Lovely jubbly - English Courts provide guidance on when an intended parody becomes copyright infringement

SHAZAM PRODUCTIONS LTD -v- ONLY FOOLS THE DINING EXPERIENCE LTD & ORS [2022] EWHC 1379 (IPEC)

A recent decision by the IPEC should act as a warning to anyone who is intending to base their own productions or works on existing works, particularly where they intend to do so for their own commercial gain.

The Case

The Intellectual Property Enterprise Court (“IPEC”) has provided (perhaps overdue) guidance on some key copyright issues, including whether fictional characters themselves are eligible for copyright protection, and when a parody or pastiche defence to copyright infringement may be raised.

The case concerns whether an interactive dining experience based on the BBC comedy series Only Fools and Horses constituted copyright infringement and/or passing off.

The claimant alleged copyright subsisted in particular scripts, the body of scripts as a whole, and the character Del Boy. The claimant first needed to show that each of these was a copyright work under the Copyright, Designs and Patents Act 1988 (“CDPA”).

In relation to the scripts, the Judge concluded that they were dramatic works under Section 3 (1) of the CDPA, rather than literary works, as they were intended to be performed.

The “world of Only Fools and Horses” contained in the body of scripts however was not found to be a dramatic work (as it would never be performed in one go), or a literary work (as there was no intellectual creation in the arrangement of the scripts together). Each script was simply a separate dramatic work.

In relation to the Del Boy Character, the claimant was ordered to identify five features of the character in which they allege copyright subsists from a particular script, and came up with the following:

Copyright

The claimant alleged copyright subsisted in particular scripts, the body of scripts as a whole, and the character Del Boy. The claimant first needed to show that each of these was a copyright work under the Copyright, Designs and Patents Act 1988 (“CDPA”).

In relation to the scripts, the Judge concluded that they were dramatic works under Section 3 (1) of the CDPA, rather than literary works, as they were intended to be performed.

The “world of Only Fools and Horses” contained in the body of scripts however was not found to be a dramatic work (as it would never be performed in one go), or a literary work (as there was no intellectual creation in the arrangement of the scripts together). Each script was simply a separate dramatic work.

In relation to the Del Boy Character, the claimant was ordered to identify five features of the character in which they allege copyright subsists from a particular script, and came up with the following:

• His use of sales patter with replicated phrases
• His use of French to try to convey an air of sophistication
• His eternal optimism
• His involvement in dodgy schemes
• His making sacrifices for Rodney

There was no English case law authority that provided that copyright subsisted in the concept of a character. However, the Judge proceeded to apply the standard two part copyright test for whether copyright subsists from the EU Cofemel decision (C-683/17 Cofemel v G-Star Raw [2020] ECDR 9):

1. “

   that there exists an original subject matter, in the sense of being the author’s own intellectual creation

   ” – the subject matter must reflect the personality of its author, as an expression of his/her free and creative choices.

   The Judge found that Del Boy as a character is an original creation of John Sullivan (the writer) which is the expression of his own free and creative choices. In deciding this, the Judge described the unique characteristics of Del Boy, including that he was “a fully rounded character with complex motivations and a full backstory”.

2. “

   classification as a work is reserved to the elements that are the expression of such creation

   ” – the subject matter protected by copyright must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form.

   The Judge found that the character of Del Boy is clearly and precisely identifiable to third parties in the scripts, and in particular the five characteristics identified by the claimant.

The Judge therefore concluded that the character Del Boy constituted a literary work for the purposes of section 3(1) of the CDPA.

Once this had been decided, the question of infringement was much easier, as the Judge found that “the evidence of infringement by the defendants is overwhelming and obvious” and that the level of copying was far more than the substantial copying required for infringement.

Fair Dealing Defences – Parody/ Pastiche

Section 30A of the CDPA provides: “Fair dealing with a work for the purposes of caricature, parody or pastiche does not infringe copyright in the work”. The defendant sought to rely on this.

However this defence only applies where it does not conflict with a normal exploitation of the work or other subject matter and does not unreasonably prejudice the legitimate interests of the right holder (found in EU Directive: 2001/29/EC – the Info Soc Directive, in which section 30A has its origins.)

In order to qualify as a parody, the Judge noted that there should be an expression of some kind of opinion by means of imitation, but noticeable difference, from the work parodied. This is more difficult, and far less common, where the parodied work itself is a comedy – mere imitation of a work of comedy (as in this case) is not enough to constitute parody.

In order to qualify as a pastiche, the use must either imitate the style of another work, or be an assemblage/medley of a number of pre-existing works, but must be noticeably different from the original work. In theory this may therefore apply to a broad spectrum of ‘mash-ups’, fan fiction, music sampling, collage, appropriation art, medleys, and many other forms of homage and compilation – with each to be assessed on their own facts and merits. The defence did not apply to these facts however, as the dining experience merely took the characters, back stories, jokes and catch phrases, and presented them in a live dining format, and so was more akin to reproduction by adaptation than pastiche.

Even if the use was found to properly fall within the definition or either a parody or pastiche, the Judge concluded that the use was not fair either, because:

• the taking from the scripts was very extensive both in terms of the quantity of material and its quality;
• the use made of the scripts was not a type of expression which attracts particular protection or engages fundamental rights e.g. political views, artistic dialogue or aesthetic criticism;
• the aim was of putting on the show was simply to entertain the audience by bringing them into contact with the copied characters;
• the use competes with the claimant’s own exploitation of the works, through promotional items and its own musical production, and conflicts with its legitimate interests in such. The claimant would ordinarily look and expect to be able to control use of the works e.g. by licencing to third parties.

Passing Off

The Judge also found that the dining experience “passed off” the claimant’s rights in the Only Fools and Horses show, with the facts meeting the three part test in Reckitt & Colman Products Ltd v Borden Inc (No.3) [1990] 1 WLR 491:

1. The claimant had significant goodwill in the name and characters, from for example the broadcast and merchandising since 1981;
2. The name “Only Fools The (cushty) Dining Experience” was liable to confuse and mislead (misrepresentation); and
3. There was a real likelihood of damage in the form of diversion of trade from the official musical production to the defendants’ (cheaper) dining experience.

Comment

This decision shows that copyright in the UK may be used to protect more abstract concepts such as characters within a script, mirroring similar protection granted in Germany for the character of Pippi Longstocking, and the US for the characters Sherlock Holmes and Dr Watson. There was previously some concern that the UK courts had to stick rigidly to the specific types of ‘work’ listed in the CDPA, but following Cofemel this decision shows that the UK courts may be more flexible in finding that something is protectable by copyright. Here they found that a character in a script, with five key characteristics, was classed as a “literary work”.

However, it also shows that not everything will be protectable, as the body of scripts, or the “world of Only Fools and Horses”, was not separately protectable outside of the individual scripts constituting such.

The decision should also be a warning to anyone who is intending to base their own productions or works on existing works, particularly where they intend to do so for their own commercial gain. This may constitute copyright infringement and passing off. Where the pre-existing work is as well-known as Only Fools and Horses, it may be both more likely that the owners of the relevant rights will take action and also that they will succeed.

Just because the derivative work is a comedy does not mean that it will fall within the parody or pastiche defences, particularly where the original work was also a comedy itself.