A “CUSHTY” RESULT FOR COPYRIGHT OWNERS
A company set up by the creator of the TV sitcom Only Fools And Horses has won a High Court Copyright case against the operators of an “interactive theatrical dining experience”. There are a few interesting points in this case, particularly for those who own copyright OR those who may wish to use the format, get-up, language and characteristics of a show. There are certainly lessons to be learnt.
The background to the case involved the current owner of the copyright in the original scripts written for the well-known British comedy television series ‘Only Fools and Horses’ (OFAH) suing a company called ‘Only Fools The Dining Experience Ltd’ (collectively OFHE) and related parties for putting on an interactive dining experience show using all the characters of OFAH, including the well known main character, DEL BOY. The case is an interesting read for anyone who remembers this well-known series from the 1980s and the much-loved characters.
Whilst quite a few comments about the specifics of the case (and the new law created by this decision) have already been discussed in the media including the fact that for the first time (in English law) it was found that a character (DEL BOY) could be a Copyright work, and it is also the first English case involving the full and proper consideration of the defence of Parody, Pastiche and Fair Dealing in relation to copyright.
I think there are other aspects that may also be of interest.
As well as bringing a claim for ‘Copyright’ infringement for copying the original format and the scripts of the show (as well as the use of the characters) the owners also brought a claim for Passing off (PO) in relation to the use of the ‘Only Fools and Horses’ name and use of the character’s names.
The main arguments of the case were centred around Copyright and the defences to copyright under the Copyright Designs and Patents Act 1988 (as amended), but passing off was also relevant and was in fact proven.
However, the registered trade marks are owned by another party, namely the BBC. This is not uncommon in the entertainment industry; take for example the HARRY POTTER series, where the copyright in the books is owned by J.K. Rowling, and the trade marks are owned by Warner Bros. However, Passing Off can be a stand-alone right which can be brought where one party has misrepresented their use as being connected in the course of trade to the Claimants business. It was shown that the claimant (Copyright owner) undertook commercialisation of the Intellectual Property ‘IP’ themselves and had built up their own goodwill. The fact that the registered rights were allowed to be owned by the BBC did not dilute the copyright holder’s rights.
The Copyright claim revolved around the copying of the television comedy as a whole, which included the get-up of the characters, the character names and mannerisms, the well-known phrases, etc. used in the show. The question was whether this was copyright infringement (and if so to what extent) or if
such use fell outside of copyright, namely were there any defences/exceptions such as use being for the purposes of Parody, Pastiche, or Fair Use which are allowed.
The claimants succeeded in their claims for copyright infringement and passing off.
So what lessons can be learnt:
- The main one is to understand the fundamental concept that Copyright is a very different right to that of Trade Marks, but that all IP rights are interconnected.Copyright exists in the artistic nature of works created which include scripts, characters and formats. Specifically, copyright exists in original works of dramatic, artistic, musical or literary works, sound recordings, films or broadcasts and typographical arrangements.
Trade marks relate to the brand used including (but not limited to) the name or names and any logos.
- Passing off exists in relation to the use of trade marks (whether registered or not) if the strict requirements of PO are met, and this can be a stand-alone claim or brought in addition to the infringement of registered trade Often registered trade mark infringement is claimed with PO, but not in this case because the registered rights are owned by the BBC.
- Seek appropriate consent from the relevant right holders, namely the copyright and trade mark
- Find out if copyright still exists and who owns
- Find out if there are unregistered or registered trade mark rights, and who may own them (it may not be the same person as the copyright holder). The brand may be well known but have the owners used it commercially themselves and do they have enforceable rights?
- Don’t assume that people will know that this is just a harmless ‘pun’ of the original show (argued in detail in this case as ‘parody’ or ‘pastiche’ or ‘fair use’), or that others have done the same in the past – your use may be the one that causes damage or where the defences of parody, pastiche or fair use (mentioned above) do not apply.
- The landscape of the law and risks associated with the use of such copyright works in television shows has changed following this decision. IP right holders will be emboldened by this decision.
- Trade Mark rights may still be owned by the artistic creators of the shows, even if the registered rights are owned or licensed to others.
So the moral of this (using some of the show’s catchphrases) is: “don’t be a plonker” and do your checks properly and by hopefully avoiding the above issues everything will be “lovely jubbly” because “you know it makes sense”.