Saturday, 2 December 2017

Having the X Factor: TV formats can be protected by copyright if they have clearly identified features distinguishing them from similar types of shows

Paul Musa
A few weeks ago the High Court of England and Wales issued an important decision [discussed on IPKat here] which, after a long time of uncertainty, has confirmed that TV formats are in principle eligible for copyright protection under UK law.


1709 Blog friend Paul Musa (University of Southampton) analyzes the decision.

Here’s what Paul writes:

“In Banner Universal Motion Pictures Snowden J confirmed that copyright protection is available to TV formats, provided that they achieve a minimum standard. This standard is that they must have: (i) 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. However, Minute Winner could not meet this standard because it was unclear and lacking in specificity.

To give readers a bit more context, this was a case management conference that was brought before the High Court. One of the main issues that the court discussed was whether copyright protection could subsist in a TV format, within the meaning of sections 1(1)(a) and 3(1) of the Copyright Designs and Patents Act 1988 (CDPA).

Background

An action was brought by Banner Universal Motion Pictures (BUMP) which had been assigned the rights to “Minute Winner”. This was a format developed in 2003 by a Danish citizen called Derek Banner.

On 11 November 2005, Mr Banner met with the two principals from Friday TV in Stockholm. He alleged that he gave them non-disclosure agreements (NDAs) to sign regarding Minute Winner and several other TV formats. As well as that, he mentioned the catchphrase “you have a minute to win it”. This was disputed by the two principals of Friday TV. They argued that other proposed TV formats, that did not include Minute Winner, were instead discussed at this meeting. It is important to note that the two principals refused to sign the NDAs and Mr Banner accepted this.

Ten days after the meeting Mr Banner emailed one of them and attached ten more of their formats.

In 2009, Friday TV’s holding company was acquired by Shine Limited. Later that year, Friday TV sold the idea for a new game show to Realand Productions LLC, a part of NBC Universal Group.

The show was going to be one in which a contestant could win $5 million by completing ten games in a row in a studio. In 2008, the name for that show was Take the Money and Run. This changed to Perfect 10 then to Don’t Blow It and then finally to Minute to Win it in December 2009. This show first aired in the US in 2010 and was subsequently broadcasted in the UK in 2011. Mr Banner became aware of this in September 2011 and commenced an action against Friday TV in the Stockholm District Court for infringing section 6 of the Swedish Trade Secrets Act.

His claim failed and resulted in BUMP then bringing a claim in England. In relation to the copyright claim, they argued that copyright subsists in the Minute Winner Document as an original dramatic work, within the meaning of sections 1(1)(a) and 3(1) of the CDPA.

The allegedly infringing TV gameshow
What the High Court said

To begin with, Snowden J stated that, for a TV format to be granted copyright protection, it must be an original dramatic work. In regards to originality, the work must be the author’s own intellectual creation (Infopaq; SAS). However, this does not mean that every aspect of the work must be original. The work must be taken as a whole and it can include aspects that are neither novel nor ingenious.

Due to the CDPA not defining what a dramatic work is, Snowden J applied Nourse LJ’s definition of a dramatic work (Norowzian v Arks Limited (No 2) [2000] EMLR 67 at 73). Nourse LJ defined it as "a work of action, with or without words or music, which is capable of being performed before an audience”. Snowden J’s conclusion was based on Nourse LJ’s definition: each recorded episode of a TV format can qualify for copyright protection, as copyright would be infringed if another party re-enacted it. However, he stressed that this case instead concerns whether a format is separately capable of copyright protection.

Snowden J analysed the reasoning of the judges in a seminal Privy Council decision on TV formats, that was outside of this jurisdiction (Green v Broadcasting Corporation of New Zealand [1989] RPC 700). This case is relevant to the UK because New Zealand has a similar closed-list system to the UK. Therefore, the reasoning of the majority can be seen to be reflective of the UK’s reluctance to grant protection in TV formats. Somers J, who was part of the majority, held that such scripts as existed could not be a dramatic work because they could not be acted or performed, being "no more than a general scheme for a proposed entertainment".

Snowden J reformulated Gallen J’s dissenting judgment in Green. He stated that copyright protection will not subsist unless, as a minimum: (i) there is 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.

However, in applying such criteria to this case Snowden J held that there was no realistic prospect of the Minute Winner document qualifying for protection. Snowden J highlighted that the performance of a task against the clock to win a prize was a common feature of games shows. As well as that the Minute Winner document did not specify key information such as the type of one minute tasks, who the contestants should be or the length of the programme.

Snowden J also highlighted that even if BUMP could establish copyright in its Minute Winner document, the format described in the Minute Winner document and that used in Minute to Win It were "different in every material respect". Thus meaning, that there was no similarity beyond the fact that they both involved games played against the clock for one minute.

Green, or the Opportunity Knocks case
Implications of the ruling

This case is of great significance to the media industry and highlights the dangers of sharing ideas in a commercial environment, without copyright or contractual protection. It is imperative that television producers and those with rights to TV formats, ensure that they have robust non-disclosure agreements and that third parties sign them. This is likely to be an easier route to enforcing one’s own rights, as opposed to bringing a claim for copyright infringement and needing to satisfy the requirements stated by Snowden J.

In order to increase the chances of their TV format being afforded protection by copyright, TV producers and broadcasters ought to include information such as where the action is to take place, who the contestants should be, the selection process, the length of the programme, when the show should be aired, the source of the prizes and catchphrases. It is vital that TV producers and rights holders keep a constant and regularly updated account of this information. In doing so they will have a better chance than Mr Banner and BUMP, in meeting the minimum criteria set out in Snowden J's judgment.

However, the decision is dangerous for how UK copyright is defined. This is because TV formats as copyright subject-matter are dangerously on the verge of the idea side of the idea/expression dichotomy. A difficulty in deciding these cases is distinguishing between whether what has been copied is the expression of ideas, rather than pure ideas themselves. It appears that TV format producers like the claimant, bring these claims to protect the latter from being copied. However, these claims are outside the remit of copyright protection.

Whilst Snowden J correctly decided against granting copyright in Minute Winner, because a party cannot claim a monopoly on games being played against the clock for one minute, it cannot be said that other judges in the future will correctly do so as well. Copyright does not grant monopoly rights and therefore, there is certainly potential for things to get out of control if judges begin to grant monopoly rights in TV formats. These practical concerns are a contributing factor as to why the UK has been hesitant, to freely grant copyright protection to less conventional works, like TV formats.”

2 comments:

Andy said...

I would like to start by thanking Paul for his analysis of this case and its implications for the possibility that TV formats may be protectable by copyright.

However I think he goes too far in asserting that "[t]his case is of great significance to the media industry ...". It is important to remember that this was a case management conference, not a trial. The aim of the exercise was to examine the prospect of success at trial of the preliminary arguments of the two parties. That involved Snowden J being led to a number of authorities, as Paul outlined in the posting, and the judge summarising them. I can find no instance where he broke new ground either in defining formats as, possibly, dramatic works, or in the features which would need to be present to qualify a format as a dramatic work. To that extent the judge merely re-stated with approval what various (mainly superior) courts had already found in previous cases.

That said, I largely agree with Paul's other conclusions. True copyright has, since the first Berne Convention of 1886, been confined to a narrow set of categories, namely literary, dramatic, musical, and artisic works, which have over the years seen many unsuitable subgenres added to them (computer programs for instance) as well as the addition of a slew of so-called neighbouring (or related) rights, which in some people's eyes are deserving of the same protection as the 'core' LDMA works. As a result, for many non-lawyers (and a few lawyers I suspect) 'copyright' has now become an umbrella term for protecting many diverse types of work, from performances to databases, or satellite broadcasts to panoramas. Indeed the EU seems to be busy creating new types of rights on an almost continuous basis, while the CJEU spends its time expanding the scope and definitions of those which already exist. Just because TV formats do not naturally amd easily fit into any existing category of copyright work, attempts should not be made to shove them in, like some poor Tokyo commuter boarding a train, just because they appear, superficially, to exhibit some modicum of original creativity.

. said...

As mentioned, this was a Case Managment Conference, not a trial. Uncovered evidence show that the Summary judgement in the case was obtained by fraud and there are good grounds for appealing the Summary judgement, supported in part by uncovered evidence of contracts concealed by Friday TV and the defendants, and based on errors of law in the summary judgement.

There has been a high degree of dishonesty and bad faith on the part of the defendants'in the case, as the uncovered evidence of Friday TV and the defendants' contracts with the plaintiff on the Minute Winner format document and the disputed Minute To Win It gameshow were concealed in order not to pay royalties to the plaintiff for Friday TV's exploitation of the Minute Winner document in their development of Minute To Win It.

With regard to the claim of breach of confidentiality, the plaintiff, BUMP, submitted an NDA to Friday TV at the meeting on 11 November 2005, thus the disclosure of Minute Winner format was made under the condition of confidentiality.

As with regard to the passing off claim the court's opinion was wrong in stating that BUMP did not establish goodwill in Minute Winner in UK. BUMP submitted to the court evidence, such as email to ITV which shows that Goodwill in Minute Winner in UK was established through ITV since 2005. BUMP's clients in UK are not the UK general public but UK broadcasters, such as ITV, and ITV aired 8 episodes of Minute To Win It in 2011 - 2012.

Friday TV's concealed evidence of drafted contracts with BUMP on Minute Winner and Minute To Win It support the fact that Minute To Win It is Minute Winner, and valuable and confidential information provided in the Minute Winner document allowed Friday TV to develop Minute To Win It.

The court's summary judgement does not do justice in the case, as it has not resolved the issue of ownership of the format. BUMP, the plaintiff is still entitled to exploit its original "Minute Winner - You've got one Minute To Win It" format with other third parties, since Friday TV and the defendants are not in possession of an original document to prove they created Minute To Win It independently of BUMP's Minute Winner document. The evidence of their concealed contracts with BUMP are proof that BUMP is the original creator of Minute Winner - Minute To Win It.