The Case

1970s pop artist David Dundas faced an action from Warner, the UK publisher for American singer-songwriter Tom Waits. Warner sought an injunction to restrain any further showings of a television commercial, which they felt infringed the copyright of the Tom Waits song Martha, of which they owned the copyright.

Dundas was commissioned to write music for a commercial for Kenco coffee. One of the scripts for the commercial involved two old friends, a man and a woman, who met after ten years. Originally no music was planned for the commercial, but when the script writers showed the plans to the head of creative at the advertising agency, he suggested using the Tom Waits track Martha, which set the mood both musically and lyrically for the emotion the commercial intended to convey.

The agency approached the publisher Warner for a licence to use Martha, and was quoted a synchronisation licence fee for use of words and music of £25,000 for one year, later reduced to £22,250. No application was made for a quote to use the original Tom Waits recording, the inference being that a re-recording of the Tom Waits song would be made at the agency’s expense. The agency subsequently told Warner that they did not intend to use Martha.

The agency wrote new lyrics themselves, and presented these to David Dundas with a commission to write accompanying music. Much detail was also provided regarding the storyboard and characters. They mentioned their original intention to use Martha but were clear in requesting Dundas to provide an entirely original score.

The composer Tom Waits saw the television advertisement on a visit to London and contacted his publisher, who contacted a musicologist, Dr Geoffrey Bush, and began proceedings.

Case for infringement

In comparing the works, the musicologist Bush listed what he considered had been “stolen” by the defendants as:

• the concept of calling up an ‘old flame’ by telephone;
• the musical ambience of the popular café music style of the 1930s and ‘40s, achieved by melodic shapes, harmonies and the strings and piano instrumentation typical of music of that time; and
• the use in the lyrics of both works of the phrase “it’s been so many years”.

In justifying the request for an injunction Warner made three solid points:

• that publishers need to be able to retain full control of their compositions in order to protect their licensing value, and if plagiarism is allowed this will erode the value;
• that they need to be able to protect the exclusivity of licences granted to advertisers who do not want similar tracks to be used to promote rival products;
• that copyright owners need to be able to protect the integrity of the material in their care by being able to approve or reject proposed alterations and arrangements of original works.

Case against infringement

Mr Harry Rabinowitz, musicologist for the defence, highlighted the fact that Waits’ song itself emulated the style and melody of earlier popular songs, and in particular the traditional spiritual Old Man River. He also argued that at the point the lyrics do coincide, the respective melodies are in fact quite different.

The defendants argued that an injunction would cause considerable financial damage to them (as the advertising campaign had not yet run its course) and reputational damage would be suffered both by Dundas as composer and the advertising agency responsible for the commission and creation of the commercial.