"Format Fortunes: Is there
Legal Recognition for the Television Format Right?"
by Ben Challis (Music Industry Lawyer and Senior
Lecturer in Law,
by Jonathan Coad (Specialist in
Music and Media Law with the Simkins Partnership,
High Wycombe and
August, 2004
Most people who are involved in exploitation, global
licensing and merchandising of television programmes know the value of a
television format – whether it be Who
Wants To Be a Millionaire?, Big Brother, Wheel of Fortune, Pop Idol, or Family
Fortunes. Licensing formats – where the
creator of a format licenses a broadcaster or production company in another
territory with the right to produce a version of that format – is a massive
global industry worth tens of millions of dollars. However, there is also a
huge ‘copycat’ industry, with rival ‘versions’ of these formats being developed
by other broadcasters and producers. The recent question troubling both the
industry and the courts has been whether or not television formats enjoy any
legal protection themselves, and whether copycats can be stopped.
IN UK law, the starting
point when looking at the licence of format rights is the 1989 case of Green v Broadcasting Corporation of New
Zealand where presenter Hughie Green lost a Privy Council decision when he
sought to establish a format right to his programme concept, Opportunity Knocks. Simply speaking, the Law Lords who made up the
Court reaffirmed the general principle in
In
This determination has led
to a particular problem with television programme formats in the United Kingdom,
where there seems to be no protection in law of the basic idea in a format –
however unique and original – despite the fact that there is a growing business
licensing these very format ‘rights’. Whilst the written plot of a play has, in
In simple terms, anyone can
write a horror story – the idea of a ‘horror story’ is not protected – provided
they do not copy another work. But what about copying the basic outline ideas
of a vampire story from another book: Man gets bitten by Dracula, man becomes
vampire, man gets hunted down or saved – or using a specific character such as
a Frankenstein monster? It is here that the law has some trouble determining
what does and does not have copyright protection.
Two
recent cases from the
The
Perhaps more relevant was
the case between
The position is the same in
international law. The World Intellectual Property Organisation (WIPO) states
that “Broadcast content … can also be
protected by copyright and related rights, depending on the national
legislation. Television formats, however, have not been discussed at WIPO as
subject of a separate international protection.”
Nevertheless, recent Dutch
and Brazillian cases are perhaps more interesting. In
Castaway Television Productions Ltd
& Planet 24 Productions Limited v Endemol
(2004) The Dutch Supreme Court of
Castaway Television asserted that the Survive format is a copyright work by
virtue of its unique combination of 12 elements. Endemol
denied that the Survive format was
entitled to copyright protection. It also denied that the Big Brother format was an infringing copy of the Survive format. In June 2000 these
claims were dismissed at the trial of the action, and in June 2002 the Dutch
Court of Appeal upheld that judgement. Castaway and Planet 24 then appealed to
the Dutch Supreme Court. The Dutch Court of Appeal had taken a pragmatic view
of the issue, basing its judgement on the similarities between the relevant
programmes. The Court concluded that:
A format consists of a combination of
unprotected elements ... An infringement
can only be involved if a similar selection of several of these elements have
been copied in an identifiable way. If all the elements have been copied, there
is no doubt. In that case copyright infringement is involved. If only one
(unprotected) element has been copied, the situation is also clear: in that
case no infringement is involved. A general answer to the question of how many
elements must have been copied for infringement to be involved cannot be given;
this depends on the circumstances of the case.
The
Dutch Supreme Court agreed with the Court of Appeal in deciding that the Survive format was a copyright work, but
that the Big Brother format was not
an infringing copy.
In May 2003, the author
Barbara Taylor Bradford won an injunction in the Indian Supreme Court to
prevent transmission of a 260-episode Bollywood
serial 'inspired' by her best selling novel, A Woman Of Substance. The novel tells of the heroine's rise from an
impoverished servant to become head of a business empire: the Bollywood serial, Karishma – the
Miracles Of Destiny, charts a similar story. Both
stories begin with the heroine recounting her adventures in old age. Taylor
Bradford won an injunction at first instance in the Calcutta High Court, and
although this was overturned on appeal, the injunction was confirmed in the
Supreme Court.
A successful claim for
breach of copyright has now been made in
However, the Court heard
expert academic opinion that
[a] Television programme format, in the
sense employed by the television business media, is a much wider concept that
does not only include the central idea of the programme but also encompasses an
extensive group of technical, artistic, economical, business ... information.
The format of television programmes is not just the idea of the programme, it is the idea and much more.
The Court found that the Big Brother format enjoyed copyright
protection under the Brazilian law of copyright, and noted that
is not limited to spying [on] people
locked up in a house for a certain period of time; it contemplates a programme
with a beginning, middle and end, with meticulous description, not only of the
atmosphere in which the people will live for a certain period of time but also
the places where cameras are positioned. The format consists of details such as
the use of microphones tied to the participants' bodies, linked 24 hours a day,
music styles, the form through which the participants will have contact with
the external world, activities, among others. The images and audio situations
captured for hundreds of thousands of people through the daily inserts in the
programming of the television services and through the Internet with the
consequent commercial exploitation is also a unique characteristic of the
format.
The judge did not spare the
defendants, stating that “The whopping
similarity between both programmes does not stem from chance, but from a badly
disguised and rude copy of the format of the programme Big Brother”. The Court made awards of damages to Endemol of approximately 400,000 pounds sterling, and to
their Brazilian licensees of over 1 million pounds.
Whilst both these cases
support the concept of a copyright for a programme format, they are not binding
in
All that said, there is some
protection which can be given by the law: all television programmes actually made are protected by the Copyright
Designs & Patents Act 1988 (Section 5).
A name (and logo) of a programme (or a programme format) can be
trademarked, if the name and/or logo is original, distinctive and capable of
graphic representation; scripts, set designs, stage designs and lighting plots
can be all protected by copyright as can any original music used. It is important to take proper legal advice
at an early stage to see what elements of your ‘perspiration’ can be protected
– ‘‘inspiration’ is far harder to defend.
But what is really needed in
the UK, and indeed other jurisdictions, is a clear decision (or legislation) to
set out the broad parameters of protection of a format (or otherwise), and an
answer to the basic question of whether or not Green v Broadcasting Corporation
of New Zealand is still good law, and whether a format can now be copyright protected.
- Castaway Television
Productions Ltd & Planet 24 Productions Limited v Endemol
(2004), Simkins Partnership Early Warning (June 2004) (JKC),
and see Law Updates (August 2004).
- CBC v ABC (2003), Law Updates (January 2003).
- “Copied
Book Plot Results In Indian Injunction”, Law Updates (June 2003), and The
Times, 14th May, 2003.
-
“Endemol Wins Copyright Protection for Big Brother in
- Corelli
v Gray (1913) 30 TLR 116 CA.
- Green v Broadcasting
Corporation of
- Miles v ITV Network (2004),
Simkins Partnership Early Warning, (March 2004)
(JKC), and see Law Updates (May
2004).
- Nichols v Universal
Pictures 45 F (22d) 119 (1930).
-
http://www.wipo.int/copyright/en/faq/faqs.htm
Ben Challis is a lawyer specialising in the entertainment industry, and Editor of the Law Updates
Jonathan
Coad is a partner with specialist
© 2004 Ben Challis and Jonathan Coad
German entertainment lawyer Dr. Marc Heinkelein has published a book entitled 'Copyright Protection for Creators of Television Shows and Television Show Formats'. The German edition is currently available from NOMOS publishing house (ISBN: 3-8329-0560-X; 451 pages, price - 78 euros).
Full details are available on the FRAPA website (The Format Recognition and Protection Association) at http://www.frapa.org/news2.html
One of the UK's leading intellectual property judges (Mr Justice Laddie) has restated the key principles in the UK law of copyright on which format rights cases will be judged in the case brought by the publishers of Ideal Home (IPC Media) against the publishers of Capital Homes magazine (Highbury-SPL Publishing). The judge found that no copying had taken place, and the action failed.
IPC claimed that its commercial rival (Highbury) had copied aspects of the design, subject matter, theme and presentational style of its magazine, Ideal Home. IPC sought to persuade the court that looked at as a whole, the style and design of the rival magazine were sufficiently similar to raise an inference of copying by the rival publisher. This allegation was comprehensively rejected by the judge, who, however, helpfully set out in a preamble to the judgment guidelines on how the court would approach such claims. The relevance to television formats was clear, since the claim by IPC amounted effectively to an allegation that the themes, styles and ideas in their magazine had been copied by their commercial rivals.
The judge drew his own analogy with television formats in his judgment by making reference to the decision in the Privy Council in Green v Broadcasting Corporation in New Zealand. In that case the television presenter Hughie Green sought to assert that the general structural format of his television programme called "Opportunity Knocks" was a dramatic work protected by copyright. Mr Justice Laddie quoted with approval this part of the judgment of Lord Bridge:
"It is stretching the original use of the word "format" a long way to use it metaphorically to describe the features of a television series such as a talent, quiz or gameshow which is presented in a particular way, with repeated but unconnected use of set phrases and with the aid of particular accessories. Alternative terms suggested in the course of argument were "structure" or "package". This difficulty in finding an appropriate term to describe the nature of the "work" in which the copyright subsists reflects the difficulty of the concept that a number of allegedly distinctive features of a television series can be isolated from the changing material presented in each separate performance (the acts, the performers and the talent show, the question and answers in the quiz show etc) and identified as "an original dramatic work" ... The protection which copyright gives creates a
monopoly and "there must be certainty in the subject matter of such monopoly in order to avoid injustice to the rest of the world ... The subject matter of the copyright claimed for the "dramatic format" of "Opportunity Knocks" is conspicuously lacking in certainty."
Mr Justice Laddie warned against, in all copyright cases, simply excluding all the distinctive elements between the two copyright works at issue, and concentrating exclusively on the similarities in an attempt to prove that an infringement has taken place. He described this as an attempt to "create similarity by excision". He stressed that the differences "may be just as important in deciding whether copying has taken place."
The judge also stressed that the law of copyright has never protected general themes, styles or ideas. Accepting that it is impossible to define the boundary between the mere taking of the general concept of ideas on one hand, and copying in the copyright sense on the other, he also cited with approval the judgment of the great US Judge Learned Hand in Nicholls v Universal Pictures who said:
Upon any work, and especially upon a play, a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about, and at times may consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the playwright could prevent the use of his "ideas", to which, apart from their expression, his property is never extended.
Mr Justice Laddie concluded his short but helpful exposition of the relevant copyright principles by quoting Lord Hoffman in Designers Guild Limited v Russell Williams (Textiles) Limited:
Certain ideas expressed by copyright work may not be protected because, although they are ideas of literary, dramatic or artistic nature, they are not original, or so common place as not to form a substantial part of the work ...
Generally speaking, in cases of artistic copyright, the more abstract and simple the copied idea, the less likely it is to constitute a substantial part. Originality, in the sense of the contribution for the author's skill and labour, tends to lie in the detail with which the basic idea is presented."
The remarks made by Mr Justice Laddie in this case indicate that, at least so far as he is concerned, the courts will maintain the cautious approach to television format disputes that it adopted in the Green case, where a television format claim was made in an attempt to protect a largely unscripted talent show which nonetheless had a number of distinctive features. This indicates that the UK courts may approach the issue of television formats more conservatively than some other jurisdictions (see above concerning format claims in Holland and Brazil).
Jonathan Coad
ADDENDUM
New clues to the treatment of TV formats in the UK Courts IPC Media v Highbury-SPL Publishing
13 January 2005