Clifford Chance

Shazam v Only Fools The Dining Experience and Others [2022] EWHC 1379 (IPEC)

Background

Only Fools and Horses (OFAH) was a popular British TV series that aired between 1981 and 1991. It's main character, Derek Trotter, aka "Del Boy", is iconic to the British public and known for catchphrases such as "lovely jubbly" and "cushty".

In 2018, Only Fools The Dining Experience Ltd and others launched an interactive dining experience based on the characters from OFAH, entitled "Only Fools The (cushty) Dining Experience" (OFDE). As part of the experience, a number of actors portray the most famous OFAH characters in the new context of a pub quiz.

After sending a pre-action warning letter, Shazam Productions Ltd, the company that controls the intellectual property rights associated with OFAH and its creator, issued proceedings against the defendants, alleging multiple counts of copyright infringement and passing off.

The judgment focussed on whether copyright subsisted and was infringed in the scripts of individual episodes of OFAH, the body of scripts as a whole and the "world" of OFAH, and the character Del Boy, dealing with issues that have received relatively little attention by the English Courts to date.

Key Issues

The Judge considered six key issues in determining the outcome of this copyright dispute, including:

1.     Are the following literary works for the purposes of copyright law?

            a.     The body of scripts for OFAH and the imaginary "world" of OFAH

            b.     The character "Del Boy"

2.     Are the following dramatic works for the purposes of copyright law?

            a.     The body of scripts for OFAH and the imaginary "world" of OFAH

            b.     Each individual OFAH script

3.     The extent of the similarities between the OFAH works (which includes the scripts, characters and theme song) and the September 2019 OFDE script.

4.     The extent to which any such similarities were the result of copying from the OFAH works.

5.     Whether those similarities which were the result of copying amount either individually or collectively to substantial parts of the OFAH works and whether the September 2019 OFDE script infringed those works.

6.     Whether the defences of parody or pastiche under s30A of the Copyright, Designs and Patents Act 1988 (CDPA) are applicable.

Judgment

In considering whether the television scrips amounted to literary or dramatic works, the Judge held that whilst the entire body of works were not considered to be a copyright work (whether literary or dramatic), each individual OFAH script was a dramatic work within the meaning of s3(1) CDPA.

What was more controversial was the Judge's decision about whether copyright subsisted in the character of Del Boy, in relation to which he noted there is little by way of precedent under English law. The Judge therefore conducted a first principles analysis to determine whether Del Boy met the requirements for copyright subsistence under both EU and English law (as the initial proceedings began prior to Brexit).

Noting that it was "common ground" to start by asking whether the alleged work qualifies as a work under EU law before asking whether it can be accommodated within one of the CDPA's list of protected works, the Judge began by applying the test in Cofemel (C683/17 Cofemel v G-Star Raw [2020] ECDR 9). He determined that the test was satisfied as (i) Del Boy is a fully rounded, complex character and original creation, and (ii) the character of Del Boy was clearly and precisely identifiable to third parties in the OFAH scripts, even if they had never seen the TV broadcasts. It was therefore decided that the character of Del Boy is protected under EU copyright law, which follows a similar approach to that taken in relation to Pippi Longstocking in Germany (Re Pippi Longstocking [2014] ECC 27) and Sherlock Holmes in the USA (Kelly v Cinema Houses Ltd [1928-35] MacG.C.C. 362).

As the test set out in Cofemel was met, the Judge stated that he had "no hesitation in holding that if Del Boy is a protectable work under EU law, he can be properly subsumed under the concept of a literary work for the purposes of the closed list of protected English works". Del Boy is therefore a protectable work under s1(1) CDPA, a decision that is the first of its kind in the English Courts.

Once this was established, the Judge concluded that the evidence of infringement was "overwhelming and obvious". A large number of jokes, themes and catchphrases from the OFAH scripts had been reproduced in the OFDE script and the character of Del Boy as he appeared in OFDE was intended to be a "pitch-perfect" live version of OFAH's Del Boy. It was therefore found that this was a clear case of extensive indirect copyright of the scripts with deep knowledge of the OFAH broadcasts.  

In response to the copyright infringement claims, the defendants sought to rely on the statutory defences of fair dealing for the purposes of parody and pastiche under s30A CDPA, particularly relying on the defence for pastiche.

The Judge identified the key components of pastiche as follows:

• use that imitates the style of another work; or
• a medley of a number of pre-existing works.

In both of the above cases, as with parody, the product must be noticeably different from the original work.

The Judge held that OFDE did not imitate the style of OFAH, but instead involved the wholesale borrowing of its content. For this reason, fair dealing did not apply, as the defendants took from the OFAH scripts both qualitatively and quantitatively. The Judge decided that (i) ODFE was made simply to entertain and did not attract any of the defences available under CDPA, (ii) OFDE competed with OFAH's own and legitimate commercial exploitation of the OFAH works, including their musical production which launched six months after OFDE.

The claimant therefore succeeded in its claims for copyright infringement and passing off.

Comment

Shazam v Only Fools The Dining Experience and Others is the first time than an English Court has ruled that a television character can be protected as a literary work in this manner and this judgment could have wide reaching implications upon how characters from shows or other works are used in the future.

The Judge's remarks in relation to the application of Cofemel followed by consideration of the CDPA are significant as it is an apparent reconciliation of two approaches.

It remains to be seen whether the case will be appealed or whether this will prompt a wave of new infringement cases by copyright holders who feel their characters have been infringed by third parties. For now, this judgment provides an example for how the legal defences for parody and pastiche should be construed, something that has not been dealt with often in the English Courts.