Larrikin Music Publishing Pty Ltd v EMI Songs Australia Pty Limited  FCA 799
It feels good to be blogging again, and I have a charming little decision to come back to. On Friday, the Honourable Justice Jacobson of the Federal Court of Australia, New South Whales District, issued a decision in Larrikin Music Publishing’s infringement suit against EMI and the author’s of the ’80s hit “Down Under.” This suit has garnered a fair bit of publicity on the intertubes. To briefly review, Larrikin, an Australian music publisher, alleged that “Down Under” infringed it’s copyright in the round “Kookaburra Sits in the Old Gum Tree.”
- Men at Work’s performance of “Down Under”
Justice Jacobson had requested briefing on the preliminary issue of whether Larrikin was the copyright owner of the musical composition. “Kookaburra” was penned in 1932 as an entry in a competition/fundraiser conducted by the Girl Guides Association of Victoria. (The song won.) One of the rules that accompanied the advertisement for entry stated that “[a]ll matter entered to become the property of the Guide Association.” Neither party could locate the entry materials. EMI argued that an assignment could be presumed from the circumstances, that the author of “Kookaburra” was aware of the printed contest rules and accepted the terms through her entry, and that by including her name in the entry — ah, the age of hand-written correspondence – she wasn’t merely providing contact information, but executing a valid assignment.
- A Performance of “Kookaburra sits in the Old Gum Tree” by KaiLi kids
In the question at bar, the Court addressed whether, under the Australian Copyright Act of 1912, which was in effect in 1932, the clause in the rules of entry assigned the copyright in “Kookaburra” to the Victorian Girl Guides. Section 5(2) of the1912 Australian Copyright Act (which is derived from the 1911 British Copyright Act) provides that no “assignment or grant shall be valid unless it is in writing signed by the owner of the right in respect of which the assignment or grant is made, or by his duly authorized agent.”
Justice Jacobson found that, at least for purposes of the suit, Larrikin was the copyright owner of “Kookaburra.” The Court found that it was equally probable that the composer learned of the competition by word of mouth and was not aware of the rules; that the communications between the Girl Guides and the author of “Kookaburra” show that there was no assignment; that the inclusion of the author’s name in the entry was likely for identification purposes and not an assignation; and that the operative language, “all matter entered [in the competition] to become the property” of the Victorian Girl Guides, was “more apt” to have referred to the physical property than the copyright in the work.
Assignments and burden:
The Court appeared to toy with the idea that there should be a burden on the defendants to prove that the author of “Kookaburra” executed an assignment. See, for example:
The test is that there must be shown to be more than “conflicting inferences of equal degrees of probability so that the choice between them is a mere matter of conjecture.” (117, citing Nominal Defendant v Owens (1978) 22 ALR 128 at 132.)
* * * * *
It is apparent that the admissibility of the evidence must be distinguished from its sufficiency to establish or support an affirmative conclusion in favour of the party who tenders it, when the burden of proof lies upon that party. (163, citing Lustre Hosiery Limited v York  HCA 71; (1935) 54 CLR 134, 138–139 (Rich, Dixon, Evatt and McTiernan JJ) (emphasis added.)
If it was indeed the intent of the Court to assume a burden on behalf of the defendant, there are policy rationales for such a conclusion. William Patry argues that “the purpose of the writing requirement is not to effectuate the parties’ intent but principally to protect authors from those claiming, contrary to the author’s view of the facts, that he or she transferred rights in the work. The purpose of the writing requirement is thus to effectuate a congressional policy of protecting authors, even from themselves if need be.” Patry on Copyright at 5-218, citing Imperial Residential Design, Inc. v. Palms Development Group, Inc., 70 F.3d 96 (11th Cir. 1995) (“[T]he chief purpose of section 204(a), (like the Statute of Frauds), is to resolve disputes between copyright owners and transferees and to protect copyright holders from persons mistakenly or fraudulently claiming oral licenses or copyright ownership.”) (emphasis added); Effects Associates, Inc. v. Cohen, 908 F.2d 555 (9th Cir. 1990) (“Section 204 ensures that the creator of a work will not give away his copyright inadvertently and forces a party who wants to use the copyrighted work to negotiate with the creator to determine precisely what rights are being transferred and at what price.”)