TV formats for non-scripted content have long been regarded in the industry as important licensable commodities, making up a significant part of the international TV market. However, the fact that there is an accepted industry practice of licensing formats does not necessarily reflect the legal protection available for them. The protection of formats is crucial for anyone involved in the development, production, commissioning and licensing of content. Nevertheless, the law has never been particularly clear on how you can protect TV formats, if at all.
There are two main reasons why this topic is particularly relevant today. Firstly, the economic headwinds that the industry is facing could lead to the commissioning of more non-scripted content as a cheaper alternative to high-end scripted content. Secondly, the Intellectual Property Enterprise Court of the High Court of England & Wales recently heard a case on the alleged infringement of copyright in a non-scripted TV format. This case provides an opportunity to examine whether the latest case law offers any additional protection for TV formats.
The existing position
In the UK, there is no specific legal right that gives protection to TV formats. Instead, a format owner must seek to protect their format through a patchwork of different forms of intellectual property (IP). The main areas of protection for TV formats are a combination of copyright, trademarks and design rights.
- Copyright Protection: A format owner may rely on copyright protection for individual aspects of the format. The Copyright Designs and Patents Act 1988 (CDPA) protects certain categories of works. A TV format is not itself a distinct category of work, but individual aspects of the format could be protected. Non-scripted content, by definition, lacks a script, making it challenging to protect as a dramatic work. However, elements such as treatments, storyboards, graphics, and theme tunes may be protected if they meet the relevant requirements.
For copyright to subsist in the UK, a work must:- Fall into one of the protected categories of work;
- Qualify for protection based on the nationality of the author or place of first publication;
- The term of copyright must not have expired; and
- Literary, dramatic, musical, or artistic works must be original and fixated in some form.
- Trademark Protection: Names, logos, and other symbols associated with TV programmes can be registered as trademarks in relation to various goods and services, including television broadcasting and related merchandise.
- Design Rights: Set designs can be protected as registered designs. This is particularly applicable for shows such as quiz shows.
- Passing Off: If a copycat version of a TV format is produced, the format owner might also be able to claim for passing off by proving goodwill or reputation attached to the TV format, misrepresentation by the copycat, and damage to the format owner's goodwill.
Case Overview: Joshua Rinkoff v Baby Cow Productions Ltd
This case involved two TV shows: ‘Shambles’ and ‘Live at the Moth Club’.
Joshua Rinkoff created a digital version of a live comedy night called 'Shambles' in 2013, showcasing stand-up comedy combined with behind-the-scenes narrative. Six episodes were uploaded to YouTube, and Wildseed Productions financed and produced six more episodes in 2015.
Rinkoff alleged copyright infringement by Baby Cow Productions' ‘Live at the Moth Club’, pointing out similarities in structure, characters and plotlines. He claimed his show was a dramatic work under the CDPA.
Baby Cow denied copying and argued that the format was not protectable as a dramatic work and lacked sufficient precision and objectivity to be protected as a copyright work.
The court focused on whether the format of Shambles was protected as a dramatic work. The judgment noted that no UK case had succeeded in claiming a format as a dramatic work, and therefore referred to the leading textbook, Copinger and Skone James on Copyright on this issue. Copinger states that two conditions must be satisfied for a format to be protected as a dramatic work:
- There must be clearly identified features distinguishing the show from others of a similar type.
- There must be a coherent framework connecting these features, enabling the show to be reproduced in recognisable form.
The judge found that the eight features identified by Rinkoff in his Amended Particulars of Claim were not present in every episode of Shambles, and even if all eight features were present, they were not connected in a coherent framework and did not set out a formula for repeated application.
The court also concluded that, even if the form of Shambles was protected as a dramatic work, Live at the Moth Club did not infringe Rinkoff's format as there was not enough evidence to prove copying.
Comment
This case, therefore, reinforced previous case law and emphasised the high bar which needs to be met for a TV format to be protected as a dramatic work under copyright, whilst also recognising that this is indeed possible.
Practical Tips
Based on this ruling, clients within the sector should consider implementing the following as best practice to adequately protect their TV formats:
- Create a Format Bible: Keep a written record of the distinctive features of the format, including detailed minutes of meetings, documentation, and emails.
- Ensure Distinctive Features in Each Episode: Document key features in the format bible and ensure they are present in every episode of the format.
- Use NDAs: Where possible, enter into non-disclosure agreements with potential collaborators before sharing format details to ensure confidentiality.
- Ownership of Rights: Track the development of the format and acquire rights in all third-party contributions to ensure that all rights in the format sit in one place.
- Trademark and Design Rights: Consider registering titles, logos, catchphrases, and set designs as trademarks and design rights, balancing the costs of doing so against the likely territories for marketing and selling the format.
Following these principles can help format owners to better protect their ideas.
Article co-authored by Lisa Franco, Trainee Solicitor at CMS
