Anita Gogia is an IPilogue Writer and a 2L JD Candidate at Osgoode Hall Law School.
On June 8th 2022, Deputy High Court Judge John Kimbell released his decision separating copyright in literary and dramatic characters. For the first time in the UK, a fictional character (Derek ‘Del Boy’ Trotter and others from Only Fools and Horses (“OFAH”) was recognized as an independent copyrighted work.
Judge Kimbell ruled in favour of Shazam in the case between Shazam Productions Ltd. and Only Fools The Dining Experience Ltd (among other defendants). John Sullivan is the creator and writer of OFAH, a successful and well-loved TV show. The claimant, Shazam, is a company owned and controlled by John Sullivan’s family. Sullivan’s family has said that it took Sullivan decades of “personal experience, skill and hard graft to create and develop an imaginary world rich in memorable characters” warranting copyright.
Shazam brought action against the defendants in 2019 following two rounds of cease and desist letters to prevent their continued performance of an unlicensed interactive dining show. The defendants opened Only Fools The (cushty) Dining Experience in 2018 where the performers used the “appearance, mannerisms, voices and catchphrases” of various characters from OFAH. The defendants denied that they were passing off OFAH characters on the basis that their show is seen as an unofficial tribute..
Shazam claimed copyright for the scripts for each episode, the body of scripts taken as a whole which collectively create the OFAH world, the characters, the lyrics and opening theme song of OFAH, and particularly the character of Del Boy and all his specific characteristics.
Notably, in his decision, Judge Kimbell said that he did not accept that “the nature of OFDE was so removed from OFAH as to make it obvious that it was not associated with OFAH”.
Copyright of scripts
Judge Kimbell concluded that each script was protected as a dramatic work and not a literary work (as copyrighted works cannot be both per UK law). Dramatic work is defined by CDPA as a “work of action, with or without words or music, which is capable of being performed before an audience.”. He also considered Martin v Kogan, where courts held that a screenplay is a dramatic work, making it a “small step” to conclude that a script is also dramatic work.
Copyright of scripts as a whole
Judge Kimbell also concluded that the scripts taken as a whole are not literary or dramatic work. Unlike literary works, where each of the individual chapters and the final completed body are separate copyrightable works, there is no proof that Sullivan conceived the ending of the OFAH saga or intended the scripts to be regarded as a “unitary whole.” . Moreover, each script was intended to be performed, filmed, and broadcasted individually rather than ever “intended to be performed continuously one after the other”.
Character of Del Boy
Judge Kimbell concluded that the character of Del Boy satisfies both the originality and identifiability conditions of the test for copyright protection under EU law as the character is original and precisely identifiable to third parties. With this conclusion, Judge Kimbell found that Del Boy is “properly subsumed” under literary work per the UK list of protected works.
Infringement of protected works
Judge Kimbell considered four basic legal principles listed in paragraph 125 of the decision. He also considered the two-step infringement test from Designers Guild listed in paragraph 126. He concluded that the evidence of infringement is “overwhelming and obvious”. The defendants claimed that their script of OFDE was fair dealing for parody or pastiche but Judge Kimbell was not satisfied to accept this defence when considering the three-step test from ‘the Info Soc Directive’ (paragraph 146-147). Judge Kimbell also considered the meaning of parody per case law. , Interestingly, he said that it is “unusual for parodies to take comic works as a subject”. Judge Kimbell concluded that the defendants’ use of the claimant’s work does not qualify fair dealing because it failed step 2-3 of the three step test.
For the passing off claims, Judge Kimbell considered the claimant’s arguments in proving goodwill, misrepresentation leading to deception or likelihood of deception, and damage. Judge Kimbell accepted that significant goodwill was built and attached to OFAH. He further accepted that the name of the interactive show was liable to “confuse and mislead”. Particularly, he mentioned that misrepresentation could have been avoided if the disclaimer in the terms and conditions page was more prominent, and that the disclaimer in fact proved the defendants were “aware of the potential for confusion”. Finally, Judge Kimbell accepted that some members of the public would be diverted from purchasing tickets for the Musical by the existence of OFDE (proving likelihood of diversion of trade/damage).
This decision provides added judicial guidance in the UK for defences to copyright infringement for purposes of parody and pastiche. Further, the decision clarifies separation of copyright protection for literary and dramatic works. This decision may open the flood gates for more copyright infringement claims for characters used without permission on different forms of media, hence creatives should take precautions when using characters from other works in their media productions.