Author: Eddie Powell
Eddie Powell, Partner, Fladgate LLP (firstname.lastname@example.org)
This article was previously published in ILN IP Insider on 15 December 2017.
From Bullseye to Mastermind and from The Chase to Eggheads, it is undeniable that the public love a TV game show. Who (in the UK) doesn’t remember Judith Keppel sensationally becoming the first winner of Who Wants to be a Millionaire? A total of 14.9 million UK viewers (that is about a quarter of the UK population) settled in to see Chris Tarrant hand over the million pound prize cheque for the first time.
With such shows producing hours of entertainment and numerous commercial opportunities, TV formats can be very valuable. It is therefore understandable that creators and production companies are particularly protective about their formats and look to protect their rights like any other form of intellectual property, despite copyright protection being historically difficult to obtain. The English High Court, however, has recently produced some much needed clarification on the way TV formats should be recorded or expressed in order to stand a chance of being protected by copyright as a dramatic work.
The recent case was brought by Banner Universal Motion Pictures Limited (BUMP) in its capacity as assignee of the rights to a TV format called “Minute Winner”. BUMP was set up by a Mr Banner in July 2015. Mr Banner claimed that he had developed the “Minute Winner” format in 2003 and that in 2005 he met with Friday TV, a Swedish production company, to discuss various game shows including “Minute Winner”.
Mr Banner submitted that confidential information about the format was disclosed at this meeting and in breach of its obligation to protect such confidential information, Friday TV developed a game show format called “Minute to Win It” with rights subsequently being sold around the world. In 2012, Mr Banner brought a claim in Sweden under the Swedish Trade Secrets Act in relation to trade mark and copyright infringement and title protection. This Swedish action failed, with the court noting that the document setting out the format of “Minute Winner” contained only a simple core idea and, as such, did not attract any protection.
Undeterred, Mr Banner, in the guise of BUMP, issued proceedings in 2016 in the UK claiming copyright infringement, breach of confidence and passing off. In particular, it was BUMP’s case that the document which set out the “Minute Winner” format was a dramatic work in which copyright subsisted.
Unfortunately for Mr Banner, the court dismissed all of BUMP’s claims. It was held that BUMP did not possess the necessary goodwill to succeed in an action for passing off. Further, as the Swedish courts had already found that there was no disclosure of confidential information, BUMP could not start proceedings alleging the same claims against identical defendants as this amounted to an abuse of process.
In relation to the claim for copyright, it was held that the document setting out the “Minute Winner” format “did not identify or prescribe anything resembling a coherent framework or structure which could be relied upon to reproduce a distinctive game show in a recognisable form” and, as such, copyright did not subsist in the document.
Whilst the judgment was unfortunate for BUMP and Mr Banner, it did provide some useful guidance on when a TV format might be considered a dramatic work under the Copyright, Designs and Patents Act 1988. Snowden J found that “it is at least arguable, as a matter of concept, that the format of a television game show or quiz show can be the subject of copyright protection as a dramatic work”. Having confirmed that TV formats may be protected by copyright as a dramatic work, Snowden J then went on to consider what is required for a TV format to qualify for such protection. Effectively, the TV format must be clear, specific and sufficiently distinctive and be capable of being reproduced in a recognisable form.
This decision produces welcome clarity that TV formats may be classified as dramatic works and, as such, can be protected by UK copyright law.
As a result of the judgment, prospective holders of copyright in TV formats must ensure that any documents setting out the TV format are sufficiently detailed and, ideally, set out the elements which make the TV format unique; this includes information such as set design, catchphrases, length of programme and when the show is to be aired. The case also serves as a reminder of the importance of having robust and consistent non-disclosure agreements in place when discussing TV formats with third parties, to guard against unauthorised disclosure and use of confidential information.
Whilst the decision has provided clarity in the UK, the issue of copyright protection afforded to TV formats has recently been the subject of litigation in both Italy and Israel. With the increasingly substantial sums involved in the production and commercialisation of TV formats, the potential for complex and lengthy litigation is increasing and it is now more important than ever for prospective copyright holders to be aware of how they can protect their work.
 Banner Universal Motion Pictures Ltd v Endemol Shine Group Ltd & Anor  EWHC 2600 (Ch)