Lovely jubbly decision as UK court confirms that lovable character 'Del Boy' can be protected as a literary work

On 8 June 2022, the Intellectual Property and Enterprise Court (IPEC) handed down its meaty decision in Shazam Productions Ltd v Only Fools The Dining Experience Ltd & Ors [2022] EWHC 1379 (IPEC), on, among other issues, whether a fictional character can be protected under UK copyright law. This is the first substantive decision in the UK courts on this point and one that also addresses the lesser spotted defences of fair dealing for the purposes of parody and pastiche.

In summary, the judge ruled that a well-known fictional character in a TV comedy series was capable of copyright protection as a literary work and each script for the series was protected as a dramatic work. However, the combined body of scripts was neither a dramatic nor a literary work in its own right. The defendants had infringed the claimant's copyright and could not rely on any of the copyright defences available under s.30A of the Copyright, Designs and Patents Act 1988 (CDPA). Further, there had been passing off.

Background

Only Fools and Horses (OFAH) is a well-known television comedy series, which broadcast between 1981 and 1991, with various Christmas specials until 2003. John Sullivan OBE, the scriptwriter, died in 2011. The series followed the life of fictional market trader, Derek Trotter, affectionately known as 'Del Boy' (played by Sir David Jason), his brother Rodney (played by Nicholas Lyndhurst), and his elderly Uncle Albert who lived in a high-rise council flat in Peckham. Other characters include rogue car salesman, Boycie, his wife Marlene, Trigger the road sweeper and Cassandra who became Rodney's wife.

OFAH was (and still is) incredibly popular, winning various accolades over the years such as awards for best comedy series and best writing. Rodney and Del Boy even featured in the 2012 opening ceremony for the London Olympics highlighting their popularity and status as national treasures!

The claimant, Shazam Productions Limited (Shazam) is a company which was formed in 2003 to exploit the IP rights held by John Sullivan in relation to OFAH and various other shows. Shazam also opened a musical based on the OFAH characters in 2019 at the Theatre Royal Haymarket in London, written by Sullivan's son and famous comedian Paul Whitehouse.

In 2018, the defendants opened an interactive, immersive dining show called the 'Only Fools The (cushty) Dining Experience' (OFDE)' which used characters from OFAH. Over the duration of a three-course meal, performers acted out scenes based on a script produced collaboratively by a number of people, but with enough flexibility to allow for improvisation with the diners. The actors in the OFDE show used the appearance, mannerisms, voices and catchphrases of Del Boy and other characters from the TV series. The storyline and character development from series 6 were the main focus of the dining experience and the characters were presented in an interactive pub quiz format, which had not featured in OFAH.

The claims

Following two rounds of cease and desist letters, the claimant issued proceedings in December 2019 in the High Court for copyright infringement and passing off and the case was subsequently transferred to the IPEC.

Shazam claimed copyright subsisted in:

• Each script for an episode of OFAH;
• The body of scripts for OFAH taken as a whole, which collectively establish the characters, stories and imaginary “world” of OFAH;
• The characters (namely Del Boy, Rodney, Marlene, Cassandra, Uncle Albert, Boycie, Trigger and DCI Slater); and
• The lyrics and opening theme song for OFAH

The claimant also alleged infringements in the OFAH show in relation to specific Del Boy characteristics such as his:

• Use of sales patter with repeated phrases
• Use of French to try to convey an air of sophistication
• Eternal optimism
• Involvement in dodgy schemes
• Making sacrifices for his brother, Rodney

Decision in summary

John Kimbell QC, (sitting as Deputy High Court judge) ruled that copyright subsisted in the OAFH script as a dramatic work and in the character of Del Boy as a literary work, and in relation to both, copyright had been infringed. He also concluded there had had been passing off. However, the body of scripts taken together were not literary or dramatic works for the purposes of copyright law. The judge set out a helpful table at the end of the judgment (paragraph 210) summarising his findings.

Key findings in more detail

Copyright in the OFAH scripts

The judge found that each OFAH script was protected as a dramatic work, as opposed to a literary work (as under UK copyright law, the 'work' must be either one or the other, but cannot be both). A dramatic work is defined under the CDPA 1988 as a work of action, with or without words or music, which is capable of being performed before an audience'. He referred back to the 2019 Court of Appeal ruling in Martin v Kogan (see our previous blog - Two can play at this game: Joint ownership of copyright) which held that a screenplay was a dramatic work, (in contrast to an earlier IPEC decision that found it was a literary work) because its primary purpose was that it would be performed, but not read, like a novel. 

In his view, if a film screenplay had been categorised as a dramatic work in that decision (which was binding on the judge in this case) then it was a 'small step' to categorise a script for a TV show as a dramatic work, especially given the fact that internal scenes in OFAH were (intentionally) performed live and recorded in front of an audience.

Copyright in the body of scripts

The claimant claimed that the body of the scripts taken as a whole was a literary work or alternatively, that the 'world' created by John Sullivan was a dramatic work. Either way, the body of scripts taken as a whole attracted copyright protection in its own right.

The judge was not convinced about either. As to whether the body of scripts constituted a dramatic work, the judge pointed out that the body of scripts was never intended to be performed as a work in its own right – only each individual script was performed, filmed and broadcast. There had never been a suggestion that the scripts as a whole would be performed continuously, one after the other. Therefore, he could not agree that the body of scripts was a dramatic work.

In terms of a literary work, he pointed out that there were plenty of examples of a literary work being published in chapters and then republished as a single work, e.g. many of Charles Dickens' novels. In those instances, it was clear that both the individual chapters and the final completed body of work as a whole were each separate copyright works. There was no evidence here, however, to suggest where or when this story would end or that the scripts were meant to be 'regarded as a unitary whole'. As such, he could not be persuaded that the world of OFAH in the body of the scripts was a literary work in itself.

Copyright in the character of Del Boy

The judge expressed surprise that there has been so little discussion in English case law or commentary on whether, and if so, in what circumstances copyright could subsist in a character from a literary or dramatic work. The defendants attempted to point to various references in case law and commentary to bolster their argument that a character could not attract copyright protection under UK law. The judge, however, was not persuaded and instead preferred to go back to basics and approach the matter from first principles.

The two-stage approach

It was common ground that the starting point was whether the alleged work qualified as a work under EU law before assessing whether the alleged subject matter fit within one of the CDPA's closed list of categories of work. It was also common ground that, in order to qualify for copyright protection under EU law, it was necessary to satisfy the two following conditions clarified in the CJEU's seminal ruling in Cofemel that: (i) it entails original subject matter which is the author's own intellectual creation; and (ii) it requires the expression of that creation.

To fulfil the first condition of originality (the originality requirement), the design must reflect the personality of its author, 'as an expression of free and creative choices'. There have been no creative choices if the creation of the work has been dictated by technical function, rules or other constraints, which have left no other room for creative freedom.  To fulfil the second condition (the identifiability requirement), it is necessary to be able to identify the design with sufficient precision and objectivity, even though that expression is not necessarily in permanent form. The expressed features must be external to the perceiver and objectively identifiable by third parties and the courts (think back to the Levola Hengelo taste of cheese case – see Taste of food is not a copyright "work" - a decision that may grate on the cheese industry).

Application of the Cofemel test

The judge had no hesitation in finding that the character of Del Boy was both original and clearly and precisely identifiable to third parties.

Originality

There was no doubt that Del Boy as a character was an original creation of John Sullivan and the expression of his own free and creative choices.

A lot of relevant evidence was listed in the ruling including that John Sullivan had grown up in South London in the 1950s and 1960s and had worked in a market in Balham at the age of 15. He had heard the mannerisms of market traders and second-hand car salesmen at that time. These first-hand experiences all contributed to his creation of Del Boy and the other OFAH characters. Further, Del Boy was not a stock character or cliché of a working class market trader but a fully rounded, complex character with a full backstory and a great deal of thought had gone into his multi-layered character.

Even some of his vocabulary and phrases have infiltrated into the English language, such as 'cushty' and 'lovely jubbly'! The judge could not agree with the defendants that Del Boy's features were no more than a 'vague description of some general characteristics' of a dodgy market trader, rightly stating, 'Even if one or more ingredients of his character, if taken in isolation, might be said to be unoriginal, it is the particular combination of all the parts and aspects set out above which makes Del Boy distinctive and, it seems, gives him enduring appeal'.

The judge therefore concluded that the originality requirement was 'more than satisfied'.
 
Identifiability

The judge found that the five features of Del Boy relied upon by the claimant as constituting his character (listed above) were, 'precisely and objectively discernable in the scripts'. Interestingly he had been concerned that it might be difficult to separate out the contribution of Sir David Jason himself to the character from what was in the script, such as his tone of voice, facial expressions, mannerisms and physical appearance. However, quite the contrary. Having watched 3 episodes whilst following the scripts, he was struck by just how much of Del Boy was in the script – e.g. Del's interest in his own appearance, his use of mangled French, the contradictory attitude towards Rodney, his external description (flashy gear, rings, medallions, chunky bracelet, cigar etc). The judge rejected the defendants' arguments that 'Del’s use of French to “convey an air of sophistication” or Del’s “eternal optimism” are nothing more subjective matters perceived nor not perceived by an audience'. It may be the case that if a viewer of OFAH or a reader of the scripts approves or disapproves of Del Boy’s actions and attitudes, that is subjective 'but the content and nature of his character is an objective feature which is clearly present in the Scripts themselves'.

The judge therefore had little difficulty concluding that the character of Del Boy's satisfied the two-step Cofemel test and was a work protectable under EU copyright law. This was also consistent with the approach taken in Germany where the German Supreme Court had held that the character of Pippi Longstocking created by Swedish author Astrid Lindgren was protectable as a literary work. Similarly, in the US, characters had been held to be protected as literary works, for example, Sherlock Holmes and Dr Watson.  

Literary or dramatic work        

Having concluded that Del Boy as a character was protectable under EU law, he found that he could be 'properly subsumed under the concept of a literary work for the purposes of the closed list of protected English works'. He said to categorise him as a dramatic work would be a strained interpretation of the CDPA. It did not make sense to say that a character was designed to be performed in same way that a screenplay or script was.

Infringement

Having held that the OFAH scripts were dramatic works and the character of Del Boy was a literary work, it was for the judge to assess whether the defendants had infringed. A particular script defined as the 'September script' was the only alleged infringing work that was to be assessed for the purposes of the trial.

The judge set out a useful list of four basic principles to consider: (a) copying was defined under the CDPA as 'reproducing the work in any material form' but it could be of the work as a whole or a substantial part; (b) whether it was a substantial part required a qualitative rather than quantitative assessment; (c) there must be actual copying – therefore the alleged infringer must have had access to the original work but also seen or heard it. That could be direct or indirect. (d) the essential test was whether the part of the original which has alleged to have been copied contains elements which are the expression of the intellectual creation of the author of the work or not. He also set out a reminder of the two-step test for copyright infringement in English law according to Designers Guild – (1) identify those features of the defendant's work which the claimant alleges have been copied from the copyright work (similarities rather than differences); and (2) assess whether what has been taken constitutes all or a substantial part of the copyright work, which is a qualitative rather than a quantitative assessment.   

He found that the evidence of infringement by the defendants of Del Boy's character was 'overwhelming and obvious'. In the defendants' OFDE, the character of Del Boy, his back story, his relationship with other characters, his use of mangled French, his phrases, such as 'lovely jubbly', 'this time next year we could be millionaires', 'a few olives short of a pizza' had all been copied from broadcast versions of OFAH. In fact, the defendants' brief had been to create a 'pitch-perfect' live version of Del Boy (and the other characters). Therefore, the judge held that, 'the commonality between Del Boy of the September Script and the Del Boy in the Scripts is almost total. The copying was far more than the substantial copying required for a finding of infringement'. Despite there being no evidence of the actors or the writer using the actual scripts themselves to create their Del Boy, there was clear evidence that they had watched clips and entire episodes from OFAH when developing their various versions of the September Script and some of the actors were self-professed superfans with a deep knowledge of the scripts. Therefore in this judge's view, this was a clear case of indirect copying via the broadcast of various OFAH episodes.  

Even if the character of Del Boy had not been found to attract a separate copyright protection in its own right, the judge listed many of the original features of various OFAH scripts that he believed had been copied and incorporated into the September Script – e.g. the core elements of jokes were the same, the use of the same catchphrases e.g. 'Oh Shut up you tart!' and Del Boy's malapropisms. The defendants had produced no evidence to show that any of it was their own independent creation.   

Overall, the judge was more than satisfied that the features taken from the OFAH scripts represented a substantial part of the claimant's copyright work and therefore infringed.

Did any defences under Section 30A apply?

The defendants tried to rely on the exceptions under section 30A of the CDPA, which was inserted into UK domestic law in 2014 and originates from Article 5(3)(k) of the EU InfoSoc Directive (2001/29/EC). The defendants claimed that their September script of the OFDE was fair dealing for the purpose of parody, alternatively for the purpose of pastiche.

The judge's view was that in order to fit within the exceptions, the defendants' activities would also have to  conform to the so-called 'three-step test' laid down in Article 5(5) of the InfoSoc Directive, i.e. (i) the exception must be confined to special cases; (ii) the application of the exception must not conflict with a normal exploitation of the work by the copyright owner; and (iii) the application of the exception must not unreasonably prejudice the legitimate interests of the rightsholder.

Parody

The judge looked at the ordinary meaning of the word 'parody', guidance on the parody exception issued by the UKIPO and the well-known CJEU ruling in Deckmyn v Vandersteen, which considered parody in the context of the InfoSoc Directive. He recalled that the essential elements of parody as a legal concept, as identified in Deckymn, are that the work must: (i) evoke an existing work, (ii) be noticeably different from that existing work; and (iii) constitute an expression of humour or mockery. He explained that this definition was potentially wide but that another way of thinking about it was to say that 'there must be some critical distance between the new work and the original work'. He went on to quote from a legal text 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 in a work of parody'. 
The judge commented that the need for parody to express an opinion in order to fall within the exception was particularly important in the case of parodies of comedies. He noted that it was quite unusual for there to be parodies of comedies – it was more common in literary and dramatic parody for serious works to be mocked. He therefore agreed with the claimants in this case that mere imitation (of a work of comedy) was not enough to constitute parody.

He concluded that the defendants' use of the characters, their backstories, jokes and catchphrases was not for the purpose of parody because the September Script did not 'evoke OFAH in order to express humour about OFAH or anything else'. The script was humorous because it originated from OFAH and OFDE had lifted the characters, language, jokes and backstories from OFAH and transposed them into an imaginary pub quiz. This was closer to reproduction by adaptation than parody.

Although some of the characters in OFDE were slightly exaggerated versions of those in OFAH, it was not evident from the September Script and was not intended.  In fact, the defendants had wanted to represent the OFAH characters 'in a pitch perfect familiar fashion'. Whilst the form of the September Script was noticeably different from OFAH in the sense that it was set in a live and interactive dining experience rather than being performed in front of a passive live audience, it did not seek to target OFAH or use OFAH to express humour about it or mock it.

Overall, the judge found that the September Script was not noticeably different from OFAH. It was more like a reproduction by adaptation to a live dining setting.

Pastiche

Having again looked at a dictionary definition of the word 'pastiche', guidance on the pastiche exception issued by the UKIPO and the CJEU ruling in Pelham v Hutter, the judge's view was that the essential ingredients for pastiche within the meaning of s30A CDPA were: (i) the use imitates the style of another work; (ii) or it is an assemblage (medley) of a number of pre-existing works; and (iii) in both cases, as with parody, the product must be noticeably different from the original work.   

The judge concluded that the defendants' use of the characters, their backstories, jokes and catchphrases was not for the purpose of pastiche. They had not used elements from the OFAH scripts to imitate the style of OFAH, nor were they arranged in 'any sort of medley or assemblage'. They simply took the OFAH characters, backstories and catchphrases and (re)presented them in a live dining format. This was a 'wholesale borrowing of content' which was closer to reproduction by adaptation than pastiche. The September Script was not noticeably different from the original OFAH script and as such, the defendants could not rely on the pastiche defence.

Fair dealing

The judge found that there was no fair dealing and the use made of the original work did not conform to steps 2 and 3 of the three-step test. The material they had taken from the scripts was extensive both in quantity and quality and conflicted with Shazam's normal exploitation of and economic interest in OFAH. Shazam had many channels through which it exploited the OFAH material, such as licensing arrangements with the BBC to make a prequel and a sequel and later on, the musical (which was advertised at the same time as the OFDE). There was a significant risk that some OFAH fans might go to see the OFDE show rather than the musical.
The judge considered that the OFDE effectively amounted to the creation of a brand new episode of OFAH, adapted for a dining performance. Doing that without permission would unreasonably prejudice the legitimate interests of Shazam in controlling how the OFAH characters were portrayed and presented and commercially exploited.

Passing off  
 
The parties' submissions on passing off were short and not much time was spent on this part of the claim at trial, but some important points were raised.
 
The judge reiterated the test for passing off and the requirement for the claimant to prove the so-called classical trinity of (i) goodwill; (ii) misrepresentation leading to deception or likelihood of deception; and (iii) damage, as set out in the 'Jif lemon' case (all of which must be proven from the date when the acts of alleged passing off began).
 
The judge accepted that the claimant had built up significant goodwill, attaching to the name Only Fools and Horses and the leading characters, in particular, Del Boy. OFAH had been broadcast to huge audiences over the years, substantial sums had been earned from royalties, substantial sales had been made from OFAH-themed merchandise and there had been significant licensing of IP rights e.g. merchandising licences, format rights and the licence in relation to the musical.
 
When considering misrepresentation, the judge found that the name of OFDE was liable to confuse and mislead. People often abbreviated OFAH to 'Only Fools' and their use of 'cushty' in the dining experience title could easily lead the public to think it was a spin off. The fact that ITI (the commercial vehicle used to develop OFDE initially and the Second defendant) included a disclaimer on its website (but quite hidden on the terms and conditions page) indicated it was aware of the potential confusion. The judge made an interesting observation that had the disclaimer been more prominent (as many users might not have made it to the page with the disclaimer), or had the title of the show made it clear that it was an unofficial tribute, they may have avoided any misrepresentation. Further, the nature of the OFDE was not so far removed from OFAH so as to make it obvious that it was not associated with OFAH, as claimed by the defendants. In the publicity for the OFDE, the characters were very similar in appearance and dress to the OFAH characters and the use of the only fools domain was likely to cause casual observers to think that the OFDE was officially authorised and associated with OFAH.  
 
Finally, the judge concluded that some fans of OFAH would be diverted from buying tickets for the musical by the OFDE. There were obvious differences between the two options but they both offered fans a new opportunity to be re-acquainted with the much-loved show and its characters in a live setting and both were being advertised around the same time. Fans were unlikely to go for both options so there was a real likelihood of diversion of trade.  

Comment

It is a long and meaty decision and a significant development in UK copyright law given it is the first time a UK court has ruled that a fictional character can be protected by copyright as a literary work. There have been previous UK cases on the protection of fictional characters but these have been based on the protection of an image of a character as an artistic work, such as a cartoon or drawing, or on the law of trade marks or passing off. It will be of particular interest to those needing to give advice on the protection of characters, whether it be in novels, screenplays or TV scripts. It is interesting that the judge found that each individual script was a dramatic work under the CDPA but that the whole body of scripts would not qualify for protection in its own right. Some may disagree with the judge's reasoning on that front and whether that is challenged in the future remains to be seen.    

On a more general level, the judgment contains many useful reminders on the law of copyright and passing off. Even though the majority of the decision relates to copyright, it is also important from a trade mark perspective. Whilst the judge dedicated far less time to the passing off claim, he raised some interesting points, particularly in relation to disclaimers (see above). The judge also provided a very useful checklist at the end of the judgment (paragraph 210), summarising the conclusions he reached on each of the issues tried in a Q&A form.

The decision also goes into some depth on how to apply the two-step test in Cofemel when assessing what constitutes a copyright 'work' under UK law. He clarified that the starting point is to ask whether the alleged work qualifies as a work under EU law before asking whether the alleged subject matter can be accommodated within one of the CPDA’s closed categories of protected works. However, the key point seems to be whether the subject matter is original in the first place, rather than which category it fits into.
 
It is also helpful to have some guidance from the UK courts on the application of the parody and pastiche exceptions, as there has been limited UK case law on this subject matter. It is particularly noteworthy that even though the judge cited the essential elements of parody as set out in the CJEU's ruling in Deckmyn, he also considered them to be potentially too broad. Ultimately, it was important to remember that 'mere imitation (of a work of comedy) is not enough to constitute parody'. There must be some kind of opinion expressed as humour or mockery and there must be a noticeable difference from the work parodied. 

It will be interesting to see whether this case sparks other challenges in relation to tribute-style experiences or even character impersonators and impressionists. There appear to be other comedy dining shows featuring characters from well-known UK sit coms e,g, 'Allo, Allo', 'Fawlty Towers' and 'One Foot in the Grave'. However, the decision may not necessarily open the flood gates as some commentators have predicted, as not all characters are as iconic and unique as Del Boy and each case will of course be assessed on its own facts.   

In an ideal world, however, it would be good to see some sort of amicable arrangement between the relevant parties, allowing the IP rights owners to exploit their rights at the same time as allowing fans to enjoy their favourite shows (albeit in a different format) and therefore continuing the legacy of these iconic comedies.