Palmer breaches copyright – liable for $1.5m AUD in damages

On 30 April 2021 Katzmann J delivered the Federal Court’s judgment in the matter of Universal Music Publishing Pty Ltd v Palmer (No 2) [2021] FCA 434 (UMB).  The case of UMB concerns the infringement of musical and literary works (Works) of Daniel “Dee” Snider (Dee) by Clive Palmer’s United Australia Party’s (UAP/Respondent) multi-media advertising campaign.  UMB considered a complex and detailed fact matrix.   Simply put, the Respondent made use of a short jingle with the lyrics ‘Aussies Not Gonna Cop It’ to the tune of Dee’s ‘We’re Not Gonna Take It’, alongside other similarly reproduced advertisements (Impugned Works), to promote the Respondent’s political objectives.

Was copyright in the Works infringed?

The Court took a multi-step approach to determining whether the copyrighted Works were infringed by the Respondent.  The Court sought to identify specifically the Works in suit.  Following this, the Court addressed what was taken, derived or copied from the Works and subsequently whether the Impugned Works reproduce a substantial part of the Works.

How was reproduction assessed?

For the purposes of copyright law, reproduction includes both a ‘resemblance to, and actual use, of the copyright work’ as well as ‘some causal connection’.  Katzmann J interpreted these rules as requiring a ‘sufficient degree of objective similarity’ between the Impugned Works and the Works. Her Honour was satisfied that the Impugned Works were objectively similar and that the evidence overwhelmingly suggested a causal connection (at [197]).  In fact, Katzmann J thought it was

“ludicrous to suggest that the Impugned Work was created independently of the Works’ and to suggest no causal connection was fanciful (at [204]).”

In determining whether the Impugned Works reproduced a substantial part of the Works, her Honour recognised five assistive legal principles.  They are as follows:

• first, whether a part, here the Works (particularly the phrase ‘We’re Not Gonna Take It’), is substantial is determined with reference to the quality of the reproduced part, here the Impugned Works;
• second, the reproduction of a part which by itself has no originality will not normally be a substantial part of the copyright work and therefore will not be protected;
• third, originality is to be understood in respect of the expression of thoughts and ideas (at [226]);
• fourth, originality does not mean novelty or uniqueness; and
• fifth, with respect to musical works, substantiality is not determined by ‘a note-by-note textual comparisons of the score’ (at [231]).

In applying these principles, her Honour was satisfied that the Impugned Works copied a substantial part of the Works.  Thus, the Court found the copyright held by the First Applicant over the Works had been infringed by the Respondent.

Fair dealing defence not available to the Respondent

Section 41A of the Copyright Act 1968 (Cth)(Act) provides as follows:

“A fair dealing with a literary, dramatic, musical or artistic work, or with an adaption of a literary, dramatic or musical work, does not constitute an infringement of the copyright in the work if it is for the purpose of parody or satire.”

A plain reading of section 41A shows that to safeguard the Respondent from liability for copyright infringement, his use of ‘Aussies Not Gonna Cop It’ needed to be a ‘fair dealing’ for the purpose of ‘parody or satire’.  Pagone J in the case of Pokemon Company International, Inc. v Redbubble Ltd [2017] FCA 1541, added a qualifier to the section 41A protection, holding at [69]:

“To qualify for the [section 41A] protection the use must be both fair and for the purposes of parody or satire where parody or satire is not ‘used as a shield to avoid intellectual work in order to benefit from the notoriety of the parodied (or satirised) work.”

In applying this body of law to UMB, her Honour recognised that ‘fair dealing’ has been said to be impossible to define.  In attempting to determine what use of copyrighted material may be classified as ‘fair dealing’, her Honour found the Court may rely on any fact which it considers relevant to that determination (at [305]).

As such, her Honour considered the factors outlined in section 40 of the Act (at [301]), a fact sheet issued in 2008 by the Attorney-General’s Department on the new exceptions for parody and satire (at [303]), section 107 of the US copyright legislation relating to fair use (at [307]), academic works (at [309]) and of course, various precedents (at [308], [310], [311]).

In considering those factors, Her Honour held that the Respondent’s dealings with the Works were not fair.    Her Honour also found the Impugned Works were not satirical or parodical in nature.  As such, the defence under section 41A of the Act was not open to the Respondent.

Appropriate relief in the circumstances

In UMB the Court granted relief in the form of an injunction and damages because of the Respondent’s infringement pursuant to sections 115(2) and (4) of the Act.  Important to note is that the Respondent sought a licence to use the Impugned Works but was unwilling to pay the amount required by the First Applicant.  Some question arose as to whether damages should be compensatory, restitutory or compensatory with a restitutory aspect.  However, her Honour was of the view that it did not matter and was apparently disinterested in awarding damages on the basis of unjust enrichment.  Her Honour cited Yates J in Winnebago Industries Inc v Knott Investments Pty Ltd (No 4) [2015] FCA 1327 where his Honour held at [13]:

“The plaintiff may not have suffered actual loss from the use, and the wrongdoer may not have derived actual benefit. Nevertheless, under the principle, the defendant is obliged to pay a reasonable sum for the wrongful use.”

The Court had reliance on the case of Attorney-General (UK) v Blake [2001] 1 AC 268 wherein Lord Nicholls held at 279 the following:

“The reality is that the injured person’s rights were invaded but, in financial terms, he suffered no loss. Nevertheless the common law has found a means to award him a sensibly calculated amount of money.”

Her Honour considered a myriad of cases espousing a general rule that an abstraction, invasion or infringement of property, including intellectual property, should sound in damages.  There appears to be no requirement that the copyright holder suffer actual loss to be awarded damages under section 115(2) of the Act.  This approach was adopted by the Federal Court in the earlier decision of Motorcycle Aftermarket Spares Pty Ltd v Tamworth Cycle Tune Pty Ltd [2014] FCA 1433.

Thus, the Court heard the First Applicant’s evidence as to the reasonable cost to licence the Works for an eight-month campaign, holding that the amount of AUD $500,000 was appropriate taking into account some of the following:

• the controversial and divisive nature of the UAP campaign and Mr Palmer;
• the high likelihood of damage to the image of the song, the artist and UMB; through association with the UAP campaign and Mr Palmer;
• the prominent use of the song across 12 versions of the advertisement;
• the size of the campaign;
• the lyric changes;
• the poor quality of the re-recording and its rendition as a ‘sound-alike’; and
• the want of geo-gating so that the advertisements were accessible overseas, including in the US.

Further to the $500,000 damages order, the Court held the circumstances were appropriate to order additional damages in light of the mandatory considerations under section 115(4)(b), including:

• the flagrancy of the infringement;
• the need to deter similar infringements of copyright;
• the conduct of the defendant after the act constituting the infringement or, if relevant, after the defendant was informed that the defendant had allegedly infringed the plaintiff’s copyright;
• whether the infringement involved the conversion of a work or other subject-matter from hardcopy or analogue form into a digital or other electronic machine-readable form;
• any benefit shown to have accrued to the defendant by reason of the infringement; and
• all other relevant matters.

In respect of the last consideration, her Honour found that ‘other relevant matters’ in UMB included the conduct of the Respondent with respect to the infringement, the motive for the infringement, the injury to the First Applicant’s feelings for suffering insults, indignities and the like as well as the First Applicant’s corresponding behaviour (at [488]).  Having taken these matters into account, particularly the flagrancy of the infringement, the Respondent’s contumelious behaviour and intention to derive a political benefit, her Honour awarded additional damages of AUD $1,000,000.

In total, then, the Court awarded damages in the sum of AUD $1,500,000.

Takeaways

The decision in this case offers little new guidance in respect of infringements and the section 41A defence.    More interestingly, UMB highlights the Court’s willingness to award considerable damages for flagrant, contumelious infringements of copyrighted material in circumstances where the copyright holder has suffered no or little financial loss.  The case also provides an example of circumstances where political, as opposed to commercial, gain may enliven an order for damages.

Links and further references

Legislation

Copyright Act 1968 (Cth)

Cases

Attorney-General (UK) v Blake [2001] 1 AC 268
Motorcycle Aftermarket Spares Pty Ltd v Tamworth Cycle Tune Pty Ltd [2014] FCA 1433
Pokemon Company International, Inc. v Redbubble Ltd [2017] FCA 1541
Universal Music Publishing Pty Ltd v Palmer (No 2) [2021] FCA 434
Winnebago Industries Inc v Knott Investments Pty Ltd (No 4) [2015] FCA 1327

Further information on copyright infringement

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Disclaimer

This article contains general commentary only.  You should not rely on the commentary as legal advice.  Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.

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