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June 13, 2022
Get in there, Rodders! In a precedent-making decision, the Intellectual Property Enterprise Court ("IPEC") has just decided that the fictional character Del Boy Trotter is protected by literary copyright. The decision, handed down last week, stated that Del Boy (as created by John Sullivan) had an objectively present and clearly identifiable character, inclusive of his mannerisms, traits, catchphrases, attitudes and beliefs, all of which were identifiable from the first episode and were carefully based upon the detailed and considered back-story John Sullivan created for him.
The London dining experience ("Only Fools the Dining Experience") was found to infringe the copyright in this character, as well as the copyright in the wider Only Fools and Horses scripts. Its use of the Only Fools name and characters was also considered Passing Off.
In reaching the decision, a number of key components of copyright law were touched upon…
1. Copying of another's work need not be direct; indirect copying may also lead to infringement.
2. Infringement requires a "substantial part" to be copied from the original work. However, this isn't a quantitative assessment; it is qualitative. So even the use of a feature, or combination of features may be sufficient for infringement to be held.
3. The defences of parody or pastiche are limited to certain special circumstances and require that:
a. Use of the new work would not affect the owner’s ordinary exploitation of the original (think future licensing opportunities or commercial expansion/extensions); and
b. Applying the defence would not unreasonably prejudice the rights holder’s interests (think proportionality - weighing the owners interests with the underlying purpose of the parody defence).
Parody is, broadly speaking, a defence to allow freedom of expression, political statement, righting a wrong and so on; it isn't generally a defence to allow others to commercially exploit copyright works in a way that could compete with the exploitation of the rightsholder.
Often, infringers mimic an original work under the veil of it being a 'parody' - something we have seen very prominently in the NFT world recently.
In his decision, Deputy High Court Judge John Kimbell QC ("the Judge") affirmed that:
“Although parody and imitation are close, what distinguishes them is that parody focuses on criticizing or mocking the original whereas imitation merely pays tribute to the original work, thereby lacking the critical distance which is so important to in a work of parody"
He, therefore, accepted the argument by Shazam Productions Ltd (a company formed to exploit the works of John Sullivan) , that a parody work "does express some kind of opinion by means of its imitation, but noticeable difference, from the work parodied”.
He went on to state 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 was not therefore enough to constitute parody.
In this case, the parody defence failed for a number reasons, including:
i) That the humour contained within the dining experience was merely that taken from the original source;
ii) That there was no intent to comment upon or express an opinion in respect of anything else;
iii) That there was no mockery or critical engagement; and,
iv) That the experience was much closer to a reproduction than an adaptation for parody.
The defence of 'pastiche' was also considered and the following two ingredients were set out by the Judge as being essential to successfully employing this defence:
a. Use that imitates the style of another work; or
b. Use as an assemblage (medley) of a number of pre-existing works.
He also confirmed that, in both cases, as with parody, the output must be noticeably different from the original work.
The pastiche defence also failed in this case because there wasn't a medley or combination of elements, mimicking the 'style' of Only Fools and Horses, but instead, the Only Fools the Dining Experience re-used identical elements from the original works, just in a dining context instead of a broadcast context.
The judge also found that there was no fair dealing by Only Fools the Dining Experience. This was due to the extent of material used, the lack of any reworking of that material, the lack of an attempt to engage in any kind of fundamental expression, criticism or dialogue and the clear competition with Shazam's ordinary exploitation of the works (which included licensing for sequels, musical adaptations and promotional items, among other things).
In addition, the Judge found that the activity of Only Fools the Dining Experience constituted Passing Off, in respect of both the Only Fools and Horses name and the leading characters, primarily Del Boy. The judge felt there was goodwill within all these elements and that there had been a misrepresentation by the operators of Only Fools the Dining Experience that would lead customers to believe there was some form of connection between the Dining Experience and Shazam, or that the Dining Experience was authorised by Shazam, as the musical was. As such, it was found likely that some customers may be diverted from purchasing tickets for the authorised musical (on offer at the same time) and instead purchase tickets for the unauthorised dining experience.
The three requirements of passing off (goodwill, misrepresentation and damage) were all therefore satisfied and the claim succeeded on this ground too.
As IP experts we’ve helped countless Del Boys protect their intellectual property. But with terms like pastiche, parody, and passing off floating about, it can be hard knowing what the best strategy is to protect your creative assets. Discover more about how our intellectual property lawyers can protect you.