LAWCOMM 754 RESEARCH PAPER

 

 

 

Caroline Gault

 

 

 

 

 

TO WHAT EXTENT ARE GAME SHOWS AND OTHER FORMS OF REALITY TELEVISION PROTECTED AGAINST IMITATION UNDER THE COPYRIGHT LAWS OF:

 

 

NEW ZEALAND AND THE UNITED KINGDOM;

• THE UNITED STATES AND CANADA; AND

GERMANY?

 

 

WHAT ARE THE LIKELY CONSEQUENCES FOR THE LAW OF COPYRIGHT IF SUCH PROTECTION IS GRANTED?


 

 

INTRODUCTION

 

Game shows and other forms of reality television  are based on programme formats, which have in recent years become a huge global trade. A successful television format can be distributed internationally for massive profits.  The global format business was worth an estimated 2.4 billion dollars in 2004.[1]

 

Why are formats so marketable? Because formats are relatively cheap to make. They are often not scripted, therefore costly writer’s fees are avoided. They use ordinary people or celebrities rather than actors, saving on actors’ fees.[2] And they are popular. The ‘reality’ aspect of unscripted programming has a wide appeal to the television viewing public, because due to the participation of real people as opposed to actors, they provide a sense of voyeurism, expectation of the unexpected, and a level of genuine emotion that  scripted television or documentary[3] does  not.   Furthermore, formatted television shows come with a track record and often a pre-existing profile in the international television market due to the success of the original foreign version.  Chances are that a format that has succeeded in the United Kingdom (“UK”) or the United States (“US”) will, with a few cultural tweaks, succeed in other Western (or Eastern![4]) countries, because the format owner has got the recipe right.  Big Brother[5], the Idol[6] format, Who Wants to be a Millionaire[7], Strictly Come Dancing[8] – successful formats such as these can bring a format owner literally millions of dollars in format licence fees, production consultancy fees and ancillary income.[9]

 

However, the low production values and popularity of these shows has also led to a huge number of copycat formats.[10] In fact, considering the dubious legal status of formats as copyright works, it is surprising any producers pay licence fees at all.

 

So what is a television programme format? 

 

The New Shorter Oxford English Dictionary defines ‘format’ as, inter alia, “a style or manner of arrangement or procedure.”[11]

 

Formats can be divided into two distinct types of television programmes[12]:

 

1.                  Game, chat or quiz shows: in this type of show the format might be defined as the fixed and repeated elements, including the sequence of events, catchphrases, set and music) which form the dramatic structure of the programme, giving the programme its distinctive identity. Traditional examples of such shows include The Price is Right, Sale of the Century and Who Wants to be A Millionaire?, however these days shows such as Survivor and The Apprentice as well as those mentioned on the previous page,  as an evolution of unscripted game shows, also come under this heading.

2.                  Soaps and series: In soap operas and similar series fixed, repeated or predictable elements form the setting or background against which the action takes place. The fixed elements may include stock settings and characters (such as a hospital, doctors and nurses), whose response to each other and their environment provide the dramatic impetus for the programme. The repetition of fixed delineated characters is the essence of the work, and the plot is subsdiiary. Shortland Street is an example of such a series.

 

The second category of formats concerns programmes that will, in the course of development into a television programme, entail scripts, which will attract copyright protection as original dramatic works or original literary works. Format disputes rarely arise in fictional programmes such as these because substantial copying of the scripts without infringement is not possible.  Also, concepts such as plot and character have at times been protected by copyright. Therefore we are not so concerned with the second category for the purposes of this paper.  In contrast, due to the high degree of improvisation in the first category of formats, the copyright in the proposal, any scripts that exist or the actual programme are less likely to be infringed. We will be examining the extent of copyright protection afforded to this category of formats in detail.

 

 

 

 

 

I.                   FORMAT PROTECTION IN THE UNITED KINGDOM (“UK”) AND NEW ZEALAND (“NZ”)

 

The UK was the biggest exporter of formats in 2004, with 32% of all formatted shows having originally been broadcast in the UK.[13]  NZ broadcasters and production houses actively source foreign formats with a view to making local versions, and have had some success in exporting locally developed formats internationally.[14]  A burgeoning market in formats exists, despite the fact that case law in these countries has been reluctant to afford formats any copyright protection whatsoever. This paper deals with the law in the UK and NZ with regard to  formats in tandem, due to the similarity of the respective laws, but differences where relevant are pointed out.

 

Both the UK and NZ statutes have exhaustive lists of protected works.[15] If a particular item cannot be categorised within the listed definitions of copyright works it  is not protected under the Act. This means that for a television format to be protected, it must be found to subsist within an original work that has been substantially reproduced.

 

A. Originality

 

For a work to qualify for protection under copyright legislation, it must be original.  A work is not original, and will therefore not attract protection, if it is copied.[16]  If a work consists of original and unoriginal parts, the whole work may be classified as an original work.[17]

 

In New Zealand and the UK the threshold for originality is low, and only requires the copyright claimant to have expended labour in the creation of the work.[18]

 

It is trite law that copyright only subsists in the expression of a work rather than the underlying idea.  This rule has been developed in recognition that we must strike a balance between providing an incentive to create and the public interest in being able to use the ideas behind such creative works.  The tension is between the private domain of copyright protection and the economic interests of the copyright holder on the one hand, and the public domain of utilisation to ensure maximum public discourse, debate and social growth on the other.

 

But where is the boundary between the idea and the expression?  As Learned Hand J. has oft been quoted, “nobody has ever been able to fix that boundary, and nobody ever can”.[19] With regard to reality television formats it is particularly difficult.

 

B. Substantial Similarity

 

Historically copyright was first created to protect creators from others literally copying their works, or substantial parts of it.  However what constitutes a substantial part is not defined by statute. Over time the notion of copyright has broadened, however how to prove “substantial similarity” in the case of  non-literal reproduction it is more difficult to determine.

 

The test for infringement of copyright is as follows:

  1. the copy must be of either all or a substantial part of the  copyright work;
  2. there must be sufficient objective similarity between both works, or a substantial part of them; and
  3. the copyright work must be the source of the infringing work.[20]

 

The standard of appropriation required is as set out in Bleiman v News Media (Auckland) Ltd[21] in which Gault J stated:

 

It is perhaps more helpful to consider whether the effort, skill and judgment of the copyright owner in the making of his original work has been taken in the making of what appears, on a realistic assessment to be a reproduction of a substantial part.”

 

Overall it is a matter of fact and degree. A substantial part may be qualitatively important, but only quantitively amount to a small part of the work as a whole.[22]

 

C.  UK and NZ Case Law

 

Corelli v Gray[23] concerned an action for infringement by the performance of a dramatic sketch of the plaintiff’s copyright in a novel.  In the judgment the following statement was made which remains valid today:

 

Under the…Act, …no absolute monopoly is given to authors analogous to that conferred in inventors of patents – that is to say, if it could be shown as a matter of fact that two precisely similar works were in fact produced wholly independently of one another, I do not think that the author of that work that was published first would be entitled to restrain the publication by the other author of that author’s independent and original work. The right appears to be merely a negative right to prevent the appropriation of the labours of the author by another.”[24]

 

Therefore copyright protection is only available to works that have actually been copied. Coincidental reproduction does not equate to infringement.

 

In that case, despite the fact there was nothing very striking or original in either the novel or the sketch, it was stated “When it appeared that not merely one, two or three stock incidents had been used, but a combination of stock incidents, every one of which had been taken from the plaintiff’s book, it would be narrowing the law beyond what was reasonable to say that the plaintiff was not entitled to be protected.”[25]

 

However, the same judge in the following year held that a mere general similarity of plot without more could not amount to infringement.[26]  It is important to bear in mind that the level of originality in a work will determine the extent to which it is protected. If a work is not particularly original, the level of protection will therefore be slim.[27]

 

So the line between the idea of a plot and its expression is blurry, and very much depends on the level of detail reproduced.

 

Wilson v Broadcasting Corp of New Zealand[28] concerned a concept for a television series for children in which handicapped adolescents together performed heroic and magical acts in defeat of evil forces. The concept was presented to the defendant in a nine and a half page document and a 57 page feasibility study was later provided. Negotiations for the commission of the programme commenced, but were never completed.  Four years later the defendant produced and transmitted a television series, the themes, characters and format of which the plaintiff alleged were derived from their copyright material.

 

In the decision the court referred to the meaning of “originality” as discussed in University of London Press Ltd University Tutorial Press Ltd [29]:

 

The originality required relates to the expression of the thought. But the Act does not require that the expression must be in original or novel form, but that the work must not be copied from another work – that it should originate from the author”.[30]

 

It was held that the quintessential part of the feasibility study was a dramatic work within section 7 of the 1962 Act, and was not in the realm of unprotected ideas. Because all key components of the plaintiff’s format – including the plot line of two adolescent handicapped children using their stick and wheelchair as weapons to fight evil and do good – had been reproduced in the material form of the television programme, the plaintiff’s copyright was infringed.

 

It might be a simple enough idea…but the roots of the defendant’s programme go straight back to the plaintiff’s feasibility study…[31]

 

It was pointed out in this judgment however that ”A man may take part, or even the whole, of a copyright work, without being liable, if he adds to it a considerable amount of matter”.[32]

 

Though the above cases also provide useful ratios that can be applied when considering formats for reality television programming, they all concerned fictional dramatic works.

 

Green v Broadcasting Corp of New Zealand[33](“Green”) reflects the current NZ and UK position on formats for reality programmes and copyright, and due to the international discussion this case has provoked, it is helpful to examine the decision in detail.

 

The plaintiff, Hughie Green, was the author, producer and compere of a successful television talent quest produced and transmitted in the UK under the name ‘Opportunity Knocks  from the early 1960’s until 1978.  The defendant devised and commenced transmission of a similar talent show under the same name in New Zealand. The defendant’s show also reproduced other elements of the plaintiff’s, including the use of catch phrases, the use of a ‘clapometer’ and the use of sponsors to introduce competitors. Green sued for breach of copyright in the title, the scripts and the dramatic format of the programme[34]and for passing off. 

 

Court of Appeal Decision

 

On appeal Green accepted the lower courts inevitable ruling there was no copyright in the title of the programme, due to existing decisive case law[35]. Green lost the passing off claim as he failed to show any protectable good will or reputation in NZ.  The court was divided on the question of infringement of copyright in a dramatic work.  No written scripts were produced, however Green gave evidence to prove that these had existed, and had included the title, various catch-phrases, the general order of appearances and happenings and the clapometer.  Somers J and Casey J agreed that Green’s scripts could not support a claim of copyright in a dramatic work, because they could not themselves be acted or performed, and were no more than a “general scheme for entertainment”.[36]  Somers J was of the opinion there could not be a claim for copyright in a format which is not either a dramatic or literary work itself, or perhaps a combination of both.  Casey J. was of the view that the protection of a format could not be brought within the framework of the Act to prevent appropriation of a basic concept underlying a series of changing dramatic works.

 

In regard to the scripts being a literary work, it was difficult for the court to come to any firm conclusions in the absence of the physical manifestation of them. It was concluded that “If the general idea which underlies or forms the basis of the work has alone been taken then there will be no infringement”, and that the scripts as they were inferred to be did nothing but express a general concept or idea, which could not be the subject of copyright protection. [37]

 

Gallen J disagreed with the majority. He was of the view that the real strength of Green’s case was not “from looking for any rather strained interpretation of the word “script”. It is to be found in his contention that he had produced a dramatic format which was entitled to protection”.[38]

 

Gallen J. suggested that if the combination of material on which the person seeking protection relied has a recognisable framework or structure and that framework is such as to impose a shape upon the other constituent parts of the show produced within it, then it would be contrary to the principles of copyright to deny such material protection.  Gallen J concluded that on the facts of the case Green was entitled to copyright protection in respect of the repetitive structure of his show.

 

Privy Council decision

 

The Privy Council decision is famed for its brevity. It upheld the Court of Appeal decision for the following reasons:

  1. the subject matter of the copyright claim in the dramatic format was lacking in certainty;
  2. a dramatic work must have sufficient unity to be capable of performance, and the features claimed as constituting the “format” of a television show, being unrelated to each other except as accessories to be used in the presentation of some other dramatic or musical performance, lack that essential characteristic”.[39]; and
  3. that the scripts did no more than express a general idea or concept and could not therefore be protected by copyright.[40]

 

The recent UK case Norowzian v Arks Ltd[41] (“Norowzian”)  recently affirmed the Privy Council’s  decision, stating that a dramatic work must have sufficient unity to be capable of performance.  The performance of the actor in the plaintiff’s film was not able to be performed due to the “jump-cutting” techniques used by the editor.  

 

The concept “unity of performance” has been criticised for being vague and overly subjective. Rose suggests that a more objective test such as “structured performance” would allow judges to apply a more fact based test similar to the manner in which literary and artistic works are assessed.[42] This approach would be potentially more favourable to creators of formats seeking copyright protection.

 

However in Norowzian  the court stated that whilst there was striking similarity between the filming and editing style of the  two films,  no copyright subsists in mere style or technique”.[43] This could arguably be said to extend to the technique used in structuring of a television programme. 

 

This view was given support in Celador Productions Ltd v Melville anor, in which similarities between two game shows were termed as “[no] more than the application of well known presentational techniques”.  The judge went on to say “What I have identified as similar elements are no more than elements of style or technique which, as the Court of Appeal held in Norowzian v Arks, when divorced from their context cannot give cause of action for breach of copyright.”[44] 

 

D.  UK and NZ Law – A Summary

 

Therefore to summarise, as the UK and NZ law stands, unlike formats and plots for fictional programmes[45], a format for an unscripted reality programme, whether recorded by way of bible or in an actual television programme,  will generally not have “sufficient unity of performance” to be classed as a dramatic work.

 

The only way to protect a format is to depend on the fact the actual programme is copyright, the name can be trademarked, and any scripts, set designs, stage designs, lighting designs  and music can all be protected by copyright.  Reliance can also be placed on the tort of passing off, section 9 of the Fair Trading Act[46], and where there has been a relationship of confidence, breach of confidence.  It is worth noting that today Green  may well have been decided differently as with the shrinking of the international television market, the plaintiff may well have been able to show reputation in NZ.

 

Format owners desirous of protection are well advised to record the details of their format in writing to create a literary or dramatic work. However in general, such a detailed document amounting to a dramatic work may not have been produced. Some of the format “bibles” that are the basis for format licences are only a few pages in length, and certainly would not meet the “sufficient unity of performance” test set out in Green. 

 

The other difficulty is that format copycats are canny enough to appreciate the status of the law in this area, and understand that as long as they do not copy the name of the source format and make a few changes to the programme formula and structure, they may well successfully avoid liability.[47]

 

II.                CANADA AND THE UNITED STATES

 

A.    The position in the United States (“US”)

 

The US is the single most important format market in terms of value.[48]

 

Section 102(a) of the US Copyright Act[49] provides that copyright protection subsists in “original works of authorship”. “Works of authorship” are not necessarily limited to the eight broad categories of works listed under section 102(a).[50]  These categories are “illustrative and not limitative” and do not exhaust the scope of the definition.[51] A flexible definition was intended that would neither “freeze the scope of copyrightable subject matter at the present stage of communications technology or…allow unlimited expansion into areas completely outside the present congressional intent.”[52]

 

Thus under the US Act it is possible to argue that a work which does not appear in the list in section 102(a) is nevertheless entitled to copyright protection.

 

However the House Committee Report on an earlier version of the US Act listed a number of works that would not necessarily fall within the scope of the provision, one of these being “formats and synopses of television series.”[53]

 

 

  1. Originality and substantial similarity

 

In contrast to the UK and NZ approach, the  US Supreme Court has held that for a work to be original there must be more than pure labour involved, and must involve at least a little creativity.[54]

 

Nichols v Universal Pictures Corp[55] (”Nichols”) concerned a playright’s claim that the copyright in his play had been infringed by a motion picture along similar plotlines. Whilst not directly on the point of  reality television formats, helpful principles have been derived from this judgment and subsequently held to apply.

 

Judge Learned Hand points out the difficulty in applying the “substantial similarity” test when dealing with indirect plagiarism, that is, when  the infringer does not copy a block of work, but instead lifts the abstract as a whole.  He states[56]:

 

Upon any work…a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the play is about, and at times consist only of its title; but there is a point in this series of abstractions where they are no longer protected since otherwise the playwright could prevent the use of his “ideas” to which, apart from their expression, his property is never extended.

 

He then goes onto say that in regard to where to draw the line between the idea and its expression:

 

We have to decide how much and while we are as aware as anyone of that the line, wherever drawn, will seem arbitrary, that is no excuse for not drawing it; it is a question such as courts must answer in nearly all cases.[57]

 

This has become known as the “abstractions test”, and has often been applied with reference to the overall “look and feel” of a source work and the derivative work.[58] However accepting an overly broad scope for protecting the total concept and feel has been recognised as having associated dangers. As Nimmer states succinctly, “The touchstone of “total concept and feel” threatens to subvert the very essence of copyright, namely, the protection of original expression. ‘Concepts’ are statutorily ineligible for copyright protection; for courts do advert to a works “total concept” as to the essence of its protectable character seems ill-advised to the extreme”. [59]

 

Taking into account such concerns,  the “abstractions test” was built upon in the US case Computer Associates International Inc v Altai Inc[60], in which the court devised a three step test to help distinguish ideas from expression.  This test has become known as the ‘abstraction-filtration-comparison test’ (the “Altai Test”), and the steps are as follow:

  1. Abstraction: Using Learned Hand J’s abstraction test as outlined above, the court must assess whether the similarity between works is simply one of ideas, or something more developed.
  2. Filtration: Once the court has ascertained similarity in the expression of a work, it must filter out non-copyrightable materials, including such elements which are dictated by efficiency or external constraints, and taken from the public domain.[61] Filtration includes applying the relevant limiting doctrines in the context of the particular medium involved, including the scènes-a-faire and merger doctrines. Scenes, situations, incidents, characters or events that flow naturally from an unprotectable themes, setting or basic plot premise are scènes-a-faire. The merger doctrine is when there are so few ways of expressing an idea that the idea and its corresponding expression have merged to become one and the same.[62]
  3. Comparison: compare what remains after the filtration process of the derivative work with the allegedly copied work. Whether any similarity is sufficiently substantial will be dictated by the scope of protection  that was defined using the filtration method outlined above.[63]

 

Whilst this test was devised in relation to copyright in software, it has since been applied more widely. Whilst not referred to explicitly in CBS[64] some of its key principles are applied.

 

  1. US Case Law

 

In Pelt v CBS Inc[65] it was held that the format similarities of the plaintiff’s and defendant’s television talk shows, including the use of an opening song, a moderator, audience participation etc. are all generic and unoriginal ideas and thus not protectable by copyright.

 

In CBS Broadcasting Inc v ABC, Inc (“CBS”)[66] the plaintiff was the producer of the extremely successful reality television show Survivor. It sued the defendant, alleging that the defendant’s show I’m a Celebrity Get Me Out of Here infringed the copyright in its format. 

 

Due to the lack of case law in the reality genre, the court referred to precedents regarding scripted and quasi-scripted programmes and other literary works.

 

Preska J. first emphasised the requirement to consider each programme as  a whole[67].

 

The court identified the “total concept and feel, theme, characters, plot, sequence, pace and setting[68] of each programme. The “total concept and feel” was distilled into two components, namely the tone and production values. 

 

After a lengthy comparison of the various elements of each programme, the court concluded the two programmes were substantially different in (inter alia) look and feel, setting, characters, plot and music.

 

Preska J summed up by stating:

 

I find that plaintiff is not likely to prove that a lay observer would consider the works as substantially similar to one another. In undertaking this analysis, I am cognisant of the Supreme Court’s admonition in Feist that copyright protection in a factual compilation is thin, and by analogy, that copyright protection in a compilation of ideas must be thin”.[69]

 

CBS has since been referred to as evidence that in the US television formats, rather than being precluded from meaningful copyright protection, shall be subject to the same copyright analysis applicable to shows in all other genres of television programming, and included when courts are considering the reproduction of other expression content  concepts such as “plot” and “character”. A plaintiff must first establish ownership of a copyright work, and then copying of the work’s protected elements amounting to improper appropriation.[70]

 

Whilst the Altai test is not explicitly referred to in the judgment, the tests’ elements are implicit in its rationale. The abstraction and comparison principles are clearly applied. The filtration doctrines are also used in the dismissal of the concept of a remote, inhospitable locale and a show host as too generic, and the feature of contestants having to eat worms in such a location as scènes-a-faire.

 

Preska J. stated “I’m particularly benefited from the parties educating me about the evolution of TV shows, that us, it is a continual process involving borrowing liberally from what has gone before.“[71]; a further acknowledgment that the borrowing television show concepts is an industry accepted practice that is legally permissible, within certain lenient parameters.

 

Therefore in the US copyright protection for formats in game shows and reality programmes is, as in NZ, arguably existent, but in reality almost impossible to obtain.

 

 

B. The position in Canada

 

The Canadian Copyright Act[72] is was enacted in 1921 as a substantial copy of the 1911 UK  copyright law, and underwent major amendments in 1931, 1988, and, more recently, in 1993 and 1994 as a result of the North American Free Trade Agreement and the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS”).

 

1. Originality and Substantial Similarity

 

Every original “literary, dramatic, musical and artistic work” is protected, whatever may be the mode or form of its expression.[73]  Like the UK  and NZ, and unlike the US, the definition of copyright works is exhaustive, therefore plaintiffs have attempted to class formats as “dramatic works” for the purpose of infringement claims.

 

There are conflicting authorities in Canada for what the standard for originality is; that is, whether, like in the UK and NZ it is purely labour[74], or whether originality requires evidence of skill and judgment as well as labour on the part of the author.[75]This distinction has relevance when determining the scope of protection afforded to formats.

 

There is authority in Canada that concepts and formats can qualify as dramatic works. In 1933 the format for a children’s radio sketch was protected  because the structure of the show was clearly worked out[76]. What constitutes a “substantial” reproduction of a submission or format is both a qualitative and quantitative exercise, taking into account “plot, themes, dialogue, mood, setting or scenes, pace, sequence and characters.” The standard to be applied is that whether “the average lay observer, at least one for whom the word is intended, would recognise the alleged copy as having been appropriated from the copyrighted work.”[77]

 

2.   Canadian Case Law

 

Hutton v Canadian Broadcasting Corp[78] (“Hutton”) is one of the few examples of a Canadian court having to consider alleged copyright infringement in respect of a unscripted television show format. The parties jointly co-produced a music programme featuring elements such as a host, hit countdown and music videos.  The plaintiff retained the copyright in it.  Several years after the cancellation of the show, the defendant produced a similar show using similar characteristics.

 

The court uses analysis similar to that prescribed by the Altai  test, firstly setting out the component parts of each programme, extracting those elements not protected (including scènes-a-faire) and finally undertaking a qualitative and quantitative measurement of the copying that has occurred.  Despite acknowledging the similarities between the show, the court found no infringement had occurred, because: (1) a large number of the similarities were found to be unprotected; and (2) the dramatic tone of the two shows were entirely different (not that this in itself is a barrier to a finding of infringement).

 

In addition to the holding that the nature or medium of expression was largely immaterial, the Court of Appeal, echoing the “look and feel” test used in CBS, stated “the requirement of substantive similarity must be apparent when viewing the works as a whole”.[79]

 

This case stated that though the components of the allegedly infringing work were unoriginal, the mere arrangement of such components was sufficient to meet the “originality” requirements of the Canadian Act. The court subscribed to the threshold of the “sweat of the brow” doctrine.

 

In Arbique v Gabriele[80] the plaintiffs had created a proposal for a television series involving re-enactments of famous criminal trials. The series included features such as a host, panel of experts, and telephone voting.   They submitted it to several broadcasters and production houses , including the one the defendant worked for, in the hope of a commission, but were met with rejections. A few years later a series was broadcast, written by the defendant.  The plaintiff sued the defendant for copyright infringement.

 

The court held no infringement had occurred, concluding that on analysis of the similarities and differences in the programmes there was no substantial similarity.

 

However this case has been criticised for being inconsistent with Hutton in that the court did not explicitly apply the filtration step. [81]

 

In the most recent Canadian recent case of Productions Avanti Ciné-Vidéo c. Favreau[82] the issue before the court was “what constitutes a substantial element of a dramatic work”. The court found that copyright subsisted not only in the characters featured in the fictional television series but also in the integrated expression of all elements comprising the show, and that infringement had occurred. The “copying” consisted of reproduction of visual and audio elements including costumes, mannerism, décor, opening presentation, all the quirks of language and characteristic expressions.[83] This does indicate that a sufficiently detailed reality format could still gain protection in Canada as a “dramatic work”.

 

So to summarise the Canadian position, dramatic formats are not precluded from copyright protection necessarily. However like UK and NZ law, due to the exhaustive definition of copyright works in the Canadian Copyright Act, a reality television format must firstly be capable of fitting within the definition of “dramatic work”, which can often be the stumbling block.

 

III.              GERMANY

 

Germany closely follows the US in its appetite for formatted shows.[84]

 

  1. Originality and Substantial Similarity

 

In many laws of the civil system, a general statement of protected categories is followed by a list of examples of protected works. The German Law of Copyright[85] follows this approach. Article 1 of the German Law states that authors of literary, scientific and artistic works shall enjoy protection for their works in accordance with the Law. Article 2(1) sets out a list of items which are in particular considered to constitute works within the meaning of Article 1: these include the traditional categories, with some extra items such as choreographic works and cinematographic works. Article 2(2) limits the scope of protection by stating that personal intellectual creations alone shall constitute works within the meaning of the law; that is only original works qualify for protection.

 

In an early case the plaintiff presented a choreographic and stage presentation based on Hieronymus Bosch’s painting “The Hay Waggon”, and recorded the presentation in words and sketches. It was held that the presentation constituted a personal intellectual creation within the meaning of article 2(2) of the 1965 Law. It was held it was not necessary that the work had to fit precisely into one of the categories of article 2(1) of the Law; these categories were merely illustrative.[86] On the face of it this bodes well for the creator’s of formats, as it avoids the need to attempt to artificially force the characteristics of a format into the traditional definitions of a literary or dramatic work.

 

2.  German Case Law

 

The Quizmaster[87] case concerned an alleged copyright infringement in the format of a television programme called the “Dalli Dalli” show.

 

The lower court took the view that there could exist copyright in the form and manner in which the material was collected and arranged, and that the programme had the required degree of creative originality to be protected as a language work under Art. 2(1).  The word format was not used, but the decision in effect granted protection to the show’s format.

 

However on appeal the Federal Court of Justice took a less favourable view, stating:

 

When entertainment programmes combine performances of music, songs, stage scenes, reports, interviews and activities involving announcements and show direction, there is invariably a lack of any form-giving unity…Thus only the individual performances in an entertainment programme can each have the character of a work in the particular case”.

 

This requirement for “form-giving unity” is echoed in the NZ Green decision.

 

In comparison, in relation to fictional works, German courts have accepted that original invented characters, setting and plot may be granted copyright protection:

 

In a stage work not only the actual version of the text or the immediate moulding of an idea are protected by copyright from being borrowed by a third party. The insertion of a particular idea into a plot may in itself be capable of copyright protection, independent from the actual formulation into words, just as the course of the action with its dramatic conflicts and climaxes, the arrangement of the acts and scenes, and the allocation of the roles of the actors and their characteristics may enjoy protection.”[88]

 

The recent case of L’Ecole des Fans [89] affirmed the court’s distinction between fictional works and unscripted reality based shows.  The plaintiff alleged the copyright in their format of a children’s television show was infringed. Similar aspects included target age group, a showmaster, children singing pre-prepared songs, parents in the audience, pop star appearances and gifts for the children at the end of the show. 

 

Until this case, protection of formats was mostly rejected owing to a lack of originality,  so format owners were hopeful that this case regarding a formerly unknown format would acknowledge that in some circumstances formats could gain copyright  protection.

 

The plaintiff did not claim infringement of the copyright of certain transmissions of the show, but rather of the general format of the show. Protection for the format of a TV show under the Copyright Act could be sought only if such a format was a protected work (“geschūztes Werk”) within the scope of Art. 2 of the Copyright Act. Whether or not a TV format constituted such a work was the decisive issue of the case.

 

The court stated it was important to draw a distinction between episodes of a TV series, which were characterised by a continuing plot creating a fictional world of its own and therefore linked by content, and TV shows, which were linked by elements of form.

 

A programme format was defined by the court as the totality of all its characteristic features which are capable of acting as a general mould shaping each single show. Such elements include the title, logo, sequence of events, specific way of presentation, certain participants, the use of key phrases, set design, and style and tone of shooting. The format enables an audience to easily identify each programme, irrespective of the varying content, as part of a series.

 

It was held that a work protected by copyright can only be the result of the creative conception of a particular subject or material, not a mere direction for the shaping of similar different subjects or materials, which are independent of its content, even if this would result in a particular achievement or performance.  The court found that a format is a tool which, even though it may be original, has no direct link with the created end product, and that copyright law can only protect the result of processing certain material, not its mere pattern of production. It was therefore held the format of a TV show did not constitute a protected work within the meaning of Art . 2. [90]

 

It is difficult to follow the court’s distinction between protected TV series with on-going plots and formatted television shows which remain unprotected, even though created with the same level of investment of financial, intellectual and creative resources.

 

Of all the jurisdictions we have discussed, despite its inclusive definition of works, Germany is the most clear cut in its rejection of a reality programme format as a copyright work.

 

IV.             WHAT ARE THE LIKELY CONSEQUENCES FOR THE LAW OF COPYRIGHT IF PROTECTION FOR FORMATS IS GRANTED?

 

Whilst not necessarily precluded, in practice copyright protection for reality television formats is scant to non-existent in all of the jurisdictions reviewed. This is due to the difficulty of firstly proving the existence of a copyright work (whether a format is a work in itself or a substantial part of an underlying copyright work), and secondly proving substantial reproduction of the “work”.

 

It is submitted the likely consequences for the law of copyright if protection for formats is granted is dependent upon the way such protection comes about.

 

A.  Protection by legislation

 

There was outrage in the international entertainment industry after the Green decision. In the UK there were proposals to protect format rights in the Broadcasting Act 1990, a Department of Trade and Industry consultation paper in 1994,  a draft Private Members Bill and a further consultation paper in 1996.

 

The draft bill, which was, not surprisingly, sponsored by broadcasters and production companies, provided for an amendment to the definition of “literary works” to include programme formats. A “programme format” was defined as “an outline scheme or plan for programmes intended to form a series or serial which is sufficiently individual that the programmes produced in accordance with it would be recognised as having been made from it”.[91]

 

The concern that was expressed was that any definition of format will  be likely to encompass very simple programming ideas, which would effectively mean that if the Bill were passed such ideas would be monopolised for the duration of the copyright. It was decided that to grant a format right would be a case where ideas rather than their expression would be protected.

 

This would certainly have been in contravention of the provisions of the Berne Convention, which grants protection to the expression of a literary work, rather than the idea of it.[92]

 

Futhermore, the bill was drafted so as to grant protection to formats prior to a programme actually being made.[93]

 

At the time of the Bill it was noted that another live issue was the potential introduction of a tort of unfair competition in the UK, and that perhaps unfair competition would give more appropriate protection.[94]

 

It is submitted that the refusal of the UK legislature to grant formats copyright status was the correct decision.  With the increasing trend towards globalisation, a country’s intellectual property law cannot be developed in a vacuum.   Under TRIPS, the principles of national treatment and automatic protection require signatories to accord to the nationals of other signatories the same protections as those available to their own nationals.[95] For countries that are net importers of formats such as NZ, it would seem foolish to offer copyright protection to format owners, when it will be its own citizens who will largely be the defendants, when we will not be able to protect our own formats off-shore.

 

 

B.  Protection pursuant to existing laws

 

As mentioned above, the decision of Green was received unhappily by format owners, and it has often been cited as evidence that no copyright protection will be given to formats per se.  Instead a format will be required to meet the traditional requirements of either a literary or a dramatic work.

 

However McDBridge and Lane rightly note that since the Green decision there has been a change in the legislative definition of “dramatic work”  in both the UK and NZ, which could have significant effect to the benefit of format owners.[96]  

 

In the NZ and UK predecessors to the current copyright statutes, “dramatic work” was defined as including “a choreographic work or entertainment in a dumb show if reduced to writing”(emphasis added).[97] 

 

Therefore for a subset of dramatic works, reducing the work to writing to gain copyright protection was essential.[98]

 

In contrast, in both current Acts, copyright is stated not to exist in a literary of dramatic work “unless and until it is recorded, in writing or otherwise.”[99] (emphasis added).

 

Therefore in order for copyright in a work to crystallise, there is no longer any need to prove written fixation in respect of any dramatic work. Recording by other means is now explicitly accepted as a mode of fixation. Therefore if a format of a television show has sufficient unity to allow repeat performance, and is recorded in some way that allows an audience (and the court) to recognise an identifiable pattern and structure, it is arguable that copyright protection  could be sought by virtue of it.

 

This would accord with Gallen J’s suggested interpretation of a “dramatic work” in Green. That is, if a dramatic format is sufficiently structured to be recognisable over a series, it should be protected. However if NZ was to alter its interpretation of what constitutes a dramatic work, for the same reasons as outlined in clause A above, it could be to the net detriment of NZ television producers. 

 

C.  Continued protection through contract and business etiquette

 

As mentioned in Part I of this paper, formats can be and are protected from copying in other ways.  People working on such television shows are often required to execute confidentiality agreements.  Their contracts may contain restraint of trade provisions. Format owners will trademark programme names. Therefore protection from breach of confidence, trademark legislation, as well as passing off, the Fair Trading Act and (where applicable) unfair competition be obtained.

 

Format agreements that are entered into between format owners and producers are actually hybrid documents which serve the dual purpose of licensing the format, and providing consultancy services from the format owner to the producer.  For the reasons outlined above, the format owner is selling a right to use a format that is arguably not legally protected in any event.  However, more importantly, what in fact the agreement does is franchise what IP does exist and provide know-how and expertise that otherwise would cost the producer in terms of development and trial and error. In simple terms, what they are buying is a recipe together with all the necessary ingredients.

 

Furthermore, in April 2000 the Format Recognition and Protection Association (“FRAPA”) was formed. Its aim is to ensure that  format rights are respected by the industry. It is no surprise that the association’s members include some of the world’s most successful format creators, producers, distributors and broadcasters.[100] It runs a format registration database and a mediation scheme. FRAPA is attempting to introduce acceptable business practices and conduct for fair competition, and acts as a lobby group for legal recognition of format rights.

 


 

 

CONCLUSION

 

Tarantino noted “It is difficult to stand on the shoulders of giants if those shoulders are clad by armoured spikes which discourage loitering”.[101]

 

Whilst few would argue that reality television formats are a genre that greatly benefit humanity and its progress, in their own unique way they are extremely culturally significant.[102]

 

It appears that all jurisdictions discussed implicitly recognise a difference between the level of protection granted to fictional works and unscripted reality programming. It is submitted this is because of the latter’s unscripted nature, it is to a larger extent out of the hands of the producer and more a creation of circumstance and chance.  

 

If we keep in mind that one of the aims of copyright is universally accepted to be to provide incentive to creators, it therefore follows that there is less reason to expand copyright to protect productions where the creator has less control over the content in the finished work. 

 

Furthermore, as pointed out in the Privy Council decision of Green, “The protection which copyright gives creates a monopoly and “there must be certainty in the subject matter of such monopoly in order to avoid injustice to the rest of the world.””[103] 

 

It is submitted that rather than extended copyright to protect such productions, the evolution of contractual arrangements and accepted business etiquette manages the international format market quite adequately.

 


 

BIBLIOGRAPHY

 

Cooper, Daniel, Similarity Between Television Series Results in Action for Copyright Infringement, (1999), 13 World Intellectual Property Report 147

 

Durie, Robyn, Programme Formats – Consultative Document Issued, E.I.P.R., 1994, 16(7), D183-184

 

Eickmeier, Frank and Von Have, Harro, Statutory Protection of Television Show Formats, Ent. L.R. 1998, 9(1), 9-15

 

Fiore and Rogoway, Reality Check, Los Angeles Lawyer, July-August 2005, http://www.agsk.com/Articles/74_Reality%20Check.pdf

 

Frankel and McLay, Intellectual Property in NZ, LexisNexis NZ Limited, 2002

 

Laddie, Prescott & Vitoria, ‘The Modern Law of Copyright & Designs’ (3rd Ed., Butterworths, London, 2000) and (Butterworths, London, 1980)

 

McDBridge and Lane, The Protection of Formats under English Law: Part I, Ent. L.R. 1990 1 (3), 96-102

 

Oxford University Press, New Shorter Oxford English Dictionary, 1973, 1993, New York,  Vol. 2

 

Pilny, Karl H, Germany: Trademarks – Protection of the Format of a TV Show, E.I.P.R. 2004, 2004, 26(7), N109-110

 

Stuckley-Clarke, Jennifer, Remedies for the Misappropriation of Creative Ideas, E.I.P.R. 1989, 11(9), 333-337

 

Tarantino, I’ve Got This Great Idea for a Show…” – Copyright Protection for Television Show and Motion Picture Concepts and Proposals, (2004) 17 IPJ  189

 

Vahrenwald, Arnold, Germany: Protectability of a Format – L’Ecole Des Fans, Ent. L.R. 2004, 15(1), N2

 

Vaver, David, Essentials of Canadian Law, Intellectual Property Law, Iwin Law, Ontario, 1997



[2] Celebrities will often be paid to be on such shows, however ordinary people are not paid anything at all.

[3] Documentaries are shot in a more objective style, hence there is less audience empathy and more detachment from on-screen events.

[4] Indian Idol has recently commenced production.

[5] A format owned by Endemol and originating in the UK, this format has been successfully licensed in (inter alia) the USA and Australia.

[6] A format owned by FremantleMedia and originating in the UK, this format has been successfully licensed in (inter alia) the USA. and Australia.

[7] A format owned by Celador and originating in the UK, this format has been successfully licensed in Australia.

[8] A format owned by BBC and originating in the UK, this format has been successfully licensed in the USA, Australia and New Zealand (under the name Dancing with the Stars), and has been credited with a resurgence in the popularity of ballroom dancing.

[9] For example telephone revenue, merchandising, publishing and overseas distribution sales of the finished programme.

[10] Idol and Popstars, Wife Swap and Trading Spouses, Super Nanny and Nanny 911, Little Angel and Demons to Darlings.

[11] Oxford University Press, 1973, 1993, New York,  Vol. 2

[12] McDBridge and Lane, The Protection of Formats under English Law: Part I, Ent. L.R. 1990 1 (3), 96-102 at 96

[14] Touchdown Productions Limited has recently sold the formats Total Recall and The Chair to several overseas countries. That said, NZ remains a net importer of formats.

[15] Section 1 of the Copyright, Designs and Patents Act 1988 (UK) and Section 14 of the NZ Copyright Act 1994

[16] Sections 1(1), 5(2), 6(6), 7(6), 8(2) of the Copyright, Designs and Patents Act 1988 (UK) and Section 14(2) Copyright Act 1994

[17] Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465

[18] Elanco Products Ltd v Mandops (Agrochemical Specialists) Ltd [1980] RPC 213 (EWCA) and

Bleiman v News Media (Auckland) Ltd [1994] 2 NZLR 673 at 679 (CA)

[19] 45 F 2d 119, 121 (2d Cir 1930)

[20] Wham-O MFG Co v Lincoln Industries [1984] 1 NZLR 641 (CA)

[21] [1994] 2 NZLR 673 at 679 (CA)

[22] Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 All ER 465 (HL)

[23] (1913) 29 TLR 570

[24] Ibid at 571. (in this case the plaintiff was successful due to substantial similarity).

[25] Ibid

[26] Rees v Melville (1914) Mac.G.Cop.Cas. 168

[27] Bonz Group (Pty) Ltd v Cooke [1994] 3 NZLR 216, 220

[28] [1990] 2 NZLR 565

[29] (1916) 2 Ch 601

[30] Ibid at 608-609

[31] Wilson v BCNZ 2 NZLR 565 at 572

[32] (1916) 2 Ch 601 at 606

[33] [1989] 3 NZLR 18 (PC)

[34] It should be noted Green was decided under the 1962 Act, which allowed a work to be both a literary and a dramatic work. Today, under the 1994 Act, the categories appear to be mutually exclusive.

[35] Francis Day and Hunter Ltd v Twentieth Century Fox Corporation Ltd [1940] AC 112 (PC)

[36] Green v Broadcasting Corp of New Zealand [1988] 2 NZLR 490 at 497

[37] Ibid at 498

[38] Green v Broadcasting Corp of New Zealand [1988] 2 NZLR 490 at 509.

[39] Green v Broadcasting Corp of New Zealand [1989] 3 NZLR 18 (PC)

[40] As Rose points out, this is legally incorrect because the scripts would have been protected as literary works, if a substantial amount had been copied.

[41] (No. 2) [2000] EMLR 67; Affirmed in TVNZ Ltd v Newmonitor Services Ltd [1994] 2 NZLR 91

 

[42] Rose, David, Format Rights: A Never-Ending Drama (Or Not), Ent. L.R. 1999, 10(6), 170-174 at 172

[43] Ibid at 368

[44] [2004] EWHC 2362 (CH) at para.82-83. The similarities were in the sets, lighting, background noise, cutting to the relations of contestants in the audience, the destruction of cheques and the use of a glass-sided box full of money.

[45] Corelli v Gray (1913) 29 TLR 570 and Wilson v BCNZ 2 NZLR 565

[46] 1986. Section 9 protects against misleading and deceptive conduct.

[47] Whilst an Australian case, Nine Films and Television Pty Ltd v Ninox Television Ltd [2005] FCA 1404 includes an interesting analysis of the comparisons and differences in two home makeover programmes, and concludes no substantial similarity existed.

[49] 17 U.S.C. 1976

[50] These are: (1) literary works; (2) musical works; (3) dramatic works; (4) pantomimes and choreographic works; (5) pictorial, graphic and sculptural works; (6) motiona pictures and other audio-visual works; (7) sound recordings; and (8) architectural works.

[51] H. Rep., p. 51.

[52] Ibid

[53] MB Nimmer, D Nimmer, Nimmer on Copyright (1997) Matthew Bender & Co Inc, USA, Vol 1, 2.03[A]

[54] Feist Publications Inc v Rural Telephone Service Co (1991) 499 US 340

[55] 45 F 2d 119 (2d Cir 1930)

[56] 45 F 2d 119, 121 (2d Cir 1930)

[57] Ibid at 122

[58] Knitwaves, 71 F 3d., 996 (1995). Concerned the use of squirrel and leaf patterns on sweaters. Competitor admitted it set out to create designs with the same “look and feel” as the plaintiff’s. Designs found to be substantially similar.

[59] Nimmer, Section 1303[A][1][c] [CHECK]

[60] 982 F 2d 693 (2nd Cir 1992)

[61] Ibid at 708 per Walker J

[62] These doctrines are not without their critics. See Tarantino, I’ve Got This Great Idea for a Show… – Copyright Protection for Television Show and Motion Picture Concepts and Proposals, 17 IPJ  [date] at 202.

[63] Sony Pictures Entertainment Limited Inc v Fireworks Entertainment  Group Inc, 156 F. Supp. 2d. 1148, 1158 (CD Cal 2001). The plaintiff owned the copyright in the motion picture “Zorro” and the associated comic book. It brought an action against the producer of the television series “Queen of Swords”.it was held that “It is only copying of copyrightable elements of a plaintiff’s work that is protected under the Federal Copyright Act. The mere fact that a work is copyrighted does not mean that every element of the work may be protected. Originality remains the sine qua non of copyright; accordingly, copyright protection may extend only to those components of a work that are original to the author”. (at 1156)

[64] Referred to in detail below.

[65] 30 U.S.P.Q. 2d 1639 (C.D. Calif. 1993)

[66] 2003, U.S. Dist. LEXIS  20258

[67] Ibid at 40

[68] Ibid at 14

[69] Ibid at 42

[70] Fiore and Rogoway, Reality Check, Los Angeles Lawyer, July-August 2005, 34 http://www.agsk.com/Articles/74_Reality%20Check.pdf

[71] 2003, U.S. Dist. LEXIS  20258 at 1

[72] R.S.C. 1985

[73] Ibid, s. 5(1), s. 2

[74] CCH Canadian ltd v Law Society of Upper Canada (2002) 4 FCD 47

[75] Tele-Direct (Publications) Inc v American Business Information Inc [1996] 3 FCD 6 (FC). 

[76] Kantel v Grant [1933] Ex CR 84

[77] Preston v 20th Century Fox Canada Ltd (1990), 22 C.P.R. (3d) 242

[78] (1989), 102 A.R. 6 at 39 (Q.B.), affirmed (1992) 120 A.R. 291 (C.A.)

[79] Ibid at 48

[80] (1998), [1998] A.Q. No. 3794

[81] Tarantino, I’ve Got This Great Idea for a Show…” – Copyright Protection for Television Show and Motion Picture Concepts and Proposals, (2004) 17 IPJ  189 at 196 and 211

[82] (1999) 1 CPR (4th) 129

[83] Ibid at 146-147

[85] Urheberrechtsgesetz (UrgG)

[86] BGH, February 1985; (1985) GRUR 529, referred to in Sterling, J.A.L.,World Copyright Law, Sweet and Maxwell, London, 1989

[87] Berlin Court of Appeal, FuR 1979, 150; prior to appeal case Federal Court of Justice, NJW 1981, 2055 Quizmaster.

[88] Federal Court of Justice, GRUR 1959, 379 (as referred to in Eickmeier, Frank and Von Have, Harro, Statutory Protection of Television Show Formats, Ent. L.R. 1998, 9(1), 9-15, 11)

[89] Bundesgerichtshof (L’Ecole des Fans) (I ZR 176/01) (Unreported, June 26, 2003); E.I.P.R. 2004, 26(7), N109-110

[90] The plaintiff also applied for an injunction under the Act against Unfair Competition (“Gesetz gegen den unlauteren Wettbewerb”). This was refused, because there was no direct competition between the German and French television stations. However in some circumstances this may well be achievable. Eickmeier, Frank and Von Have, Harro, Statutory Protection of Television Show Formats, Ent. L.R. 1998, 9(1), 9-15 at 15

[91] Durie, Robyn, Programme Formats – Consultative Document Issued, E.I.P.R., 1994, 16(7), D183-184

[92] Article 2(1)

[93] It is submitted breach of confidence would be a better remedy for copying of programme formats before they had been made public.

[94] E.I.P.R. 1994 16(7), D183-184

[95] TRIPS, article 3

[96] McDBridge and Lane, The Protection of Formats under English Law: Part I, Ent. L.R. 1990 1 (3), 96-102 at 100

[97] Section 48 of the UK 1956 Act and section [  ] of the NZ 1962 Act

[98] CHECK This was not raised as a potential stumbling block in Green.

[99] Section 15 of the NZ Act and Section 3(2) of the UK Act

[100] Including FremantleMedia, Distraction Formats, 12 Yard, Granada, Target Entertainment and Zodiak Television Group.

[101] Tarantino, I’ve Got This Great Idea for a Show…” – Copyright Protection for Television Show and Motion Picture Concepts and Proposals, (2004) 17 IPJ 189 at 197

p. 198

[102] Indeed, at their respective times, neither Shakespeare nor Aristophanes were regarded as high-brow.

[103] [1989] 2 All ER 1056, quoting Tate v Fullbrook [1908] 1 KB 821