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Court confirms copyright can protect characters: Cushty!

Posted on 16 June 2022

copyright-can-protect-characters

The UK Intellectual Property Enterprise Court (IPEC) has recently delivered an important and interesting decision relating to copyright in characters (as well as passing off). In finding that the character of 'Del Boy' from Only Fools and Horses is protected as a literary work (the first time that this has been considered in the UK courts), the Court's decision demonstrates a further expansion of the approach to what may be protected by copyright. The decision also includes a significant analysis of the approach to the defences of fair dealing for the purposes of parody and/or pastiche, suggesting that in circumstances where the alleged 'parody' is no more than an imitation of the copyright work, those defences will not be available.

Background

The case concerns the popular BBC TV sitcom 'Only Fools and Horses' and the Defendants' 'interactive dining experience' marketed under the name 'Only Fools The (cushty) Dining Experience' (OFDE). OFDE sought to make the audience feel that they were in the presence of the characters they knew and loved from the TV programme (such as Del Boy, Rodney, Uncle Albert, Cassandra, Boycie and Marlene), albeit in the different environment of an interactive pub quiz. The Defendants have previously also offered an interactive dining experience for Fawlty Towers, seeing both of them as 'loving tributes' to the original shows.

Does copyright protect characters?

As well as finding that copyright in individual scripts (but not as a 'body of scripts') had been infringed, the Court concluded that the character of 'Del Boy' was protected by copyright (as a literary work) and that that work was infringed. This is the first time that a UK Court has found copyright is available to protect a character as a literary work. In reaching that conclusion, the IPEC applied the following test developed in a line of recent case law, including the decision of the European Court of Justice (CJEU) in Cofemel:

  1. Del Boy as a character was an original creation of the writer (John Sullivan) which was Mr Sullivan's own intellectual creation. It reflected the author's personality and was an expression of his free and creative choices.

    John Sullivan was clearly immersed in the world of market trading and had given a great deal of thought and attention to how and why Del Boy would express himself. The IPEC found that what made Del Boy both interesting and funny as a character, and which gave him enduring appeal, was the combination and juxtaposition of all the aspects of his character. He was not a stock character or cliché but a full rounded character with complex motivations and a full backstory. For example, his use of mangled French to convey an air of sophistication was both original and important to his character.  
  2. Del Boy as a character (as described and represented in the scripts) was clearly and precisely identifiable to third parties in the scripts.

    It is important to note that the Judge concluded that the features of Del Boy relied upon as constituting his character were precisely and objectively discernible from the scripts themselves. Whilst the Court took into account the significant contribution of Sir David Jason, it was 'striking' how much of Del Boy's character traits and relationships were apparent from the scripts themselves.

In reaching this conclusion, the Judge took support from the finding of the German Supreme Court that Swedish author Astrid Lindgren's character of Pippi Longstocking was likewise protectable, and a US decision reaching the same conclusion in relation to Sherlock Holmes.

In the face of 'overwhelming and obvious' evidence, the IPEC found that OFDE infringed the copyright in the Del Boy character (as a clear case of indirect copying via the broadcast) and also in certain of the scripts. The aim of the Defendants' interactive dining experience was for the audience to feel that they were in the presence of Del Boy in a form familiar to them from the TV programme and to be able to interact with him. It was intended to be a 'pitch-perfect' live version of the TV programme.

Could OFDE rely on parody and pastiche defences?

The Defendants argued that they could rely on fair dealing defences for the purposes of parody and / or pastiche. The relevant provision in the Copyright, Designs and Patents Act 1988 came into force in 2014 in the UK and has not been tested before the UK courts, though there have been important CJEU decisions such as Deckmyn where the CJEU set out the following criteria for a work to be a parody:

  1. It must evoke an existing work
  2. It must be noticeably different from that existing work
  3. It must constitute an expression of humour or mockery

The Judge said that an essential party of parody is that the work must also "express some kind of opinion by means of its imitation, but noticeable difference, from the work parodied", stressing that this requirement was particularly important for parodies of comedies. The essence of this approach is that imitation is not enough. The opinion could be about something outside of the work itself (such as a political figure) or an opinion about the parodied work itself – essentially a parody must facilitate dialogue or give rise to artistic confrontation by being an expression of opinion expressed as humour or mockery.

The IPEC identified the essential ingredients for a pastiche as:

  1. The use imitates the style of another work; or
  2. It is a 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 Judge accepted that this meant pastiche could apply to potentially a broad spectrum including 'mash-ups', fan fiction, music sampling, collage, appropriation art, medleys, and many other forms of homage and compilation. However, each case must be assessed on its merits – and particularly in light of the requirement of fair dealing and the 'three step test' set out in EU law. As with parody, pastiche does not cover any imitation or reproduction of subject matter (as that would see it become a general fair use provision).

Applying those criteria, the IPEC had no hesitation in rejecting OFDE's parody and pastiche fair dealing defences. The Defendants' script did not evoke Only Fools and Horses to express humour about it or anything else, or to mock it or critically engage with it, or to imitate its style. Instead, it involved the wholesale transposition of the characters, languages, jokes and backstories to the setting of an imaginary pub quiz and so was closer to reproduction by adaptation than parody/pastiche.

Passing off

The Claimants were also successful in their passing off claim, albeit this was considered in much less detail. The IPEC found there was significant goodwill in the name of the show and the characters (it being irrelevant that the BBC owned certain trade marks and carried out merchandising activities), and the Defendants' acts of misrepresentation. Relevant to the question of damage was the fact that the Claimants had themselves launched a musical, which was impacted by the Defendants' interactive dining experience.

Comment

Whilst this is a decision of the IPEC, and it may be appealed, the decision is a significant one for creators of shows and characters when faced with 'tributes' and imitations. In finding that copyright protected the character of Del Boy, the case demonstrates the expansionist approach that has developed in recent years as to what can qualify for copyright protection. It also cautions that the boundaries of what may qualify as legitimate parody/pastiche should not be interpreted too broadly, at least in the face of a mere imitation, wholesale borrowing of content or 'tribute', without there being something more.

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