The case is Shazam Productions v Only Fools the Dining Experience Ltd  EWHC 2179 (IPEC) and, although only a decision of the most junior UK IP Court, is further evidence of the current expansionist approach – in the UK and the EU – to copyright protection.
To an English audience Del Boy, and his fellow characters of Only Fools and Horses, need no introduction. They are the lead characters of an award-winning TV show which ran over seven series from 1981 to 1991. Although the author of the show (John Sullivan OBE) stopped producing the show in 1991 and died in 2011, the show remains successful and much loved among its fans.
The Claimant is the family company of John Sullivan, which owns his rights to the show and exploits them. The defendant provides dining experience events, where audiences are served a three-course meal hosted by actors portraying characters from the show itself. Those actors also perform sketches during the meal. Although those sketches are not copied from scripts of the show, the characters themselves are intended to be identical in their nature to the original, and to make people feel like they are part of the same ‘universe’ and series. The Defendant’s evidence was:
“We want them to have the feeling that they were in presence of characters they are likely to know but not to feel that they were in any of the episodes”
There has been no case in the UK where a literary character has been found to be a protected copyright work. Although courts in the US and EU have considered the issue, the English judge had to start from first principles to assess copyright.
The starting point for that analysis was EU law. Although Brexit means that EU law does not apply directly, our domestic law still incorporates EU copyright principles, including the relatively recent restatement of principles from the CJEU in Cofemel that two cumulative conditions to be satisfied are as follows:
First, … that there exist an original subject matter, in the sense of being the author’s “own intellectual creation.”. This involves the work reflecting the personality of its author resulting from the exercise of free and creative choices; and
Second, “classification as a work is reserved to the elements that are the expression of such creation”, also known as the “identifiability requirement” that it be identifiable with sufficient precision and objectivity.
Analysing the facts in this case, including that Del Boy is not a stock character or cliché, but is in fact a fully-rounded character with complex motivations and a full backstory, the English Court had no hesitation in concluding that the first condition above was satisfied. An example of the roundedness of the character was not just his backstory, but his use of ‘mangled French’ expressions – which not only provided comedy effect, but spoke to his underlying personality, motivations, and desire to be respected by his peers.
The second condition was also satisfied: this is clear from the evidence before the court, as well as more generally from the fact that the Defendants themselves wanted to conjure the characters for their audience – which is strongly suggestive of the idea that those characters were indeed identifiable to the audience members and the actors and Defendants themselves.
Whose work was it anyway?
One point of particular interest was the argument that the character, as known to the audience, was not created entirely by Mr Sullivan, but also by Sir David Jason, the actor who played him. While Mr Sullivan wrote the scripts, the portrayal of the character may well have added to the roundedness of him.
In this particular case, the judge overcame this by reference to the scripts themselves. He remarked about how much of the character came through on the text of the scripts themselves – not just the words and movements on set, but also the characterisation, motivations and appearance (among other things) were all part of the scripted features. Therefore, it was possible for the judge to determine on the facts that the work was self-contained in the scripts.
Literary or dramatic work?
Having found that the character was capable of attracting copyright as a matter of EU law, it was necessary for the English Court then to find whether the work in question could be characterised as one of the types of work that is eligible for protection under UK law (the most common of which being literary, dramatic, artistic and musical works – among others).
In this case – as mentioned above – the character was fully rounded out in the scripts themselves. Therefore, he is an expression of a literary work, rather than a dramatic performance.
Other copyright works were considered:
- The scripts themselves were clearly copyright works. However, they had not been copied wholesale in the same way as the characters.
- The body of scripts taken as a whole – and the imaginary ‘world’ or ‘universe’ which came out of them. This was found not to be itself a copyright work, partly because the scripts themselves were not written (or ‘designed’) to form part of a cohesive whole, but rather each was a self-contained work of its own.
- The lyrics and opening theme song.
The main finding of infringement was in relation to the characters. There had also been elements from the original scripts which were re-used.
Parody and pastiche
The Defendants raised defences that their use of the works fell within some exceptions to copyright infringement, which would have provided a defence if correct. These raised interesting and novel points:
- It was argued that the dining experience events were ‘parodies’. This is a permitted category of fair dealing under English law, as incorporated from the EU Information Society Directive. Parody exception do not only relate to parodies of the works in question, but can also provide a defence to infringement where a work is copied fairly for the purpose of parodying some other thing. Here, even though Del Boy himself is partly a humorous stereotype, the use being made of his character was not for the purpose of that parody. Rather it was an exploitation of the same work for the same purpose. There was no noticeable difference, and no element of distance or critique which is an essential part of parody.
In coming to this conclusion the court assessed not just English authorities but also authorities from the EU, and the guidance from the UK Intellectual Property Office issued at the time that the parody exception was implemented into UK law. The judgment thus contains a helpful statement of the law on Parody.
- Pastiche. It was also argued that the dining experiences were ‘pastiche’ works. This is another exception, albeit less commonly used. To our knowledge, it has not been examined by any English Court before.
Pastiche means a “medley” of works made up of pieces from various sources; or a work composed in the style of a particular author. Summarising the authorities that were available, the Judge found that Pastiche has two essential ingredients:
- The use imitates the style of another work; or
2. It is an assemblage (medley) of a number of pre-existing works.
3. In both cases, as with parody, the product must be noticeably different from the original work.
The Court cautioned that the test should not be read too widely. It is to be limited to the context of the three-step test of fair dealing (see below) – and should not be thought to encompass just any form of borrowing or imitation.
There was no pastiche in this case and that defence failed. The use of the characters involved a “wholesale borrowing of content”. It was said to be more akin to an adaptation than a new work created by pastiche. It was also never said to be a pastiche before, and on the evidence was never marketed (by the Defendant) or understood (by the audience) to be one.
- Fair dealing more generally. Even if there was parody or pastiche, that would still need to be ‘fair dealing’ to provide a defence, within the meaning of English law. In this case, it would also have failed the well-established “three stage test” for fair dealing – not only because of the extent and wholesale reproduction of the works, but also (among other reasons) because it fundamentally competed with the claimant’s ability to exploit the rights themselves, which prejudiced the claimant’s commercial interests for a number of reasons.
Therefore, there had indeed been copyright infringement and the Claimant was successful.
There was also a finding of passing off (the English law which is often compared to unfair competition in some other jurisdictions: it protects unregistered rights which, if misused, may cause people to believe that there is a connection between the claimant and the defendant.)
The judgment on passing off was short and found that there was indeed passing off, because of the misrepresentation likely to be caused, that caused people to believe that the dining events were put on by, or authorised by, the Claimants.
The findings of infringement and passing off will likely mean that the Defendants are restricted from putting on their events in the future (likely by way of a court injunction), and may have to pay damages or an account of profits to the Claimant. This could also include additional damages, such as if the infringements are found to be flagrant.
The judgment is entirely novel and comes from the UK’s more junior High Court IP list, the Intellectual Property Enterprise Court. It may well therefore be appealed, but in the meantime this is the most thorough analysis of the idea of copyright in characters as literary works, and the defence of pastiche, currently in English law. If the judgment stands, or is upheld on appeal, it is likely to incentivise the owners of rights in iconic characters to challenge a broader range of third parties who make use of them. The case is also further confirmation of the UK Court’s willingness to use the CJEU’s Cofemel decision to take the scope of copyright protection into previously uncharted waters. The creators of TV formats, in particular, may seek to use these principles to obtain a more solid foundation for their protection.