Australia: What is happening with television formats in Australia?

Last Updated: 13 November 2015
Article by Sonia Borella and Dan Pearce

The global trade in television formats is booming. Like never before, designing an exportable format can mean the difference between developing a production solely for the domestic market and creating a concept executed in multiple markets that reaches a global audience. At the same time, we are seeing more and more programs produced in the domestic market based on formats originating overseas.

Grundy Television (now FremantleMedia Australia), founded by the great Reg Grundy in 1959, was one of the pioneers of the global television format industry and our Australian platforms continue to be awash with programs based on formats originating overseas like The X Factor, Real Housewives, Grand Designs and The Voice. More recently we have witnessed a notable rise in Australian-created formats being optioned and licensed internationally. Among others, the growing list includes Go Back to Where You Came From, A Moody Christmas, Kath & Kim, The Slap, Strange Calls, Secrets & Lies, and Review with Myles Barlow. As demonstrated by the overseas adaptations or remakes of some of these formats, such as Rake and Wilfred, a deal can see members of the original Australian creative team land roles in the production of the overseas program.

How does the law protect a format or format right?

A format or format right, which could also be referred to as a "remake right", is hard to define and hard to protect, and this is a universal problem faced by format creators and owners.

For present purposes, a format may be considered to be, at its most basic level, the unique characteristics of a program (for example, title, characters, settings, music, etc.) which are capable of being licensed by the licensor to develop a new program in another territory in accordance with the local language and customs of, and often with talent from, that other territory.

The core issue faced by format creators and owners stems from the cornerstone principle of copyright law, namely that it is only the expression of an idea that is protected by copyright, not the idea itself however original it may be. A leading example of what Australian courts have said in relation to the "idea-expression dichotomy" is in Zeccola v Universal City Studios Inc. In that case Universal City Studios sued the owner of the rights in Great White, an Italian horror movie in which a gargantuan shark terrorises a small community, only to be pursued out to sea by a band of heroes who finally manage to obliterate it with explosives. Sound familiar? After watching Great White alongside Steven Spielberg'sJaws, the trial judge concluded that the two films were objectively similar and that the Italian film had infringed Universal's copyright. Upholding this decision, the Federal Court stated that, while there can be no copyright in the central idea or theme of a story, originality lies "in the combination of situations, events and scenes which constitute the particular working out or expression of the idea or theme."

For the first time in ten years, formats and format rights are in the spotlight in Australia, with the Federal Court set to consider Channel Seven's claim that Channel Nine's and Endemol's The Hotplate infringes Seven's copyright in My Kitchen Rules.

The only previous case about infringement of a reality television format in Australia is Nine Films & Television Pty Ltd v Ninox Television Ltd (a 2005 case). Ninox alleged that Channel Nine's The Block copied the ideas underlying its show Dream Home, a New Zealand reality television format which was licensed and remade by Nine two years earlier. As part of its strategy for licensing Dream Home overseas, Ninox developed a production bible outlining the key components of the show. In the case, Ninox put on evidence showing that it had given a Nine employee who worked on Nine's remake of Dream Home a copy of its production bible and that employee was involved in the creation of The Block. The Federal Court dismissed Ninox's claim of copyright infringement after comparing the two shows and concluding that there were significant differences between them. The Court also held that there could not be any substantial reproduction by Nine simply by reason of the fact that there were large elements of unscripted dialogue and interaction in the shows.

The takeaway from these cases in relation to formats is that while the discrete elements of a program may be legally protected there may be no such thing as an overarching format or format right recognised by the law in Australia, even if format rights are licensed internationally often for substantial monetary gain. It would usually be easier for a producer to establish copyright in a drama television format than a reality television format given that in a drama the characters, dialogue and plot are predetermined and condensed in material form, by virtue of the script. Other than a script, examples of the elements of a format that may attract copyright protection include the production bible, sound recordings, set design, music and graphics. In the current case concerning The Hotplate and My Kitchen Rules, Seven has drawn the Court's attention to "literary works" in which copyright subsists such as format pitch, format presentation and the production bible of My Kitchen Rules, and "dramatic works" in which copyright subsists being "the combination and series of incidents (including situations, events and scenes), plot, images and sounds reduced to material form" for certain episodes of My Kitchen Rules.

While Seven was unsuccessful in its interlocutory application inThe Hotplate proceedings, in an official statement Seven has confirmed that it will continue its case. In addition to copyright, Australian format creators and owners also seek to rely on other forms of legal protection, which in Australia include trade mark law, the law of confidence, misleading and deceptive conduct under the Australian Consumer Law and the tort of "passing off" to protect their formats. While again not offering comprehensive protection for a format, these areas of law can be helpful for format owners.

Some issues in protecting and licensing formats

We are often asked by format creators how they can legally protect their format concept when pitching an unproduced show, or initial "paper" format, and the answer is "with difficulty". However, there are a number of strategies that format creators can employ to "put their best foot forward" to protect their initial "paper" format, including: creating pitch and presentation materials that capture the distinctive features of the format (as copyright will protect those materials, albeit not the ideas within those materials); attaching the © symbol to pitch and presentation materials (which is not necessary for copyright to subsist in the materials but can nevertheless be a useful deterrent to copying); marking the materials as "confidential" (to assist in reliance on the law of confidentiality); and, where appropriate, registering the format name and logo as trade marks, registering domain names and creating social media sites. It is also possible to register a format with the Format Recognition and Protection Association (FRAPA).

If you are in a position to license a "paper" format or the format of a produced show, there are a number of issues to consider, and to ensure the option and/or licensing agreement protects your interests.

As licensor, you will generally be concerned to protect your format "brand" as an unsuccessful program in one territory has the potential to affect format sales in other territories and, at the same time, you may be concerned to ensure your rights will revert if a program is not produced by the licensee. As licensee, you will generally be concerned that you have everything you need to ensure that you can execute the format in your territory with appropriate support, but without undue restrictions, from the licensor.

There are no hard and fast rules and the deal will change depending on the format and the bargaining position of the parties, however some relevant questions to ask include: What constitutes the format rights that are being licensed (this is very much dependant on the contractual terms)?; What changes can the licensee make to the format, if any?; Will the licensor own copyright in the program, or any changes to the format (if these are permitted) made by the licensee?; Will the licensor be creatively involved in the development of the licensee's program and/or have any creative approvals?; Is the licensor or licensee entitled to register trade marks in the licensee's territory?; Who controls the merchandising rights?; What restrictions are there on the licensor's ability to license, or authorise the licence of, already produced shows based on the format in the licensee's territory?; What credits will the licensor be entitled to?; And, like any licence agreement, what is the term (often there will be an initial option period, and subsequent options which may be conditional), what is the territory or territories and the permitted media? And, of course, what are the fees and any royalties? And these are only some of the questions that should be considered by licensors and licensees....

Format licences are always a matter of negotiation and what works for a particular format or territory may not be advantageous or relevant for other formats or territories.

This publication does not deal with every important topic or change in law and is not intended to be relied upon as a substitute for legal or other advice that may be relevant to the reader's specific circumstances. If you have found this publication of interest and would like to know more or wish to obtain legal advice relevant to your circumstances please contact one of the named individuals listed.

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Authors
Dan Pearce
 
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