This article first appeared in the Intellectual Property Forum journal, published by Intellectual Property Society of Australia and New Zealand. Copyright protection for fictional characters – lovely jubbly. Simon Clark and Maria Ryan, “Current Developments – Europe: United Kingdom: Copyright protection for fictional characters – lovely jubbly” (2022) 129 Intellectual Property Forum.

For the first time, the UK High Court has found that a fictional character can be protected by copyright. In Shazam v Only Fools The Dining Experience and Others [2022] EWHC 1379 (IPEC), the claimant, a company set up to exploit the intellectual property rights subsisting in the popular TV show “Only Fools and Horses” (“OFAH”), sued the defendants for copyright infringement and passing off. The Judge, John Kimbell QC, sitting as a Deputy High Court Judge, found that there had been substantial copying of the show’s script and main character, Del Boy. His Honour rejected the defendants’ attempts to rely on the defences of fair dealing with respect to parody and pastiche. Below we assess the impact of this case and briefly compare the decision with the treatment of characters in other jurisdictions.

Background to the case

The case was based on the BBC comedy OFAH; a long- running, well-loved show televised between 1981 and 1991. The show revolves around the lives of market trader Derek Trotter, otherwise known as Del Boy, and his younger brother, Rodney. The show was created and written by John Sullivan, who died in 2011.

The claimant, Shazam, was a company set up by the descendants of John Sullivan for the purpose of exploiting the IP rights relating to OFAH. Most recently, in February 2019, Shazam launched a musical based on OFAH called “Only Fools and Horses the Musical”.

The defendants were the developers of an interactive Dining Show based on OFAH, which was marketed as “Only Fools The (cushty) Dining Experience” (“OFDE”) and launched in September 2018. The OFDE involved a three-course meal along with performances by actors taking on the roles of the main OFAH characters, including Del Boy. The OFDE was based on a script developed by the cast (the “OFDE Script”), which gave the actors room to improvise and react spontaneously to guests.

The defendants did not seek permission from the claimant before developing the show and, in July 2018, the claimant wrote to the defendants complaining that any performance of the show would infringe the copyright held by Shazam.

The defendants denied that this would be the case and went ahead with their planned shows. As a result, in December 2019, Shazam sued the defendants for copyright infringement and passing off in respect of the intellectual property rights subsisting in OFAH.

The works

The claimant alleged that copyright subsisted in the script for each of the 64 episodes of OFAH, as well as the body of scripts taken as a whole. This included the characters, the stories and the “imaginary world” established by the scripts. In addition, the claimant argued that copyright subsisted in the character of Del Boy.

The UK has a closed list of specified “works” which are set out in the Copyright, Design and Patents Act 1988 (“CDPA”) s.1. These include literary, dramatic, musical and artistic works, as well as sound recordings, films, broadcasts and typographical arrangements. CDPA s.3(1) states that a work cannot be both a literary work and a dramatic work and defines “literary work” as any “work, other than a dramatic or musical work, which is written, spoken or sung”. Dramatic works are not defined, but are said to include works of dance or mime. Due to the nature of the closed list, the Judge was required to decide whether each alleged work qualified as a work under the CDPA and, if so, into what category. If the work relied on did not fall within any of the closed list of works under the Act, then no copyright could subsist under UK copyright law. As we discuss below, this is in direct contradiction to recent case law from the Court of Justice of the European Union (“CJEU”), which provides that any work can be protected by copyright provided that it is sufficiently original and precisely defined.

The Judge first assessed the individual scripts and confirmed that these would qualify as dramatic works under the CDPA. In doing so, he relied on the recent UK case of Martin v Kogan [2019] EWCA Civ 1645 in which the UK Court of Appeal overruled the UK High Court and held that a film screenplay should be considered a dramatic work, not a literary work, on the basis that its primary purpose was to be performed. The Judge considered that it was a “very small step” to conclude that a TV screenplay was a dramatic work as it was intended to be performed.

Turning next to the body of scripts, the Judge rejected the argument that copyright subsisted in the body of scripts taken as a whole. The Judge reasoned that, unlike the individual scripts, the body of work was not intended to be performed as a whole and so would not be considered a dramatic work under the CDPA. The Judge also rejected the argument that the body of scripts was a literary work, despite the works being published as whole by the BBC in 1999 because there had been no additional intellectual creation involved in the publication.

When assessing the character of Del Boy, the Judge confirmed that: “There is surprisingly little discussion in English case law or commentary on whether (and if so in what circumstances) copyright might subsist in a character from a dramatic or literary work”

As such, the Judge held that it was necessary to approach the case from first principles, and started by considering the test for subsistence of copyright laid down by the CJEU in Cofemel v G-Star Raw Case C-683/17 [2020] ECDR 9. This cumulative two-stage test first assesses whether there exists an original subject matter, in the sense of being the author’s own intellectual creation (the “originality requirement”) and secondly whether the subject matter is expressed in a way that makes it identifiable with sufficient precision and objectivity (the “identifiability requirement”). As this judgment predates Brexit, it forms part of retained EU law and is therefore binding on UK courts.

The Judge held that the character of Del Boy satisfied the originality requirement for a number of reasons:

• The character of Del Boy was an expression of John Sullivan’s own intellectual creativity and was inspired by his experiences of growing up in South London in the 1950s and 1960s. The market traders and second-hand car salesmen that Sullivan observed in his youth provided the source material for Del Boy, who was known for being involved in dodgy dealings throughout the
• John Sullivan provided the character with a full back story and home life, included his quasi-parental relationship with his younger brother, Rodney, and aspirational Del Boy’s “complex motivations” meant that he was more than just a “stock character or cliché”.
• Throughout the show, the character of Del Boy developed iconic mannerisms and recurring storylines that had been purposefully chosen to express his complex For example, Del Boy often used mangled, incorrect French phrases that demonstrated his desire to appear sophisticated. The character also used many iconic phrases, including “lovely jubbly”, “cushty” and “plonker”, some of which were coined by John Sullivan.

The Judge commented that, while some ingredients of Del Boy’s character listed by him could be considered unoriginal in isolation, it was the “particular combination of all the parts and aspects” that created the distinct and original character.

In relation to the individuality requirement, the Judge confirmed that the original character traits of Del Boy were “precisely and objectively discernible” from the script and could be separated from the performance of the actor, Sir David Jason, who played the character on screen. In coming to this decision, the Judge pointed to the detailed descriptions of the character’s clothing and actions that are included in the script, as well as the dialogue itself. Through his use of dialogue, John Sullivan clearly described the complex dynamics between Del Boy and his brother and incorporates the character’s classic phrases and use of mangled French.

Following his conclusion that the character of Del Boy was a protectable work under EU copyright law, the Judge concluded that the character would be a literary work under the UK’s closed list of defined works. His Honour explained that the character was not intended to be performed, in the same way that a screenplay was, and thus would not qualify as a dramatic work. However, other than saying that his conclusion that the character was a literary work did not require a “strained interpretation” of the CDPA, his Honour gave no further reasons for his conclusion.

The infringement

Infringement is defined by the CDPA s.17(2) as the reproduction of the work in any material form, which is qualified in s.16(3) as meaning that copying must be of a substantial part of the work. The Judge found that there had been infringement of the OFAH scripts as a significant number of features in the OFDE Script had been copied, including well-known catch phrases and recurring jokes from the show.

In addition, the Judge easily found that there had been substantial copying of the Del Boy character as the creators of OFDE admitted in their evidence that they “imported” the key aspects of Del Boy’s character into the OFDE Script. This included his back story, catch phrases, use of mangled French and involvement in dodgy dealings. Therefore, the creation and performance of OFDE was held to be an infringement via indirect copying of the Del Boy character via the broadcasts of the OFAH episodes.

The defences

The defendants put forward the defence of fair dealing under CDPA s.30A, which was inserted into UK law in 2014 and originated from the InfoSoc Directive Articles 5(3)(k) and 5(5). The Judge referred to the three-step test applicable to exceptions to copyright infringement, originally laid out in the Berne Convention.1 These are that the exception must be confined to certain special cases, must not conflict with the normal exploitation of the work and must not unreasonably prejudice the legitimate interests of the rights owner. In this case, the defendants attempted to rely on the rarely used exceptions of “parody” and “pastiche”.

In looking at parody, the Judge confirmed that a parody must in itself be an expression of mockery or humour. As such, the fact that OFDE was not intended to mock OFAH, or use OFAH as a vehicle to mock a third party, and was in fact a “mere imitation” of protected works which precluded the defendants from relying on the parody exception.

Pastiche is an imitation of the style of a work or the compilation of a number of styles. It was held that to qualify for the exception a work should be noticeably different to the original work. The Judge found that OFDE was not an imitation of the style of OFAH; instead, it took characters and their backstories and recreated them. This meant that OFDE was not a work of pastiche.

The Judge went on to hold that, even if OFDE did qualify as a parody or pastiche, the acts of the defendants did not amount to fair dealing and would fail steps two and three of the three-step test. The defendants’ aim was to commercially exploit the characters and there was a significant risk that consumers would purchase tickets for OFDE instead of the official OFAH Musical that was being marketed at a similar time. It was found to be reasonable that the claimant, as the owner of the OFAH intellectual property rights, expected to be able to control when and how the OFAH characters and script were used.

Result of the trial

As a result, the defendants were found to have infringed the copyright in both the OFAH scripts and the character of Del Boy. The claimant’s allegation of passing off was also successful as there was significant goodwill in relation to the name OFAH and the character of Del Boy; the defendants had misrepresented to the public that OFDE was connected to the OFAH show; and this was likely to cause the claimant damage by affecting sales of the OFAH Musical, as discussed above.

Wider impact

This case is of particular interest as it is the first time a UK Judge has looked in detail at the possibility of copyright subsisting in a fictional character. Both the German and US Courts have previously ruled on this issue. The Judge in the present case confirmed that this decision aligned with the findings of the German Supreme Court in Re Pippi Longstocking [2014] E.C.C. 27 which held that, under German copyright law, the character of Pippi Longstocking was a protectable literary work. The Supreme Court confirmed that it was possible for a fictitious character to exist independently of the framework of the novel’s plot if the character’s typical behaviours are shown in various contexts. Whether this might occur relies on the creator “endowing the character with an unmistakable personality”. Similar to Del Boy, it was Pippi’s full back story, personality and use of word play that combined to make her distinctive.

In Klinger v Conan Doyle Estate Ltd., 755 F.3d 496 (7th Cir. 2014), the US Appeal Court had to decide whether copyright could subsist in the original characters Sherlock Holmes and Dr Watson after the copyright in some of the early works had expired. The Court confirmed that a character could qualify for copyright protection under US copyright law if it was sufficiently distinctive, which Sherlock Holmes and Dr Watson both were.

It is interesting that the Judge found that the Del Boy character was capable of copyright protection under both the EU law test for subsistence of copyright under Cofemel and under the UK’s closed list of defined works in the CDPA, without commenting at all on the apparent non-compliance of the CDPA with retained EU law, which does not permit a closed list of works. A similar issue arose in the recent UK case of Response Clothing v Edinburgh Woollen Mill Ltd [2020] EWHC 148 (IPEC); [2020] F.S.R. 25 where it was held that a piece of fabric fell within the category of “work of artistic craftsmanship” but not “graphic work” under the CDPA. Although the Judge in that case raised the issue of the obvious tension between EU law and UK law, his Honour concluded that he did not need to deal with the issue if, as he did, he found that the piece of fabric did fall within one of the categories of work under the CDPA (which meant that copyright protection would be available under both EU and UK law).

It is not yet clear whether the present case will go to appeal. However, we anticipate that, in the wake of this ruling, more cases will look to test the boundaries of what is capable of being considered a work under UK copyright law. What is known is that UK practitioners would welcome a ruling from the Court of Appeal on this issue, which would provide much needed clarity and may also push the government to consider changes to the legislation. However, although seemingly out of step with the rest of Europe, there is currently no sign that the UK Government is planning on updating the CDPA to remove its closed list of works.

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[1] The Berne Convention for the Protection of Literary and Artistic Works, opened for signature 9 September 1886, 828 UNTS 221 (entered into force 5 December 1887) Art 9(2).