answers you gave a few moments ago? You did express the view, didn’t you, that - - -?---Not as a rule of hip-hop to not – the taboo I’m speaking of is in the indie scene. It was still a little bit taboo to ride the fence with hip-hop which was seen as materialistic or offensive or misogynistic and us being a feminist band with a female vocalist forward, there was still a little bit of a curve of the hipster wide world which we refer to, accepting and embracing hip-hop as an art form. So for us to release a song where we sample a hip-hop artist that talks about drugs and guns and violence and hookers and all this stuff is kind of the antithesis of the feminist electroband. That’s the taboo I’m referring to.
And you were celebrating the fact that you had broken that taboo and, to use a colloquial phrase, got away with it, weren’t you?---The one I’m talking about, no rules, means no genre boundaries and no – no inhibitions musically.
187 The Applicants submitted that it was plain that this was not the taboo to which Mr Padgett was referring. But it does not really matter. Whether Glass Candy was breaking a feminist taboo against sampling hip hop (because of perceptions that hip hop was violent and sexist and therefore not to the tastes of connoisseurs of what I hesitate to call ‘fem pop’) or instead breaking a hip hop taboo against being sampled, the point is that Glass Candy were sampling other people’s songs, in this case the Geto Boys song.
188 In fact, Mr Padgett gave evidence under cross-examination that he and Mr Simonetti ran a record label together, Perseo, which compiled samples and covers of other people’s work:
MR HALL: A – let me give you some specific examples, Mr Padgett, and ask again. You have, in the course of your musical career, released compilation CDs and records that picked – that put together the recordings of other artists?---Yes.
Under a label called [Perseo]?---Yes.
You’ve created cover versions of songs with all of the bands that you’ve acted in?---Yes.
And you have also engaged in quite extensive sampling, that’s to say the taking of pieces of music from other works and quoting or using them in the works that you’ve put together?---Yes, I have sampled.
And it has always been one of the musical tools that you would reach for when you would do a new composition to pick up pieces of musical work from other sources and reuse them for the purposes of your composition?---No.
And that has been done by the various methods of sampling and of covering that we have discussed?---I have sampled. I have covered. But the sample songs and the cover songs are vastly outnumbered by the unsampled and uncovered songs, to the tune of, I don’t know – I’ve released, like, 600 things. Some things have samples. Some things are covers. But I don’t know the exact – I wouldn’t say it’s the main source of creation.
189 I infer from the interview of Mr Padgett and Ms Valencia that Glass Candy have used the method of sampling in at least their song ‘Geto Boys’ and I infer from Mr Padgett’s evidence under cross-examination that he has often used sampling in his career. Mr Padgett also gave evidence that he regarded sampling as a process in which part of an original recording was used in a new work. During cross-examination he said this:
You were drawing a distinction between covering and sampling and you said that sampling was taking a recording, like a DJ would, and putting a loop over it, was the phrase you used, I think?---No. Looping an audio recording. Like you have a song and you sample a piece of it, like a – and then you loop that and build off that. That’s the – what you thought you meant by sampling.
I was simply asking you what you understood by sampling. Covering a song is effectively rerecording your own version of it?---Yes.
And I suppose when you cover a song, you may retain none of the original recording at all?---How would you retain the original recording?
Whereas in a sample there would be some part of the original recording still recovered. Is that correct?---I see. Yes.
190 A submission was made on Glass Candy’s behalf that the cross-examination of Mr Padgett about sampling had ‘displayed a singular lack of knowledge of what “sampling” is’ but this was neither polite nor fair. In fact, there was no evidence led as to what the practise of sampling precisely comprised. The Macquarie Dictionary defines sampling relevantly to be ‘the process of creating a new piece by combining various extracts from other artists’ songs, musical pieces, etc.’ The United States Court of Appeals for the Ninth Circuit has said that sampling occurs where ‘short segments of prior sound recordings are incorporated into new recordings’: Newton v Diamond 388 F3d 1189 (9th Cir 2004) at 1192. That approach appears consistent with Mr Padgett’s approach.
191 There is therefore evidence that Mr Padgett at least regards it as fair game to sample other people’s music. There are, as he put it, ‘no rules’. But I do not see that this evidence advances the Applicants’ case. In the form it takes the suggestion that because Mr Padgett samples other people’s works this makes it more likely that Glass Candy copied Love. But the Applicants did not run a tendency case and did not therefore seek to bring themselves within s 97 of the Evidence Act. Even if a tendency case had been run I am not sure that one could reason from a habit of sampling to conclude that part of Love had been taken in Warm because it would not, in any event, appear to be an example of sampling. I therefore do not think that the evidence about sampling advances matters.
192 There was a related side debate as to whether Glass Candy had been sued by the Geto Boys for their song ‘Geto Boys’. A blog suggested that Mr Padgett had once told a fan that the reason that the song was no longer available for downloading was because they had indeed been sued. Having assessed Mr Padgett’s evidence closely I think he has some tendencies towards exaggeration (or, as his counsel put it, ‘artistic licence’) and I would thus not regard the mere fact that he had made such a statement as proving that the statement was true. If it had been shown that ‘Geto Boys’ was in fact no longer available for download then one might more readily conclude that Glass Candy had indeed been sued by The Geto Boys. But the evidence is altogether too thin for such a conclusion and in any event, since the Geto Boys episode was concerned with sampling, I do not see that resolving the debate would advance the issues in this case.
193 So the available material shows that Glass Candy were well-acquainted with Love by the time the vocal line in Warm was composed sometime after May 2008. Although I accept that they engaged in sampling I do not think that fact throws any light on whether the vocal line was copied from Love. The logical possibilities therefore are:
(1) Glass Candy consciously copied the line and melody from Love;
(2) Glass Candy unconsciously copied the line and melody from Love;
(3) any objective similarity was a matter of coincidence;
(4) the line and melody ‘love is in the air’ has been copied in both Love and Warm from a third source; or
(5) the line and melody ‘love is in the air’ in Love has been copied from Warm.
194 In this case, (4) is not suggested and (5) is not possible due to the chronology of composition of the two works.
195 I do not think (3) is at all likely. I accept that the expression ‘love is in the air’ is a common English idiom which, as the Respondents successfully demonstrated, has often enough been used by many artists. This is relevant to the case about the literary work in Love. I also accept that the defining feature of the vocal line in H1, which is a minor third drop on the fourth of the five notes, is also a common feature in Western music. However, the use of a particular set of vocal instructions (which happen to also bear the meaning of that well-known idiom) alongside a minor third drop is, in my opinion, very rare. The chances of Glass Candy coming up with the same vocal line (whilst including other similar features, such as the tonic chord or rhythmic profile of the line) seem to me to be very small. In reaching that conclusion I take account of the lyric as part of the musical work in the sense I have explained above.
196 I am therefore confident that coincidence is not the explanation. It follows therefore that I am satisfied on the balance of probabilities that Glass Candy did copy the vocal line from Love either deliberately or subconsciously. That reasoning does not tell one which of those two alternatives is the actual case although either is sufficient for infringement purposes. However, the Applicants claim additional damages and part of their case rests on the proposition that the copying was deliberate. It is therefore necessary to decide whether this is a case of conscious or unconscious copying.
197 The evidence is to an extent equivocal. It is tempting to reason from the fact that both Mr Padgett and Ms Monahan have given untrue evidence about how and when they made Warm to the conclusion that the copying was deliberate. However, their untrue evidence is consistent with subconscious copying as well as conscious copying. Putting oneself in their shoes for the moment on the hypothesis of unconscious copying, they would genuinely believe that they had not copied the vocal line from Warm. The manufacturing of a case that they could not have copied the song because they had not heard of it is equally consistent with them mistakenly believing themselves not to have copied it. It seems to me therefore that I should put from my mind the perception that they were both willing to give untrue evidence about the history of Warm’s composition.
198 It is a serious matter to find an artist guilty of plagiarism: see Evidence Act s 140(2)(c). But the facts are these: they had heard Love and were familiar with it. It had been played at gigs at which they had performed more than once. Mr Padgett had referred to it in his email no more than 18 months before the vocal line was first created and possibly within six months and had done so in the context of saying something about Ms Monahan’s personality. It was not a trivial reference. This was not therefore some song which was lingering in the recesses of Mr Padgett’s mind. Further, the earliest recording by Mr Padgett of Warm which contains the impugned vocal line and which was made sometime after May 2008 was actually entitled ‘Love is in the Air’ (and only later would it be changed to Warm). Could it be that Mr Padgett, fully knowing of the song Love, knowing that its title was ‘Love is in the Air’ and knowing the vocal line of its chorus could within months be composing a song with the same title and with the same vocal line unconsciously? I think not.
199 I therefore find that Glass Candy knowingly copied the sung lyric ‘love is in the air’ and its accompanying music sometime between May 2008 and May 2009. This recording was eventually recorded as Track 7 on the Airplane Baby CD in May 2009.
200 In finding the requisite causal connection on the basis of inference, I consider that the Applicants have established a reasonable basis for that conclusion, and that the combination of the features which have been taken is not ‘routine or commonplace’: Ron Englehart Pty Ltd v Enterprise Constructions (Aust) Pty Ltd [2012] FCAFC 4; 95 IPR 64 at 72 [48], 73 [52].
201 I should say for completeness that this conclusion is consistent with the history of the pleadings. When Glass Candy first filed a defence in this case they referred to there having been three steps in the making of Warm: a recording in 2005, a recording in 2009 and the September 2011 Commercial Recording. There was no mention of a recording in 2007. The first reference to a recording in 2007 occurred when the affidavits of Mr Padgett and Ms Monahan were filed. The Applicants invited me to conclude that the concept of a 2007 recording only appeared once Mr Padgett’s email of 16 January 2008 made it necessary to push the date of composition back to a time prior to that. I have not found it necessary to rely upon this reasoning because I have arrived at that conclusion independently.
202 It follows that both the requirement of objective similarity and causation are established.
Third step: Whether the part taken in Warm constitutes a substantial part of Love
203 A consideration of whether something is a substantial part of the original work involves a consideration of quality and quantity (IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14; 239 CLR 458 (‘IceTV’) at 473 [30]) but usually ‘depends much more on the quality than on the quantity of what has been taken’: EMI at 457 [52]. The analysis is concerned with the importance of the part taken to the copyright work, Love, not Warm: EMI at 457 [53], 491-492 [190] and 494 [199]. It may be sufficient if the taken part is ‘a vital or material part, even though quantitatively it may be only a small part’: EMI at 457 [54]. A critical factor in the qualitative assessment is the originality of the part taken (IceTV at 474 [32]) and where, as here, the context of that inquiry is infringement, it will focus on the degree of originality in the expression of the part taken: IceTV at 476 [40]; EMI at 476 [121(7)].
204 Thus the words ‘to be’ in the line ‘to be or not to be’ are not original in this sense that no person who used ‘to be’ in a sentence could be actually accused of plagiarising Shakespeare. A shortcut sometimes used in this area is to ask whether the part taken would itself be a work in which copyright subsists (Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273 at 293) but this is not a necessary condition: EMI at 508 [264].
205 The Respondents submitted that the musical work in Love does not include the lyrics of Love and therefore it is impermissible to assess its originality by considering them together. As I have explained, I accept that the literary work and the musical work are separate works but I consider that sung lyrics, as music, are an essential part of the musical work. It is therefore unsound to ask whether the musical work in the portion of Love is original in this sense divorced from the fact that the musical instrument playing that melody is a human voice making the sound ‘lʌv ɪz ɪn ði eə’.
206 Once that proposition is reached, I do not hesitate to say that the line ‘love is in the air’ sung to the melody of H1 (and, for that matter, H2 and H3) is original. It is not to the point in that analysis to say that the expression ‘love is in the air’ is a common English idiom or that the melody in H1, H2 and H3 can, by industrial combing of the archives, be detected in some forms of Anglican plainchant or is somehow otherwise the only or most obvious way in which the phrase could be sung. The literary meaning of the words is not relevant. The question is whether the line ‘love is in the air’, as a set of instructions, sung by a human to that melody and with its accompanying orchestration is original. In my view, that question answers itself.
Substantiality of the part taken to the copyright work
207 Having arrived at the view that the sung line ‘love is in the air’ is original in that sense, I do not doubt for one moment that it is a substantial part of Love. Here, I have considered only whether the parts taken in Warm constitute a substantial part of Love. I have accordingly discounted those parts of H1 which do not appear in Warm, such as the tambourine producing the rhythmic underpinning for the phrase, with reference to the expert evidence.
208 Glass Candy submitted that the line is ‘too slight and too mundane’ to be a substantial part of the musical work in Love. The Respondents went to great lengths to emphasise that H1 is only five notes in length, that it does not contain ‘very much musical information’, and that Mr Vanda conceded that it was a ‘fragment of a melody’. I do not accept that the part taken is too short or too mundane. Qualitatively, it is the essential air of the song, and it is certainly not so slender that it would be impossible to recognise it: EMI at 456 [49].
209 Musical history is littered with musical phrases which are short but essential: the first nine notes of Johann Sebastian Bach’s Toccata and Fugue in D minor (BWV 565); the sung lyric ‘we will, we will rock you’ from Queen’s ‘We Will Rock You’; the sung lyric ‘Memory’ in Andrew Lloyd Webber’s Cats; and, shorter still, ‘Despacito’ from the song of the same name by Luis Fonsi (featuring Daddy Yankee) and later remixed to feature Justin Bieber. I do not find in any way persuasive the Respondents’ misguided attempts to ignore the reality of the sung lyric ‘love is in the air’.
210 The length of H1 in the 1977 recording of Love is approximately 2.2 seconds. Cumulatively, it appears eight times throughout Love—a total of roughly 20 seconds, or the length of an entire chorus. On a score, H1 comprises one bar. After considering its repetition, it comprises eight bars of Love. Even in a quantitative sense, then, it is certainly not insignificant. It is substantial. To the extent that Kobalt sought to rely on the obiter of the Chief Baron in D’Almaine v Boosey (1835) 1 Y&C Ex 288 (‘the Chief Baron recalled an earlier case in which it was said that a mere bar did not constitute a musical phrase but three or four bars might do so’: cited in Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd [2010] FCA 29; 83 IPR 582 at 588 [53]), I would not follow it. It seems to me to be obviously wrong.
211 Glass Candy next submitted that the vocal line could not have been released as a song, which was said to be of some significance. They also said that it is not distinctive until completed by the balance of the phrase (that is, ‘everywhere I look around’). As I have said, whilst it might be a convenient factor to consider whether the part taken by itself is a work in which copyright would subsist, that is not determinative: EMI at 508 [264]. I reject both submissions. The Applicants sought to adduce evidence of H1 appearing in a 2002-2003 episode of The Gilmore Girls and that having attracted a ‘reasonably significant [licence] fee’ as evidence of its substantiality. I consider that the conclusion as to the substantiality of the part taken from Love may be reached without that evidence.
212 Glass Candy then submitted that that should not be taken into account, on the basis that Warm does not include a similar repetition of the part taken. But that is not to the point. The substantiality of the part taken in Love is not because of its repetition, nor does its repetition somehow become a musical element of the standalone phrase. The repetition emphasises, but does not create, its status as an essential air of the song. Kobalt then submitted that the variation of H1 in the forms of H2 and H3 should be taken to show that ‘the five note phrase is not itself significant’ in Love. I reject the submission.
213 The parties and experts spilt many turgid pages on whether the line was the ‘hook’ or whether the Applicants were, in fact, attempting to supplant identification of Love’s ‘hook’ with the test for substantial part. This is an arid debate. If the word ‘hook’ never appeared in another case like the present one, it would be, in my respectful opinion, too soon. The question is whether the sung line ‘love is in the air’ is a substantial part of Love viewed both from a quantitative but principally qualitative viewpoint. I think that it is and obviously so.
214 I therefore conclude that in making the September 2011 Commercial Recording of Warm, Glass Candy infringed the copyright in the musical work Love by deliberately copying a substantial part of Love, the sung line ‘love is in the air’ and accompanying music, in their song Warm. As will be seen below, however, Glass Candy has not been sued for making that recording. They have instead been sued for authorising the streaming and downloading of that recording. This generates significant legal issues. But for present purposes the question of whether Glass Candy copied H1 from Love and used it in their own song should be answered in the affirmative.
WARM AND THE LITERARY WORK IN LOVE
215 Here I may be much briefer. There is no doubt that the line ‘love is in the air’ in Love has been reproduced in Warm for the words are the same. There can therefore be no debate about objective similarity.
216 However, I do not accept that the line ‘love is in the air’ is sufficiently original such that it can be regarded as a substantial part of the lyrics of Love. Obvious, commonplace or prosaic statements are unlikely to be original, and therefore substantial, for the purposes of assessing infringement: IceTV at [43]. As the Respondents have pointed out, ‘love is in the air’ is a well-known English idiom. It has been used countless times in books, poems and songs. People who have written songs before the composition of Love entitled ‘Love is in the Air’ include George Gershwin, Steven Sondheim and the Dutch band Shocking Blue. And after Love its popularity as a song title has endured amongst contemporary composers: Rose Royce, Michael Feinstein, La Bouche, Mario Winans, Los Petersellers, Nadama and Clinton Fearon all boast catalogues featuring a song by the name of ‘Love is in the Air’. Before 1977, it was a lyric in several songs, and since 1977, NSYNC, Dolly Parton, Whitney Houston, and The Rolling Stones have all used it. The phrase appears in The Country Minister’s Love Story (1895) by Maria Bell (described on Amazon as a ‘hard-to-find book’). There are many other examples of the expression across multiple media, demonstrating its common use.
217 It was not therefore in any way original to use that line as the first line of the literary work which is the lyrics of Love. Whilst there is no doubt that the lyrics as a whole are an original literary work (in the subsistence sense), the first line is not original (in the infringement sense). The Applicants conceded in written submissions that there could be no originality in the Biblical phrases ‘I am the way’ and ‘Son of God’ which formed part of the larger (original) literary work ‘I am the Way’ which was at issue in Ludlow Music v Williams [2000] EWHC 456 (Ch). I therefore do not think that the lone phrase ‘love is in the air’ can be characterised as a substantial part of the literary work in Love and I do not accept that by using the same line in Warm that Glass Candy can have taken a substantial part of the literary work. What they took was a famous idiom which nobody owns.
218 It is therefore not necessary to consider whether the phrase ‘love is in the air’ is, for example, too short to constitute a substantial part of the literary work in Love.
219 I also do not accept that the longer couplet from Love has been reproduced in Warm as it is not objectively similar. That is particularly so when ‘love is in the air’ is excised from the longer couplet on the basis that it is not original, such that the only comparison to be made between the phrases in Love and Warm are the words ‘whoa-oh-oh’ and ‘yeah’.
220 For the balance of these reasons I omit reference to the literary copyright in Love because of my conclusion above that a substantial part of it was not reproduced in Warm. Consequently, the case based on the literary work, concerning both Warm and France, fails.
FRANCE AND THE MUSICAL WORK IN LOVE
221 In 2013, Air France decided to have a brand makeover and to craft an image which capitalised on French concepts of sophistication mixed with a distinct sense of cool. It wished to move away from any connotation of arrogance but to retain the French reputation for class. In a sense what the airline seems to have had in mind was a Gallic version of Cool Britannia, keeping the useful core values of the culture, jettisoning the undesirable ones and sprinkling the end-product with two tablespoons of hip: altogether, ‘pleasure à la française’.
222 Air France had an exclusive arrangement with the French advertising agency BETC which had been producing the airline’s advertisements since 1999. In 2013 BETC was retained specifically to work on this brand makeover. Early on it was decided that there would be a brand signature: ‘Air France, France is in the Air’. There then followed the development of a visual campaign consisting of imagery for use in print media. This part of the campaign did not involve any film or music. The print campaign was launched at an elegant event at the offices of the French Ministry for Foreign Affairs on the Quai d’Orsay on 26 March 2014 and was formally released in 12 countries on 2 April 2014 although not in Australia.
223 Air France and BETC also intended the launch of a television commercial but budgetary constraints meant that this could not take place at the same time as the visual launch. Nevertheless, work began on the commercial during the period leading up to the print launch but it would not be completed until the following year when it was launched on 8 March 2015. The search for the music to accompany the advertisement began in early 2014. The budget was set at €150,000. The sound BETC was looking for was modern, French and exciting. However, difficulties were experienced in locating a suitable French song which met all of these requirements.
224 The person at BETC in charge of finding a song which met these characteristics was Monsieur Christophe Caurret. In his affidavit evidence he referred to the fact that he had previously worked with Mr Padgett’s company, IDIB, on an account for the French brand Lacoste. In this part of his evidence he referred to Mr Padgett as ‘Johnny Jewel’. Mr Padgett gave evidence that in February 2014 BETC had flown him to Paris to meet him which was the same time that M Caurret was working on the music for the Air France account. Although I regard much of Mr Padgett’s evidence as something perhaps to be taken with a grain of salt, I can see no reason why he would make this up and I accept it.
225 Ultimately, M Caurret decided not to use Mr Padgett for the Lacoste campaign but Mr Padgett explained that BETC still paid him a ‘significant “kill-fee”’ to compensate him for all the time he had spent working on it. M Caurret did not refer to this fee.
226 M Caurret’s evidence about the timing of his dealings with Mr Padgett was perhaps a little vague but Mr Padgett’s was clear. On 3 March 2014, not long before the launch of the visual campaign at the Quai d’Orsay, M Caurret approached Mr Padgett’s manager, Mr Alexis Rivera, by email and asked him to provide some music for the Air France campaign. The relevant portion of the email is as follows:
We are looking for something uptempo with good humour, good vibes and that sounds modern: hip hop or electro.
We are looking for something really ambitious according to the job we already have done for them. Last point: we need tracks with a real gimmick as it we will also be used for radio campaigns too.
(Errors in original.)
227 In response, Mr Padgett provided Mr Rivera with a playlist entitled ‘Air France Mixtape’ which had 11 tracks on it, the first of which was the September 2011 Commercial Recording of Warm. This was sent to M Caurret. M Caurret’s evidence was that he knew of IDIB and that it was an on-trend label that represented modern artists. He was hopeful that IDIB might be able to identify some appropriate suggestions. It seems to me much more likely that since he had just been working with Mr Padgett only weeks before on the Lacoste account and had been impressed enough to fly him Paris, what M Caurret was interested in was Mr Padgett’s work and not his views.
228 The 11 tracks did, on the other hand, include IDIB bands apart from Glass Candy, although Warm was Track 1. M Caurret says that he no longer has the playlist (or it would seem the email) but he recalls that it had about eight or nine tracks on it which is broadly consistent with Mr Padgett’s evidence and the playlist reproduced at Confidential Exhibit JDP-2 to his affidavit. M Caurret listened to all of the tracks including Warm but thought that Warm was a really good fit with what BETC was looking for. He also thought that the fact that it had the lyric ‘love is in the air’ was a positive since it was similar to the signature of the campaign, ‘France is in the Air’.
229 It is not clear whether M Caurret listened to Warm in March 2014 or whether it took him a while to get to it. However, he gave evidence that it was not until June 2014 that he first played Warm at a BETC team meeting. The feeling of the meeting was that the song was perfect for Air France. As a result of an email to which I am about to refer, I infer that an internal decision was made at this meeting that an attempt should be made to have Glass Candy re-record Warm in French. At this point the development of the television commercial was well advanced and it was due to be filmed in Prague on 30 June 2014 and 3 July 2014. The person in charge of the advertisement at Air France was its then Advertising Director, Mme Fontaine, and she was going to be in attendance at the filming of the commercial.
230 Although there is no direct evidence of this, the most likely chain of events is that BETC had decided that they would secure a recording of Warm being sung in French and play that for Mme Fontaine whilst the commercial was being filmed on 30 June 2014. There is direct evidence that by 19 June 2014 BETC had retained a sound production company, Green United Music (‘GUM’), to procure the recording by Glass Candy of Warm in French.
231 On 19 June 2014 Mr Rivera was sent an email by GUM requesting that Mr Padgett record a version of Warm in French. A version of the lyrics in French was sent through on 25 June 2014. Mr Padgett’s evidence suggested that he thought at this time the name of the Air France Campaign was ‘French Kiss’. This is curious given that no witness from Air France suggested this. However, this point does not go anywhere and I mention it only for completeness. Ms Monahan recorded this version of Warm in French the next day in Los Angeles. Mr Padgett’s wife’s first language is French and she spent the day coaching Ms Monahan on French pronunciation. The recording was sent to BETC on 27 June 2014. This was only three days before filming was due to begin in Prague. Unfortunately, BETC rejected the French mixes of the recording. Nevertheless, Mr Padgett was asked to create a version of Warm for the Air France commercial which he began to work on during July 2014. At this stage, no proposal had yet emerged to change the lyric ‘love is in the air’ to ‘France is in the air’. Mr Padgett would not complete his work on a version of Warm until October 2014.
232 Meanwhile on 30 June 2014 and 3 July 2014 the television commercial was filmed in Prague. Mme Fontaine attended the filming on set. At that time, Warm—not in French—was played over the first takes. Mme Fontaine liked it and thought Warm was perfect for the campaign. It was, she said, ‘very modern, very joyful and also distinctive’, and she liked its ‘super modern, electronic feel’ and Ms Monahan’s ‘sensual’ voice. It fitted with her idea that Air France wanted to project a brand image as easy going and not ‘too classy’, by which I think she meant ‘posh’. She decided that Warm was the preferred song choice for the campaign. It is not precisely clear on Mme Fontaine’s evidence when this was conveyed to BETC but it may have happened in Prague. In any event, BETC had already the week before put Mr Padgett to work creating a version of Warm to fit the commercial (which involved a significant reduction in its length).
233 BETC presented the formal sound strategy to Air France on 22 October 2014 and this included Warm (by then Mr Padgett’s mix of Warm for BETC had been completed). At some point before 26 November 2014, BETC suggested that the lyric ‘love is in the air’ should be replaced by ‘France is in the air’, a proposal to which Ms Fontaine readily acceded since it made the brand message stronger. GUM then sent an email to Mr Rivera on 8 January 2015 about the issue which said, relevantly:
Regarding the recording, we just have one option left with you and Ida No.
So we need you to change the first « Love’s in the air » with « France’s in the air ».
Be careful, it’s « France’s in the air » and not « France is in the air », Ida No will do it much better than us! :)
(Emphasis original.)
234 I would read the reference to the ‘first « Love is in the air »’ as a reference to the lyric in Warm and not to Love itself. But even so the insistence on the song being sung as ‘France’s in the air’ rather than ‘France is in the air’ is somewhat curious. In the evidence before this Court some effort went into arguing that France contained the former line. Clearly it was intended to do so but the impetus for this appears not to have come from the artiste but from GUM and, therefore, presumably M Caurret. Mr Padgett then re-recorded the relevant parts of Warm with Ms Monahan singing ‘France’s in the air’ (or perhaps ‘France is in the air’—I cannot tell the difference)—a process which, along with other changes in the soundtrack, would take until 10 January 2015.
235 On 25 February 2015 IDIB and GUM entered into a master use licence agreement for the recording of France. The commercial was launched on 8 March 2015 on television in a number of countries (not including Australia) and via various social media platforms relevantly including YouTube. There were a number of different versions of France which were produced. These included the commercial itself, some sound jingles for radio, the telephone hold music, the in-flight safety demonstration videos, in-flight entertainment, an internal film and something called ‘Air France Touch’. In my view, the issues which arise in relation to all of these in terms of copying are the same. The Air France campaign including the commercial ad radio announcements were issued in 114 local markets around the world but not Australia. Air France’s licence to use France expired on 8 March 2018 and was not renewed as a result of this litigation.
236 In the television commercials produced for the Air France campaign, elegant French women swing back and forth on trapeze bars suspended from coloured ropes hung from an airy canopy which, in due course, is revealed to be the cabin of a vast light filled aircraft fuselage. Inevitably, there are baguettes. France is clearly an adaptation of Warm and I did not understand this to be in dispute. At the risk of risk of over-simplification, it is a condensed version of Warm in which the lyric ‘love is in the air’ has been brought to centre stage and changed to ‘France is in the air’ or perhaps ‘France’s in the air’. Those who are intimately familiar with Warm will recognise that all of the lyrics and melodies of France (apart from the word ‘France’) are derived from Warm although their order and emphasis are different. The commercial is about 45 seconds in duration. It finishes with ‘France is in the air’ followed by Ms Monahan’s melisma ‘whoa’. An audio file of France is here.
237 The questions to be asked in relation to France are the same as those asked in relation to Warm, and were laid out by the Full Court in EMI at 459-460 [66] and 491 [187]. Dealing with the musical work first, the work said to have been infringed is the musical work Love. The part of France said to contain a substantial part of Love is the sung line ‘France is in the air’. Having already identified the work in suit (that is, the first step of the test), the three contested issues are whether:
(1) the sung lyric in France, ‘France is in the air’ (that is, including its accompanying music) is objectively similar to the sung lyric and music accompanying ‘love is in the air’ in Love. Here I deal only with H1. I do so because H2 and H3 failed in relation to Warm and so cannot therefore succeed in relation to France;
(2) the sung lyric in France is causally connected to H1 in Love; and
(3) the part taken in France is a substantial part of Love.
Objective similarity
238 In answering (1), one must put behind oneself both the fact that Mr Padgett and Ms Monahan deliberately took H1 from Love when they wrote Warm and the fact that France is an adaptation of Warm. Similarly one must put altogether out of consideration that in a few paragraphs I will find M Caurret deliberately copied the line ‘love is in the air’ from Love, used it in Air France’s commercial and then lied about it in this Court. Here the question is whether the two sung lines are objectively similar and in that inquiry the provenance of France and the motives of those who fashioned it are irrelevant.
239 Nevertheless, I think the answer to (1) is yes. It is true the styles are different. But to listen to Love at 0:08-0:10 and France at 0:02-0:03 is to hear the same sung lyric. The objective similarity is not reduced because the composite rhythm is in semiquavers in Love but in quavers in France. Neither is the objective similarity diminished because the ‘classic’ bass line in Love is missing in France nor because Mr Padgett mercifully omitted a tambourine from France whereas in Love it jingles along under the line ‘love is in the air’. All of these are differences but they do not go to the essence of the sung line to the ordinary, reasonably experienced listener.
240 What is also different is of course the sung word ‘France’ instead of ‘love’. Those two words when sung do not sound the same but they are both single-syllable words starting with consonants and despite that difference the line retains the same syllabic and rhythmic profile and melodic contour. Having regard to my conclusions about the role of the sound of lyrics as an element of the musical work, this difference between the two words is of little importance. Overall, my impression is that the sung lyric ‘France is in the air’ would be regarded by the ordinary, reasonably experienced listener as being objectively similar to H1 in Love.
Causal connection
Conscious or unconscious copying
241 The substantial issue is that of causal connection which in this case means determining whether the sung lyric (and, as stated, the accompanying music) in France was copied by Air France from Love. Having regard to the five options for causal connection with respect to Warm laid out above at [193], I am satisfied that this was not a matter of coincidence, that the musical phrase and lyric were not taken from a third source, and that as a matter of chronology the musical phrase and lyric in Love could not have been copied from France.
242 There are therefore two ways in which copying might be shown. First, it might be shown that H1 in Love was copied by Glass Candy into Warm and that the same musical phrase was then copied from Warm by them in France. Secondly, independently of whether Glass Candy had copied the sung lyric from Warm, it might be shown that Air France had decided to cause France to be made with the intention of copying the sung lyric from Love. The Applicants’ pleadings throw no light on which of these cases was intended. Their written submissions were devoted to the second case (described by Air France as unpleaded) but it is not clear whether this was on the basis that the Applicants were seeking to advance a case against Air France which might survive a defeat by Glass Candy.
243 It may be that the Applicants did not pursue such a case because of the possibility that Air France would plead a defence of innocent infringement. In any event, on the facts as I have found Glass Candy copied the sung lyric from Love into Warm. There is no dispute that they crafted the sung lyric ‘France is in the air’ from the sung lyric ‘love is in the air’ in Warm (as I explain later). It would appear therefore obvious that the former is inevitably causally connected to the sung lyric ‘love is in the air’ from Love. On that basis, it would appear—subject to its details—that infringement by Air France would be established. I will proceed on the basis that this case was pursued but not mentioned by any of the parties because it was so obvious that it went without saying. On that basis, I find it made out.
244 Turning then to the case that Air France, independently of Glass Candy, took the sung lyric ‘love is in the air’ from Love and inserted it into France, substituting the lyric ‘love’ for ‘France’, the Applicants advanced two versions of this case. The first and larger case appeared to be that the entire decision to use the brand signature ‘Air France, France is in the Air’ had consciously been made to take advantage of Love and the selection of Warm and its adaptation into France was a deliberate choice made to exploit Love without having to pay for it. The second and smaller case was that even if the brand signature itself had not been selected by Air France for that reason it was clear enough that Air France’s advertising agency, BETC, had deliberately commissioned the creation of France with the intention of exploiting Love. On this view, France was fashioned from Warm which had in turn been chosen by the advertising agency precisely because it was, as the Applicants’ counsel provocatively submitted, ‘a poor man’s Love’.
245 I do not accept the Applicants’ larger case. Air France called as a witness Mme Fontaine who is presently the Director of Communications at the City of Paris. At the time of development and launch of the Air France campaign she was the Advertising Director of Air France. She had complete authority for the campaign and it was her responsibility. It was never part of the strategy according to Mme Fontaine that there was to be any connection Love and it was not her intent to leverage off it. She says she never required a song with the lyric ‘love is in the air’.
246 Air France also called Mme Du Plessis. She was second in charge of the advertising campaign at BETC. Her role seems to have been co-ordinating various creative teams at BETC and communicating with the client in the form of Mme Fontaine. I did not apprehend Mme Du Plessis to have been involved in the creative processes which yielded either the signature ‘France is in the Air’ or the creation of France although she was certainly aware of what those processes were yielding and was actively involved in proffering advice to Air France about them. Like Mme Fontaine her evidence was that the signature had been adopted for reasons which did not include any desire to leverage off Love.
247 There was evidence which suggested that both Air France and BETC were aware during the development of the signature of a possible connection between the ‘France is in the Air’ and the song Love. Mme Du Plessis gave evidence that she recalled having met with Mme Fontaine in May 2013 about the relaunch of the brand. It is fair to infer, I think, that this must be approximately when the rebranding process commenced. By August 2013 it is apparent that Air France was exploring two potentially different campaigns, being the ‘Bleu, Blanc, Rouge’ campaign and the ‘Pleasure’ campaign. The former had the signature ‘Travel in French Class’ and the latter ‘France is in the Air’. It is apparent that some early visual elements for both campaigns had already been developed by this time.
248 Focus group testing was conducted on two sets of travellers in Paris on 30-31 July 2013 and New York on 3 August 2013 to gauge their responses to the two different campaigns. There was a strong preference for the ‘Pleasure’ campaign and its signature ‘France is in the Air’. One of the reported comments for the signature ‘France is in the Air’ was ‘It’s singing, it’s like a melody’. But many other comments are reported too and I am not prepared to read this as a reference to Love. Mme Du Plessis conceded that focus group participants had compared it to ‘love is in the air’ as a common expression, but not to the song Love. Still less am I inclined to regard this market research material as showing anything of substance about the motives of those behind France. Accordingly I decline to find that Air France had sought to take ‘love is in the air’ from Love prior to the airline and BETC settling on the ‘France is in the Air’ signature.
249 When the visual launch took place on 26 March 2014 at the Quai d’Orsay journalists were invited or, if they did not attend, were provided with some launch materials. Two articles written in Business Traveller France and Challenges tend to suggest that Air France’s Director of Communications was present at the launch and that she made some kind of connection between the signature ‘France is in the Air’ and Love. To read both articles is to appreciate that they have a common source in some other, now lost, document, most likely a press release by Air France. The last paragraph of both articles deals with ‘France is in the Air’ with explicit reference to Love and John Paul Young. There was a debate about the admissibility of these articles. I will admit them as evidence of what they say but not as evidence of the truth of their contents.
250 I am prepared to infer that by 26 March 2014 at least Air France’s Director of Communications had made the connection between ‘France is in the Air’ and Love. M Babinet, BETC’s Creative Director for the Air France campaign, was present at the launch as one might expect and I am prepared to infer that he too made the connection. Indeed, it is apparent that the process of selecting the brand signature was designed to inspire certain connotations and it seems to me entirely plausible that part of the attraction of ‘France is in the Air’ is that it did conjure a play on words with ‘love is in the air’ and for some people that would also result in a resonance with Love. These were professional marketing personnel. The idea that this did not occur to them would bespeak a degree of incompetence I find difficult to square with their reputation. But, even so, as at 26 March 2014, at the launch of the visual campaign, there was nothing inappropriate about that. What was being launched was a brand signature and not a piece of music.
251 For that reason I am not impressed by the fact that throughout this period a commercial produced by BETC for French television was playing on French television for a brand called Mixa in which the sung lyric ‘love is in the air’ was playing to the melody of H1 (which had been licensed by Alberts). No doubt the staff at BETC were aware of this but since at the stage of the visual campaign no music was involved this seems to me not to prove very much. M Caurret also insisted that he was unaware of the Mixa campaign, though as will be seen, I did not think him a reliable witness and his insistence on not knowing of the Mixa commercial may be something of a prelude to an assessment of his evidence. However, I do not think the Mixa debate assists anyone.
252 It is true, as the Applicants submit, that the employees who seem to have been responsible for the creation of the Air France signature, Mme Dupont and M De Ligt, were not called to give evidence. But I would not be inclined to infer anything untoward in the creation of the written brand signature ‘France is in the Air’ when no question of music was yet involved. For the same reason, I do not think on this issue at least that the Applicants are assisted by the fact that BETC’s Creative Director for the Air France campaign, M Babinet, was not called.
253 There is not the material available to infer the existence of an intent from the outset to build the brand campaign around ‘France is in the Air’ so as to leverage off Love. Both Mme Fontaine and Mme Du Plessis denied any such intention and I do not think their evidence about that was diminished by the market research materials or the statements made at the Quai d’Orsay or by other advertisements produced contemporaneously by BETC which used Love. It would be a bold heist indeed to build the whole campaign around naked intellectual property theft. A much more likely explanation springs from the fact that, when all is said and done, ‘love is in the air’ is a very common expression in English upon which many people over the years have stumbled. The Applicants most assuredly do not have any property in that phrase and there are perfectly innocent reasons why an airline called ‘Air France’ might end up with an advertising signature ‘France is in the Air’.
254 However, I do accept the Applicants’ smaller case that BETC’s Music Creative Director, M Caurret, had deliberately caused France to be made so as to copy the sung lyric from Love. M Caurret denied this but in my view he was not telling the truth and it is clear that he did.
255 There were several elements of M Caurret’s account of events which were unsatisfactory. The first concerned the sound strategy which had been prepared by BETC by October 2014. As the person in charge of the music I infer, despite his assertion that Mme Du Plessis had prepared the sound strategy, that M Caurret was intimately involved in its preparation. The notion that the man in charge of the production of the music strategy for Air France was not involved in the written version of that strategy is not one that I can be expected to accept.
256 A copy of the sound strategy, dated 22 October 2014, was annexed to the affidavit of Mme Du Plessis. It contains a side by side comparison between Air France’s objectives and the ability of Warm to deliver upon them in these terms:
A choice that meets our challenge | |
Air France An international signature Signature “France is in the air” A constraint: to accompany the sequence of scenes in the new video campaign A new territory playing on: Hedonism The pleasure Energy, “Sparkiness”. Bright and vivid colours | Warm in the winter A melody that crosses borders marked by a vocal gimmick “love is in the air” in total coherence with the campaign A melody sung in English, light. An opportunity: electro-structured track thanks to a dynamic rhythmic loop. A song that strikes by: Its energetic and sensual melody The rise in power and the flights of the female voice Its innovative electronic sound Its dynamic arrangements |
257 In the original email of 3 March 2014 to Mr Rivera, BETC had asked for music with a ‘gimmick’ and this had brought forth immediately from Mr Padgett a copy of Warm as Track 1 on the playlist he sent through. It is, I think, plain that the gimmick was the sung line ‘love is in the air’. In cross-examination, M Caurret accepted that the sound strategy mentioned that the gimmick had been the line ‘love is in the air’ but under re-examination he sought to say that the gimmick was the length of the song. The notion that the gimmick in Warm was its length (about six minutes) is not plausible because M Caurret was involved in the production of an Air France commercial of approximately 45 seconds’ duration. Although M Caurret swum manfully against the tide of the obvious he was eventually swept away by its implications. He knew very well that the key feature of Warm which was important from BETC’s perspective was its sung line ‘love is in the air’ and its close connection to the carefully selected brand signature. His evidence to the contrary was false.
258 There are other aspects of M Caurret’s evidence which were unsatisfactory. It will be recalled that the commercial was to be filmed on 30 June and 3 July 2014 in Prague. M Caurret was present for the filming. As it happens he had been in fraught negotiations with Alberts about acquiring the rights to Love for another campaign for Gallia at the same time. The negotiations concerned both the large fee which Alberts were demanding for the use of Love and also their insistence on clearing any re-recording of the song. M Caurret had been negotiating with Alberts since at least April 2014. The week before filming commenced in Prague M Caurret had sent an email in which he was plainly outraged at a particular position Alberts was taking: ‘in 15 years of experience I NEVER saw this’. M Caurret denied that these emails exchanges showed that he was angry, saying instead it was just his negotiating style. I do not accept this evidence which would require more willing suspension of disbelief than I have available. To read this long series of emails is to see a man most annoyed at the difficult posture that Alberts were apparently taking.
259 On 1 July 2014—that is, between the first and second day of the filming of the commercial—M Caurret remained locked in these negotiations which clearly aggravated him. The notion that he would not have had Love in his mind when on 30 June 2014 BETC played Warm with the identical line and same melody to Mme Fontaine as part of an advertising campaign whose signature was ‘France is in the Air’ simply beggars belief. Yet M Caurret omitted any reference to these negotiations from his affidavit. Indeed what he said about Love was this:
While they did not dismiss them completely, Air France did not accept any of the three options and requested that BETC continue its search. Air France acknowledged a search confined to modern French artists limited the options available and indicated that they were prepared to consider international music artists, if the music suited the Sound Brief.
In the course of my search for music, I never contemplated using the Australian song “Love is in the Air” by Harry Vanda and George Young … I had heard of the song but it never entered my mind to suggest it. It was never suggested to me by anyone at Air France, BETC or by anyone during the course of my search for music as [a] potential song for the Air France Campaign.
260 But surely it was relevant for the Court to know in his account of his relative indifference to Love that he had been engaged in fraught negotiations with Alberts about Love at the same time. Why did M Caurret leave this out and paint an incomplete picture of his relationship with Love? Air France in its submissions suggested the omission flowed from M Caurret’s obligations of confidentiality but I do not accept this. A witness is not excused from the obligation to tell the whole truth just because of a perception on the witness’ part that parts of the truth might involve the confidences of others. Abundant mechanisms exist to deal with that exigency.
261 Although one needs to be careful about what can be inferred from the telling of untruths, in this case the most likely inference appears to me to be that M Caurret was attempting to cover his tracks.
262 During cross-examination M Caurret was bold enough to suggest that he had never proposed the use of Love in an advertising campaign (‘In my agency, no’). But when confronted with pages of emails written by him about the unreasonableness of Alberts’ demands for Love in relation to the Gallia campaign he clarified that what he had meant by that answer was that he had never proposed Love and that Gallia was a case where the client had suggested Love to him. This was a most unsatisfactory response. M Caurret had attempted to put as much distance between himself and Love as he could and this answer was made up on the run. Another aspect which leads me to regard M Caurret’s evidence about this as quite unreliable is his statement that he would not have used Love because it was an old track and was not French. But in fact one of the three tracks originally put forward by BETC to Air France, ‘Voyager’, was a track from the 1970s and, in the end, the song put forward to Air France, Warm, was not even French.
263 I do not accept M Caurret’s denials of any comprehension of the link between Love and Warm or France. M Caurret’s profession is the commercial exploitation of music and sound design. It is literally his job to understand music. The idea that he did not detect any connection between Warm and Love even whilst he was engaged in negotiations about the use of both is outlandish. As the sound strategy document shows BETC were well aware that Glass Candy was a band ‘known for its ability to divert existing styles and sounds to produce new ones’. M Caurret had worked with Mr Padgett in February 2014 at the very same time as he was working on the music for the commercial. He asked Mr Padgett for a song with a gimmick and he received the song Warm which just happened to have the same lyric ‘love is in the air’ as Love and also most fortuitously to the identical melody. And, even better, the lyric just happened to match the brand signature which Air France was pursuing. That across the same period M Caurret was engaged in fraught negotiations with Alberts over the use of Love in the Gallia campaign was, he would have the Court believe, just another coincidence.
264 I would infer from these circumstantial matters that the obvious is the fact and I reject M Caurret’s denials to the contrary. On this topic, it would have been useful to hear from the absent M Babinet who was in charge of the creative process overall at BETC. The failure to call him allows me more confidently to draw the inference which I do that M Caurret deliberately and consciously used Warm because it contained the critical sung line ‘love is in the air’ to the same melody as in Love and that the subsequent production of France was simply a further step in this process of plagiarism.
Can BETC’s knowledge be imputed to Air France?
265 I reject Air France’s submission that BETC’s knowledge is not to be imputed to it. BETC was engaged by Air France as its exclusive advertising agency and its role was to be the ‘exclusive management of the advertising activities’. Ms Fontaine’s evidence at §11 showed that Air France looked to BETC to obtain all the appropriate licences for intellectual property needed for the campaign. Indeed, BETC obtained just such a licence from Glass Candy for France through GUM. Air France gave this function to BETC and in doing so it must have imputed to it therefore BETC’s knowledge in performing (or as here not performing) that function: El-Ajou v Dollar Land Holdings Plc [1994] 2 All ER 685 at 702; RCA Corporation v Custom Cleared Sales Pty Ltd [1978] FSR 576 at 580-581.
Conclusion on causal connection
266 I therefore conclude that the Applicants have proved that France is causally connected to Love (and as I have said, I accept that the same conclusion flows from the fact that Warm was copied from Love).
267 This conclusion gives rise to three further conclusions. First, it was Air France that copied the sung lyric from Love into France. It knew through BETC that France was a copy and it commissioned its creation. Secondly, there can be no question of an innocent infringement defence under s 115(3). Thirdly, the copying was flagrant within the meaning of s 115(4) and the issue of additional damages therefore is one that calls for consideration.
268 As to (3), I have already given my reasons for concluding that H1 is a substantial part of Love. That conclusion is not altered by the meaning of one of the words being different (which is a matter for the literary work).
269 Subject to a close examination of the rights in question, in principle, I therefore accept that an infringement has been made out.
INFRINGEMENT ON THE BASIS OF STREAMING AND DOWNLOADING
The rights relevant to this litigation
270 The Applicants’ case on infringement of the copyright in the musical work against each of the Respondents turns on the submission that they have the right to stream and download Love over the internet and that the Respondents have, by streaming and permitting the downloading of Warm (or in streaming France on YouTube and using it as telephone hold music) infringed those rights. The infringement is alleged to arise because, first, Warm and France are alleged to contain a ‘substantial part’ of Love which was deliberately taken from it; secondly, the streaming or downloading of a ‘substantial part’ of Love is taken by s 14(1)(a) of the Copyright Act to be the streaming and downloading of Love itself; thirdly, the streaming and downloading of Love involves the exercise of rights comprised in the copyright in Love; and, finally, because the doing of an act comprised in a copyright without the permission of the owner of that right constitutes its infringement: s 36(1).
271 The last step requires the identification both of the rights involved in the streaming and downloading of Love and the owners of those rights. The rights comprising the copyright in the musical work embodied in Love are specified in s 31(1)(a) of the Copyright Act:
Nature of copyright in original works
(1) For the purposes of this Act, unless the contrary intention appears, copyright, in relation to a work, is the exclusive right:
(a) in the case of a literary, dramatic or musical work, to do all or any of the following acts:
(i) to reproduce the work in a material form;
(ii) to publish the work;
(iii) to perform the work in public;
(iv) to communicate the work to the public;
(vi) to make an adaptation of the work;
(vii) to do, in relation to a work that is an adaptation of the first-mentioned work, any of the acts specified in relation to the first-mentioned work in subparagraphs (i) to (iv), inclusive …
272 These rights may be assigned and any such assignment may be limited in any way (s 196(2)) and those ways are not in any way limited by the language of s 31(1)(a): s 196(2)(a). So, for example, to illustrate the operation of s 196(2)(a) it is possible for the communication right in s 31(1)(a)(i) and the reproduction right in s 31(1)(a)(iv) to be assigned to different persons. And, to illustrate the implications of s 196(2), it is possible to assign to one person a single aspect of the reproduction right in s 31(1)(a)(i)—perhaps the right to press vinyl records— and to other persons different aspects of the same right such as the production of sheet music or the making of recordings on compact disc even though none of these aspects of the right in s 31(1)(a)(i) are explicitly mentioned in the Copyright Act.
273 Where a musical work is streamed over the internet this involves the communication of the work to the public under s 31(1)(a)(iv). ‘Communicate’ is defined in s 10 to mean ‘to make available online or electronically transmit (whether over a path, or a combination of paths, provided by a material substance or otherwise) a work’. The streaming of a literary or musical work from a streaming service involves its electronic transmission and hence is a communication of that work within the meaning of this definition. However, it is also a communication of such a work merely to make it available online without the need for any actual electronic transmission: Roadshow Films Pty Ltd v iiNet Limited (No 2) [2012] HCA 16; 248 CLR 42 at 53 [21] and 80 [111].
274 In any event, to the extent that the owners of copyright in the musical work Love contend that the copyright has been infringed by the streaming of Warm from online music services, it is the communication right in s 31(1)(a)(iv) which is the relevant right (or, perhaps more precisely, at least the digital streaming component of that right).
275 Where a subscriber to a service such as Spotify downloads a musical work, the work must first be communicated from the streaming service to the subscriber. This involves an act of communication by the streaming service within the meaning of s 31(1)(a)(i). However, upon receipt of that communication the subscriber must then create a copy of the work on their own device which is to stay in some form of storage on that device. The creation of a copy of the musical work comprising a song in the storage of a device is the reproduction of those works in a ‘material form’ within the meaning of s 31(1)(a)(i). This is because ‘material form’ is relevantly defined in s 10 in relation to a work to include ‘any form (whether visible or not) of storage of the work’.
276 Thus an end user downloading a work from a streaming service will infringe the copyright in that work unless they have the licence to do so from a person owning the reproduction right in s 31(1)(a)(i) (or, more precisely, owning at least the digital download component of that right) and the streaming service itself will also require the licence of the person owning the communication right in s 31(1)(a)(iv) (or at least the digital streaming component of that right) to transmit the file which is then to be copied by the end user. Furthermore, as already noted, the streaming service itself will need to make a copy of the work on their own servers from which the data in the stream or download can be sourced and the making of such a master copy or copies will involve the exercise of part of the reproduction right in s 31(1)(a)(i).
277 It follows that the rights in Love which are relevant to this litigation are subsets of the reproduction right in s 31(1)(a)(i) and the communication right in s 31(1)(a)(iv). The reproduction and communication rights encompass, of course, entitlements to much more than digital downloading and digital streaming by means of the internet. Between them they also encompass economically significant rights such as radio and television broadcasting, the incorporation of music into a soundtrack for a film and the production of vinyl records, compact discs and sheet music (to nominate but a few).
278 As I have explained already, Love was composed in 1977 by the Mr Vanda and the late Mr Young, both of whom were Australian residents at that time. It is not in dispute that the musical work comprising Love was original in the sense that the word is used where the inquiry is into subsistence of copyright (i.e. not copied from somewhere else). Likewise it is not in dispute that Mr Vanda and Mr Young were the ‘authors’ of the musical work for the purposes of s 35(2) of the Copyright Act. The effect of s 35(2) is that upon Love’s composition, Mr Vanda and Mr Young became the joint owners of the copyright in the musical work comprising it.
279 Section 32 draws another distinction between the copyright in an unpublished work and that in a published work and in some cases this may matter for the purpose of determining the duration of the relevant monopoly. However, no such contention is advanced by any of the parties in this case. It is not in dispute therefore that at the moment Mr Vanda and Mr Young composed Love they became the owners of the copyright in it and that this occurred sometime in 1977.
280 The communication right in s 31(1)(a)(iv) was not added to the Copyright Act until 2001 but transitional provisions to the legislation introducing it, the Copyright Amendment (Digital Agenda) Act 2000 (Cth) (‘the 2001 Amendment Act’), made that right exist with retrospective effect in works in which copyright subsisted immediately prior to its commencement: s 4, Sch 2 cl 2(a). The 2001 Amendment Act commenced on 4 March 2001.
The 1972 assignments by the composers to APRA
281 Mr Vanda and Mr Young had each executed, on 31 October and 24 November 1972, separate agreements with APRA (‘the 1972 APRA Assignments’) under which they assigned to it the ‘Performing Rights’ (a defined expression) in any works they might in the future (i.e. after 1972) compose. These rights included the right to broadcast such works and the right to transmit such works to the subscribers to what was then called a ‘diffusion service’. The latter right no longer separately exists in s 31(1)(a) in relation to works coming into existence after the 2001 Amendment Act, having been subsumed sinkhole-like into the communication right created by those amendments.
282 However, the Copyright Act shorn of those amendments continues to apply to licences, contracts or agreements which ‘relate to’ the diffusion service right: s 4, Sch 2 cl 3. The effect of this is that the diffusion service right continues to exist for the purposes of the 1972 assignments ‘as if’ the 2001 Amendment Act had not been enacted. As tax lawyers know, the words ‘as if’ are pregnant with possibility and open up for legal analysis the unchartered realms of the hypothetical from whose bourne few travellers safely return: Union Fidelity Trustee Company of Australia Limited v Commissioner of Taxation [1969] HCA 36; 119 CLR 177. Generally, as it is indeed the case here, the pivotal question will be how far the hypothesis implicit in the words ‘as if’ is to be permitted to run. Almost always, this question will be difficult as the Full Court’s wrestling with the interaction between s 159GZZZP(1) and s 99B(2)(a) of the Income Tax Assessment Act 1936 (Cth) in Howard v Commissioner of Taxation [2012] FCAFC 149; 206 FCR 329 well shows.
283 Depending on one’s legal disposition, therefore, it may be a rather nice question whether ‘as if’ in this case means in relation to the diffusion right referred to in the 1972 APRA Assignments that the corresponding and potentially overlapping portion of the communication right did not come into existence at all because the working through of the hypothesis required by Sch 2 cl 3 of the 2001 Amendment Act (‘as if the Copyright Act had not been amended by this Act’) secretes within its interstices the non-existence of all of the transitional provisions including cl 2(a) or whether, instead, the transitional provisions, or at least perhaps cl 2(a), should be excluded from the hypothesis erected by cl 3.
284 As will be seen, the answer to this cheeky question need not be determined. Furthermore, to the extent that the communication right does not involve the diffusion right there is no reason to think that cl 2(a) does not operate in accordance with its terms. In any event, the important matter for the purposes of what otherwise might appear an unnecessary detour is that we have it on the very highest authority that it is the diffusion right which underpins the playing of telephone hold music: Telstra v APRA. And it is the playing of France on telephone hold music in Australia which forms part the allegations that the Applicants make against Air France.
285 The definition of the ‘Performing Rights’ in the 1972 APRA Assignments did not include the reproduction right in s 31(1)(a)(i). This was not an oversight. APRA’s focus as a collecting society is on the collection of revenues for the broadcasting or performance of its members’ works rather than on the creation of copies of those works. APRA therefore has no need for any part of the reproduction right in s 31(1)(a)(i). On the other hand, although the effect of the 2001 Amendment Act was probably and retrospectively to create a right of communication which APRA would most certainly have been keen to possess, the drafters of the 1972 APRA Assignments could not have foreseen this development or its retrospective significance in 1972. Consequently, the drafting of the definition of ‘Performing Rights’ in the two assignments is not textually sufficient to operate as an assignment of the communication right.
286 On the other hand, the definition of ‘Performing Rights’ did include some aspects of the communication right, and particularly those which that right was designed to subsume. Presently material in that regard is the diffusion service right referred to above underpinning the use of telephone hold music. That was part of the ‘Performing Rights’ under the 1972 APRA Assignments and also part of the communication right in s 31(1)(a)(iv). The effect of the assignment of the Performing Rights to APRA therefore operated on the diffusion right (to which it expressly referred) and also to pick up the identical part of the communication right (if it in fact existed despite the quantum-mechanical blandishments of Sch 2 cl 3 of the 2001 Amendment Act). That is why it is not necessary to determine definitely whether the communication right did in fact exist in 1972 in relation to the diffusion right. Whatever the right to play telephone hold music might be called, it was assigned to APRA in 1972.
287 What then did the 1972 APRA Assignments do when Love was composed in 1977? Section 197 of the Copyright Act has the effect that an assignment of future copyright takes effect when the copyright contemplated by it comes into existence. This displaces the ordinary rule that assignments of future property take effect only in equity (Performing Right Society Ltd v London Theatre of Varieties Ltd [1924] AC 1 at 14, 20, 30-31) and its sometime procedural corollary that the legal owner must be joined as a party to the suit: Long Leys Co Pty Ltd v Silkdale Pty Ltd (1991) 5 BPR 11,512 at 11,517-11,518 per Sheller JA. When Mr Vanda and Mr Young composed the musical work comprising Love in 1977, the effect of the 1972 APRA Assignments was therefore validly to assign to APRA, relevantly, the right to use Love as telephone hold music (certainly as part of the diffusion right and possibly also as part of the communication right) but to leave the balance of the communication right with the two composers. And, because the 1972 APRA Assignments for good reason did not purport to deal with the reproduction right it, too, remained with the composers.
The 1977 assignment from the composers to Alberts
288 On 5 September 1977, Mr Vanda and Mr Young entered into an agreement with Alberts to publish Love. Under it they assigned to Alberts ‘the whole and entire copyright’ in Love in return for which Alberts promised to pay them royalties at agreed rates. This assignment included by reason of the sweep of its textual breadth (‘the whole and entire copyright’) the reproduction right (which had never been assigned to APRA) and so much of the communication right as had not already been assigned to APRA which, relevantly, included the then retrospectively existing but as yet unperceived digital streaming rights. Textually this would also have included the diffusion service right but, as already explained, this had already been assigned to APRA under the 1972 APRA Assignments upon the composition of Love in 1977. The agreement of 5 September 1977 was therefore effective to transfer to Alberts any copyright which Mr Vanda and Mr Young still held at the time of the agreement.
The 1986 licence from Alberts to AMCOS
289 AMCOS did not come into existence until 1979 so there was no occasion for Alberts to grant it a licence in relation to the reproduction right in 1977. However, on 19 December 1979 Alberts granted AMCOS a licence of the reproduction right. That agreement was not in evidence, but a subsequent agreement dated 30 September 1986 (‘the 1986 AMCOS Licence’), which referred to that agreement in Recital B, was in evidence. By cl 2(a) Alberts granted to AMCOS an exclusive licence in relation to all of the works which held the reproduction right which included Love. This licence extended to a number of reproduction rights, including the making of ‘records’ which was defined to have the same meaning as it had in the Copyright Act. That definition in s 10 at that time was ‘a disc, tape, paper, or other device in which sounds are embodied’. The definition was amended with effect from 1 January 2007 by the passage of the Copyright Amendment Act 2006 (Cth) Sch 3 cl 2 to include ‘electronic files’ in which sounds are embodied. I consider that the breadth of ‘or other device’ in the definition as at 30 September 1986 was sufficient to confer upon AMCOS on 30 September 1986 the right to make digital copies of Love. However, the parties agreed that the agreement would be read so as to pick up amendments to the definitions in the Copyright Act as made from time to time.
290 Because of an argument to which it will be necessary to return below, it is useful at this juncture also to note some other aspects of this licence. First, the licence was an exclusive licence ‘to authorize’ the acts to which it applied, which is to say that its explicit purpose was to permit AMCOS to licence other persons to exercise the reproduction right. This is perhaps unsurprising in the case of a collecting society.
291 Secondly, the acts covered by that right to licence extended to the right to make reproductions of the works for the purpose of broadcasting in Australia: cl 2(a)(ii). The granting by AMCOS of a corresponding right to an Australian broadcaster under a blanket licence would, for example, have permitted that broadcaster to make a copy of Love for the purpose of broadcasting it. This would have covered the situation of a radio broadcaster who wished to make a copy of Love on a tape so as to avoid having to put the LP on the turntable each time it wished to play it. However, this right was also subject to an important carve-out: it did not extend to advertisements. Thus a broadcaster who wished to make a copy of an advertisement which used Love could not rely on an AMCOS blanket licence.
292 Thirdly, the licence also extended to cover reproduction of the works in the case of cinematographic films which were not for the purpose of being broadcast in Australia. What this meant was that a person who wished to make a copy of Love in a film which was intended to be broadcast in Australia could not rely on an AMCOS blanket licence and had to deal directly with Alberts. Even in relation to films which were not intended to be broadcast in Australia, AMCOS still had to refer each application for a licence to Alberts: cl 4. The point for present purposes is that Alberts were in firm control of the process of licencing the copying of Love both for advertisements and for films.
293 Fourthly, and perhaps more importantly, the AMCOS licence was explicit in not applying in relation to records made by ‘the companies listed in the Annexure hereto’. The Annexure contained a list of record making companies such as EMI and Festival Records. The intent was clear: control of licensing to record companies would remain with Alberts.
The 1992 assignment from Alberts to APRA
294 On 1 July 1992, Alberts assigned to APRA the ‘Performing Rights’ in all of the works in which it had an interest, which was a large catalogue including Love (‘the 1992 APRA Assignment’). The definition of ‘Performing Rights’ was the same as it had been in the 1972 APRA Assignments. Whilst the assignment may have been effective in relation to works in the catalogue apart from Love it had no effect in relation to Love itself—Alberts had never received the ‘Performing Rights’ in Love under the 5 September 1977 agreement since they had already been assigned to APRA in 1977 the legal moment after Love was first composed. Consequently, Alberts remained the owner of so much of the reproduction and communication rights as authorised digital downloading and streaming and these rights were not affected by the 1992 APRA Assignment.
The 2005 assignment from Alberts to APRA
295 On 31 August 2005, Alberts again assigned to APRA the ‘Performing Rights’ in the works in the copyright in which it had an interest including Love (‘the 2005 APRA Assignment’). Unlike the 1992 Assignment, however, the definition of ‘Performing Rights’ had been adjusted to take account of the 2001 Amendment Act and, in particular, to include explicitly the right of communication in s 31(1)(a)(iv). This assignment was therefore effective to assign so much of that right as had not already by that time been assigned to APRA. This included that part of the communication right which authorised digital streaming. The assignment did not purport to deal with the reproduction right which remained with Alberts. Consequently, from 31 August 2005 APRA owned the digital streaming right in Love and Alberts owned the right to make copies including the right to make digital copies.
The 2016 assignment from Alberts to Boomerang
296 It will be recalled that in 2016 the music publishing business of Alberts was sold to the German multinational rights management business, BMG. Alberts was owned and controlled by members of the Albert family. The Albert family had been involved in music publishing in Australia since the 1890s and had made a great fortune out of the rising popularity of the harmonica in the 1890s. As part of the sale to BMG it was agreed that the Albert family would retain ownership of the back catalogue of songs written by Mr Vanda, the late Mr Young and the late Mr Stevie Wright.
297 On 30 August 2016, ownership of the copyright in this back catalogue, including Love, was assigned from Alberts to a company under the control of the Albert family, the present First Applicant, Boomerang. This was effective to assign the reproduction right (including the digital downloading right) but not the communication right (including the digital streaming right) which had already been assigned to APRA under the 2005 APRA Assignment and was not available to be assigned to Boomerang.
298 The effect of s 196(4) of the Copyright Act is that a licence of copyright binds every successor in title to the same extent as the grantor was bound. In this case, this has the consequence that Boomerang was bound by the 1986 AMCOS Licence granted by Alberts to AMCOS. No party submitted that the effect of Alberts disposing of its entire catalogue either to BMG or Boomerang was to terminate the 1986 AMCOS Licence and there was no evidence that its termination provisions had been enlivened.
The 2016 licence from Boomerang to AMCOS
299 In relation to Love, Boomerang remained bound by the terms of the 1986 AMCOS Licence only for the 16-day period until 15 September 2016 when it granted a fresh exclusive licence to AMCOS of, relevantly, the digital download right in respect of just three songs, ‘She’s So Fine’, ‘Friday On My Mind’ and Love (‘the 2016 AMCOS Licence’). It is apparent from that agreement that the parties must have proceeded on the basis that the deed of 30 September 1986 had been mutually abandoned in relation to those three songs: Summers v Commonwealth [1918] HCA 33; 25 CLR 144 at 151-152.
300 The terms of the new licence were similar to the previous licence although there were some differences. Some aspects may be noted. First, AMCOS was licensed to authorise others to make records, as defined in the Act, embodying the three works including Love: cl 2.1.1(a). Secondly, AMCOS was expressly authorised to licence digital downloading: cl 2.1.1(b). Thirdly, AMCOS was licensed to permit others to make copies of Love for the purpose of communicating it to the public (i.e. as a radio station might do): cl 2.1.1(c). Fourthly, the licence expressly did not extend to the use of Love in advertisements: cl 2.1.2. Further, the licence used the word ‘reproduce’ throughout and this was defined in such a way in cl 1.1.1 that it did not include the act of synchronising a song into a film. The effect of this was that the licence did not extend to permit AMCOS to licence Love in films. Fifthly, AMCOS’s inability to licence the reproduction of Love in advertisements or films was mirrored by a power in cl 2.5.1 under which Boomerang could authorise AMCOS to do so on any terms it wished. Sixthly, by cl 2.4, an express power to sublicence was granted.
The 2016 assignment from Boomerang to APRA
301 On 15 September 2016 (the same day as the 2016 AMCOS Licence) Boomerang also assigned to APRA, inter alia, the communication right including the digital streaming right in respect of the entire back catalogue including Love. Since that right had already been assigned to APRA by Alberts under the assignment of 31 August 2005 this had no legal significance in relation to Love (although it may have operated in relation to other songs in Boomerang’s back catalogue).
Conclusion on the relevant rights
302 The position in relation to the digital streaming and downloading rights in Love and its use as telephone hold music is therefore as follows.
303 First, with respect to digital streaming, the original owners of the right to stream Love digitally were Mr Vanda and Mr Young who owned the right from the moment of the song’s composition until 5 September 1977 when it was assigned to Alberts. It remained with Alberts until it was assigned by it to APRA on 31 August 2005 where it has remained ever since. It is an aspect of the communication right in s 31(1)(a)(iv). Although that right did not come into existence until 2001 it did so with retrospective effect in relation to works in which copyright inhered at that time. This included Love.
304 Secondly, with respect to digital downloading, the right digitally to download Love was originally owned by Mr Vanda and Mr Young as Love’s authors and they owned it until it was assigned to Alberts on 5 September 1977. Alberts then granted an exclusive licence to make copies of Love to AMCOS on 30 September 1986 other than in relation to advertisements, some films and with Alberts maintaining strict control of the licensing of the song in films. Boomerang acquired these rights from Alberts on 30 August 2016 but remained bound by the terms of the earlier AMCOS licence of 30 September 1986. That agreement was then superseded by the terms of the fresh AMCOS licence of 15 September 2016 from which AMCOS’s entitlement to sue presently derives.
305 Thirdly, with respect to the telephone hold music, the original owners of this right were Mr Vanda and Mr Young as the song’s composers. It was assigned by them to APRA on the composition of Love in 1977 under the 1972 APRA Assignments as part of the ‘Performing Rights’ referred to in those assignments. It is the right which was referred to in s 31(1)(a)(iv) prior to its repeal in 2001. Despite that repeal the right continues to exist by reason of the transitional provisions to the 2001 Amendment Act and the continued operation of the 1972 APRA Assignments. This perhaps obscure right has at all times been vested in APRA from the moment after Love’s composition. It may be that an identical portion of the communication right created with retrospective effect in 2001 confers the same entitlement. If that right existed then it was assigned to Alberts on 5 September 1977 and then to APRA on 31 August 2005. In any event, whatever the precise nature of the right to use Love as hold music is, it is vested in APRA.
Can Boomerang sue for infringements of the digital streaming rights?
306 The answer to this question is ‘no’. The Applicants’ contention is that the owner of the copyright in the musical and literary works comprising love is Boomerang: Further Amended Statement of Claim (‘FASOC’) §§9-10. However, as explained above, the digital streaming right was assigned to Alberts on 5 September 1977 and then to APRA on 31 August 2005 where it has remained ever since. On its face, this suggests that the proper plaintiff is APRA and not Boomerang.
307 To meet this difficulty the Applicants allege at FASCOC at §§43A-43E under the heading ‘Alternative Case: APRA AMCOS’ that the assignment to APRA of the digital streaming right did not ‘include’ any right to do or authorise the acts which it is alleged Glass Candy, Kobalt and Air France have done.
308 The precise allegation is at FASOC §43C:
Those parts of the public performance, communication and reproduction rights assigned or licensed as set out in 43A and/or 43B did not include the right to do or authorise the doing of any of its acts pleaded against each Respondent in this Further Amended Statement of Claim.
309 On the findings made above this should be taken as being directed towards Alberts who was the owner of the communication right in Love until 31 August 2005 (when it was assigned to APRA). Several acts of infringement are alleged against the Respondents. But it useful to focus for present purposes on the allegation that Glass Candy has made or caused to be made available for streaming from various services a recording, Warm, which contains a reproduction in a material form of a substantial part of the musical work comprised in Love: FASOC §§11-12A. It is the doing of both of these acts which is alleged at FASOC §§20 to be the infringement of the copyright in the musical work.
310 Thus the allegation in FASOC §43C assumes that the right ‘to do or authorise’ these acts was vested in Alberts prior to 31 August 2005 and remained vested in it after that date. The Applicants submitted that on its proper construction the 2005 APRA Assignment had left with Alberts the right to licence new works containing a substantial part of Love or, if it did not literally say as much, that a term should be implied to that effect. If this submission is correct then it will mean that it was Alberts (and thereafter Boomerang) which could licence what would otherwise be infringements of the copyright in Love by the production of new works reproducing a substantial part of Love.
311 The wording of the assignment by Alberts to APRA under the 2005 APRA Assignment is as follows in cl 2:
Subject to any reservation or assignment under Article 17 of APRA’s constitution, the Member assigns to APRA all Performing Rights in all Copyright Works which have been composed or written by the Member (whether alone or jointly with another composer or writer) at any time whether before or after the date of this Assignment until the Member ceases to be a member of APRA, and all Performing Rights (including parts of shares of and interests in Performing Rights) in all Copyright Works which are now owned or are acquired or become owned by the Member until the Member ceases to be a member of APRA.
312 The ‘Performing Rights’ are defined as follows:
Performing Rights means, subject to sub-paragraphs (i) to (iv) below, the rights, for the world, in relation to a Copyright Work of:
(a) performing in public; and
(b) communicating to the public, including broadcasting but does not include the following classes of works performed and/or communicated in the following manner:
(i) Dramatico-musical Works performed or communicated in their entirety;
(ii) the performance in public in whole or in part of any musical work in a Dramatic Context;
(iii) the performance or communication to the public of oratorios and large choral works (that is, choral works written to exceed 20 minutes duration) in their entirety; or
(iv) the performance or communication to the public in whole or in part of any music and any associated words composed for a Ballet if accompanied by a visual representation of that Ballet or part of it,
unless performed or communicated by means of a Cinematograph Film.
313 On its face, there appears little scope to read the assignment so that it does not include any Performing Right in relation to a wholly new work which would, because of its content, infringe the copyright in an assigned work.
314 The Applicants submitted that it should not be read that way and that instead it should be read in such a way as to give APRA ‘nothing to do with infringing works’, leaving the right to sue for infringement of the communication right with Boomerang. There were a number of steps in the submission. First, it was submitted that such an interpretation would impact the administration of music copyright globally. In particular, it was said that its effect would be to convert exclusive rights of communication and performance into economic rights by taking away the entitlement of the original copyright owner to seek injunctive relief, anywhere in the world, against an infringing copy where that infringing copy had been registered with the international network of collecting societies. However, there was no evidence before me as to how that international network operated or any proper basis on which I could assess the soundness of the submission.
315 In fact, it seems to me that if Boomerang had brought its suit against Glass Candy in the US (or perhaps in this Court under US law) and had alleged infringement by Glass Candy’s making of the initial copy of Warm in Portland, Oregon, this problem would not arise at all. It is only because Boomerang has chosen to target for its infringement allegations acts performed by streaming services that it finds itself ensnared in the legal briar bush which is the APRA and AMCOS blanket licences. A suit focussed on what Glass Candy actually did by first recording Warm would not suffer from these problems.
316 Secondly, it was submitted that Alberts’ assignment to APRA had excluded by cll 5 and 6 works which infringed the copyright in another work. Clauses 5 and 6 provide:
5. WARRANTIES
The Member warrants that:
(a) the Member owns the copyright in the Copyright Works and is entitled to assign it in accordance with this agreement;
(b) the works in respect of which the Performing Rights are assigned or purported to be assigned do not or will not as the case may be infringe the copyright in any other work; and
(c) the information to be provided by the Member to APRA under this agreement will be complete and correct.
6. INDEMNITY
The Member indemnifies APRA against all damages, losses, costs and expenses incurred by APRA arising out of a breach by the Member of a warranty in Clause 5.
317 These clauses do not operate to exclude such works. They are a warranty that the works assigned (here, Love) do not have that character. As Kobalt correctly pointed out, far from assisting Boomerang, these two clauses rather assume that an assignment of a new work which infringed the copyright in another work could occur under cl 2 and sought to shift the economic consequence of that state of affairs on to the assignor. If the Applicants’ submission were correct these clauses would be unnecessary. Nor do I accept that the word ‘purported’ in cl 5(b) can advance the argument. The Applicants read ‘purported’ as implying that the assignment in cl 2 is only effective in respect of non-infringing works. A more natural reading is that it applies to the assignment of works which the assignor had no title to assign. An infringing work is not of that nature.
318 Thirdly, it was submitted that cl 8 could assist the Applicants’ construction. Clause 8 provides:
8. DISPUTE RESOLUTION
The Member agrees that if any dispute arises between:
(a) the Member and APRA; or
(b) the Member and any other member of APRA;
as to whether:
(i) a particular arrangement or transcription is sufficiently original to entitle it to be a separate copyright work; or
(ii) a work claimed by the Member to be an original work is in fact original,
the opinion of APRA’s Board of Directors, or such person as may be appointed by the Board (whether a member of APRA or not) to determine the question, will be final and conclusive in relation to the allocation of moneys collected by APRA.
319 It was submitted that cl 8 dealt with the circumstances in which use of material from the first work goes beyond mere arrangement or transcription to create a separate copyright work. However, I read this clause as being directed to disputes about whether copyright subsists for the purposes of the assignment.
320 Fourthly, it was submitted that if the 2005 APRA Assignment were unable to be construed on its own terms, then it had to be construed against the backdrop of certain extrinsic circumstances. These were:
Article 22 of APRA’s Constitution;
Rule 13A of APRA’s Distribution Rules; and
the fact that many APRA/AMCOS licences expressly exclude from the licence the right to reproduce or communicate a work with new or substituted lyrics not authorised by the copyright owner.
321 As to art 22, there was no evidence as to what APRA’s Constitution was in 2005 when the assignment took place. A November 2017 version was in evidence but it is not, so it seems to me, a legitimate interpretative tool. The same difficulty afflicts the Distribution Rules. The examples of APRA and AMCOS licences to which Boomerang pointed also post-dated the assignment and may not be legitimately used in the process of construction: Franklins Pty Ltd v Metcash Trading Ltd [2009] NSWCA 407; 76 NSWLR 603 at 625 [58]. Whatever the legal status of post-contractual materials, these materials are not ones to which both Boomerang and APRA were party and hence it seems to be difficult to get anything useful out of them as to what Boomerang and APRA meant in their agreement.
322 One of the arguments which the Applicants mounted in support of their interpretation of the 2005 APRA Assignment involved the contention that it would be commercially unworkable if a publisher of a musical work who assigned the communication right to APRA could not thereafter licence third parties to use the work in other works. For example, it might be said that Boomerang, in a practical sense, must surely be entitled to permit the use of Love in a television commercial and it cannot be a sensible view of the world in which APRA conducts negotiations for such a licence.
323 I was initially attracted to plausibility of this point from a practical perspective. But it diminishes upon approach and ultimately turns out to be chimerical. The right needed by a person who seeks to make a television commercial which uses the opening lines of Love as part of its soundtrack is not the right to communicate Love to the public. It is instead the right to reproduce Love in a material form, namely, as part of the soundtrack; that is to say, the reproduction right in s 31(1)(a)(i). So too, a person who wished to change the lyrics to Love and use it in an advertising campaign (say, ‘France is in the Air’) needs not the right to communicate Love to the public—the production of the advertisement involves no communication with the public—but rather the right to make an adaptation of Love; that is to say, the right in s 31(1)(a)(vi). Again, this is not one of the rights assigned to APRA. And, for largely the same reasons, Boomerang remains able to sue a person who makes an advertisement involving a copy or adaptation of Love precisely because it is the owner of those rights.
324 That the advertisement might ultimately be broadcast by a television station holding an APRA blanket licence means that the station does not infringe the copyright by broadcasting the advertisement but that by no means relieves the person who made the advertisement from the consequence of making a copy of Love without the licence of Boomerang. Boomerang’s argument on the basis of practicality actually leads to the impractical outcome that the television station would need to obtain a licence from Boomerang in addition to its licence from APRA to broadcast any song which might infringe Love. This would seem likely to erode the utility of APRA’s blanket licences because it would require broadcasters to be ever-vigilant about every piece of music they broadcast. It would mean—to take this case for example—that services such as Spotify did in fact infringe Boomerang’s copyright by streaming Warm, for by necessity on Boomerang’s argument they would have no entitlement to communicate an infringing version of Love which is exactly what Boomerang alleges Warm is.
325 If it really was obvious that this was the way the APRA blanket licenses operated then, it may be rhetorically asked, why has Boomerang chosen not to sue Spotify who must, on this theory, be liable? There is nothing practical about Boomerang’s contention and I reject it. My rejection of Boomerang’s practical argument means I must also reject its submission that a term to similar effect can be implied. The perceived inconvenience of the position advocated by Boomerang is elusive. In particular, the implication of such a term is not for the reasons I have just given necessary to give business efficacy to the assignment; far from it: BP Refinery (Westernport) Pty Ltd v Shire of Hastings (1977) 180 CLR 266 at 283; Secured Income Real Estate (Australia) Limited v St Martins Investments Pty Limited [1979] HCA 51; 144 CLR 596 at 605-606; Codelfa Construction Pty Ltd v State Rail Authority of NSW [1982] HCA 24; 149 CLR 337 at 347, 404.
326 In those circumstances, I conclude that the right digitally to stream Love was assigned by Alberts to APRA on 31 August 2005 and thereafter it was APRA which could licence that right. FASOC §43C fails therefore at the first jump not far from the start. Alberts did not retain the right to licence acts comprised in the communication right after that assignment and consequently it was in no position to assign that right to Boomerang on 30 August 2016. Inevitably, this means that Boomerang is not the owner of that part of the communication right comprised in the right digitally to stream Love which therefore requires me to conclude that it has no title to sue Glass Candy for any kind of infringement of that right. Boomerang’s case on streaming therefore fails.
Can Boomerang sue for infringements of the digital download rights?
327 Here the answer is ‘yes’. The digital download right was never subject to the 1972 APRA Assignments but was instead assigned by Mr Vanda and Mr Young on 5 September 1977 to Alberts as part of the reproduction right. This assignment was in the broadest possible terms: ‘THE WHOLE AND ENTIRE COPYRIGHT for the Commonwealth of Australia’. Boomerang agrees that Alberts granted an exclusive licence of the reproduction right to AMCOS on 19 December 1979 and 30 September 1986 and, as I have noted, that licence was itself superseded by a fresh exclusive licence between Boomerang and AMCOS on 15 September 2016.
328 Because the AMCOS licences are exclusive in nature s 119(a) of the Copyright Act is relevant. That section confers the same rights on AMCOS that Alberts (and later Boomerang) have to remedies for copyright infringement but makes clear that those rights are ‘concurrent with the rights and remedies of the owner’. There is an exception to this in the case of detinue and conversion but these are not presently material.
329 The fact that AMCOS has at all times under both exclusive licences had the contractual entitlement to issue licences to others to make copies of Love presents a problem for Boomerang since it suggests that it was entitled to grant licences to streaming services to enable them to make a master copy of Love on their servers and to permit their users to make digital copies of Love on their own devices. Since Boomerang alleges that Glass Candy has infringed the reproduction right in Love by authorising the streaming services to permit their users to make digital copies of Warm it has the apparent difficulty that Boomerang (and before it, Alberts) had authorised AMCOS to licence the digital downloading of Love.
330 To evade this problem, Boomerang submits that, on their proper construction, neither licence extended to the right to authorise the reproduction of other songs which would otherwise infringe the copyright in Love (i.e. Warm). This contention is similar in many ways to the argument advanced in relation to APRA and the communication right. I do not accept however that any such limitation may be found in the 1986 AMCOS Licence. The relevant clauses are cll 2(a)(i)-(ii) and (v):
2. In consideration of the parties’ mutual agreement to terminate the original licence agreement as from the date appearing above and of the undertakings herein provided, the Licensor:
(a) hereby grants to the Society an EXCLUSIVE LICENCE to authorize:
(i) subject to clause 3 hereunder, the making of records of the Works;
(ii) the making of reproductions, other than advertisements, of the Works for the purposes of broadcasting within the prescribed territory;
…
(v) subject to clause 4, the making of cinematograph films of the Works for purposes other than broadcasting within the prescribed territory[.]
331 With respect to the reference in cl 2(a)(i), cl 3 contained the carve-out for major record labels.
332 I do not accept that the licence granted by cl 2(a) is susceptible to the interpretation for which Boomerang contends. It says no such thing. Nor do I accept that considerations of practicality require cl 2(a) to be interpreted so that it does not grant AMCOS the right to licence the reproduction of works which would otherwise infringe the reproduction right in Love. Such an interpretation is unnecessary. At all times between 5 September 1977 and 30 August 2016 Alberts retained the right to licence the reproduction of Love in advertisements and in films. Boomerang retained that right under the same agreement for the 16-day period whilst the old AMCOS agreement remained on foot. The same considerations defeat any suggested implied term.
333 The same is also true of the 2016 AMCOS Licence. The principal grant of the exclusive licence in that agreement is in cl 2.1.1: ‘the Member grants AMCOS an exclusive licence’. The suggested limitation cannot be extracted from those words. And, as with the earlier licence, this agreement too does not give AMCOS rights in relation to advertisements and films. The practical considerations for which Boomerang contends do not therefore arise and the submission can succeed neither as an argument about construction nor as to the implication of a term. A similar argument was advanced on the basis of cll 6 and 7(c) but neither of these appears to me to advance their argument.
334 The conclusion I have arrived at therefore is that at all material times AMCOS has held an exclusive licence from the owner of the reproduction right in Love to authorise persons to make copies by means of digital downloads.
335 That conclusion does not mean that Boomerang cannot sue for infringement of the reproduction right. Certainly, in the period since 31 August 2016 when the reproduction right in Love was assigned to it by Alberts, Boomerang has owned that right. During that period, its status as the copyright owner left it with concurrent rights and remedies to those of AMCOS: s 119(a). Thus the correct analysis is that in relation to the question of who has title to sue the answer must be that it is both Boomerang and AMCOS on and after 30 August 2016 (with AMCOS required by cl 6 to seek Boomerang’s consent to sue). This would include an entitlement to sue for damages or an account of profits on and from 30 August 2016 and also for an injunction to prevent future infringement.
What was Boomerang’s standing to sue prior to 30 August 2016?
336 Prior to 30 August 2016 there is a complication. At that date the owner of the reproduction right was Alberts. Insofar as any infringements occurred before 30 August 2016 the rights arising therefrom at least in the first instance would have been vested in Alberts. The question then is whether the deed of 30 August 2016 under which Boomerang obtained ownership of inter alia Love from Alberts also operated to assign to Boomerang Alberts’ entitlement to sue for infringements of copyright which had already occurred prior to that date. This matters because Alberts has not been added as an applicant to the proceeding.
337 This involves a question of the proper construction of the deed of 30 August 2016. This was in cl 3.1: ‘throughout the world, in perpetuity, all of its rights, title and interest in and to [songs including Love]’. In the context of a sale of Alberts’ publishing business to BMG this was sufficient to assign to Boomerang the right to sue for past contraventions. The text of the assignment more closely resembles the situation in Walker Group Constructions Pty Ltd v Tzaneros Pty Ltd [2017] NSWCA 27; 94 NSWLR 108 at 133-138 [96]-[113] than the situation in Taypar Pty Ltd v Santic (1989) 21 FCR 485 (‘Taypar’) at 492-493. I do not accept that Taypar is authority for anything more than the meaning of the particular assignment clause in that case. Consequently, I accept that Boomerang can sue for infringements which occurred prior to 30 August 2016.
Can Boomerang sue for infringement in the telephone hold music?
338 As I have explained above, at least since 2005, it is APRA which has owned this right. Consequently, Boomerang has no title to sue in relation to it.
What are the consequences for Boomerang, APRA and AMCOS?
339 It is APRA and not Boomerang that has title to sue for all of the alleged infringements of the copyright in Love by the digital streaming of Warm, the digital streaming of France via Air France’s YouTube channel and for the playing of France on Air France’s telephone hold music. It is both AMCOS and Boomerang which have title to sue for all of the infringements of the copyright in Love by the digital downloading of Warm. It follows that Boomerang’s claim for damages, an account of profits and an injunction in relation to the streaming of Warm must be dismissed as must its case in relation to the streaming of France on Air France’s YouTube channel.
340 In the event that such a conclusion were reached the Applicants then repeated the infringement case mounted by Boomerang as if it were a case alleged by APRA: FASOC §43D. However, this substitution of APRA as the party suing for infringement explicitly does not extend to the damages case in §44 which alleges that it is Boomerang (and not APRA) which has suffered loss and damage at the hands of Glass Candy, Kobalt and Air France. What is left, therefore, of the case in relation to the digital streaming of Warm is APRA’s claim for a declaration of contravention and an injunction. There is no case that Glass Candy, Kobalt or Air France have to meet that they should pay damages or give an account of profits for the digital streaming of Warm or France or the playing of France as telephone hold music. The case these parties must meet is a case brought by APRA and not Boomerang.
341 In relation to the digital downloading of Warm, both Boomerang and AMCOS have title to sue. In addition to Boomerang’s claims for damages, an account of profits and an injunction, at §43E the Applicants put an alternative case by AMCOS on infringement but, like APRA, this is only for a declaration of infringement and an injunction to restrain further infringement. However, because Boomerang does pursue a claim for damages and an account of profits, the Respondents (other than Air France) do face a claim for such arising from the digital downloading of Warm. Air France is not caught up in this part of the case because the Applicants do not allege that France was subject to digital download. The allegations are limited to the suggestion that Air France permitted its various promotional materials to be made available for streaming from YouTube or as hold music.
342 The net result of these conclusions is that APRA has title to sue Glass Candy and Kobalt for the streaming of Warm and France and the playing of France as Air France’s hold music. Boomerang’s suit about this fails at the outset. Boomerang and AMCOS both have title to sue in relation to the provision of digital downloads of Warm.
Which services allowed streaming or digital downloading of Warm?
343 At issue here is streaming and downloading of Warm and not France where slightly different issues arise. As such, it is only the positions of Glass Candy and Kobalt that are material to this issue. At FASOC §11 the Applicants alleged that Glass Candy made Warm available on the internet for download and streaming ‘including through iTunes, Google Play, Spotify, Apple Music, YouTube, SoundCloud and on the website at italiansdoitbetter.com’ and that this occurred on dates unknown to the Applicants. Making Warm available for streaming is no doubt a communication within the meaning of s 31(1)(a)(iv) and, as noted above, this is so whether it is in fact streamed or not. Likewise, the downloading of Warm involved the making of a copy in material form within the meaning of s 31(1)(a)(i).
344 Kobalt admitted FASOC §11 in its defence but this does not involve any admission as to when this occurred. Glass Candy admitted in its defence that streaming and downloading had occurred in Australia but made no admission as to identity of the services from which that streaming or downloading had occurred. It is therefore necessary to plumb the evidence about this. In the interests of clarity, it is best to deal with each streaming/downloading service separately.
The IDIB and Big Cartel websites
345 The evidence about this was a little unclear. It appears that Mr Padgett and the DJ Mr Simonetti operated as a partnership to conduct a record label under the name Italians Do It Better (that is, IDIB), a title which suggested itself to them after hearing Madonna’s 1986 hit, ‘Papa Don’t Preach’. In 2006 it was converted into a limited liability company under Californian law. Mr Padgett regarded himself as its owner. The creative side of the business was conducted by Mr Padgett but the administrative side by his wife. The creative side included selecting which tracks were offered for sale. I would infer that Mr Padgett decides, perhaps in consultation with his wife, what songs are sold by IDIB. In the case of Warm, it was a straightforward affair to procure the right to sell it by download because Mr Padgett was already associated with the song as one of its authors. The evidence showed that Ms Monahan from time to time received royalty payments from IDIB so I would be prepared to infer that she was content with whatever Mr Padgett was doing. I conclude therefore that IDIB’s activities in relation to Warm were authorised by Mr Padgett and Ms Monahan.
346 Presently IDIB permits the downloading of Warm from its website. At an earlier time, the downloading took place through the Big Cartel website. It did not appear to be in dispute that IDIB was responsible for the sale of Warm from the Big Cartel website. There were thus two sets of downloads to consider, being from the IDIB website and the Big Cartel website. So far as the IDIB website was concerned, an exchange of correspondence between the solicitors contained in Exhibit 4 proved that Warm had been downloaded once in Australia. So far as the Big Cartel website is concerned, a spreadsheet was produced in Exhibit 4 which showed that Warm had been downloaded in Australia 12 times for $11.50 in revenue. Neither item of evidence throws any light on when this activity occurred. As Glass Candy pointed out, one of the downloads from the IDIB website must have been by the Applicants’ solicitors in their preparation for an interlocutory application made early on in the proceedings and since there had been only one download this meant that the damages case about the IDIB website must fail. I accept this but that reasoning does not operate in relation to the Big Cartel website or in relation to what IDIB is threatening to do.
347 Also produced in the bundle which became Exhibit 4 was a screenshot from the IDIB website which showed that Warm was available for download for $1. The screenshot appears to have been taken on 18 March but in which year is unclear. It is also unclear where the screenshot was taken. I was not referred to any affidavit material which explained this. I would be prepared to infer however that the screenshot was taken by the Applicants’ solicitors and therefore this is a screenshot which shows, at some point after the commencement of this litigation, that Warm was available for download from the IDIB website. I would conclude that this is evidence which demonstrates that IDIB is continuing to make Warm available for download.
348 I therefore find that: (a) Glass Candy made Warm available or caused Warm to be made available for downloading over the internet; (b) Warm was downloaded by persons in Australia some 13 times over the period 2011 to 2018; (c) IDIB, with Glass Candy’s authorisation, is continuing to offer Warm for download from the IDIB website. That date range of 2011-2018 does not appear in the evidence but is the date range nominated in the notice to produce underpinning the solicitors’ correspondence in Exhibit 4 to which I have referred. After the hearing I sought a copy of that notice to produce from the parties and was provided with it. Without the notice to produce the evidence about IDIB makes no sense since it does not indicate the date range involved. I have made the notice to produce Exhibit 12.
349 The Applicants alleged at FASOC §11 that Warm had been made available on iTunes for downloading and streaming to internet users including those in Australia. This was admitted by Kobalt subject to some timing issues to which I will return when they become relevant to the discussion. Meanwhile, whilst Glass Candy admitted that streaming and downloading had taken place via third parties they did not admit that iTunes was one of those services. I interpolate at this point that my understanding is that iTunes does not provide a streaming service and that that service is provided instead by another service, also conducted by Apple, Apple Music. However, there was no evidence about this and I will proceed on the basis that what the Applicants allege and Kobalt admits about iTunes is correct, i.e., that it is involved in streaming as well.
350 I am satisfied that Warm was made available for download and streaming on the platform known as iTunes. The chain of emails in Exhibit 4 referred to above shows that Glass Candy, in the face of a notice to produce, instead produced an Excel spreadsheet setting out revenues relating to Warm earned on sales in Australia through various channels. The spreadsheet contains a tab which shows the money paid by iTunes to IDIB, Mr Padgett’s company, in relation to Warm. It does not distinguish between downloads and streaming but it does reveal that between April 2003 and March 2019 sales relating to Warm amounted to $85.41. All of the sales occurred in just two relatively short periods. The first began in early 2015 and ended in middle of 2016, and the second ran from November 2017 through to March 2019. Glass Candy invited me to infer that all of this activity, such as it was, was probably related to the activities of the Applicants in preparation for this litigation. It seems to me likely that some of it was but I am not prepared to infer that all of it was. For example, the case may have generated interest in Warm and members of the public may have sought to stream or download it out of curiosity. But on any view, the sales are very limited.
351 This is a useful point at which to observe that iTunes in Australia appears to be operated by Apple Pty Ltd (‘Apple’). Glass Candy’s tender bundle which became Exhibit 6 contained an agreement commencing on 1 January 2010 between Apple, on the one hand, and APRA and ACMOS, on the other. By cl 1.2 APRA and ACMOS grant Apple what is referred to as ‘the Licence’. This is defined in cl 9.1 as follows:
Licence means a non-exclusive licence to:
(a) reproduce AMCOS Works;
(b) authorise the reproduction of AMCOS Works;
(c) communicate in the Territory the APRA Works (including authorising their electronic transmission from Your Digital Music Service to Your customers);
(d) authorise Your Affiliates to communicate the APRA Works to customers in the Territory as necessary in the course of providing the Digital Music Service,
in the form of Downloads (whether by You, or Your customers in the Territory, onto storage devices) for the purpose of Sale or to complete a Sale, including in the form of Clips provided at no charge for the sole purpose of demonstrating the Clip to customers and potential customers of Your Digital Music Service …
352 There were a number of other agreements involving Apple in the evidence but none was suggested to be material. Because Love is in the AMCOS and APRA catalogues it follows that since 2010 Apple has been fully licensed to provide digital streaming and downloading of Love. And because the doing of an act in relation to a work is taken by s 14 of the Copyright Act to include a reference to the doing of that act in relation to a substantial part of the work, it also follows that Apple has at all material times been licensed by APRA and AMCOS to make available for streaming or digital download a substantial part of Love. Of course, the Applicants’ principal contention in this case is that making Warm available for streaming or digital downloading involves the communication or reproduction of a substantial part of Love. However, it would appear that iTunes is lawfully entitled to make Warm available for streaming or downloading even if it does involve a communication or reproduction of a substantial part of Love. Consequently, the Applicants can have no possible case against Apple for making available Warm for streaming or downloading from iTunes. I will return to the question of whether Glass Candy can be made liable for giving Apple permission to put Warm on iTunes when Apple itself cannot be liable for doing so: can there be a secondary infringement without a primary infringement?
353 The Applicants alleged that Warm had been made available for streaming and downloading on the service known as Google Play: FASOC §11. As with the other streaming services, this was admitted by Kobalt but Glass Candy did not admit that there had been streaming or downloading from Google Play in particular. The Applicants did not refer to any evidence about this in their submissions. Whilst Glass Candy’s submissions made a more detailed attempt to deal with this aspect of the Applicants’ case none of their submissions dealt with the position of Google Play except perhaps to assert that ‘GSUB’ and ‘GTRN’ in an otherwise incomprehensible spreadsheet had something to do with Google.
354 The email correspondence in Exhibit 4 which I have referred to above and the Excel spreadsheet of revenues do not touch on Google Play in a way which is useful. The spreadsheet contains five sheets. The first worksheet deals with iTunes and it is that to which I have referred above in relation to that service. The second worksheet is entitled ‘Kobalt – Paid to IDIB’. This appears to contain a list of all royalty payments made by Kobalt to IDIB in respect of Warm. The royalties derive from a number of sources including under the APRA and AMCOS licences. In some cases, the person who paid the royalty to APRA or AMCOS is shown but in most it is not. Many of the uses relate to royalties derived from uses of Warm in cinematographic films. These include the 2015 French film Folies Bergère in which Warm plays a prominent part in the soundtrack, Supersized Earth (an excellent BBC documentary about large structures—see the episode entitled ‘Place to Live’) and Scream Queens (a US television series in which members of a college sorority are terrorised by a serial killer). So far as the APRA and AMCOS licences are concerned the only uses in which the underlying licensee is identified is iTunes.
355 The third worksheet is entitled ‘BMI – Paid to John Padgett’. ‘BMI’ is a reference to the US collecting society with which Warm is registered, Broadcast Music, Inc. The only entries in this worksheet relate to Folies Bergère, Supersized Earth and Scream Queens and it therefore throws no light on any APRA/AMCOS uses. The fourth worksheet is entitled ‘BMI – Paid to Lori Monahan’. It is essentially similar to the third worksheet and adds nothing to the picture (although it does create the mystery that Ms Monahan has received royalties in respect of Warm in a television program called Project in respect of which Mr Padgett appears not to have received royalties).
356 The last worksheet is entitled ‘Inertia – Paid to IDIB’. The evidence does not disclose what ‘Inertia’ is although the production of these reasons has closely acquainted me with the concept. It does suggest that Inertia has paid royalties to IDIB 516 times each of which relates to some activity in Australia. It does not identify the work involved, however, so one cannot know if these, or some of these, royalties relate to Warm. Unlike each of the other worksheets, this worksheet identifies several services as having been the source of the royalties. These include Spotify, Google, iTunes and YouTube. They are identified by abbreviations which are explained at §316O of Glass Candy’s written submissions.
357 Ultimately, all that I can obtain from the spreadsheet is that Warm was downloaded (and I am prepared to assume streamed) from iTunes. Consequently, I do not accept that the Applicants have proved their allegation that Warm was made available for streaming or downloading from Google Play. I accept that this is proved against Kobalt because of its admission to that effect.
358 Because the availability of Warm for streaming and downloading from Google Play has been established against Kobalt it is therefore necessary to note that an agreement included in Exhibit 6 shows that APRA and AMCOS have licenced Google Ireland Limited, a company with an office in Dublin, respectively to communicate and make copies of the works in their catalogues: cl 1.2. Consequently, for the same reasons I have given in relation to iTunes, it follows that Google Ireland Limited can have no liability for infringing the copyright in Love by providing Warm for streaming or downloading.
359 The Applicants alleged at FASOC §11 that Warm had been made available for downloading and streaming from the service known as Spotify. As with the other services, this was admitted by Kobalt but not admitted by Glass Candy. As I have explained above none of the evidence in the spreadsheet shows this to be the case. The spreadsheet has a reference to ‘SPOT’ which Glass Candy suggested was Spotify. The fact that I happen to know that Warm is available on Spotify by looking at my phone is a distraction, of course, but this is a trial and the Applicants appear not to have proved this. I therefore accept as against Kobalt that Warm was made available for streaming and downloading from Spotify but not as against Glass Candy.
360 In circumstances where Google Play conducts its Australian music business from Ireland it is, of course, natural to find that Spotify conducts its Australian business from Stockholm. Exhibit 6 contained an agreement between Spotify AB and APRA and AMCOS under which the collecting societies licensed Spotify in the same way as they did Google Ireland Limited and Apple: cl 1.2.1. Thus so far as Kobalt is concerned, I find that that the making available of Warm for streaming and downloading on Spotify could not constitute an infringement of the copyright in Love by Spotify.
361 The Applicants allege at FASOC §11 that Warm had been made available for streaming and downloading from Apple Music. This was admitted by Kobalt but not by Glass Candy. As I have mentioned above, the parties did not really explore the differences between iTunes and Apple Music. Indeed, the Applicants made no submissions about it, leaving the allegation at FASOC §11 to fend for itself. I was not taken to any evidence that Warm was made available for streaming or downloading from Apple Music. The spreadsheet does not show this to be the case either. I therefore find this allegation unproven against Glass Candy but proven against Kobalt. Making the assumption that Apple Music is conducted by Apple the same APRA and AMCOS blanket licence applies so that, in relation to Kobalt, I also find that by making Warm available for downloading and streaming from Apple Music, Apple could not infringe the copyright in Love.
362 Neither Glass Candy nor Kobalt admitted that Warm had been made available for streaming or downloading on SoundCloud. The Applicants took me to no evidence that it had been. The spreadsheet does not show it either. This is not proven.
363 The situation in relation to YouTube is the essentially same as in relation to Google Play, Spotify and Apple Music. The APRA and AMCOS blanket licence in relation to YouTube (which in form are granted to Google) was included in Exhibit 6. I find the allegation proven against Kobalt because of its admission but not proven against Glass Candy. I find that by making Warm available for streaming and downloading on YouTube Google could not infringe the copyright in Love. I note for completeness that it is not entirely clear to me that Warm was available for downloading from YouTube and there is a possibility that it was only available for streaming. However, no party explored that issue and I mention it only for completeness.
364 The case in relation to Air France also involves YouTube. The song France was made extensively available on YouTube for streaming as part of its advertising campaign ‘France is in the Air’. The Applicants do not allege downloading. It will be noted that in making France available for streaming on YouTube it is not possible for Google to have infringed the copyright in Love by doing so since it held an APRA blanket licence which covered digital streaming.
Summary of conclusions on the streaming or downloading of Warm
365 As against Glass Candy I find that Warm was made available for streaming and downloading on iTunes and for downloading from the IDIB via its own website and before that via the Big Cartel website. In the case of iTunes, I find that its activities had the benefit of both an APRA and AMCOS blanket licence and that nothing iTunes did could be an infringement of the copyright in Love.
366 As against Glass Candy, the Applicants have failed to prove that any of Google Play, Spotify, Apple Music, YouTube or SoundCloud offered Warm for downloading or streaming.
367 As against Kobalt, I find that Warm was made available for downloading from the IDIB website by IDIB, the Big Cartel website by IDIB, and for streaming and downloading from iTunes, Google Play, Spotify, Apple Music and YouTube, but not SoundCloud. Except in the case of IDIB (including via Big Cartel), I also find that the operator of each of these services held an APRA/AMCOS blanket licence authorising each to make available for streaming or downloading Love and, because of s 14 of the Copyright Act, a substantial part of Love. I find that none of the operators of these services infringed the copyright in Love by making available for downloading or streaming Warm.
368 Can the Applicants bring a case against Glass Candy that they have infringed the copyright in Love by making Warm available on iTunes, Google Play, Spotify and Apple Music for streaming and downloading where each held both an APRA and an AMCOS blanket licence?
369 Section 36(1) of the Copyright Act provides as follows:
Infringement by doing acts comprised in the copyright
(1) Subject to this Act, the copyright in a literary, dramatic, musical or artistic work is infringed by a person who, not being the owner of the copyright, and without the licence of the owner of the copyright, does in Australia, or authorizes the doing in Australia of, any act comprised in the copyright.
370 This provision identifies two kinds of infringement. The first is an infringement by the doing in Australia of an act comprised in the copyright; the second the authorising of another to do in Australia such an act. The only acts which the Applicants allege were done which were comprised in the copyright in Love are the act of streaming Warm to the public (an act of communication), the act of sending a copy of Warm to members of the public who sought to download a copy on their device (an act of reproduction) and the corresponding act by members of the public of making a copy of Warm on their own device (an act of copying).
371 There is no doubt that Glass Candy did literally not do any of these acts. The persons who did the acts were the relevant online music providers or, in the case of the actual act of download, the online music provider’s downloading customer. Glass Candy’s pleaded case at FASOC §11 was that Glass Candy did these acts but I reject this on the facts. At best, the only way Glass Candy can be drawn into these events is on the assumption that what the online music services did was done on behalf of Glass Candy but no matter how that suggestion is dressed up at FASOC §11 this is a case that Glass Candy had authorised what had happened.
372 I am prepared to accept that Glass Candy authorised each of these actions, however. Mr Padgett gave evidence that he uploaded the September 2011 Commercial Recording of Warm to iTunes and he must be taken thereby to have authorised iTunes to stream and permit its download. How Warm came to be on the remaining platforms is unclear. Although it is tempting to conclude that this was either done by Mr Padgett or by the publisher of Warm, IDIB, there is simply no evidence. I therefore find that that authorisation has not been shown other than in relation to iTunes.
373 In the case of iTunes (and the other platforms too if authorisation had been demonstrated) the difficulty is that it is established that there can be no liability for authorising an infringement under s 36(1) unless it is shown that it is connected to an actual act of infringement which has occurred. Were it otherwise, one could be liable under s 36(1) for authorising an infringement of another’s copyright even though the person thus authorised never actually got around to infringing the copyright.
374 In this case, this means that the Applicants’ case about Warm fails in relation to all acts of streaming and downloading where the online music service held APRA and AMCOS licences. Those licences necessarily mean that the services cannot be liable either for communicating to their customers Warm (as an act of streaming or as an act of sending the customer a copy for download) or for authorising their customers to make a copy Warm following downloading. In each case this is because the online music service had permission from APRA to communicate a substantial part of Love or from AMCOS to make a copy of a substantial part of Love. Since the Applicants’ case is that Warm infringes because it contains a substantial part of Love the case, insofar as it concerns online music services who hold APRA and AMCOS licences, cannot succeed.
375 This may seem an odd result. But what it brings into view is the need to identify what exactly it is that Glass Candy did and the conceptual difficulties are not to be swept under the carpet by the blurry ambiguities of FASOC §11. What Glass Candy did was compose Warm. The composition of a piece is not an infringement of anyone’s copyright. At some point in 2010 Glass Candy reduced Warm to a material form in the form of the September 2011 Commercial Recording. It was at this time that an infringement took place but, as I have noted above, this is an infringement which took place in Oregon. In September 2011 Mr Padgett communicated that recording to iTunes by uploading and he thereby authorised iTunes to make it available for streaming and downloading. These actions will have involved infringements of the copyright as well. Whether those infringements occurred in Australia or not may be a difficult issue. It will turn on where the online music service actually operates its servers—it is not self-evidently Australia.
376 Instead of examining precisely what occurred, however, the Applicants chose instead to focus on the online music providers and to sheet home to Glass Candy the consequences of their actions. But the Applicants themselves have authorised those entities to provide Love to the public so this case makes no sense. This does not mean that the Applicants cannot recover damages for the streaming and downloading which has occurred; it just means they have to identify the correct act of infringement. That act of infringement seems to me to occur by communicating Warm to iTunes (and if it had been proven the other online music services). That was the infringement. Each time thereafter that the streaming service raised revenue by streaming or downloading Warm that was evidence of the damage suffered by the Applicants or the profits made by Glass Candy. Viewed that way, whether the streaming and downloading of Warm from the online music services is a contravention is irrelevant.
377 The consequence of this conclusion is that the Applicants’ case in relation to Warm fails except in relation to IDIB’s actions in allowing customers in Australia to download copies of Warm from the Big Cartel website and is threatening to do so from its own website. On each occasion, this involved an act of reproduction by IDIB and an act of authorising its customers to make a copy on their own device. There was one downloading event from the IDIB website (although I infer this was by the Applicants’ solicitors), and 12 downloading events from the Big Cartel website which netted $11.50 in revenue. In relation to each downloading event, AMCOS and Boomerang may sue. Only Boomerang claims damages. In relation to the authorisation of each of the customers to make a copy on their own device both AMCOS and Boomerang can sue but only the latter claims damages.
What are the implications for the case in relation to France?
378 The acts against Air France consist of its streaming of a number of promotional videos featuring France from YouTube. That case fails. YouTube holds an APRA licence. Had YouTube not held an APRA blanket licence l would have concluded that Air France also infringed the copyright by making the television commercial and other materials available on its YouTube channel. Neither Air France nor Glass Candy may be secondarily liable for these acts of streaming where YouTube itself cannot be liable.
379 The only part of the case which remains therefore is the case relating to Air France’s use of France as its hold music. The use of France as telephone hold music only involves the communication of France to the public. Air France does not hold an APRA licence. The fact that Air France has no APRA licence means that it has no right to play France to the extent that it includes a reproduction of a substantial part of Love. APRA is entitled to a declaration to that effect but does not claim damages. Boomerang claims damages but has no title to sue.
380 The Applicants also alleged that Glass Candy was liable for authorising Air France to communicate France to the public. This would appear to be the unavoidable inference flowing from the fact that Glass Candy licensed Air France’s use of France on 25 February 2015. I reject Glass Candy’s submission that the Applicants have not proved that France was communicated via Air France’s YouTube channel or as part of its telephone hold music. Air France admitted both. As I understood the submission was that because Glass Candy did not admit that matter it was not relevant that Air France had admitted it. I do not agree. The fact that the Air France admitted that it had done both is powerful evidence that Air France had in fact done both. Absent some attempt by Glass Candy to prove that Air France’s admission did not prove what it obviously appeared to prove, this submission goes nowhere.
381 Boomerang and APRA’s case on this is the allegation at FASOC §23 that Kobalt authorised the infringements which occurred. However, apart from IDIB that case was predicated on the activities of the online music platforms and I have concluded that that case fails. In relation to the IDIB website, the case depended on the proposition that Kobalt had authorised AMCOS to licence digital downloading of Warm. IDIB did not hold such a licence so that case cannot succeed.
382 In relation to the online platforms I would have rejected the case against Kobalt even if infringement had been established. The evidence on this topic came from Kobalt’s witness Mr Moor. In his affidavit of 1 November 2018 he explained that he had asked his assistant Ms Blight to inquire of APRA and AMCOS how much income had been generated by Warm in total. An email was sent on behalf of APRA and AMCOS to Kobalt on 27 September 2018 indicating that Kobalt had received $386.43 in total in respect of Warm for the exercise of the rights owned by APRA and $266.60 is respect of the rights exclusively licenced to AMCOS.
383 Subsequently, Kobalt asked APRA and AMCOS for a more detailed breakdown of these figures which became Annexure SAM-12 to Mr Moor’s affidavit. This exhibit throws no light on who was doing the streaming or downloading in question. It does show, however, that between November 2013 and November 2017 there were 17 occasions on which Warm was downloaded and 16 occasions on which it was streamed. The evidence does not link any of these streaming or downloading activities to any particular streaming service. In particular, the evidence does not itself establish that the streaming which occurred was, as the Applicants allege at FASOC §11, via iTunes, Google Play, Spotify, Apple Music, YouTube or SoundCloud and via the IDIB website.
384 In the case of Kobalt it has, however, admitted that streaming occurred as alleged in FASOC §11 except that no admission is made about streaming from SoundCloud or the IDIB website. On the basis of that admission I am prepared to infer that the 16 occasions on which Warm was streamed it was streamed from each of iTunes, Google Play, Spotify, Apple Music and YouTube but I cannot say how many were streamed from which provider. Because it is not admitted and there is no other evidence I cannot make any finding against Kobalt that Warm was streamed from SoundCloud. I do accept however that downloading from the IDIB website has been proved. During the cross-examination of Mr Moor, Mr Hall SC invited Mr Cobden SC to state whether Glass Candy now accepted that Warm had been downloaded and streamed in Australia. Glass Candy’s position was reserved.
385 On 6 August 2013, IDIB entered into an agreement with Kobalt US, under which it exclusively licensed to Kobalt US in both the US and Australia the full and entire copyright in a number of works including Warm: cl 4(i). The width of the grant was sufficient to authorise Kobalt US to arrange for the streaming and downloading of Warm: cl 4(ii). The grant did not operate as an assignment of the copyright but assumed that the title to the copyright would remain with IDIB although permitting Kobalt US to use IDIB’s name as the owner: see, eg, cl 4(ii). Under cl 4(xiv), Kobalt US agreed to use its best commercial endeavours to register Warm with all relevant collecting societies and to collect monies earned thereby in the US and Australia. Under cl 5(iii)(b) Kobalt US agreed to pay a royalty to IDIB of 90% for all revenue it derived from the downloading or streaming of Warm in Australia. Under cl 7(i)(a) IDIB warranted that it had in place agreements with Mr Padgett and Ms Monahan granting to IDIB all rights necessary to enter into the agreement with Kobalt US.
386 Mr Moor gave evidence in his affidavit that Kobalt US had entered into an agreement with Kobalt Australia in relation to a number of works including Warm. The agreement was dated 3 December 2010. The agreement relates to ‘Compositions’ which is defined in such a way in cl 1(a) to pick up any works which during the life of the agreement Kobalt US might acquire either the ownership or control of in Australia. Since Kobalt US had acquired an exclusive licence of the copyright in Warm in Australia on 6 August 2013 during the term of the agreement it follows that it was a ‘Composition’ within the meaning of cl 1(a). Under the agreement Kobalt US granted to Kobalt Australia the exclusive right in Australia to make, inter alia, ‘electrical reproductions’ of Warm and the right to licence that right: cl 2(a)(i). Kobalt US also granted Kobalt Australia the right to grant licences for the digital distribution of Warm: cl 2(b)(vi). Under cl 5(a)(i) Kobalt Australia was to remit 95% of the income generated from streaming or downloading Warm to Kobalt US.
387 On 15 July 2010 Kobalt Australia became a member of APRA. That agreement was Annexure SAM-1 to Mr Moor’s affidavit. As with the other APRA agreements referred to in these reasons, the manner in which APRA operates involves an assignment of the copyright in a work to APRA. In relation to Warm, the agreement between IDIB and Kobalt US and between Kobalt US and Kobalt Australia could not result downstream in a valid assignment to APRA of such a copyright. Both Kobalt Australia and Kobalt US were licensees and the owner remained IDIB. In APRA’s records the owner of the copyright in Warm is recorded as BMI which is a US collecting society. This is consistent with agreements attached as exhibits to the affidavits of Mr Padgett and Ms Monahan, each dated 4 November 2010 and each licensing their rights in works (which would come to include Warm) to BMI. It follows, as Mr Moor suggested, that Kobalt Australia was not responsible for the licensing of the streaming of Warm in Australia because it could not have assigned the right to APRA. It would appear that the owner of streaming right is either BMI or Kobalt US. The former would be consistent with Mr Padgett’s evidence that Glass Candy had licensed the song to BMI. However, it does not matter. The streaming of Warm is not legally related to Kobalt Australia.
388 Despite that, it appears that APRA in fact paid Kobalt Australia for fees collected by it in relation to the performance of Warm which I would assume includes the streaming of Warm by various online music services. The amount collected received by Kobalt Australia in this way was $386.43. Mr Moor understood that it was usual for a music publisher to collect royalties from a collecting society on behalf of a composer.
389 The downloading of Warm is a different matter. Kobalt Australia has entered into an AMCOS licence in relation to the right to download Warm. It did not require an assignment of the reproduction right and operated only as an exclusive licence. Consequently, I accept that during its currency Kobalt Australia would have licenced AMCOS to collect royalties on its behalf in relation to Warm. Consistent with that conclusion, it appears that AMCOS paid Kobalt Australia $266.60 in relation to the making of copies of Warm which I assume includes digital downloads.
390 The evidence therefore suggests that Kobalt Australia authorised AMCOS to licence Warm for downloading in Australia. Had I concluded that any of the downloading from the online platforms (apart from the IDIB and Big Cartel websites) involved an infringement I would have concluded that Kobalt Australia had authorised that infringement. In relation to IDIB, it did not hold an AMCOS licence and Kobalt Australia cannot therefore have authorised the downloading which took place on the IDIB or Big Cartel websites. I would have concluded that Kobalt Australia could be liable for secondary infringement to Boomerang. I would not have accepted that it could be liable to AMCOS. The case theory that Kobalt Australia is liable to AMCOS for authorising AMCOS to licence third parties to provide digital downloads of Warm makes no sense.
391 In relation to streaming, Kobalt Australia is not the correct party. The only party who could authorise APRA to stream Warm was BMI (or perhaps Kobalt US) and APRA’s records suggested that it was BMI who had done so.
392 In relation to both cases I would not have accepted that receipt of royalties was sufficient to justify the conclusion that Kobalt Australia had authorised the infringements.
393 It is then useful to turn to the question of moral rights.
394 Part IX of the Copyright Act deals with ‘moral rights’. One of these rights is the right of integrity of authorship: s 189, definition of ‘moral right’, subpara (a)(iii). By s 195AI(2) this is the right not to have the work subjected to derogatory treatment. ‘Derogatory treatment’ is defined in ss 189 and 195AJ(a) to mean, relevantly, the doing of anything ‘that results in a material distortion of … or a material alteration to’ the work which is ‘prejudicial to the author’s honour or reputation’. By s 190 it is provided that only individuals have moral rights. Mr Vanda and the estate of Mr Young submit that France involved the material distortion of or material alteration to Love by changing the lyric from ‘love is in the air’ to ‘France is in the air’ and that this was prejudicial to their honour or reputation.
395 I do not accept this argument. By s 195AX it is not an infringement of an author’s moral right in respect of a work to do something outside Australia. Although I have found that Air France did copy the sung lyric ‘love is in the air’ from Love and did alter it to ‘France is in the air’ it is clear that this all occurred in France (where M Caurret was), the United States (where Ms Monahan and sometimes Mr Padgett were) or Canada (where Mr Padgett sometimes was). None of it happened in Australia and therefore assuming everything in Mr Vanda and the estate’s favour, there could be no infringement of their moral rights by reason of s 195AX. Where a person’s moral right of integrity of authorship has been infringed a communication of the infringing work will also infringe the right of integrity of authorship: s 195AQ(3). In this case that would encompass both the playing by Air France of France as telephone hold music and the streaming of France to Australian viewers from its YouTube channel (the APRA analysis not creating in this context any defence). However, the premise for such an infringement is that there is an initial infringement and the effect of s 195AX is to prevent any such infringement occurring.
396 The Applicants did not allege that Air France had imported an electronic copy of France into Australia and therefore did not rely upon s 195AU. Where an ‘article’ (which includes an electronic copy of a musical work) is imported into Australia and is subsequently disseminated, this provision deems the author’s moral rights to have been infringed if the importer knew or ought reasonably to have known that if the article had been made in Australia it would have infringed. Sections 195AX and 195AU are complements. The former prevents extra-territorial conduct from giving rise to an infringement of an author’s moral rights and then s 195AU, taking that as its stepping off point, creates a deemed infringement of the author’s moral rights upon importation in Australia where the importer ought to have known of the infringement.
397 For such a case to have been run it would have been necessary for Mr Vanda and the estate to have alleged that: (a) Air France had imported an electronic copy of France into Australia; and (b) Air France ought reasonably to have known that if France had been made in Australia that it would have infringed their moral rights. Such a case on the current facts is not impossible to imagine. But it would require more evidence about how Air France’s YouTube channel operates and how France came to be on its hold music. Such a case was not pursued and I do not think it would be appropriate for me to reengineer the Mr Vanda’s and Mr Young’s estate’s claim to circumvent s 195AX through the use of s 195AU.
398 The Applicants did make a submission about s 195AU, however. They submitted that it proved that s 195AX did not mean that an extra-territorial act could not constitute an infringement of an author’s moral rights because otherwise s 195AU would be left with no work to do. I do not accept this submission. Section 195AU is entirely necessary precisely because of s 195AX.
399 It follows that Mr Vanda’s and the estate’s claim for infringement of their moral rights, as articulated, is barred by s 195AX.
400 Were I wrong in that conclusion, I would have reasoned as follows. I would have accepted that the change of ‘love’ to ‘France’ was a material alteration or distortion. I would also have accepted, perhaps with some hesitation, that this was prejudicial to their honour although not their reputation. This involves a conclusion that ‘honour or reputation’ in s 195AJ involves two distinct concepts and it is not a composite expression. No question of reputation arises in this case but it would appear to me to be something which can be objectively determined. It does not necessarily precisely correspond with the concept of reputation in defamation law. For example, an artist may well have a reputation for being a dangerous person which could be damaged by depicting their work in a wholesome light.
401 Honour, on the other hand, as a matter of ordinary language connotes in this context a personally held set of high-minded principles (‘she was a woman of honour’). Inherently this is subjective but it is circumscribed by an objective standard. Just because a person believes themselves to have a sense of honour does not meant that they do. For example, a person who believes it is honourable to betray their friends for money is not, despite their belief, an honourable person. The test for honour is therefore both subjective and objective.
402 I do not accept that any harm was done to Mr Vanda’s reputation or the reputation of the estate of Mr Young by France. To the contrary, most listeners would have made the connection to Love and thought it was an example of the commercial use of the song. There was nothing unsavoury about the Air France advertisement, indeed it is, as it was intended to be, quite classy and one might have thought it a feather in one’s cap for it to be used as the music for a well-known international airline. There is flattery in imitation.
403 The question then is one of honour. Mr Vanda and the estate endeavoured to persuade me that their sense of honour was prejudiced by the change to their lyrics. Some cases of this kind will be clear. For example, an author’s sense of honour might well be prejudiced when the author being of one political persuasion finds their work used without permission to promote political values which they find repellent; or a DJ with an edgy reputation (perhaps Mr Simonetti) finds his work borrowed by an advertising agency and used to sell incontinence aids.
404 Although Mr Vanda says he was shocked when he heard France (and similar remarks are attributed to the late Mr Young which I am prepared to accept) I initially found it somewhat hard to conceive that their sense of honour was prejudiced by the change in the lyric and I thought it more likely that they were shocked at the outrage of being plagiarised.
405 But the evidence largely showed that Mr Vanda and the late Mr Young had never agreed to a change in the lyrics of Love when they had licenced its use. Further, Mr Vanda was proud of Love and I have no doubt Mr Young was too. For both, it is hard to avoid the conclusion that its composition and success have been lifetime highlights. It is not far-fetched to imagine that Mr Vanda did not wish to see the central lyric altered and there is therefore good reason to accept that evidence unless it otherwise be shown not to be so.
406 Some attempt was made to prove that it was not so. The Respondents located an advertisement for Volkswagen in which it was said the lyrics had been changed but I do not think it really cuts across Mr Vanda’s point. There are actually two songs being played at once in the advertisement—one is Love and the other is a rap version of Love. The point of the advertisement is one of contrast. Even if that is not the correct interpretation, I think one example of changed lyrics across the long working career of Love does not detract from Mr Vanda’s point and that is even assuming that the use was an authorised one (there being some doubt about that).
407 I therefore accept that Mr Vanda’s sense of honour was prejudiced by the change in the lyrics and I make the same finding in relation to Mr Young. Although I am not sure my sense of honour would be offended by having the lyrics of a song changed, I have never written a song and the question is whether Mr Vanda and Mr Young’s sense of honour is an objectively reasonable one. In my view, it is. That would be sufficient to establish derogatory treatment under s 195AJ, as it requires prejudice to honour or reputation.
408 Mr Vanda was cross-examined about this question by being shown a licensed use of Love in a commercial for a deodorant Anuncio de Axe (‘Axe’). This light hearted advertisement shows a young man preparing for a night out. He applies Axe liberally in accordance with the directions. Once on the town he is immediately waylaid by two buxom women who are apparently unable to resist him because of the scent of Axe. Whilst enjoying their company on a couch he is a bitten by a mosquito. The mosquito, tainted with the scent of Axe, is then eaten by a frog. The frog is driven wild by the taste of Axe and the next scene is of two frogs, as counsel put, copulating. But nothing is for ever and the advertisement then cuts to the frogs’ legs being served as a dish at what appears to be an expensive restaurant possibly with a side of cauliflower and what may once have been a tomato (here the evidence is unclear). The frogs’ legs are then consumed by an older man wearing a white dinner jacket. Two more buxom women are then helplessly attracted to him by the power of Axe and the scene cuts to him being aggressively thrown on to a bed by one of them in a sexually provocative, or at least promising, fashion. He then dies in the style of Pope Leo VIII and the advertisement cuts to his tombstone. Throughout this story of passion and fine dining gone awry, Love plays in the background.
409 Mr Vanda was not shocked by this advertisement but that does not surprise me. As counsel for the Applicants put it, he was a former pop star who had written a song about love so it would be surprising if he were prudish. I do not think that the Axe advertisement assists the Respondents.
410 Had it not been barred by s 195AX, therefore, I would have found the moral rights case made good in relation to the telephone hold music and the streaming of the commercial (and other variants).
411 The case against Glass Candy for authorising an infringement of moral rights under s 195AQ(2) does not therefore arise. Had it arisen I would have accepted it for the reasons I have already given since they authorised Air France’s conduct by licensing the use of France.
412 Glass Candy submitted that it is entitled to file a rejoinder to the reply submissions on four bases, being that they contain new submissions in chief; submissions that mischaracterise their submissions; submissions for which there is no evidence; or submissions which ‘are otherwise not properly in reply’. Kobalt sought leave on a slightly more confined and continent basis.
413 I am not aware of any principle which would give Glass Candy or Kobalt an entitlement to file a rejoinder in the first two of those bases. The third does not identify an actual ground and is therefore empty. As the Applicants submitted, and Glass Candy and Kobalt accepted, leave to file rejoinder submissions will only be granted in ‘very exceptional circumstances’: Eastman v Director of Public Prosecutions (ACT) [2003] HCA 28; 214 CLR 318 at 330 [29]. Ultimately, these three bases impugned many paragraphs not on the basis that they are not in reply but rather on the basis that they are wrong or weak. I disregard those submissions.
414 As to the fourth basis, the paragraphs of the reply submissions which were said not to be in reply were [23], [33]-[34], [36]-[37] and [91]. There was a related spat about chronologies which I have resolved by ignoring both.
415 Turning to those actual paragraphs attacked as not being in reply, the first is [23]. It is a response to [171] of Glass’s Candy’s submissions. They say this:
If there ever was a person who had the power to drill down deep into the public performance income figures to find individual returns showing where public performances took place and the income generated by them, conceivably down to the level of individual cities, it is a publisher in the position of Alberts and a music publishing collecting society like APRA. Yet the information provided by the Applicants here, which now include APRA, all of whom have the ability to request more granular information from overseas collecting societies such as BMI, never descends to a level below that of “United States of America”.
416 At [23] the Applicants say this:
Contrary to GCCS [171] and thereabouts, as explained in oral address (T 744.44-746.39) it a was condition of joinder of APRA and AMCOS that they led no evidence, and in any event, APRA records obtained from US collecting societies are not granular enough to indicate the precise location of the playing of copyright works (see eg Ex 4 tab 35). However, the evidence plainly shows that Love was well known and often played beyond Australia and well after 1978, including extensively in the US in the early-mid 2000s. This evidence included:
(a) a plethora of evidence summarised at ACS [213] including records showing that royalties for performances of Love in the US exceeded Australian royalties (and Glass Candy accept that Love is a “very popular”, even “iconic” song here: T 755.22-3) and a number licenses of the song for ads on US television;
(b) the fact that Boomerang’s (Alberts’) business records show that in 2005, Love was the top royalty earning work over a host of other well-known songs: see Ex DA-9 to Albert#2. Even if (as contended at [GCCS [163]), some of the figures in the Albert#1 exhibits include synchronisation fees for US recordings of Love Ex 4 tab 14 shows the APRA performance royalties alone for Love broken down by the top 10 earning countries in the years since 1993. When considered with the more granular records at Ex 4 tab 35 which give a sense of the small fee payable per performance (some entries record a royalty of only a few cents), it is apparent that for example, a total of $88,230 in 2002 represents many thousands of performances. Ex 4 tab 14 also shows that the royalties over that period for US performances exceeded those for both Australia and France;
(c) the fact that M. Caurret, a professional music director working in advertising in France, described Love as a “famous track”: T 624.36;
(d) the fact that many covers of Love have been performed all over the world by singers as famous as Tom Jones (see T 757.30-36 and ACS [212]);
(e) the use of Love’s opening vocal phrase alone in an episode of the US sitcom Gilmore Girls in 2002/3: see ACS [136] and T 747.14-46;
(f) its prevalence in US television programs and films broadcast in the US over the past more than 2 decades, as demonstrated by the APRA records from one of the US collecting societies, ASCAP, at Ex 4 tab 35: see ACS [213(c)];
(g) he fact that the co-owner in Italians Do it Better at the relevant time, Mike Simonetti, a DJ, played Love at a 2007/8 New Years’ Eve event in New York City at midnight: see ACS [194] (GCCS at [116] criticise the applicants for not adducing evidence from Mr Simonetti but he is not in the applicants’ camp);
(h) the fact that the reviewer of Warm in the 2013 article in ‘Popmatters’ described it as “[r]ising from the ashes of John Paul Young’s ‘Love is in the Air’”: ACS [203] and [211]; and
(i) the fact that following the launch of the ‘France is in the Air’ signature, at least two French journalists associated the phrase ‘France is in the air’ with Love even before the France film was created to the music of Warm: see ex 11 tabs 7 and 8 and ACS [244], ACS Supp [7]-[17] (see also below at [121] onwards) and the Adage journalist who attended the launch of the film described it at Ex 9 as “to the tune of” Love.
417 The first sentence is in reply but the balance of the paragraph is not and I disregard it.
418 The next paragraphs are [33]-[34]. Here Glass Candy (and Kobalt)’s point is that in their submissions in chief the Applicants had submitted that the assignments to APRA did not include ‘any right in relation to an infringing copy of a literary work or musical work’ whereas in reply they had said the assignments did ‘not extend to those rights necessary to prevent performance of infringing works, including arrangements or transcriptions so substantial as to constitute a new work’.
419 I do not think these differ in any way which is material to the case. As will be seen, I have rejected the Applicants’ argument about this in any event. No rejoinder will be permitted.
420 The next paragraphs were [36]-[37]. These were in reply to Kobalt’s submissions at [4.13]:
To the best of KMPA’s knowledge there are no cases on similar facts in Australia in which a music publisher of an Australian song (that is, one in which rights have been assigned to APRA), such as the First Applicant, has sued for infringement of the communication right. It is submitted that the reason is clear enough. Consistently with the plain construction of the standard-form assignment to APRA as set out below, the industry, including APRA, proceeds on the basis that APRA owns and administers the communication right, with no relevant rights being retained by the songwriter or music publisher.
(Citations omitted.)
421 To this the Applicants replied at [36]-[37]:
[4.13] of KCS is worded with exquisite care. KMPA is fully aware of a recent case on similar facts in New Zealand in which it, Kobalt, took action in the name of one of the writers it represents, Eminem, without involving the New Zealand collecting societies. The decision, Eight Mile Style LLC v New Zealand National Party (2017) 127 IPR 318 is in the Applicants’ bundle of authorities at Tab 19. It does not provide a full list of the parties, but AMCOS and AMCOS New Zealand Ltd were joined as third parties not by the plaintiffs in that case but by the first defendant, National Party. Her Honour makes clear at paragraph 6 that the only issue in relation to them is whether they had any liability to the National Party, not whether their involvement affected the standing or rights of the plaintiffs. There are various references to the licensing regime that was in place in respect of the work “[Eminem] Esque” and it appears at paragraphs 255 to 256 that it was directly equivalent to the arrangement in place in respect of Warm in the Winter. That passage also deals with the submission at KCS [6.23], which complains of a lack of evidence of Lose Yourself having been licensed to AMCOS.
Kobalt was the publisher of the plaintiff’s music: see the decision of Cull J at paragraph 5. The plaintiffs were represented by, amongst others, Mr Adam Simpson of Simpsons who also appears for Kobalt in this case. The plaintiffs put, and both Cull J and the Court of Appeal of New Zealand accepted, that notwithstanding that arrangement it was Eight Mile Style and not APRA or AMCOS who had the right to sue for the infringement. The communication right was relied upon.
422 The submission was that there was no such case in Australia. It is not in reply to say ‘true, but there is one in New Zealand’. I will disregard [36]-[37].
423 The next paragraph said not to have been in reply was [91]. However, it is clear from Glass Candy’s rejoinder submission that their complaint is that they do not agree with [91]. They do not develop any submission that it is not in reply and this is because it is plain that it is, in fact, in reply.
424 I therefore conclude that I will not receive [36]-[37] and all but the first sentence of [23] of the reply submissions since they were not in reply. Since they will not be relied on there is no need for a rejoinder from the Glass Candy or Kobalt. The balance of the rejoinder submissions were attempts to have the last word and I will disregard them.
425 I do not think this case required 416 pages of written submissions.
426 In relation to the digital streaming of Warm, the claim is to be dismissed.
427 In relation to the downloading of Warm, the claim in respect of the IDIB website and the Big Cartel website succeeds. AMCOS and Boomerang are entitled to an injunction restraining Glass Candy from authorising IDIB to make digital copies of Warm available for downloading in Australia. Boomerang is entitled to damages or an account of profits and, as discussed below at [432], a further hearing on the question of additional damages. The balance of the claim in relation to the downloading of Warm is to be dismissed.
428 In relation to the digital streaming of France, the claim is to be dismissed.
429 In relation to the use of France as telephone hold music, APRA is entitled to an injunction restraining it from playing France as its telephone hold music. Boomerang’s claim is to be dismissed.
430 In relation to the moral rights claim concerning France, the claim is to be dismissed.
431 In relation to Kobalt, the claim is to be dismissed.
432 In relation to damages, because the Applicants have demonstrated that the copying is deliberate, I conclude that the infringements were flagrant. I will hear further argument on their entitlement to additional damages. It was submitted on Glass Candy’s behalf that relief should be withheld because the amounts of money involved appeared to be de minimis. I would not be disposed to accept this submission. The question of damages is yet to be determined but will include a contention by the Applicants that they are entitled to additional damages and, on the findings I have made, this claim is not self-evidently implausible. Further, whilst it is tempting to think that the damages might be limited by the apparently modest infringements I have found, the Respondents (other than Kobalt) will no doubt have to deal with a contention by the Applicants that their damages should be assessed on a foregone licence basis. Without wishing to lend colour to that contention, damages on that basis may not be so modest.
433 I will also hear the parties on costs.
434 The only orders I will make are that the parties bring in short minutes of order to give effect to these reasons within 14 days, and that the matter be listed for a case management hearing on Friday 8 May 2020 at 9.30 am.
I certify that the preceding four hundred and thirty-four (434) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Perram. |
Associate:
