Iain Connor Michael Nguyen August 8 2022 Only Fools use characters without licence from copyright owner Pinsent Masons | Intellectual Property - United Kingdom Iain Connor, Michael Nguyen Intellectual Property FactsIssuesDecisionCommentIn the recent Shazam Productions v Only Fools the Dining Experience judgment,(1) the High Court considered a number of fundamental questions about what amounts to copyright infringement and the rarely tested defences of parody and pastiche. The case represents the first time a UK court has set out the "precisely and objectively discernible" test for establishing when copyright will subsist in fictional characters, with the Court going on to uphold the claims.FactsThe claimant in this case was a company that had been formed by the family of John Sullivan, the creator of the popular BBC comedy television series Only Fools and Horses (Only Fools), to exploit the IP rights held by Sullivan before he passed away in 2011.The defendants in this case developed and performed an interactive dining show titled Only Fools The (cushty) Dining Experience (Dining Experience) in 2018. The format of the Dining Experience show involved audiences being served a meal while actors performed scenes as characters from Only Fools, adopting the same appearances, voices and mannerisms as the characters from the broadcast version of the show. However, the Dining Experience placed the characters in the context of an interactive pub quiz, a format that had previously not appeared in the broadcast version of Only Fools.On learning of the Dining Experience show, the claimant's solicitors sent letters before action on two separate occasions to the defendants, noting that the Dining Experience show constituted an infringement of the claimant's intellectual property. Responses received to both letters denied any infringement and proceedings were therefore issued in December 2019.IssuesIn issuing the proceedings, the claimant claimed that the Dining Experience copied:individual Only Fools scripts;the body of work that comprised of the Only Fools scripts as a whole; andthe Only Fools characters.The claimant also alleged passing off.The defendants denied copying generally, but also argued that, to the extent there was any copying, it was fair dealing for the purposes of parody or pastiche.DecisionCopyright protectionIn considering copyright infringement, the Court first had to analyse whether the works alleged to be protected by the claimant were in fact protectable as copyright works.Turning first to the scripts, the claimant alleged that each individual Only Fools script was a dramatic work for the purposes of the Copyright Designs and Patents Act 1988 (CDPA) and the body of scripts as a whole constituted a separate dramatic or literary work protected by copyright. Relying on the case of Martin v Kogan,(2) which provided that film screenplays would usually be regarded as a dramatic work, the Court followed the logical conclusion that a script for a TV show would also be a dramatic work. The Court noted that, although it was possible for a body of works to have its own separate copyright from the individual works, there was no evidence that Sullivan had conceived how Only Fools would end or that there was an intention for the body of scripts to be regarded as a whole – each episode in itself was a complete story in its own right.While the claimant claimed copyright protection in all the characters, the trial focused on the main Only Fools character known as "Del Boy" and the characteristics that the claimant had identified that made him a protectable work. In deciding whether a character could be protected by copyright under the CDPA, the Court first considered whether characters qualified as protectable under EU law. Therefore, the Court considered the cases of Cofemel v G-Star Raw(3) and Levola Hengelo BV v Smilde Foods BV,(4) which provide two requirements for a work to be protectable under EU copyright law:the work must be original and an expression of the author's own intellectual creation; andthe subject matter must be identifiable with sufficient precision and objectivity.On the first requirement, the Court found that Del Boy was clearly an original creation of Sullivan. A great deal of attention had been given to how and why Del Boy expressed himself in the way he did, based on Sullivan's past experiences. Del Boy was a fully rounded character, not a generic stock character.On the second requirement, the Court found that features of Del Boy identified by the claimant were "precisely and objectively discernible in the [Only Fools scripts]",(5) noting in particular how much of Del Boy came across in the scripts themselves. Finding both of these requirements fulfilled, the Court held that the character of Del Boy could be protected by copyright under EU law and fell within the category of literary works for the purposes of the CDPA's closed categories approach to copyright protection. The Court went on to comment that this decision was consistent with decisions from other jurisdictions on copyright in characters, including decisions in Germany(6) and the United States.Copyright infringementHaving found that both the individual scripts and the character of Del Boy were protectable works under the CDPA, the Court had to consider whether the defendant had infringed the claimant's copyright. The claimant alleged that the defendants had infringed its copyright by "reproducing [a substantial part of] the work in any material form". The Court followed Designers Guild Ltd v Russell Williams,(7) which provides that the term "substantial" requires a qualitative assessment rather than a quantitative one, looking at the importance of what had been copied to the copyright protected works.Looking first at the character of Del Boy, the Court found that evidence of infringement was "overwhelming and obvious".(8) There was almost total commonality between the Del Boy depicted in the Dining Experience and that in Only Fools, the Court finding that copying was far more than substantial. The character, his backstory and catchphrases (among other aspects) had all been copied from the broadcast version of Only Fools. In relation to the scripts, the Court found a number of features that had been copied from Only Fools into the Dining Experience show script, including catchphrases and jokes.While there was no evidence that the copying had come directly from the original scripts of Only Fools, witness evidence made clear that clips and episodes of Only Fools had been watched so this was a case of indirect copying. The Court therefore found infringement of both the individual Only Fools scripts and the character of Del Boy by the defendants.Fair dealingFollowing the decision that there was copying, the Court had to consider the defendants' argument that the Dining Experience qualified for the exception of parody and/or pastiche.On parody, the Court analysed the case of Deckmyn v Vandersteen(9) as the authority on parody. That case found that the essential characteristics of parody involve evoking "an existing work, while being noticeably different from it . . . to constitute an expression of humour or mockery".(10) Essentially, a parody must have a target – it must be directed at the original work that it is parodying or a third-party object or individual. Following this analysis, the Court rejected the defendants' argument of parody. The use of the characters, jokes and related material were not for the purpose of parody. There had been no intention to mock or comment on Only Fools, or anything else. The intention had been more imitation; simply to place the characters into a different setting that could be enjoyed by a dining audience. Although the characters appeared in an exaggerated fashion in Dining Experience, the evidence from witnesses was that the intention had always been to produce a "pitch perfect" representation of the characters.In relation to what amounted to pastiche, the Court looked, among other things, at the definition in the Oxford English dictionary and a definition which had been provided in guidance produced by the UK Intellectual Property Office. The Court noted two forms of pastiche:the use of a copyright work to imitate its style; ora medley of a number of pre-existing copyright protected works.In both cases, the resulting product needing to be noticeably different from the original. Applying that to the facts of this case, the Court also rejected the argument of pastiche. There was no imitation of the style of Only Fools, and nor had the elements taken been arranged in any sort of medley or assemblage. The Dining Experience's pub quiz involved a wholesale borrowing of content from Only Fools and was closer to reproduction by adaptation than pastiche.The Court found that the material taken was extensive in quantity and quality and would not have constituted fair dealing in any event. The Dining Experience competed with the claimant's normal exploitation of its rights in the copyright of Only Fools and essentially amounted to the creation of a new episode. This clearly prejudiced the legitimate interests of the claimant, which had an interest in controlling how the Only Fools characters were portrayed and presented. On this basis, the Court rejected the defendants' arguments and upheld the claimant's copyright infringement claim.Passing offAlthough brief, the Court also considered the claimant's passing off claim, considering the three part test for passing off,(11) which requires "(i) goodwill, (ii) misrepresentation leading to deception or a likelihood of deception and (iii) damage".(12)Considering each element of the test:the Court accepted that significant goodwill had been built up in Only Fools and its characters based on various factors, including Only Fools' huge audiences;the name of the Dining Experience was likely to confuse and mislead as Only Fools and Horses was often abbreviated to Only Fools and having the same characters with their backstories and catchphrases was likely to result in the public considering it an authorised spin off; anddamage had been caused as Only Fools fans would be diverted from purchasing tickets to an authorised stage musical show of Only Fools launched by the claimant at a similar time to Dining Experience. Although the musical was not interactive, both shows offered the public a chance to see Only Fools in a live performance setting and had been offered to the public at the same time.In light of these findings, the Court held that the claimant's passing off claim succeeded.CommentThis case provides a fascinating update to copyright law in the United Kingdom.The decision represents the first time that a court in the United Kingdom has, in this way, found copyright afforded to a fictional character. Previous cases confirmed that there is no property in the names of fictional characters like Teenage Ninja Turtles(13) (outside trademark law and passing off); a case where the judge observed that a humanoid turtle of an aggressive nature receiving protection was a "difficult concept". Older cases like the "Popeye the Sailor" case,(14) while unremarkable regarding the question of copyright protection in cartoon characters, are definitively consigned to history on the question of imitation and the substantial part test.Accordingly, the ability to protect by copyright "precisely and objectively discernible" elements of a character provides rights holders with another arrow in their quiver to stop others free-riding on the back of their works. This means that taking a character from an established dramatic or literary work and placing it in a different setting can result in copyright infringement.This decision will have far reaching consequences for those that use characters from established media, including, for example, tribute acts and how they promote themselves. The decision also provides useful guidance on the parody and pastiche defences.For further information on this topic please contact Iain Connor or Michael Nguyen at Pinsent Masons by telephone (+44 20 7418 8250) or email ([email protected] or [email protected]). The Pinsent Masons website can be accessed at www.pinsentmasons.com.Endnotes(1) Shazam Productions Ltd v (1) Only Fools the Dining Experience Ltd (2) Imagination Workshop Pty Ltd (3) Alison Gay Pollard-Mansergh (4) Peter Gordon Mansergh (5) Katharine Mary Gillham (6) Imagination Workshop Limited (7) Imagination Workshop Festival Limited (8) Jard Harford  EWHC 1379 (IPEC).(2)  EWHC 2927 (IPEC).(3) C-683/17.(4) C-310/17.(5)  EWHC 1379 (IPEC) at para 105.(6) Re Pippi Longstocking  ECC 27.(7)  1 WLR 2416.(8)  EWHC 1379 (IPEC) at para 127.(9) C-201/13.(10)  EWHC 1379 (IPEC) at para 167.(11) Reckitt & Colman Products Ltd v Borden Inc (No.3)  1 WLR 491.(12)  EWHC 1379 (IPEC) at para 198.(13) Mirage Studios v Counter-Feat Clothing  FSR 145.(14) King Features Syndicate Inc v O & M Kleeman Ltd  AC 417.