This article was first published on Lexis®PSL, in June 2022.

The practical implications

This case is important as it is the first time a UK Court has found that copyright may subsist in a character and could well lead to a widening of what is a protectable work under UK copyright law. This could have an impact on a wide range of industries that use or are inspired by well-known characters, such as advertisers, computer game creators and event organisers, as well as the more traditional creative industries such as books, plays, musicals, film and television. Those wishing to exploit a well-known character may become more nervous about potentially infringing copyright, and rights owners could use the judgment to justify additional licensing income.

At the time of writing it is not clear whether the defendants will appeal this decision; in 2020 the case was moved from the High Court to the IPEC to save costs, so it may be that the defendants would not pursue an appeal to avoid incurring further costs. However, from a legal perspective it would be good to gain clarity on the application of the EU test for protectable works following Cofemel v G-Star Raw (C-683/17) and how this can co-exists with the UK’s closed list of defined copyright works in s1(1) CDPA. Both in this judgment and in the earlier case of Response Clothing Ltd v The Edinburgh Woollen Mill Ltd [2020] EWHC 148 the judges had to force the work in issue into a defined category from the UK’s closed list – literary works in this case, and works of artistic craftsmanship for the fabric design in Response Clothing. The Court of Appeal may feel more willing to highlight the apparent non-compliance of the CDPA with Cofemel, which is retained EU law after Brexit, and add some pressure on the government to amend the legislation.

Background

This case concerned the TV show Only Fools and Horses (“OFAH”), written by the late John Sullivan, whose family controlled and exploited the show’s IP rights through their company Shazam. The defendants launched the “Only Fools The (cushty) Dining Experience”, an unlicensed eating experience in which actors played the characters from the show and acted out a pub quiz scene that was not part of the original series. In 2019, the claimant, Shazam, sued the defendants for infringement of copyright in the OFAH scripts and in the character of Del Boy, along with passing off.

The Judge was required to decide whether the individual OFAH scripts, the whole body of scripts and the character of Del Boy were protectable works. Once this had been established, it was necessary to assess whether the Dining Experience had infringed the claimant’s copyright by copying a ‘substantial part’ of the works. The Judge was also required to consider whether the defence of fair dealing for the purposes of parody or pastiche (s30A CDPA) applied to the defendants’ use of the copyright works.

For the passing off claim, the Judge had to decide whether the classical trinity of elements (goodwill, misrepresentation leading to deception or a likelihood of deception, and damage) had been established.

Decision

The Judge held that each individual script was a dramatic work, building on reasoning of the Court of Appeal in Martin v Kogan [2021] EWHC 24 (Ch) that a film screenplay was a dramatic work rather than a literary work, but held that the body of scripts (and the ‘imaginary world’ created by them) was not its own work. It was not a dramatic work as it had never been intended to perform as a work in its own right, and it was not a literary work as there had been no additional intellectual creation involved in compiling the scripts.

In terms of the Del Boy character, the Judge applied the two-stage test set out by the CJEU in Cofemel:

• The character must be original subject matter, being the author’s own intellectual creation; and
• The character must be identifiable with sufficient precision and clarity.

The Judge highlighted several factors that, when combined, made the character of Del Boy original and satisfied the first stage of the test. These included his aspirational use of mangled French, his well-known catchphrases, his involvement in dodgy dealings and his complex relationship with his brother. These traits were all clearly identifiable in the OFAH scripts, in both character descriptions and the dialogue itself; therefore, both stages of the test were satisfied. The Judge held that the character would be classed as a literary work for the purpose of UK copyright with no further explanation other than it did not require any “strained interpretation”. Once this had been determined, the Judge held that copyright in both the character and the OFAH scripts had been infringed by the defendants reproducing a substantial part of them in the Dining Experience.

In assessing the fair dealing defences relied on, the Judge applied the three-step test, which originated in the Berne Convention and which was explained in England and Wales Board Limited v Tixdaq Limited [2016] EWHC 575 (Ch):

• The exception must only be applied to “certain special cases”, in this case works of parody or pastiche;
• The exception may only be applied where its application does not “conflict with a normal exploitation of the work”; and
• The application of the exception does not “unreasonably prejudice the legitimate interests of the rights holder”.

On the first question, the Judge held that the Dining Experience was not a parody, as it did not constitute an expression of opinion expressed as humour or mockery. Nor was it a work of pastiche, as it did not seek to imitate the style of OFAH, but to recreate it as closely as possible.

The Judge explained that, even if the Dining Experience had been caught by one of these special cases, it would have failed steps two and three of the three-step test. The aim of the infringement was to extract commercial value from the scripts and characters and it was possible that the existence of the Dining Experience would divert fans from purchasing tickets to the claimant’s recently launched official musical. In addition, the claimant was found to have a legitimate interest in controlling how its copyright was used and the existence of the unlicensed Dining Experience unreasonably prejudiced this.

The allegation of passing off was also successful. The level of goodwill in the show, and particularly the character of Del Boy, was substantial and the risk that some people would choose to buy a ticket to the Dining Experience instead of the claimant’s musical satisfied the damage requirement. On misrepresentation, the defendants argued that their terms and conditions did state the show was unofficial, but this did not appear on the main web pages, and the similarity between the name of the show and the Dining Experience was likely to mislead customers.