UK: Format Fortunes – Is There Now a Copyright for the Television Format ?

Written by Ben Challis & Jonathan Coad

Most people who are involved in exploitation, global licensing and merchandising of television programmes know the value of a television format – whether it is 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 rival 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 (RPC 700) 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 UK law that, on the facts of this case, there could be no copyright in an idea and established that there could be no copyright in the format of this game-show. It should be said that the details of the format presented to the court were fairly limited – the format was a talent show with the winner being the act who registered the highest audience applause on a ‘clapometer’ and Green had a number of unique ‘cachphrases’. Some modern formats are far more detailed than this.

In United Kingdom law, under the provisions of the Copyright, Designs & Patents Act 1988, copyright subsists in original literary, dramatic, musical and artistic works. With literary, dramatic and musical works these must be expressed in a permanent form. The definition of a literary work has been extended to a timetable index, trade catalogues, street directories and football fixture lists – provided there is sufficient skill, judgement and labour involved. But Petersen J, giving judgement in 1916, determined that copyright was concerned with protecting the ‘expression of thought’ and not the ‘originality of ideas’. Copyright does not require that an expression must be original – just that it is not copied from another work (University of London Press (1916) 2 Ch 601 at 608)

This has led to a particular problem with television programme formats in United Kingdom law 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 written plot of a play has, in England, been held to be protected by copyright, the format to a quiz show hasn’t, even when reduced to writing. This tension between what is and isn’t protected has long tested the courts in many jurisdictions. In 1930 the wonderfully titled United States Judge Learned Hand pointed out that whilst an author could prevent the use of the ‘expression’ of his ideas he could not prevent the use of his ‘ideas’ to which protection never extended. The Judge pointed out that there was no clear line between the two saying that ‘Nobody has ever been able to fix that boundary, and nobody ever can" (Nichols v Universal Pictures 45 F (22d) 119 (1930)). 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 Frankenstien monster? it is here that the law has some trouble determining what is and isn’t protected in copyright law.

Two recent cases from the UK and the US support the position set out in Green v Broadcasting Corporation of New Zealand; However there have been two recent decisions in Brazil and Holland which go some way towards giving television formats a ‘copyright’ protection in their own right alongside a recent decision in India which protected the right of an author to stop the production of a television programme ‘inspired’ by a plot taken from the author’s book.

The UK case of Miles v ITV Network Limited (2004) (Simkins Partnership Early Warning March 2004 www.simkins.com) concerned a dispute over the rights to an ITV programme, Dream Street. The claimant, James Miles, appealed the decision of a Master who dismissed the claim on the ground that it had no hope of succeeding. That decision has been affirmed by Mr Justice Laddie. Miles alleged that in 1998 he supplied the ITV Network with promotional material for his cartoon, Trusty and Friends. The main character was a traffic light, and the ancillary characters were "traffic furniture" such as bollards and cones. The later ITV Dream Street had a recovery truck as its main character and, as Miles conceded, the look and feel of the two programmes were very different. Miles argued that there was sufficient inference of copying for the matter to go to trial because of similarities between the characters in the two programmes, and the fact that they both featured traffic equipment. The creator of Dream Street, however, produced evidence that designs for his programme had been in existence since 1997, ie before Mr Miles had sent his material to the ITV Network. The judge dismissed the appeal since, on the evidence, the only similarity between Trusty and Friends and Dream Street was the use of anthropomorphised traffic equipment, which meant the claim was "hopelessly weak".

Perhaps more relevant was the case between US broadcasters CBS and ABC ((2003) www.musicjournal.org/lawupdates.html) in the US District Court NY. Here Judge Loretta Preska reaffirmed the principle that there was no copyright in an idea and that on the facts of that case that there were no format rights in a television programme. CBS had claimed that the programme I'm A Celebrity Get Me Out of Here was a copy of their programme Survivor and sought injunctive relief against ABC to prevent the programme going to air. ABC successfully argued that their show was an original format and that injunctive relief was not an appropriate remedy.

The position is the same in international law; The World Intellectual Property Organisation (WIPO) state 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.

However the recent Dutch and Brazillian cases are perhaps more interesting. In Castaway Television Productions Ltd & Planet 24 Productions Limited v Endemol (2004) (Simkins Partnership Early Warning June 2004) The Dutch Supreme Court of the Hague rejected the appeal by Castaway Television Productions Ltd and Planet 24 Productions Ltd against the decision of the Dutch Court of Appeal which in turn confirmed the decision of the Dutch Court of first instance. The trial judge had ruled that the format of Big Brother is not an infringing copy of the Survivor format (the "Survive" format). 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 (see www.musicjournal.org).

A successful claim for breach of copyright has now been made in Brazil based on the Big Brother format. Here the claimant was Endemol, which owns the format. Endemol had entered into negotiations with TV SBT of Brazil in the course of which Endemol provided extensive information on the Big Brother format. TV SBT chose not to acquire a license for the format and produced "Casa Dos Artistas" (the Artist's House), which the Brazilian Court described as a "rude copy". Endemol and its Brazilian licensee for the Big Brother format (TV Globo) sued TV SBT seeking an injunction and damages. The defendants claimed that a reality show is no more than an idea, citing the lack of scripts. They claimed that the format bible was "in reality a simple manual that describes methods and procedures...; the idea of locking up people inside places and observing them is not new; ... the work "1984" by George Orwell deals with this theme...".

However, the Court heard expert academic opinion that;

(Simkins Partnership Early Warning June 2004)

The Court found that the Big Brother format enjoyed copyright protection under the Brazilian law of copyright, and noted that Brazil was a signatory to the Berne Convention (which gives a work from another territory certain basic protections and in all events accord the work the same treatment as they offer their own nationals). It observed that 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, and to their Brazilian licensees of over £1million.

Whilst both these cases support the concept of a copyright for a programme format they are not binding in UK law. One must presume that the position in UK law is still where Hughie Green reluctantly left it – a format is an idea and in itself as an idea it cannot be protected in copyright law.

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 trade marked 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 a 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 be protected as a copyright

Ben Challis is a lawyer specialising in the entertainment industry and Editor of the Law Updates column for the Music Business Journal. Jonathan Coad is a partner with specialist London media and entertainment firm The Simkins Partnership.

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