What you need to know
- The Federal Court has continued the global trend of "sound alike" copyright cases, finding that the 2011 song "Warm in the Winter" by American indie duo Glass Candy was copied from Vanda & Young's 1978 hit "Love is in the Air" made famous by John Paul Young. The Court reached the same conclusion in relation to an adaptation of "Warm in the Winter" in an Air France's "France is in the Air" marketing campaign.
- However, the Applicants' claim was only partly successful because the Court held that a number of the alleged acts of infringement were actually permitted under separate licence arrangements between APRA AMCOS and certain online music platforms (eg, Spotify and Apple Music) that made "Warm in the Winter" available for streaming and digital download.
- The Court also rejected a claim that the adaptation of "Warm in the Winter" used in the Air France campaign, which featured the line "France is in the Air", violated the moral rights of Mr van den Berg (better known as Mr Vanda) and Mr Young as the adaptation occurred entirely outside Australia.
What you need to do
- Conduct careful legal due diligence on key marketing assets and ensure adequate contractual protections are in place with advertising agencies in respect of the originality of your marketing materials and that the use of such materials will not infringe any intellectual property rights, including moral rights. In this case, the Applicants brought proceedings against Air France who used an adaptation of the infringing work in a global marketing campaign.
- Before taking steps to enforce copyright, ensure that you are in fact the copyright owner, and that you have not assigned any relevant rights to a third party. It is also important to think strategically around the precise conduct that is alleged to be infringed and, if relevant, where to bring proceedings.
- Parties to litigation should ensure that they present their full case at hearing. In this case, the Court refused an application by the Applicants to vary the Court's reasons or to re-open its case in order to rely on additional arguments that were not made at the hearing but related to material before the Court. This case is a useful reminder that these kinds of applications are only likely to be successful in exceptional circumstances.
Background
Boomerang claimed to own the copyright in the 1978 song "Love is the Air" (Love).
In 2011, Glass Candy released the song "Warm in the Winter" (Warm), which featured the line "love is in the air" (or, perhaps, "love's in the air"). Glass Candy subsequently adapted Warm for use in an international marketing campaign for Air France, where the lyrics "love is in the air" were replaced with "France is in the air".
Boomerang (together with Mr Vanda, the late Mr Young's estate, APRA and AMCOS) commenced proceedings 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 the adaptation of Warm on its YouTube channel and as part of its telephone hold music, which would play to callers from Australia.
The Applicants did not sue in respect of the actual recording of Warm, presumably because this occurred in the United States meaning that any claim would need to be determined in that country (most probably by a jury).
Neither did the Applicants claim against the platforms, most of whom separately had the right to make Love available for streaming and download pursuant to their blanket licences with APRA AMCOS.
Comparing the songs
Justice Perram held the similarities between Love and Warm were sufficient to give rise to copyright infringement.
First, Justice Perram found the line "love is in the air" in Warm was objectively similar to the opening line of Love. Integral to this conclusion, which was consistent with the expert evidence, was the determination that the musical work in Love included both the instrumental component of the work and the sound of the sung lyrics.
Second, Justice Perram held Glass Candy had knowingly copied the relevant part of Love, rejecting evidence from members of the band they were not familiar with Love prior to writing Warm.
Third, Justice Perram held that the sung line "love is in the air" constituted a substantial part of Love as it was the song's "essential air". While stressing the qualitative emphasis of the substantial part test, Justice Perram also noted that, taking into account repetitions, the line comprised a quantitatively significant 20 seconds of Love.
Justice Perram rejected an infringement claim based on the literary work "love is in the air", finding that the words, when not put to music, lacked originality.
Justice Perram reached a similar conclusion in relation to the Glass Candy's adaptation of Warm used by Air France (France), seeing little significance in the substitution of the word "Love" for "France". He also found Air France's advertising agency had made a deliberate choice to allude to Love such that any infringement would be flagrant.
Copyright infringement
Despite the clear similarities between Love and Warm, the Applicants' infringement claim was only partly successful.
First, certain of the rights Boomerang asserted, such as digital streaming and hold music rights, were, in fact, owned by APRA by virtue of the complex historical copyright arrangements between Mr Young, Mr Vanda, their record label and the collecting society.
Second, Justice Perram held that it was the online music platforms and not Glass Candy (or its publisher) that made Warm available for streaming or digital download. Furthermore, Glass Candy could not be liable for authorising the platforms to make Warm available in circumstances where this conduct was not an infringement of copyright due to the platforms' blanket licences which expressly permitted the platforms to make Love (or a substantial part of Love) available for streaming and download. Similarly, Justice Perram found that Air France's use of Warm on its YouTube channel was covered by YouTube's blanket licence.
Boomerang was therefore only entitled to an injunction and damages or an account of profits in relation to 13 downloads of Warm from the website of Glass Candy's record label (which did not hold a blanket licence) by people in Australia. APRA was separately entitled to an injunction to restrain Air France from using Warm as telephone hold music.
Interestingly, following the judgment, the Applicants challenged Justice Perram's findings that the platforms could not be liable in light of their respective blanket licences, pointing to provisions in those agreements prohibiting the use of the licensed works with alternative lyrics. Justice Perram refused the Applicants' applications to vary the Court's reasons or re-open their case as this argument had not previously been made before the Court despite the issue being live at the hearing and the relevant licences being in evidence. The Applicants did not provide any justification for this oversight.
The Court will assess damages in a separate hearing.
Moral Rights
Mr Young's estate and Mr Vanda also brought a claim against Air France alleging violation of their moral rights. Justice Perram held that, while he was prepared to accept that the substitution of the word "Love" for "France" was prejudicial to the songwriters' honour (and therefore would have infringed their moral rights), this claim was unsuccessful as the change to the work had occurred outside of Australia.
Authors: Ted Talas, Lawyer; and Anita Cade, Partner.
