Copyright is in the Air – Flagrant infringement of an Australian classic

Countless advertising campaigns have used well-known songs, often cleverly adapted to fit the particular brand or product they are marketing, to great effect. If done correctly, this strategy can use the success and fame of the hit song to catapult the brand into the public consciousness. When poorly executed, however, it can create significant issues.

The recent Federal Court decision of Boomerang Investments Pty Ltd v Padgett (Liability) [2020] FCA 535 illustrates what happens when a company persists with using a particular song without ensuring that they have the appropriate permissions and licenses in place.

It also demonstrates the complexities and issues that artists may experience when trying to enforce their rights in the modern globalised digital economy, particularly where the other party is located in another country.

The facts

The case centres around the iconic track ‘Love is in the Air’ (Love), as recorded by John Paul Young in 1977 and immortalised in the Australian cultural zeitgeist in ‘Strictly Ballroom’ in 1992. The song was composed by Johannes van den Berg and the late George Young (no relation to John Paul). The copyright in the musical work is owned by Boomerang Investments Pty Ltd (Boomerang).

The source of controversy in this case was two songs recorded by the musical group ‘Glass Candy’. The first track, ‘Warm in the Winter’ (Warm), was recorded sometime in 2008 in Portland, Oregon and features the line ‘love is in the air’ sung to the same melody as Love. The second track, ‘France is in the Air’ (France), is an adaptation of ‘Warm in the Winter’ created by Glass Candy for Air France and featuring the line ‘France is in the Air’.

The legal claims

Boomerang, the composers of Love, APRA and AMCOS (the Applicants) commenced legal proceedings against Glass Candy, Glass Candy’s music publisher, Kobalt Music Publishing Australia Pty Limited (Kobalt Australia) and Air France (together, the Respondents) in relation to:

• Glass Candy and its publisher making Warm available for streaming and digital download in Australia on various online music platforms or otherwise authorising the platforms to do so; and 
• Air France’s use of France on its YouTube channel and as part of its telephone hold music, which would play to callers from Australia.

Tyranny of distance – issues with cross-border claims

As with many international copyright infringement claims, the geographical location of the infringement shaped the way in which the legal proceedings unfolded in a number of ways:

• First, the Applicants chose not to bring a claim for the principal infringement of Glass Candy recording the two tracks, instead focusing on the infringements of making the tracks available for streaming and downloading. The presiding judge, Justice Perram, observed that this may have been because the tracks were recorded in the United States, and that bringing a claim there would have been costly and may have entitled Glass Candy to demand a trial by jury.  For an example of how jury trials can affect copyright claims, see Arts Law’s article on the “Blurred Lines” case.

• Secondly, the composers were unsuccessful in their claim that the alteration of the lyrics of their song represented an infringement of their moral rights because the changes had occurred outside of Australia. Justice Perram commented that substituting the word ‘love’ for ‘France’ may otherwise have been prejudicial to the songwriter’s honour and therefore could constitute an infringement of their moral rights.

These aspects of the case highlight the effect that geographical boundaries can have on copyright claims by artists in an increasingly globalised digital economy. 

Similarities between the songs

Justice Perram found that the two tracks by Glass Candy were sufficiently similar to Love to give rise to copyright infringement for the following reasons:

• First, the phrase ‘love is in the air’ sung to a particular melody formed part of the original song. His Honour noted that it was a combination of the lyrics and the way in which they were intended to be sung which formed a part of the song. This represents a departure from the approach generally taken by Australian courts, which separate a song into the music (the musical work) and the lyrics (the literary work). His Honour found that the music included the sound of particular lyrics, as the human voice is also a musical instrument.

• Second, the ordinary reasonably experienced listener would consider that the relevant lines in the two Glass Candy tracks were objectively similar to the line in the original, notwithstanding minor differences in style and accompanying instruments. His Honour found that there was sufficient evidence to show that Glass Candy had heard Love prior to composing their songs and concluded that there had been deliberate copying. He also noted that Air France had tried to get approval from the Applicants to use Love for their campaign at the same time as approaching Glass Candy, therefore showing that they had sought a copy of the original.

• Third, the lyric ‘love is in the air’ formed a substantial part of the original song.

The judge therefore concluded that the two tracks by Glass Candy had copied a substantial part of the original song. As noted above, however, the Applicants did not make the recording of the two songs the basis of their copyright claim against the Respondents and instead limited their claim to streaming and downloading of the infringing songs.

Copyright infringement through streaming / downloading from digital platforms

The Applicants claimed that Glass Candy and Kobalt Australia had infringed copyright in the original song either by making Warm available for streaming and download in Australia via digital music platforms such as iTunes and Spotify and/or by authorising those platforms to do so. They also claimed that Air France had made France available for streaming in Australia by uploading their advertisement to YouTube.

Justice Perram rejected this claim. His Honour found that it was the music platforms, and not Glass Candy, that made the songs available for download. After carefully tracing the complex copyright arrangements for Love, His Honour went on to find that the streaming rights for Love were held by APRA and the digital download rights were held by Boomerang and AMCOS. Importantly, APRA and AMCOS had already granted the digital music platforms a blanket streaming/download license in respect of Love, which also extended to streaming/downloading a reproduction of a substantial part of the track. There was therefore no copyright infringement.

This produced a somewhat strange outcome where the two songs clearly copied a substantial part of the original, but there is no copyright infringement as a result of making them available for streaming or downloading because the streaming services had already been granted licenses by two of the plaintiffs, APRA/AMCOS.

Copyright infringement through downloading from websites

Justice Perram did, however, find that all downloads of Warm from the website IDIB, which did not have a license from APRA or AMCOS, were infringing acts. Glass Candy was therefore liable to Boomerang and AMCOS for making Warm available to download from that website.

Despite all of the effort and expense involved in securing this result, Glass Candy had only received $11.50 in revenue from 13 downloads of Warm via IDIB. While this is a somewhat disappointing result for the Applicants, they may be able to recover additional damages at a separate hearing given the flagrant nature of the copying and the potential loss of revenue from licensing fees.  

Conclusion

This case highlights the need for businesses to undertake appropriate due diligence when trying to license a song or artwork for an advertisement or marketing campaign. Ideally a business should secure the rights before building a campaign around a particular work in order to avoid these kinds of issues.

The difficulties encountered by the Applicants illustrate the complexities that musicians, and artists generally, may encounter when trying to enforce their rights. Even if one can establish that another musician or artist has copied a substantial part of your work, actually enforcing your rights and achieving a desirable outcome may be hindered by other factors such as the location of the other party. Where the other party is located in another country, the costs involved in bringing a claim in that country or the nature of its legal system may make enforcement impractical.

The case also underscores the need for artists to carefully consider the licenses and agreements that they enter into and the consequential effects that they may have. The broad licenses granted by APRA and AMCOS to the music streaming platforms effectively prevented the Applicants from claiming for copyright infringement in respect of downloads and streams of the two songs by Glass Candy. While it would have been difficult to have predicted this particular situation unfolding at the time that the licenses were first created, it reinforces the need for artists to be aware of the breadth of the rights that they are giving away.

By Aidan Hawkes and Annabel Seow