A Cushty Decision – scope for copyright in a character as a literary work
Shazam Productions, a company set up by the creator of the classic sitcom Only Fools and Horses, successfully sued the operators of a themed dining experience named “Only Fools The (Cushty) Dining Experience”. The Intellectual Property Enterprise Court ruled that the experience infringed Shazam’s copyright.
In a novel decision, the IPEC held that the lead characters Del Boy and Rodney, with their distinctive character traits, were literary works. It found that each script of the TV sitcom was a dramatic work and rejected defences of parody and pastiche. It also considered that the actors’ dress and appearance and the defendants’ use of an “Only Fools” domain name amounted to passing-off.
Only Fools and Horses (OFAH) is a British institution. Written by the late John Sullivan OBE, the television sitcom ran on the BBC for seven series from 1981 to 1991. Even after the final episode aired, the show’s two spin-off programmes, myriads of specials, inclusion in the London 2012 Olympic Closing Ceremony and a West End musical adaptation have ensured an enduring affection in the British public. In particular, the show’s main character, Del Boy (the nickname for Derek Trotter, played by David Jason), has become British slang for a wheeling-and-dealing Cockney with a heart of gold.
Given the show’s cultural impact, it is not surprising that commercial operations have sought to cash in on OFAH’s success. One such enterprise was the “Only Fools The (Cushty) Dining Experience” (OFDE). OFDE hosted an interactive pub quiz and dining experience (a novelty among OFAH spin-offs), featuring actors playing various OFAH characters and a script written and compiled by OFDE, based on the OFAH characters.
Shazam is a company owned and controlled by the estate of John Sullivan, founded to control the writer’s various intellectual property rights. Shazam initially contacted OFDE in 2018 and issued proceedings against them in December 2019, asserting infringement of copyright in: (a) the scripts for each OFAH episode; (b) the body of scripts for OFAH taken as a whole, which collectively establish the characters, stories and imaginary “world” of OFAH; (c) the characters (including Del Boy); and (d) the lyrics and opening theme song for OFAH.
Shazam listed the alleged infringements in a schedule and brought a claim against OFDE for passing-off and infringement of copyright, including in Del Boy’s character, citing the following specific characteristics: use of sales patter with replicated phrases; use of French to try to convey an air of sophistication; eternal optimism; involvement in dodgy schemes; and making sacrifices for his brother, Rodney.
Nine issues were finalised for the IPEC to decide at trial, six relating to copyright and three relating to passing-off. The key issues included:
(a) whether either or both of (i) the character of Del Boy or (ii) the body of scripts taken together constituted a literary or dramatic work;
(b) whether OFDE could rely on either the parody or pastiche “fair dealing” defences under section 30A of the Copyright, Designs and Patents Act 1988 (CDPA); and
(c) whether there was a claim in passing-off, even though the BBC, and not Shazam, owned the “Only Fools and Horses” trade mark and goodwill attached to it.
An individual OFDE script from September 2019 was the only allegedly infringing work that the IPEC assessed for the purposes of the trial.
Body of scripts
The defendants did not dispute that each individual OFAH script was protected by copyright as a “literary work”. Yet John Kimbell QC, sitting as a Deputy High Court Judge, found each script to be a dramatic work (rather than a literary work) under the CDPA. Referring to Martin v Kogan, he commented that it was “a very small step from the proposition (binding on me) that a film screenplay is usually to be regarded as a dramatic work to the proposition that a script for a TV show is a dramatic work”. Indeed, John Sullivan’s primary purpose when completing each script was that it would be performed and not just read.
Body of scripts taken together
As to the body of OFAH scripts taken together as a whole, Shazam’s case was that: (a) the scripts constituted literary works; and (b) in the alternative, the development of the OFAH “world” was a dramatic work. The defendants submitted that no copyright subsisted in the scripts as a whole whatsoever, and the judge agreed.
The judge acknowledged numerous examples of works that were originally published in chapters and then re-published as a single work, with both publications attracting protection as literary works. Yet there was no evidence indicating that Mr Sullivan conceived where or when OFAH would end, or that the body of scripts were meant to be viewed as a “unitary whole”. When asked, Shazam was unable to provide an example of a body of work in which the court has found copyright to subsist as an imaginary "world". He was not convinced that the world of OFAH, as expressed through the scripts as a whole, is a literary work.
While each individual script was created for separate publication, performance and broadcast, the scripts as a whole were “never intended to be performed as a work in its own right” and so could not be considered to be a dramatic work within the meaning of the CPDA.
Del Boy character
This may be the first case in the UK where the court has been required to rule on whether copyright subsists in a character from a literary or dramatic work, and the judge acknowledged that there was little discussion or commentary in English case law on this point. Nonetheless, the defendants relied on case law and commentary that appeared to suggest that copyright cannot subsist in a character under English law. The judge was not persuaded by any of these cases and decided that it was necessary to approach the matter from first principles.
It was common ground that the starting point of this analysis was to consider whether a work qualifies as a work under EU law and, in accordance with the CJEU’s decision in Cofemel v G-Star Raw, the judge applied the two-stage test to assess whether Del Boy as a character is: (a) original in the sense that it is its author’s own intellectual creation; and (b) an expression of such creation.
For the originality requirement to be met, it is both necessary and sufficient that the subject matter (i.e. Del Boy) reflects the originality of its author, as an expression of their free and creative choice. The judge had no hesitation in holding that this first condition was satisfied.
• He considered a substantial amount of evidence in coming to this conclusion, including John Sullivan’s background and first-hand experiences, the creation of Del Boy and his characteristics, multi-layered relationships, vocabulary and phrases.
• One example of the originality of Del Boy’s character was his use of “mangled French” expressions – which not only provided comedic effect, but spoke to his underlying personality, motivations, and desire to be respected by his peers.
• The judge accepted that Del Boy’s key features were an accurate description of the character in the scripts and represent “a highly distinctive and original character”. He rejected the assertion that, when taken together, the features give rise to “nothing more than a vague description of some general characteristics of an optimistic, sometimes dodgy market trader who uses French to appear sophisticated and makes sacrifices for his younger brother”. It is the particular combination of all of the features that make Del Boy distinctive.
For the identifiability requirement to be satisfied, the subject matter must be expressed in a manner that makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form. Essentially, the “expressed features need to be external to the perceiver and objectively identifiable by others”. This second condition was also satisfied.
• The features of Del Boy that Shazam relied on as constituting his character are precisely and objectively discernible in the OFAH scripts. The judge watched three episode of OFAH and noted that it was “striking” how much of Del Boy was in the relevant scripts. Del Boy’s appearance, character traits and relationships with other OFAH characters were all defined and/or described in the scripts.
• Moreover “Del's attitudes views and approach to life, work, the law, his family, the future, his past together with his own aspirations and beliefs about himself are all objectively present and clearly identifiable from the scripts”.
The judge observed that, if Del Boy is a protectable work under EU law (as illustrated above), then the character, as he appears in the OFAH scripts, can be considered a literary work under the CDPA’s closed list of protected works, and that conclusion did not require “any strained interpretation of the CDPA”. Accordingly, copyright subsists in Del Boy as a literary work. The judge found support for his view in overseas decisions concerning character copyright, including the decision of the German Federal Court of Justice (BGH) in the Pippi Longstocking case and the decision of the 3rd Circuit Court in the United States concerning the character of Sherlock Holmes.
The judge then considered the key principles that are relevant when considering copyright infringement.
(a) Copying is the “reproducing the work in any material form”, either as a whole or a substantial part of it.
(b) The question of whether a substantial part has been copied requires qualitative (and not quantitative) assessment.
(c) Actual copying is required.
(d) The part of the work alleged to have been copied must contain the expression of the author’s own intellectual creation.
For the character of Del Boy, the evidence of infringement was “overwhelming and obvious”.
• The defendant’s evidence established that Del Boy’s back story, relationships with other OFDE characters, use of mangled French, catchphrases (such as "lovely jubbly") and involvement in dodgy schemes in the OFDE script were all copied from the OFAH episodes. Also, one of the objectives of OFDE and the OFDE script was for the audience to feel that “they were in the presence of a Del Boy character presented in a form which was familiar to them”.
• OFDE actors and participants watched episodes and clips of OFAH when developing OFDE and were given the brief of creating a "pitch-perfect" live version of Del Boy. That was evident in the OFDE script in Del Boy’s vocabulary and phrasing. The judge remarked that the commonality between Del Boy in the OFDE script and the OFAH scripts was “almost total”, and that the copying was “far more than the substantial copying required”. Accordingly, this was a “clear case of indirect copying via the broadcast of OFAH episodes”.
In relation to the scripts, the judge found that several features listed in the schedule of infringements were original features created by John Sullivan that were copied and used in the OFDE script. Those included certain jokes, Rodney’s modelling “outlandish gear” at Del Boy’s request, catchphrases and vocabulary such as “lovely jubbly”, the use of mangled French and Del Boy’s eternal optimism. The features copied were substantial, and the commonalties between the OFAH scripts and the OFDE script were extensive. Accordingly, the OFDE script infringed the copyright in the OFAH scripts.
Parody or pastiche
The defendants sought to rely on the exceptions under section 30A of the CDPA and maintained that the OFDE script amounted to fair dealing for the purposes of parody or, alternatively, pastiche. Section 30A is derived from the Copyright Directive. The judge considered the three-step test under Article 5(5) of the Copyright Directive, as well as Arnold J’s comments on the three-step test in the Tixdaq case, which he accepted as accurate. That test requires that the application of the exception:
(a) must be confined to “certain special cases”;
(b) must not conflict with a normal exploitation of the work or other subject matter; and
(c) must not unreasonably prejudice the legitimate interests of the rights-holder.
He noted that the factors overlapped with the factors relevant to fair dealing under the CDPA. He also examined the Intellectual Property Office guidance on parody and pastiche.
As to parody, the judge reviewed the ordinary meaning of the word and the CJEU’s ruling in Deckmyn v Vandersteen on the essential elements of a parody, which must:
(a) evoke an existing work;
(b) be noticeably different from the existing work; and
(c) constitute an expression of humour or mockery.
Parodies must target something. The judge noted that parodies of comedies are rare, and that “the need for a parody to express an opinion in order to fall within the exception is particularly important in the case of parodies of comedies.”
Without the target element, every reproduction or imitation of a comic work (as long as it was noticeably different from the original) would constitute a parody. He concluded that “mere imitation (of a work of comedy) is not enough to constitute parody”, and the use of the OFAH elements was not for the purpose of parody. In particular:
• The OFDE script did not evoke OFAH to express humour. Where humour in the OFDE script existed, it was borrowed material.
• The OFDE script did not evoke OFAH to mock it (or anything else).
• The OFAH elements were used wholesale in the OFDE, making it closer to a reproduction by adaptation than parody.
• Although some characters in OFDE appeared in “a slightly exaggerated fashion”, the exaggeration was not evident in the OFDE script. The use of characters was not for the purpose of parody.
• Although the form of the OFDE script (as a live dining experience) was different from the script, it did not target OFAH or use OFAH either to express humour or mock it (or anything else).
• The audience felt like they were in another live episode of the OFAH, and so it followed that there was no noticeable difference, and no element of distance or critique.
As to pastiche, the judge considered the ordinary meaning of pastiche and the CJEU’s ruling in Pelham v Hutter. He considered that the “essential ingredients” for pastiche are that:
(a) the use imitates the style of another work, or it is an assemblage of a number of pre-existing works; and
(b) in both cases, the product must be noticeably different from the original work.
He observed that the use of the OFAH elements was not for the purpose of pastiche. In particular:
• The OFDE script did not use elements from the OFAH scripts to imitate the style of OFAH, and the elements taken from OFAH were not arranged in any sort of medley.
• OFDE simply re-presented the OFAH elements in a live dining format.
• The use made of the OFAH elements was more like an adaptation than a pastiche.
No fair dealing
As to the meaning of fair dealing, the judge considered the Court of Appeal’s comments in Ashdown v Telegraph Group Ltd. He went on to clarify that, even if he were wrong and the OFDE script used the OFAH copyright material for the purposes of parody and pastiche, that use would not qualify as fair dealing and would fail steps two and three of the three-step test. He noted that the taking from the OFAH scrips was extensive in both the quantity and quality of material. The OFAH characters were lifted “wholesale” and their full back stories, appearance, wants, desires, frustrations and social context were replicated in the OFDE script.
Besides, the OFDE clearly conflicted with Shazam's normal exploitation of OFAH. In reality, Shazam’s exploitation took many forms, including exploiting the works via television broadcast, its licensing agreement with the BBC, an OFAH prequel and sequel and promotional licence fees. Shazam had also invested money in the musical.
The judge noted that the conflict with Shazam's legitimate commercial interests in these circumstances was “stark”. The OFDE effectively amounted to the creation of a new OFAH episode. Shazam’s legitimate interests would clearly be unreasonably prejudiced if someone were to write a new episode of OFAH that uses the same characters, back story, catchphrases and setting without authorisation. In addition, Shazam had a legitimate interest in controlling how the OFAH characters were portrayed and commercially exploited. The use of the scripts was also not an expression that engaged fundamental rights.
So, in the absence of any defences, the defendants had infringed Shazam’s copyright.
Passing-off requires proof of goodwill, a misrepresentation leading to confusion (or a likelihood of confusion) and damage. Little time was given to the issues of passing-off at the trial.
On the evidence provided, the judge accepted that significant goodwill attached to the name Only Fools and Horses and the leading characters. That was clear from: (a) the fact that OFAH was broadcast to vast audiences over many years and received critical acclaim; (b) the substantial royalties earned from OFAH since 1981; (c) the sales of OFAH-themed merchandise; and (d) the various intellectual-property licensing activities in relation to the works. The fact that the BBC owned trade marks in relation to OFAH and conducted merchandising activities was found to be irrelevant on the facts provided.
On misrepresentation, the parties only raised one question: whether it was likely that some people would be deceived into believing that OFDE was authorised by Shazam. The judge held that the name of OFDE was liable to confuse and mislead, in that it was not sufficiently different to OFAH to prevent confusion. In particular, the fact that OFAH was often abbreviated to "Only Fools" and the use of “(Cushty)” in the title of OFDE was bound to cause a sizeable number of people think that the OFDE was a spin-off. In addition, the judge did not accept that the nature of OFDE was so far removed from OFAH that it was obviously not associated with OFAH. Several factors were likely to cause people to think that OFDE was in some way officially authorised and/or associated with OFAH, including the dress and appearance of the characters in OFDE publicity. Interestingly, the judge also commented that OFDE was no more or no less removed from OFAH than the OFAH musical.
The judge considered it likely that the existence of the OFDE would divert at least some fans of OFAH from buying tickets for the musical. Consequently, a real likelihood of diversion of trade existed, and the requirement for damage was satisfied. Both OFDE and the musical were advertised at the same time and offered people a chance to be re-acquainted with the well-known characters from OFAH in a live performance setting. It followed that the defendants were liable for passing off.
The IPEC could be characterised as finding a “pucker” excuse to align the English copyright regime with other copyright laws. While this seems to be the first time that copyright in a character has been ruled on under English case law, the IPEC cited two examples of copyright found in characters in other jurisdictions: Pippi Longstocking in Germany, and Sherlock Holmes in the USA. The judge commented that the fact that both US and German law permits copyright to subsist in characters if they are “sufficiently complex and distinctive” was some reassurance that he was not reaching a conclusion that was out of line with other systems of copyright law.
The judge’s approach implies that allocating a category under the CDPA is secondary to finding that the work is an original work under the current two-stage test. Indeed, that might be the correct interpretation, in line with pre-Brexit EU case law, which started in Infopaq and continued in Cofomel.
Ultimately, rights-holders will welcome the decision, which confirms the potential breadth of protection for creative works. Yet courts might return to the potential blurred line between a true, copyrightable character and a mere stereotype, which is a question of fact in each case. For instance, where does a character like Del Boy end and a regular East-end “jack the lad” begin? It will be interesting to see whether other actions are brought on the basis of copyright in a character, and where the courts will draw the line.