Boomerang Investments Pty Ltd v Padgett (Liability)

• Jurisdiction: Australia Federal only
• Judgment Date: 24 April 2020
• Neutral Citation: [2020] FCA 535
• Court: Federal Court
• Date: 24 April 2020

FEDERAL COURT OF AUSTRALIA

Boomerang Investments Pty Ltd v Padgett (Liability) [2020] FCA 535

File number:	NSD 1738 of 2017
Judge:	PERRAM J
Date of judgment:	24 April 2020
Catchwords:	COPYRIGHT – musical works – identification of copyright work – whether sound of lyrics as sung forms part of musical work – ‘love is in the air’ as both lyric carrying meaning and phonetic instruction to vocalist – objective similarity between copyright work and allegedly infringing works – consideration of ordinary, reasonably experienced listener – relevance of expert evidence and chambers’ heightened familiarity with works – causal connection – whether conscious or unconscious copying – consideration of process of creation of allegedly infringing works – whether part taken a substantial part of copyright work – originality – whether sung lyric ‘love is in the air’ and accompanying music ‘essential air’ of copyright work – whether part taken ‘too short’ to be substantial ; COPYRIGHT – musical works – where allegedly infringing works created outside Australia – where reproduction and communication rights alleged to have been infringed by streaming, downloading and telephone hold music – effect of assignment and licensing arrangements – whether authorisation infringement possible without primary infringement ; COPYRIGHT – literary works – whether lyric reproduced in allegedly infringing works a substantial part of literary work – originality of lyric taken – whether ‘love is in the air’ an obvious, commonplace or prosaic expression ; COPYRIGHT – moral rights – right not to have work subjected to derogatory treatment – meaning of ‘reputation’ and ‘honour’ – consideration of territoriality requirements ; CONTRACTS – construction of assignment and licensing arrangements concerning rights in copyright work and allegedly infringing works involving Fourth and Fifth Applicants – relevance of extrinsic materials – effect on standing of First Applicant to sue ; DAMAGES – whether sufficient prospect of entitlement to real pecuniary award to justify inquiry for damages or account of profits – entitlement to additional damages – whether copying flagrant – where further hearing as to relief necessary ; EVIDENCE – standard of proof in civil proceedings – allegations of conscious copying and falsified evidence – gravity of allegations – Evidence Act 1995 (Cth) s 140 ; PRACTICE AND PROCEDURE – application for leave to file rejoinder submissions – where various complaints made about nature and quality of Reply submissions – consideration of standard for leave to be granted
Legislation:	Copyright Act 1968 (Cth) ss 10, 14, 31, 32, 35, 36, 115, 119, 189, 190, 195AI, 195AJ, 195AQ, 195AU, 195AX, 196, 197 Copyright Amendment (Digital Agenda) Act 2000 (Cth) Evidence Act 1995 (Cth) ss 97, 140 Copyright (International Protection) Regulations 1969 (Cth) reg 4 Copyright, Designs and Patents Act 1988(UK) Copyright Law of the United States17 USC §104
Cases cited:	BP Refinery (Westernport) Pty Ltd v Shire of Hastings (1977) 180 CLR 266 Browne v Dunn(1893) 6 R 67 Codelfa Construction Pty Ltd v State Rail Authority of NSW[1982] HCA 24; 149 CLR 337 D’Almaine v Boosey (1835) 1 Y&C Ex 288 Eastman v Director of Public Prosecutions (ACT)[2003] HCA 28; 214 CLR 318 El-Ajou v Dollar Land Holdings Plc [1994] 2 All ER 685 EMI Songs Australia Pty Ltd v Larrikin Music Publishing Pty Ltd[2011] FCAFC 47; 191 FCR 444 Feltner v Columbia Pictures Television Inc523 US 340 (1998) Francis Day & Hunter Ltd v Bron [1963] Ch 587 Franklins Pty Ltd v Metcash Trading Ltd [2009] NSWCA 407; 76 NSWLR 603 Hayes v Phonogram Limited[2002] EWHC 2062 (Ch) Howard v Commissioner of Taxation[2012] FCAFC 149; 206 FCR 329 IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14; 239 CLR 458 Ladbroke (Football) Ltd v William Hill (Football) Ltd[1964] 1 WLR 273 Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Ltd [2010] FCA 29; 83 IPR 582 Long Leys Co Pty Ltd v Silkdale Pty Ltd (1991) 5 BPR 11,512 Ludlow Music v Williams [2000] EWHC 456 (Ch) Newton v Diamond388 F3d 1189 (9th Cir 2004) Roadshow Films Pty Ltd v iiNet Limited (No 2)[2012] HCA 16; 248 CLR 42 Performing Right Society Ltd v London Theatre of Varieties Ltd[1924] AC 1 Ron Englehart Pty Ltd v Enterprise Constructions (Aust) Pty Ltd[2012] FCAFC 4; 95 IPR 64 Sawkins v Hyperion Records Ltd (2005) 64 IPR 627 Secured Income Real Estate (Australia) Limited v St Martins Investments Pty Limited[1979] HCA 51; 144 CLR 596 RCA Corporation v Custom Cleared Sales Pty Ltd [1978] FSR 576 Summers v Commonwealth[1918] HCA 33; 25 CLR 144 Telstra Corporation Ltd v Australasian Performing Right Association Ltd [1997] HCA 41; 191 CLR 140 Union Fidelity Trustee Company of Australia Limited v Commissioner of Taxation[1969] HCA 36; 119 CLR 177 Walker Group Constructions Pty Ltd v Tzaneros Pty Ltd [2017] NSWCA 27; 94 NSWLR 108 Williamson Music Ltd v Pearson Partnership[1987] FSR 97
Date of hearing:	4-7, 13 and 18 March, 5 and 12 April and 26 June 2019
Date of last submissions:	26 April 2019 (Fourth Respondent) 6 June 2019 (Third Respondent) 26 June 2019 (Applicants and First and Second Respondents)
Registry:	New South Wales
Division:	General Division
National Practice Area:	Intellectual Property
Sub-area:	Copyright and Industrial Designs
Category:	Catchwords
Number of paragraphs:	434
Counsel for the Applicants:	Mr M R Hall SC with Ms J M Beaumont
Solicitor for the Applicants:	Banki Haddock Fiora
Counsel for the First and Second Respondents:	Mr R Cobden SC with Mr W H Wu
Solicitor for the First and Second Respondents:	Gilbert + Tobin
Counsel for the Third Respondent:	Mr P Flynn
Solicitor for the Third Respondent:	Simpsons Solicitors
Counsel for the Fourth Respondent:	Mr C Dimitriadis SC with Ms E E Whitby
Solicitor for the Fourth...