FORMAT
FORTUNES – Is there now legal recognition for the television format right?
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 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.
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
– despite the fact that there is a growing business licensing these very format
‘rights’, however unique and original. 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”. 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 again protects 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) 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 in early 2003 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, Indian and Brazillian cases are perhaps more interesting. In Castaway
Television Productions Ltd & Planet 24 Productions Limited v Endemol (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 injuction 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 of
India.
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;
"[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 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
"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, and to their Brazilian
licensees a sum 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.
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
Green v
Broadcasting Corporation of New Zealand (1989) RPC 700
University
of London Press (1916) 2 Ch 601 at 608
Nichols v
Universal Pictures 45 F (22d) 119 (1930)
Corelli v
Gray (1913) 30 TLR 116 CA
Miles v ITV
Network - Simkins Partnership Early Warning March 2004 (JKC)
CBC v ABC
(2003) Law Updates January 2003
http://www.wipo.int/copyright/en/faq/faqs.htm
Castaway
Television Productions Ltd & Planet 24 Productions Limited v
Endemol v
(2004) - Simkins Partnership Early
Warning June 2004 (JKC)
Copied
Book Plot Results In Indian Injunction: Law
Updates June 2003 and The Times, May 14th 2003.
Endemol
wins Copyright Protection for Big Brother In Brazil: - Simkins Partnership Early Warning
June 2004 (JKC)
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. First published on the Music Business Journal www.musicjournal.org