Publications - Intellectual Property
When Love is Partly in the Air
Boomerang Investments Pty Ltd v Padgett (Liability)  FCA 535
It is tempting when developing a marketing campaign to select music or a well known song to assist in delivering your message. In these circumstances it is important to remember that copyright may subsist in the words, the music and the combination of these two. Accordingly, to use the music or song you may need to pay a licensing fee otherwise you may infringe a number of copyright provisions.
Similarly, songwriters who borrow or sample a lyric, phrase or music from another song may also infringe the copyright that subsists in that work if they do not have a licence to use the work or have the permission of the requisite artist or body.
The recent case of Boomerang Investments Pty Ltd v Padgett (Liability)  FCA 535 deals with these two issues.
On 24 April 2020, Justice Perram of the Federal Court of Australia held that the American duo of John Padgett and Lori Monahan, who together are known as Glass Candy, copied part of the musical work in the Australian pop song ‘Love is in the Air’, made famous by the singer John Paul Young and later by the movie Strictly Ballroom.
His Honour held that Glass Candy consciously copied a portion of the musical work in ‘Love is in the Air’, namely the music and the sound of the accompanying lyric ‘love is in the air’, when composing the song ‘Warm in the Winter’, which was later modified to ‘France is in the Air’ for an Air France advertising campaign.
However, His Honour held that the lone phrase of ‘love is in the air’ is not sufficiently original such that it can be regarded as a substantial part of the lyrics of ‘Love is in the Air’. Accordingly, the case based on the literary work, concerning both ‘Warm in the Winter’ and ‘France is in the Air’ failed.
Because of the way the case was pleaded, being copyright infringement on the basis of streaming and downloading, the current owner of the copyright in Love, being Boomerang Investments Pty Ltd, is entitled to damages for downloads of Warm in the Winter. A hearing on damages will be held at a later date.
Love is in the Air (Love) was composed by Johannes van den Berg (Vanda) and the late George Young (Young) in Sydney in 1977. The publisher of Love in September 1977 was J Albert & Sons Pty Limited, who in August 2016 assigned the copyright in Love to Boomerang Investments Pty Ltd (Boomerang).
Warm in the Winter (Warm) was composed by instrumentalist John Padgett (Padgett) and vocalist Lori Monahan (Monahan) in Portland, Oregon sometime between 2005 and 2011. Padgett is the owner of a Californian publishing company called Italians Do it Better (IDIB), which licensed the copyright in Warm to Kobalt Music Services America (Kobalt US), which then licensed the Australian copyright to Kobalt Music Publishing Australia Pty Ltd (Kobalt).
France in the Air (France) is an adaptation of Warm which was made by Glass Candy for 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.
In addition to Boomerang, Vanda and Young, the other applicants to these proceedings were the Australasian Performing Right Association (APRA) and the Australasian Mechanical Copyright Owners Society Ltd (AMCOS), which are collecting societies.
APRA, generally, collects royalties on behalf of the owners of the copyright in music where that music is communicated to the public.
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 or services which permit copies of a musical work to be downloaded over the internet.
These two bodies were joined to the proceedings as the Respondents’ argued that Boomerang had no title to sue for infringement because the relevant rights holders (due to earlier assignments of rights) in Love for the communication right are APRA (for the digital streaming and hold music rights) and AMCOS (for the concurrent digital downloading right with Boomerang). Boomerang also retained the right to sue a person who makes an advertisement involving a copy or adaptation of Love.
Applicants' Position - the allegation of copyright infringement
The Applicants’ case on infringement of the copyright in the musical work against each of the Respondents turned 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 downloading of Warm (or in streaming in France on YouTube and using it as telephone hold music) infringed those rights. The infringement is said to arise because:
- Warm and France are alleged to contain a ‘substantial part’ of Love which was deliberately taken from it;
- the streaming or downloading of a ‘substantial part’ of Love is taken by s 14(1)(a) of the Copyright Act 1968 (Cth) (Act) to be the streaming or downloading of Love itself;
- the streaming and downloading of Love involves the exercise of rights comprised in the copyright in Love; and
- because the doing of an act comprised in a copyright without the permission of the owner of that right constitutes infringement pursuant to s 36(1) of the Act.
The Applicants alleged numerous acts of copyright infringement which hinged on their allegation that Warm contains a reproduction of a substantial part of Love in the following two ways:
- (a) the music in Love corresponding to the phrase ‘love is in the air’, being that:
i. this phrase is sung to a series of five notes, and as the song progresses it returns repeatedly to the line ‘love is in the air’;
ii. on each occasion the phrase is sung in one of three slightly different variations; and
iii. this phrase is the title of the song, and the song’s central feature,the phrase ‘love is in the air’ to the same melody appears in Warm (b) on four occasions, and that same melodic line with the lyric ‘France is in the air’ appears in France.
- a longer portion of Love, consisting of the lines and accompany melody to “Love is in the air, everywhere I look around; Love is in the air, every sight and every sound” has been copied by Glass Candy in Warm as “Love’s in the air, whoa-oh; Love’s in the air, yeah” and in France as “France’s in the air, whoa-oh; France’s in the air, yeah”.
The Applicants’ secondary case was that Glass Candy was mistaken, and that Love was sufficiently known to them that, even if they did not do it deliberately, they had subconsciously taken from Love in composing Warm.
Not unexpectantly, Glass Candy denied that they copied any portion of Love and 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. Further, they say that 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. In other words, it is a common phrase used in everyday vernacular.
The Pleaded Case
The Applicants did not allege that Glass Candy’s initial recording of Warm was an infringement of the copyright in Love. Instead, the Applicants 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, being iTunes, Spotify, Apple Music, Google Play and SoundCloud and on two websites operated by IDIB (including Big Cartel).
Although there was no explanation as to why the case was pleaded this way, His Honour speculated that it was because any proceedings regarding the initial recording of Warm being an infringement of the copyright in Love would need to be commenced in America.
Reasons for judgment
Warm and the Musical Work in Love
Determining infringement of copyright in literary work (lyrics)
As explained by Emmett J in EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd  FCAFC 47, the correct approach in a case of alleged infringement of copyright in a musical work 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;
- identify the part of the allegedly infringing work which is said to have been reproduced from the copyright work. For production to be proved there must be sufficient objective similarity between the two works and there must be a causal link between them; and
- determine whether the part taken constitutes a substantial part of the copyright work, in other words whether the alleged infringement reproduces that which made the copyright work an original musical work (i.e. it is the quality rather than the quantity that is said to have been taken).
In applying those elements, His Honour made the following findings.
Identifying the work
- That although the words constituting the lyrics form a separate literary work, His Honour considered that the sound of those words being sung is part of the musical work.
- The question which arises here is not whether Monahan singing ‘love is in the air’ in Warm is objectively similar to John Paul Young (JPY) 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 identifying the work, His Honour took into account, as part of the musical work, the instrumentation including sung lyrics but did not take into account the performance of the works.
- Love was composed in 1977 by Vanda and Young in Sydney. In 1978 they recorded a copy of the song with the lyrics sung by JPY.
Identifying the portions of Warm said to be have been taken by Love
- This analysis requires two questions to be answered about the allegedly infringing work, being:
- are the impugned portions of Warm, objectively similar to their equivalent portions in Love; and
- is there a causal connection (i.e. conscious or subconscious copying) between those parts and Love?
- In answering the above questions, His Honour:
- found that the sung line ‘love is in the air’ and its accompanying music in Warm is objectively similar to the sung line of ‘love is in the air’ in Love as it appears in the first two lines of each of the four verses;
- found that the longer portion of Love being, ‘love is in the air, everywhere I look around; love is in the air, every sight and every sound’ is not objectively similar to ‘love’s in the air, whoa-oh; love’s in the air, yeah’ in Warm as they do not sound the same;
- was not convinced that Padgett had in fact commenced composing the earliest version of Warm in 2005 and had not heard Love until 2011. Instead, His Honour concluded, based on the evidence, that Warm was composed in 2009 and Padgett had heard Love before 2008. Further, that the vocal line in Warm was composed sometime after May 2008;
- was satisfied on the balance of probabilities that Glass Candy did copy the vocal line from Love either deliberately or subconsciously; and
- found that Glass Candy knowingly copied the sung lyric ‘love is in the air’ and its accompanying music sometime between May 2008 and May 2009.
Whether the part taken in Warm constitutes a substantial part of Love
Originality of the part taken
Whether something is a substantial part of the original work involves a consideration of quality and quantity but usually depends much more on the quality than the quantity of what has been taken. The analysis is concerned with the importance of the part taken to the copyright work, Love, not Warm. It may be sufficient if the taken part is a vital or material part, even though quantitatively it may only be a small part. In other words, 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. His Honour held that it was.
Substantiality of the part taken to the copyright work
His Honour rejected the Respondents’ position that the part taken was too short or too mundane. Instead, His Honour held that the sung line ‘love is in the air’ is qualitative, being that it is the essential air of the song, and it is certainly not so slender that it would be impossible to recognise it.
Accordingly, His Honour found 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.
However, His Honour found that the lone phrase ‘love is in the air’ is not sufficiently original such that it can be regarded as a substantial part of the lyrics of Love.
France and the Musical Work in Love
Similarly, His Honour held that it was Air France that copied the sung lyric from Love into France. It knew, through its advertising company, that France was a copy and commissioned its creation. The copying was flagrant within the meaning of s 115(4) of the Act and therefore additional damages ought to be considered.
Infringement on the basis of Streaming and Downloading
As a result of the various licences granted in Love to Boomerang, APRA and AMCOS, it was held 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. Whereas, Boomerang and AMCOS both have title to sue in relation to the provision of digital downloads of Warm.
On the evidence, His Honour found that:
- Glass Candy made Warm available or caused Warm to be made available for streaming and downloading on iTunes and for downloading on IDIB;
- Warm was downloaded by persons in Australia some 13 times over the period 2011 to 2018; and
- IDIB, with Glass Candy’s authorisation, is continuing to offer Warm for download from the IDIB website.
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 material form. It was at this time that an infringement occurred but, this infringement took place in Oregon. In September 2011 Padgett communicated that recording in iTunes by uploading and he thereby authorised iTunes to make it available for streaming and downloading. These actions involved infringements of the copyright as well.
Accordingly, the act of infringement occurred when communicating Warm to iTunes. 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.
However, because of the licences granted in Love to APRA and AMCOS, the Applicants’ case about Warm failed in relation to all acts of streaming and downloading where the online music service held APRA and AMCOS licenses, i.e iTunes. Where the case did not fail was in relation to IDIB’s actions in allowing customers in Australia to download copies of Warm from IDIB and Big Cartel.
What about France?
The acts against France consist of its streaming of a number of promotional videos featuring France from YouTube. This case failed as YouTube holds an APRA licence. If YouTube had not held a licence then His Honour would have found that Air France also infringed the copyright by making the television commercial and other materials available on its YouTube channel.
The only part of the case remaining against Air France’s was 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. As Air France does not hold an APRA licence, Air France has no right to play France to the extent that it includes a reproduction of a substantial part of Love.
The Moral Rights Claim
In respect of the moral rights claim, Vanda and Young submitted 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. His Honour rejected this argument because by s 195AX of the Act it is not an infringement of an author’s moral right in respect of a work to do something outside Australia. As the evidence showed, the alteration from ‘love is in the air’ to ‘France is in the air’ occurred in France, America or Canada, not Australia.
In respect of the copyright infringement, His Honour held that:
- 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’;
- Glass Candy consciously copied that portion of the musical work in Love;
- the part taken from Love is original for the purposes of assessing substantiality; and
- 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 Act;
- the longer musical couplet in Love has not been reproduced in Warm, as they are not objectively similar; and
- there has been no infringement of the literary work comprised in the lyrics of Love, as the portion alleged to have been copied is not original.
Accordingly, in relation to:
- the digital streaming of Warm, the claim was dismissed;
- the downloading of Warm, the claim in respect of IDIB website and the Big Cartel website succeeded. AMCOS and Boomerang were entitled to an injunction restraining Glass Candy from authorising IDIB to make digital copies of Warm available for downloading in Australia. Boomerang was entitled to damages or an account of profits and a further hearing on the question of additional damages. The balance of the claim in relation to the downloading of Warm was dismissed;
- the digital streaming of France, the claim was dismissed;
- 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 was dismissed;
- the moral rights claim concerning France, was dismissed;
- damages, because the Applicants demonstrated that the copying was deliberate, His Honour concluded that the infringements were flagrant. There will be a separate hearing in respect of the Applicants’ entitlement to additional damages.
Glass Candy argued that relief should be withheld because the amounts of money involved appeared to be minimal. His Honour rejected this submission and foreshadowed that there is likely to be a contention by the Applicants that they are entitled to additional damages and that their damages should be assessed on a foregone licence fee basis, which may not be so modest.
A copy of the full judgment can be found here.
If we can assist you in relation to the privacy obligations of your business or other legal matters, please contact us.