Infringement requires the taking of a substantial part of the work and thus less than a substantial taking should be permissible
But the legislation is silent about the preferred method of identifying a substantial part of the protected expression which created ambiguity and flexibility about what is and isn't
- The HCA in Ten v TCN Nine attempted to clarify these principles

Relevant Provisions

S 14(1)

S 36(1)

Network Ten Pty Ltd v TCN Channel Nine Pty Ltd [2004] HCA 14

McHugh ACJ, Gummow and Hayne JJ

Copyright and copying

Their honours noted that whilst copying is an essential element of infringement which provides a causal connection between the plaintiff’s IP and the alleged infringement, copying doesn’t necessarily constitute infringement. Their honours noted the language of people in characterising infringement as ‘theft’, ‘piracy’ etc. which if taken literally would incorrectly indicate that by proving copying, proof of ‘appropriate s.m. for copyright and taking of a substantial part’ would be proved in one go.

Substantial part

Their honours noted that the taking of something less than the whole part of any species of copyright will do – this degree of exploitation is found in s 14(1) as a ‘substantial part’ and thus “acts done in relation to insubstantial parts do not constitute an infringement of copyright and defences of fair dealing only come into operation to substantial parts or more”

Proving infringement involves more than just alleging copying but the plaintiff generally doesn’t have knowledge of the circumstances leading to the production of similar work. All they can prove is:
- The two works are substantially similar; and
- The likelihood that the defendant was aware of the plaintiff’s work and had access to it
  - Proof of intention to copy isn't necessary but there has to be a causal connection b/w the plaintiff’s work and the defendant’s work
  - Thus independent creation without copying will not involve infringement
Francis v Bron it was suggested that evidence of a probably causal connection creates a rebuttable presumption of copying (even though Diplock said this was an unsophisticated approach)
- A defendant may rebut a presumption of copying with reference to evidence of independent creation, lack of familiarity with the plaintiff’s work and familiarity with works other than the defendant’s that may otherwise explain the alleged similarity
The psychological fact of the possibility of unconscious copying puts defendants in a difficult position. The potential unfairness to defendants who are genuinely unaware of cultural references is exacerbated by the absence of ‘fair use’ provisions permitting transformative uses of copyright works

Larrikin Music Publishing Pt Ltd v EMI Songs Australia Pty Ltd [2010] FCA 29

Facts: The case concerned Marion Sinclair’s popular song ‘Kookaburra sits in the old gum tree’ and the 1981 iconic Australian song ‘Down Under’. It was alleged that the flute riff from Down Under was taken from Kookaburra in the hook and later. A few preliminary matters as to the law were noted by his honour as well as some points as to the musical and expert evidence:

The musical context in which the bars were reproduced are quite different
Expert Musicologist for Larrikin Dr Ford said the harmony of the two songs were different, and there are other differences, but the melody of the flute riff when playing the bars is the same as the melody of the first two bars of Sinclair’s round but has a different feel
- He also said the two bars were the ‘signature’ of the work
Mr Amigier for the respondent agreed but the debate was as to whether or not this constituted a ‘substantial oart’ under the legislation

Jacobson J:

The relevant discussion of the legal principles

His honour relied on the principles stated by Gibbs CJ in SW Hart:

What is required is a sufficient degree of objective similarity between the two works AND some causal connection between the plaintiffs’ and the defendant’s work
- The question of objective similarity of musical works is not to be determined by a note for note comparison but is to be determined by the eye as well as the ear (Wilmer LJ citting Austin v Columbia Gramophone)

The reproduction of the copyright work need not be identical with the original – the test is whether the substance of the work has been taken. Thus…

If these two elements are satisfied then the question arises as to whether the infringer has copied a substantial part of the copyright work – in answering this question ”much more depends on the quality rather than on the quantity of what he has taken” (This was affirmed in IceTV)
- What amounts to a reproduction of a substantial part cannot be defined more precisely than to say it is a question of fact and degree which depends on the circumstances of each case
- “It must depend on whether the air taken is substantially taken with the original” (even if you don’t take the whole – D’Almaine v Boosey
- “the more simple or lacking in substantial originality the copyright work, the greater degree of taking will be needed before the substantial part test is satisfied” (IceTV quoting Copinger and Stone)

The steps in an action for copyright infringement

The first step is to identify the work in suit in which the copyright subsists
The second is to identify in the allegedly infringing work the part that is said to have been derived or copied from the copyright work
The third is to determine whether the part taken is a substantial part of the copyright work
- The copied features must be a substantial part of the copyright work but need not be a substantial part of the infringing works, the overall appearance of which may be very different from the original (Russell William Textiles)
- The comparison involves an examination of the similarity between the works to see whether they are sufficiently close, numerous or extensive so as to be more likely the result of copying than coincidence (Russell William Textiles)

The concept of a hook - The hook is the attractive part of the song which identifies the song, sets it apart from others and sometimes makes it popular and a commercial success
Men at Work and the Evolution of Down Under:
- The current version of the song was produced in 1981 – a bass riff being substituted for the flute riff which became the lead instrument
- Mr Ham stated that he was aware of the Kookaburra song having heard it at school in the late 50s and it being part of his school’s song book
- He also admitted that his aim in adding the flute to Down Under was injecting Australian flavour into the song
Mr Hay’s evidence – he accepted that the 1981 recording makes reference to part of the melody of Kookaburra but insists he was unaware of this when the recording was made. His honour noted that a video version of the song was made with the same recording which included a shot of Mr Ham playing the flute riff in the middle of the song, playing it to a koala and in a hangman’s noose. He accepted that the flute riff played in this context was a reference to Kookaburra
The difficulties in recognising Kookaburra: The court referred to an argument by the respondents that if the two songs are so similar why did it take so long for anyone to recognize it. They referred to an episode of Spicks and Specks in which it took the panel a number of tries to recognize the song and all had difficulty making the connection.
- But while this does show there are difficulties in recognizing the similarities between the works, a sensitised listener can detect the aural resemblance and this is sufficient to satisfy the test of objective similarity

Is there a reproduction of a substantial part?

While it was accepted that the two bars were a signature part of the work – this isn't of itself sufficient to give rise to a finding that what was taken was a substantial part of the copyright work
- D’Almaine v Boosey – CB referred to a case where a it was said copying of a mere bar didn’t constitute a phrase but 3-4 may. There can be no precise answer but emphasis on the quality of what is taken introduces a subjective element
His honour noted that if it was just the ‘one bar’ copying in the first hook the question would have been made much difficult – but because the ‘two bar’ copying in the second hook things were different.
Respondent submits: The present case falls within the IceTV principle that the more simple the work the greater degree of taking will be required:
- Dr Ford’s evidence though was that writing a round is a tricky business because all of the phrases have to fit on top of each other
- But his honour didn’t consider that what was taken from Kookaburra, at least in the second example, was trivial in either a qualitative or quantitative sense. Though Kookaburra was a short work it was not so simple or lacking in substantial originality that a note-for-note reproduction was enough to meet the test
The short answer to the qualitative test is found in Mr Hay’s performance of the words of Kookaburra to the tune of the flute riff in Down Under – this was a sufficient illustration that the test was met. The reproduction wasn’t one of exact correspondence but enough to show a substantial part was taken.

The question of quantum of income share was left to be decided later.

#7327 - Direct Infringement - Intellectual Property 1 (Copyright)

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