Shazam Productions v Only Fools the Dining Experience Ltd  EWHC 2179 (IPEC)
Can literary copyright subsist in a fictional character? It has long been thought that copyright only protects the words and form in which ideas are expressed, such as a script, and not characters themselves. In a ground-breaking decision that will delight rights holders in the film, TV, performing arts and publishing industries, the High Court of England and Wales has ruled that copyright can indeed subsist in a fictional character.
Only Fools and Horses is a celebrated TV series that aired on the BBC from 1981 to 1991, its protagonist being Derek “Del Boy” Trotter, a market trader from Peckham. It was more recently adapted into a West End musical.
The Claimant, (Shazam) owns the IP rights of the late John Sullivan OBE, who wrote the series. The Defendants (Only Fools the Dining Experience Ltd) launched an interactive dining show and pub quiz called the “Only Fools The (Cushty) Dining Experience” where audiences were served a three-course meal hosted by actors portraying characters from the show. Shazam sued for copyright infringement and passing off.
The case was tried by Deputy Judge John Kimbell QC in the Intellectual Property Enterprise Court.
Central to Shazam’s case was the question of whether the character of Del Boy himself attracted copyright protection. The alleged acts of copying in relation to Del Boy as a character were:-
- His use of sales patter with replicated phrases;
- His use of French malapropisms (see above) to try to convey an air of sophistication;
- His eternal optimism;
- His involvement in dodgy schemes; and
- His making sacrifices for his brother, Rodney.
The Judge acknowledged that whilst there was no precedent in English law affording copyright protection to a fictional character, he nevertheless had to decide whether Del Boy could be protected as a literary or dramatic work. It was common ground that the starting point of the analysis was EU law and, in accordance with the CJEU’s decision in Cofemel v G-Star Raw (C-683/17), the Judge applied the two stage test and considered whether Del Boy as a character is:-
(a) original in the sense that it is its author’s own intellectual creation; and
(b) identifiable with sufficient precision and clarity.
The Judge concluded that the first condition was easily satisfied. An 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 second condition was also satisfied: the character of Del Boy was clearly and precisely identifiable to third parties in the scripts. The Judge went on to find that “if Del Boy was a protectable work under EU law, he could be properly subsumed under the concept of a literary work for the purposes of the closed list of protected English works”. Copyright in the character of Del Boy, as well as the script, therefore subsisted under English law.
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.
Parody and pastiche
The Defendants argued that their use of the works fell within certain exemptions to copyright infringement under section 30A Copyright, Designs & Patents Act 1988.
Firstly, the Defendants claimed their dining experience events were ‘parodies’. However, the court found that the use of characters was not for the purpose of parody, rather it was an exploitation of the same work for the same purpose. There was no noticeable difference, and no element of distance or critique which is an essential part of parody. The Judge concluded that “mere imitation (of a work of comedy) is not enough to constitute parody”.
The Defendants also argued the defence of pastiche, which means a “medley” of works made up of pieces from various sources; or a work composed in the style of a particular author. The court held that the use of the characters involved a “wholesale borrowing of content” and was not, therefore, pastiche.
In the absence any defences, the Defendants had therefore infringed Shazam’s copyright.
The judge also found that customers would be likely to be misled to believe that the show was authorised and associated with the TV series. This could divert custom from the West End musical to the defendants’ show. The Defendants were therefore liable for passing off.
This judgment will undoubtedly be well received by rights holders within the entertainment industry. It is likely to incentivise the owners of rights in iconic characters to challenge a broader range of third parties who make use of them. The case will also be of great interest to practitioners advising on the extent to which fictional characters can be protected by copyright, in particular in relation to novels, plays, screenplays or television scripts. It remains to be seen whether the judgment will be appealed. If so, the Court of Appeal’s views on this subject will be hotly anticipated.