Can TV formats be protected by copyright?

By Eleonora Rosati

The allegedly infringing TV gameshow

Can TV formats be protected by copyright? 

While this question has received an answer in the affirmative in a number of jurisdictions around the world [this blog recently reported on the latest judgment of the Italian Supreme Court to confirm eligibility for protection of this subject-matter under Italian law], under UK law things have been uncertain for a long time.

One of the reasons for such uncertainty is the outcome of the Opportunity Knocks case (Green v Broadcasting Corporation of New Zealand), in which a claim to the copyright in the format for a game show failed. However, it is important to recall that one of the principal reasons why the action was dismissed is that no scripts were available at trial and in any case they contained little more than general ideas and concepts.

Leading UK copyright commentaries like Copinger and Skone James have indeed highlighted how (§3.93) "[t]here is no reason in principle ... why a format should not be protectable as a dramatic work [under section 1(1)(a) and section 3 of the Copyright, Designs and Patents Act 1988 (CDPA)] if it contains a sufficient record of how the show is to be presented."

Last week a response in the sense of eligibility for copyright protection of TV formats under UK law also came from the High Court of England and Wales.

In Banner Universal Motion Pictures Ltd v Endemol Shine Group Ltd & Anor [2017] EWHC 2600 (Ch), the court held that a TV format can be potentially protected by copyright, although in the specific case the action failed.

Background

The action was brought by Banner Universal Motion Pictures (BUMP, a UK company), in its capacity as assignee of the rights to the Minute Winner format developed in 2003 by a Danish citizen, against - amongst others - a Swedish TV production company (Friday TV). 

The claimant submitted that, further to a 2005 meeting in Stockholm at which confidential information was disclosed, including the disclosure of catch-phrase “You have a minute to win it” [at the time when the action was brought in the UK Swedish court had already ruled that no confidential information had been disclosed; the High Court of England and Wales declared that the cause of action estoppel operated], Friday TV misused such information to develop a gameshow format: Minute to Win It. This show first aired in the US in 2010 and was subsequently broadcast in the UK in 2011. Rights to Minute to Win It were sold in over 70 countries around the world.

Kat format

The Minute Winner format

The format of the claimant is described in the Minute Winner Document presented bto the court as follows:

"MINUTE WINNER

Mini-format Game show

Daily or weekly show.

Or short one minute between main programs.

Morning, Evening or Afternoon program.

One minute, or 30 minutes with several                                                                               winnings."

Minute Winner is further described as “a television program in which people are given one minute to win something. WHERE? The program takes place in a studio (and in location: street, shopping mall or unexpected at people's homes). The program is cheaper to produce on location, as it only requires a cameraman, soundman, a host and a stopwatch PRIZES [examples are provided in the rest of the format document]The prizes are sponsored by firms/companies in exchange with advertisements during the program."

The Minute Winner Document further adds that "The combination of luck and pure coincidence is a factor that would make people wish that one day they could be stopped on the street and be given a chance to win something on television."

As to showing times, the Document clarifies that "The program can be shown daily (optional) as a one-minute fill in, before or after a main program. Minute Winner can also be shown either as a morning program, afternoon program or evening access prime time program."

The Document also contains the following disclaimer:

"Concept created by Derek Banner/Bump Productions. Copyright 2003, all rights reserved. This format is protected under the international copyright law and intellectual property protection. It shall not be transmitted, exploited, copied produced, used, disclosed or distributed, in part or in its entirety, without permission from its owner."

BUMP submitted that copyright subsists in the Minute Winner Document as an original dramatic work under the CDPA. It did not submit that it was also a literary work, because such categories under UK law are mutually exclusive.

Originality

As regards originality, Snowden J recalled that – further to SAS v WPL [of course informed by relevant case law of the Court of Justice of the European Union which arguably mandates something more than the just “sufficient skill, labour or effort” traditionally indicated by UK courts since University of London Press], what is required is “that the work must be an expression of the author's own intellectual creation … This does not, however, mean that every constituent aspect of a work must be original. The work must be taken as a whole, and can include parts that are neither novel nor ingenious.”

Notion of dramatic work

The court then recalled that, although the expression ‘dramatic work’ is not defined in the statute, it must be given its ordinary meaning. This, in Norowzian v Arks Ltd (No 2) was said to be that of “a work of action, with or without words or music, which is capable of being performed before an audience."

According to Snowden J, while the unauthorized re-enactment of a recorded episode of a TV game show or quiz show would likely amount to copyright infringement, what was at stake in this case was NOT the single episodes of Minute Winner, since the show was never produced.

Dramatic Kat

The question was rather “whether what is usually referred to as the "format" of a television game show or quiz show is separately capable of being protected by the law of copyright.” 

The judge noted that his is a question that has been considered in comparatively few cases.

A format as a protectable dramatic work

Snowden J held that:

“it is at least arguable, as a matter of concept, that the format of a television game show or quiz show can be the subject of copyright protection as a dramatic work. This is so, even though it is inherent in the concept of a genuine game or quiz that the playing and outcome of the game, and the questions posed and answers given in the quiz, are not known or prescribed in advance; and hence that the show will contain elements of spontaneity and events that change from episode to episode.” [para 43]

Requirements for protection

What is required for a format to be protected is explained at para 44 of the decision:

“copyright protection will not subsist unless, as a minimum, (i) there are a number of clearly identified features which, taken together, distinguish the show in question from others of a similar type; and (ii) that those distinguishing features are connected with each other in a coherent framework which can be repeatedly applied so as to enable the show to be reproduced in recognisable form.”

The format at issue

Having affirmed the potential eligibility for copyright protection of TV formats, Snowden J however excluded that Minute Winner could be protected. In fact,

“tested against any of those requirements [indicated above], there is no realistic prospect of BUMP persuading a court that the contents of the Minute Winner Document qualified for copyright protection. In my view, those contents are both very unclear and lacking in specifics, and even taken together they did not identify or prescribe anything resembling a coherent framework or structure which could be relied upon to reproduce a distinctive game show in recognisable form. The features were, in truth, commonplace and indistinguishable from the features of many other game shows.” [para 46]

Breach of confidence and passing off

The court also dismissed the claims for breach of confidence (for the reason indicated above) and passing off, the latter on grounds that the claimant did not possess the necessary goodwill [including actual customers in the UK, as per the Supreme Court decision in Starbucks] to succeed in its claim.

Conclusion

This decision sheds light on an area of UK copyright that has remained uncertain for a long time, also due to the rigid and closed system of categories envisaged by the CDPA.

However, as the outcome of the case confirms, wannabe holders of copyright in TV formats must pay substantial attention when drafting relevant documents, and provide as many details and information as possible. Another crucial aspect when it comes to potentially commercially valuable works like TV formats is to draft and rely on robust non-disclosure agreements, also to offset the fact that relevant documents should be sufficiently detailed.

Posted By Eleonora Rosati to The IPKat  AND see UK High Court rules that TV Show Formats can be Copyright Protected by William Fry  here https://www.lexology.com/library/detail.aspx?g=b3d2a0b5-ec74-493f-855e-7f9a2a6e7f9e

Dilemma Resolved: No Unfair Competition

Last year I posted a short note on the 1709 blog on an appellate decision here in Paris regarding the thorny issue of the protection of TV formats (see here).

Eschewing copyright claims, the plaintiff (Endemol, producer of « Secret Story ») sued its rival (ALJ Productions, producer of « Dilemme » and led by a former Endemol France executive), relying on the law of unfair competition and parasitical conduct.

After scoring an initial success before the Paris Commercial Court, its action was dismissed by the Paris Court of Appeals.  Endemol appealed to the Cour de cassation (Supreme Court), which rejected the appeal on November 26th last (see here).

The Supreme Court approved the lower court’s finding that « the similarities between the two formats were instrically related to the enclosure genre of reality TV and correspond to the usual codes of the profession in this field, such that the alleged elements do not enable any specific identification of the formats claimed by Endemol ». 

The Court also pointedly remarked that ALJ Productions had adduced evidence that it had expended significant sums of money and effort in coming up with its show, which meant that it had not been free-riding on Endemol’s coattails.

While the law of unfair competition and parasitical conduct (grounded in the general tort of negligence under Section 1382 of the French Civil Code) should not be ignored in TV format cases, this case underscores the importance of bringing solid evidence of the distinctive elements of the format that has been allegedly unfairly copied – elements that go beyond what are expected and usual for the relevant genre (scènes à faire in US copyright-speak) - so that one can reasonably speak of a risk of confusion between the two competing formats.  As regards a parastical conduct claim, this requires clear proof of both plaintiff’s effort and expenses in developing its format and defendant’s failure to do so with respect to its own.

The "Dilemma" of Television Format Protection in France

A recent ruling by the Paris Court of Appeals (12 September 2012) , while not directly touching on copyright law, may well be of interest to readers.

Endemol, the producers of well-known reality television shows "Loft Story" and "Secret Story" (both derived from "Big Brother") took issue with rival producer ALJ Productions' reality show called "Dilemme" (dilemma), claiming that its production constitued unfair competition and free-riding.

The legal grounds were thus rooted in the general tort of negligence (Section 1382 et seq. Civil Code) and not copyright.  The French legal system has a highly developed and sophisticated law of unfair competition ("concurrence déloyale") and free-riding ("parasitsime").

The general rule is that copying something that is not protected by a specific intellectual property right (such as copyright) is not, in and of itself, unlawful.  However, the circumstances of the (lawful) copying may result in liability.  In essence, these circumstances can take one of two forms:  either the copying can result in a likelihood of confusion (classic unfair competition) or the copying can be said to constitue an attempt to free-ride on the coattails of another (parasitical behaviour).

In the case giving rise to the decision, Endemol was of the view that the defendant's production took elements of its shows that were sufficient to create a likelihood of confusion on the part of the TV viewer.  Among the elements it highlighted were the following:  the fact that the candidates were enclosed and isolated in a house, were constantly filmed, were subject to a system of elimination, the decor and layout of the house, the method of nominating and voting for or against elimination of a given candidate, the casting of specific types of candidates (e.g., the jock and the bimbo).

The Court was having none of it.  In its view

"...the similarities noted by Endemol Productions[...] between the formats of "Loft Story" and "Secret Story" are intrinsically related to the genre of "enclosure" relaity TV and do no more than use the standard codes in this area without creating any particular identification with the formats claimed by [Endemol]. 

Furthermore, while it is true that the well-foundedness of an action in unfair competition based on the similarity of competing goods or services must be assessed in light of resemblances, these must be examined having due regard for the overall impression given to the public, with only those similarities relating to identifying elements of the competing product being taken into account..."

In other words, in assessing whether a likelihood of confusion exists, a court must look only to those elements that indentify or distinguish the source.  This makes perfect sense and is a logical consequence of the fact that the legal criterion is "likelihood of confusion", which obviously pre-supposes that the source material can be uniquely identified or distinguished.

The Court concludes:

"...the similarities advanced by [Endemol], in addition ot the fact that they are inherent to the genre of programmes at issue [...], cannot, having due regard for the specific overall impression created by "Dilemme" as compared to "Loft Story" and "Secret Story", be said to create a likelihood of confusion on the part of television viewers with respect to the format's origin, which they will not associate with Endemol."

Finally, as regards the separate claim for parasitical conduct, it was rejected both because Endemol failed to adduce evidence of its "intellectual and financial efforts" and because the defendant did provide evidence of its substantial investment in "Dilemme".

People who live in glass houses shouldn't throw stones

A recent judge's opinion in the acrimonious dispute between US television broadcasters CBS and ABC indicates that CBS is unlikely to be able to prevent ABC from continuing to air its new reality TV show The Glass House. This raises the question of how television show formats are protected, and whether similar litigation in the UK would have the same outcome.

CBS, which has been broadcasting reality TV show Big Brother in the United States since 2000, recently found out that ABC was developing a very similar show called The Glass House, due to be launched on 18 June. The similarities between the shows are obvious: both involve a group of people living together, under the scrutiny of television cameras (and therefore the public), with no outside contact. In both the contestants are voted off the show over time, with the last person left in the house being the "winner".

CBS warned ABC not to proceed with The Glass House. It received no response so in May CBS issued a federal court claim against ABC for, amongst other things, copyright infringement, trade secret misappropriation and unfair competition.

On 15 June the court denied CBS a temporary restraining order over ABC to prevent The Glass House from being broadcast.  

 (c) Nuno Cardoso

CBS then issued a tongue-in-cheek press release, which you are encouraged to read at your leisure, in which it referred to two imaginary shows, "Dancing On the Stars" and "Postmodern Family", poking fun at ABC's other well-known TV shows.

On 21 June the judge handed down a detailed civil minute opinion, in which he found that CBS was unlikely to prevail on the merits, that it had failed to demonstrate entitlement to the relief it sought, and denying an order to show cause for a preliminary injunction.


David Ginsburg, Executive Director of UCLA School of Law’s Entertainment, Media, and Intellectual Property Law department said in the Huffington Post that:

"CBS is too astute and is too well-represented not to have expected the court's reasoning and these results. If so, what motivates the relentless attempts by reality TV plaintiffs to seek injunctive and damage relief that courts are simply not granting?"

It is this blogger's guess that publicity may have motivated this particular attempt, or a desire to prevent a third party from benefiting from a revived version of slightly tired TV format. Whatever the motivation, CBS has failed to prevent ABC from launching The Glass House, and is unlikely to get any damages or other remedy in court.

The question arises therefore: what can be protected? The plethora of talent contest shows (X Factor, The Voice, American Idol, America's/Britain's Got Talent) which have nearly identical formats indicates that not much can be protected. Consider however game shows such as Who Wants To Be A Millionaire? The format is no more complex than can be found in other shows, however the franchise is the most internationally popular TV franchise of all time, having aired in more than 100 countries worldwide. Broadcasters must be paying for something more than trade marks, they must be buying the right to use the format, implying that it is in some way protected.

What is protected boils down to the idea/expression dichotomy. Article 2 of the WIPO Copyright Treaty and Article 9(2) of the TRIPS Agreement both provide that copyright protection extends to expressions of ideas but not to ideas themselves. This means that the concept of a reality TV show where contestants live in a house being filmed 24 hours a day cannot be protected by copyright, whereas the film made of them by the production team can. 

Under US law CBS would have to show that The Glass House is substantially similar to Big Brother, a standard which requires a high coincidence of shared expressive content. Had the case been brought in the UK CBS would have to show that a substantial part of Big Brother had been taken and reproduced in The Glass House. The courts would have considered whether The Glass House was original in its own right. Case law indicates that English law is line with the US (for example Meakin v BBC& Others [2010] EWHC 2065 (Ch)), i.e. that TV formats are not protected.

However one should consider the implications of the recent "red bus case" in which the Patents County Court held that a recreation of a photograph of a red bus, going over Westminster Bridge, against a monochrome background, infringed copyright in a similar earlier photo. Based on that logic it is very possible that, if the shows were sufficiently similar, CBS's claim might have succeeded in the UK.

Format rights are big business in all countries, so it seems logical that they should be protected. Perhaps the red bus case might give Channel 5 a leg to stand on should The Glass House come to the UK.

He Had a Go at Have a Go, but Had to Go

The reality is often far less exciting than the expectations we conjure up -- and the litigation in Meakin v British Broadcasting Corporation, Paul Smith and Celador Productions [2010] EWHC 2065 (Ch), 27 July 2010, raised initial hopes that we would get some hugely important ruling on the protection of TV game-show format rights. As it was, the troops spent years lining up against each other (Meakin first complained of infringement in 2004) but the battle was over before it started, Mr Justice Arnold (Chancery Division, England and Wales) granting the defendants summary judgment against Meakin's claims of copyright infringement.

Meakin had claimed, inter alia, that the defendants had infringed his copyright in proposals for his Cash Call TV game-show formats and that they used information in his proposals in a manner which constituted a breach of confidence. His claim focused primarily on a programme broadcast by the BBC called Come and Have a Go ... If You Think You're Smart Enough. Arnold J analysed the viability of the copyright claims by reference to two issues: was the defendants' work derived from Meakin's or was it a reproduction of a substantial part?

As to derivation, the similarities between the Cash Call proposals and Have a Go were insufficient to create an inference of copying: the similarities were general and related to features that were commonplace in the TV game-show arena and at a high level of abstraction. After applying the same analysis of the works' similarities, the judge also concluded that Meakin had no real prospect of proving reproduction of a substantial part of his work.

Exploitation of TV formats: IP and non-law based strategies

"The Exploitation of Television Formats: Intellectual property and non-law based strategies" is the title of a dissemination seminar funded by the Economic and Social Research Council (ESRC) and conducted jointly by Bournemouth University and Fremantlemedia Ltd. According to the seminar rubric,

"Television formats, such as Pop Idol or Big Brother, are everywhere. They are one of the fastest growing programme types in a multi-channel media environment. However, since a series of court decisions during the 1980s and 1990s (Green v Broadcasting Corporation of New Zealand, 1988; Norowzian v Arks, 1998-2000) it is widely accepted that there is no such thing as a television format right under copyright law. How then could TV formats become a major export for the UK creative industries? Why pay for a format if you can re-create it for free?

Researchers from Bournemouth University examined the exploitation strategies of format developers under the ESRC s Business Placement Fellow scheme. The seminar presents the results of (1) an interview based study in the context of three major international television trade fairs (NATPE, DISCOP and ATF) and
(2) video case studies of the exploitation strategy of three successful television formats developed by FremantleMedia (Idols, Got Talent and Hole in the Wall).

The seminar disseminates knowledge regarding the use of legal (e.g.
copyright, trade marks, know-how licences, confidentiality agreements) and non-legal strategies (e.g. first mover advantage, reputation networks, regional offices and brand management) in the exploitation and protection of television formats. It explains how in 2007 the UK became the creator of 49% of all format hours broadcast worldwide. The seminar also sees the launch of a good practice learning resource that will be available for use in higher education and business.

Seminar academics from Bournemouth University include Prof. Martin Kretschmer, Jonathan Wardle and Sukhpreet Singh".

The date of the seminar is 16 June 2009. It will be held from 1 pm to 2.30 pm at Fremantlemedia Ltd, UK, 1 Stephen Street, London, W1T 1AL. Attendance is free, but places are restricted to 40 and are available through bookings only. If you're interested please contact Emily Cieciura by email here or give her a call on 01202 965197.