In Shazam v Only Fools The Dining Experience and Others, we saw how the Court approaches fictional characters as self-standing copyright works beyond the stories they appear in, and that the guidance in the CJEU decision of Cofemel will be followed. We learnt a character can be an original work, and characters can be literary works on their own. This is an interesting expansion of what is protected and has consequences for many businesses that use well known ‘characters’ in promotions and merchandise.
Only Fools and Horses (‘OFAH’) was an extremely popular BBC television series that ran between 1981 and 1991 (with Christmas specials running until 2003) and comprised a total of 64 episodes. It starred David Jason as Derek ‘Del Boy’ Trotter, an ambitious market trader, and has inspired other works, such as the 2019 ‘Only Fools and Horses The Musical’ in London’s Theatre Royal.
In 2018, the Defendants launched an interactive dining show called the ‘Only Fools The (Cushty) Dining Experience’ (‘OFDE’). In OFDE, actors played various OFAH characters from the original series, and provided an interactive pub quiz.
The Claimant in this case, Shazam, is a company owned and operated by the estate of John Sullivan, the author of the scripts of the original OFAH series. The Claimant accused the Defendants of infringing the copyright in OFAH by producing OFDE. According to the Claimant, copyright subsisted not only in the OFAH scripts, and the lyrics/music in the opening theme song, but also in the OFAH characters themselves.
The Claimants argued that the infringements in relation to Del Boy as a character were with regard to:
- his use of sales patter with replicated phrases;
- his use of French to try to convey an air of sophistication;
- his eternal optimism;
- his involvement in dodgy schemes; and
- his making sacrifices for Rodney.
Sitting as a Deputy High Court Judge, John Kimbell Q.C. had to decide whether the character of Del Boy, per se, could be protected as a literary or dramatic work, and if so, whether there had been a substantive copying and whether the defences under s30A of the CDPA 1988 (parody or pastiche) could be invoked.
Consideration of First Principles
The Copyright, Designs and Patents Act 1988 (CDPA) contains a closed list of works that are protectable by copyright. It also states that a work cannot be a literary work and a dramatic work at the same time.
As the judge said:
‘[T]here is no English case law in which [copyright in a fictional character per se] has arisen for decision, still less a case in which copyright has been held to subsist in a character. In those circumstances, in my judgement, it is necessary to approach the matter from first principles.’
The judge took the ‘first principles’ approach as set out in Marleasing, as affirmed by the Court of Appeal in Vodafone 2. Applying this approach meant that, under EU law as confirmed in Cofemel, there are two cumulative conditions that had to be met to decide whether the Del Boy character was a work protectable by copyright:
‘First, … that there exists an original subject matter, in the sense of being the author’s own intellectual creation.
“Second, classification as a work is reserved to the elements that are the expression of such creation.’
Applying this two stage test, Kimbell Q.C. found that ‘Del Boy as a character is an original creation of John Sullivan which is the expression of his own free and creative choices’ and that ‘the character of Del Boy is clearly and precisely identifiable to third parties in the OFAH Scripts.’
Kimbell Q.C., having found that Del Boy is an original work for the purposes of the first stage of the Cofemel test, commented that:
“I was initially concerned that it might be impossible to separate or block out the contribution of Sir David Jason [the actor who played Del Boy] to the character, in particular, his tone of voice, facial expressions, mannerisms and physical presence from what is to be found in the Scripts. However, having at the parties’ invitation watched three episodes of OFAH (with the relevant script in hand) what was striking to me is just how much of Del Boy is in the script. This is true not only in terms of his appearance but also his character traits and relationship with the other characters.”
He then found:
‘[T]he features of Del Boy relied upon by the Claimant as constituting his character are … precisely and objectively discernible [sic] in the Scripts.’
Kimbell Q.C. therefore concluded that the character of Del Boy satisfies the two stage test set out in Cofemel and is therefore a work which is protected under EU copyright law.
This decision is consistent with the German Federal Court’s decision in the Pippi Longstocking case, and a decision of the 7th Circuit Court of Appeals in the USA with regard to Sherlock Holmes. The judge (‘without hesitation’) found that if Del Boy per se is a protectable work under EU law, then he can be subsumed under the concept of a literary work for the purposes of the closed list of protected English works. Kimbell Q.C. also found that ‘the conclusion that Del Boy as a character as he appears in the Scripts is a literary work does not require any strained interpretation of the CDPA.’
Infringement in this Case
Having concluded that Del Boy per se was protected by copyright, the judge then went to on to decide whether OFDE infringed that character. Such infringement required reproducing of the work in any material form, either as a whole or as a substantial part. Kimbell Q.C. applied the case of Designers Guild v Williams, which states that deciding whether a substantial part of the work has been copied is a qualitative rather than a quantitative assessment.
Having considered the requirements for copyright infringement, Kimbell Q.C. found that ‘the evidence of infringement by the Defendants is overwhelming and obvious’ and that ‘the commonality between Del Boy of the [OFDE] Script and the Del Boy in the [OFAH] Scripts is almost total. The copying was far more than the substantial copying required for a finding of infringement.’ He found that OFDE infringed the character of Del Boy from OFAH via indirect copying (i.e. OFDE did not see the OFAH Scripts but rather had copied from the episodes of OFAH that were broadcast on television). Therefore, the only question was whether the Defendants could rely on the defences of fair dealing for the purposes of parody or pastiche under s30A CDPA.
Following the CJEU decision in Deckmyn (in which Mr. Deckmyn produced a drawing that resembled a comic book cover and used it for political purposes), Kimbell Q.C. found that a parody ‘must have a target [and] there must be some critical distance between the new work and the original work.’
He also found that ‘Works of parody can only facilitate dialogue or give rise to artistic confrontation if they in some sense themselves constitute an expression of opinion expressed as humour or mockery … mere imitation (of a work of comedy) is not enough to constitute parody.’ As OFDE did not provide any expression of opinion but rather just imitated OFAH, OFDE was not able to rely on s30A CDPA with regard to parody.
With regard to pastiche, Kimbell Q.C. found that the essential ingredients for pastiche within the meaning of s30A are that: ‘a. The use imitates the style of another work or b. It is an assemblage (medley) of a number of pre-existing works.’ In this case, he found that ‘the use made of the characters, their backstories, jokes and catchphrases is not for the purpose of pastiche within the meaning of section 30A.’ This was because the use made of Del Boy involved a ‘wholesale borrowing of content. It is close [sic] to reproduction by adaptation than pastiche.’
The judge found that even if OFDE did involve the use of copyright material for the purposes of parody or pastiche, that use did not qualify as fair dealing due to the extensiveness of the copying and the lack of anything new or inventive when it came to the OFAH characters. Therefore, the claims for copyright infringement and passing off succeeded. The judge also noted that some fans of OFAH would be diverted from purchasing tickets for the OFAH Musical by the existence of OFDE. Therefore, the Claimant would have suffered damage, for which it would need to be compensated.
Students of copyright may recall being told that ‘copyright protects form rather than ideas’ – hence why something has to be (inter alia) a literary or dramatic work to gain protection (i.e. part of the ‘closed list’ referred to above). There can be no preventing someone from producing a crime novel, but you can protect a particular type of such like a Sherlock Holmes novel. Kimbell Q.C. has in this decision taken us beyond that and has found that the concept, the ‘idea,’ of a fictional character can itself be protected by copyright. While the judge has followed the CJEU-mandated test to determine copyright subsistence, that is still a marked change in English law. The character of ‘Del Boy’ is particularly unique and perhaps a less distinctive character might not attract protection, but fundamentally this gives a new level of protection to those who produce literary works.
Unlike HHJ Hacon in Response Clothing, who first reviewed Cofemel and allowed its approach to expand copyright for fabric design, Kimbell Q.C. did not question the closed list of categories under the CDPA. Yet post-Cofemel, it appears the only criteria for copyright protection to arise is originality, and if so then there is an implication that exhaustive lists of protectable subject matter, such as that contained in the CDPA, are also incompatible with EU law. This is perhaps an area ripe for a post-Brexit interpretation, but that will require the Court of Appeal to review and for them to look past the restrictive view of Vos. LJ. the MR in TuneIn v Warner music et al where he said that “It would be undesirable for one nation to depart from the CJEU’s approach without an exceptionally good reason” – see our article here.
However, this decision indicates that the question is not one of formal categorisation (i.e. whether the object is a literary or dramatic work) but rather whether the ‘object’ (the character of Del Boy per se can be considered an object) could be regarded as an ‘original work’ in the first place. If so within literary works there will be a myriad of characters enjoying their own stand alone protection.
As mentioned above, this case does not rely on any English case law on the primary point of whether the idea of Del Boy per se can be protected as a copyright work under English law, and draws upon first principles to decide whether the character could be protected under EU law. Having decided that the character could be protected by copyright under EU law, Kimbell Q.C. found (with no explanation as to why this should be) that that automatically meant it should also be protected under English law, and attempted to fit the language of the CDPA to his decision.
As this is only a first instance decision, this will be an interesting area to watch, especially as the government considers where to move away from legacy EU laws. In the near term this does mean businesses that seek to parody well known characters must be cautious lest they infringe these new stand alone rights. It also suggests we need an appeal court to consider where this leaves the CDPA closed list of works, and whether Kimbell Q.C. was correct to find that if a work would be protected under EU law, then as a matter of law it can be protected under the CDPA in England, no matter what type of work it is.