Introduction

Mr John Kimbell QC, sitting as a Deputy High Court Judge in the IPEC, has issued the first UK court decision recognising that a fictional character can be a copyright work. The decision found that protagonist of an iconic British television comedy, Only Fools and Horses (OFAH), was sufficiently original and identifiable to be protectable and could be subsumed within the concept of a literary work for the purpose of the closed list of works under the Copyright Designs and Patents Act 1988 (CDPA). The copyright in the character was found to be infringed by a live, scripted performance that used the well-known characters of OFAH in new settings.

The decision is the second UK court consideration of copyright subsistence following the CJEU decision of Cofemel in 2019 and appears to broaden the works recognised in the UK.

Facts

Only Fools and Horses (OFAH) is a well-known British television comedy that ran for seven series from 1981 to 1991. It depicts the exploits of the Trotter family and their series of attempts, led by the protagonist Derek ‘Del Boy’ Trotter, to get rich by buying and selling poor-quality and illegal goods. OFAH was written by John Sullivan OBE, who died in 2011.  His son, James Sullivan, gave evidence as to how his father had created the series, including the key features of the character of Del Boy, which were set out in an Annex to the Particulars of Claim.

The rights in OFAH are now owned and exploited by the claimant, Shazam Productions Ltd, a company owned and controlled by John Sullivan’s family. Shazam continues to exploit the OFAH rights through merchandise and licensing deals including for an OFAH musical that launched in February 2019.

In May 2018, the defendants developed an interactive dining show using the characters from OFAH. The show was produced and marketed under the name “Only Fools The (cushty) Dining Experience” (OFDE). The actors in OFDE used the appearance, mannerisms, voices and catchphrases of several characters from OFAH. Whilst the audience dined, the actors performed scenes based on scripts produced collaboratively by several people over a few weeks. The scripts gave flexibility for the actors to improvise and interact spontaneously with diners. The actors were encouraged to use the catchphrases of their corresponding OFAH character.

Claims

In December 2019, Shazam issued proceedings against the defendants for breach of copyright alleged to subsist in: (i) each OFAH script for an episode of OFAH; (ii) the body of OFAH scripts taken as a whole, which collectively established the characters, stories and imaginary “world” of OFAH; and (iii) the characters.

Shazam also claimed passing off.

Decision

Copyright

Subsistence

Episode scripts: Mr Kimbell QC found that the script for each episode of OFAH is a dramatic work under s 3(1) of the CDPA. Mr Kimbell QC noted that the primary purpose of each script is to be performed and noted the instructive and binding precedent of Martin v Kogan [2019] EWCA Civ 1645 that established that a film screenplay is a dramatic work.

Body of scripts: Mr Kimbell QC found that copyright did not subsist in the body of OFAH scripts, taken together, separately from each individual OFAH script. The OFAH episodes were released periodically, were standalone works and were never intended to be performed as a body of work. Each episode script was performed, filmed and broadcast individually. Accordingly, the imaginary “world” of OFAH as expressed in the body of OFAH scripts was not a literary work.

Characters: There is little discussion in pre-existing case law on whether copyright may subsist in a fictional character. Consequently, Mr Kimbell QC approached the matter from first principles.

EU law provides that the two conditions for copyright subsistence are (i) originality, i.e., the subject matter must be original in the sense of being the author’s own intellectual creation; and (ii) identifiability: i.e., the expression of the subject matter must be identifiable with sufficient precision and objectivity (Case C-683/17 Cofemel v G-Star Raw [2020] ECDR 9).

Shazam (by James Sullivan) described the features of the characters, identifying five particular features of the character of Del Boy, which were:

1. his use of sales patter with replicated phrases;
2. his use of French to try to convey an air of sophistication;

• his eternal optimism;

1. his involvement in dodgy schemes; and
2. his making sacrifices for Rodney.

Mr Kimble QC found that Del Boy as a character was an original creation of John Sullivan. He also considered that Del Boy represents a highly distinctive and original character, not a “vague description of some general characteristics”. Del Boy is not a stock character or cliché of a working-class market trader but is rather a fully rounded character with complex motivations and a full backstory. A great deal of thought and attention was given to creative choice of how and why Del Boy would express himself, and he has complex, multi-layered relationships.  In summary, he accepted that the summary of key features of the character of Del Boy provided by James Sullivan and reproduced as Annex 1 to the Particulars of Claim was (a) an accurate description of the character as revealed in the Scripts and (b) represented a highly distinctive and original character.

Accordingly, the two-stage test set out in Cofemel was satisfied and the character of Del Boy was a work protected under EU copyright law.

As for English law, Mr Kimble QC had no hesitation in holding that as a protectable work under EU law, the character of Del Boy could be properly subsumed under the concept of a literary work under the CDPA. Mr Kimble QC noted that this approach was consistent with the approach of the German Supreme Court in Re Pippi Longstocking [2014] ECC 27, and with a US authority finding that characters of Sherlock Holmes and Dr Watson are protected as literary works in the USA (Klinger v. Conan Doyle Estate, Ltd., 755 F.3d 496, 498 (7th Cir. 2014)).

Infringement

Characters: Mr Kimble QC found that the evidence of infringement by Shazam in respect of the character of Del Boy was “overwhelming and obvious”. The commonality between the Del Boy in the OFDE scripts and the Del Boy in the OFAH scripts was “almost total”. Moreover, there was clear evidence that the individuals who developed the scripts watched and shared clips and whole episodes of OFAH, which was sufficient to make out a clear case of indirect copying.

Scripts: Mr Kimble QC identified ten original features of the OFAH scripts that had been copied into the OFDE script, e.g., certain jokes, catchphrases, the use of mangled French, and Del Boy’s eternal optimism. These ten features represented a substantial part of the OFAH scripts, and the evidence showed that the defendants made a conscious decision to copy such features. Consequently, infringement of the copyright in the OFAH scripts was also established.

Fair Dealing Defence

Shazam unsuccessfully raised the defence of fair dealing for the purposes of parody or pastiche (found in 30A of the CDPA) in response to the copyright infringement claim.

Mr Kimble QC found that the use of characters, their backstories, jokes and catchphrases was not for the purpose of parody, as the parody had no target. The OFDE script did not evoke OFAH in order engage critically with OFAH or anything else. In fact, the OFDE Show involved the wholesale transposition of the characters, language, jokes and backstories from OFAH and was therefore closer in form to reproduction by adaptation than parody.

Turning to the defence of pastiche, Mr Kimble QC found that the OFDE scripts did not merely imitate the style of OFAH, nor were the elements taken arranged in any sort of medley or assemblage. Instead, OFDE took the OFAH features and simply (re)presented them in a live dining format.  Accordingly, the defence did not engage.

Mr Kimble QC further found that the use of copyright material did not qualify as ‘fair dealing’ because the taking from the OFAH scripts was extensive both in terms of quantity and quality and was not a type of expression that attracted particular protection. OFDE clearly competed with Shazam’s normal exploitation of OFAH (e.g. by licensing such use).

Passing off

Mr Kimble QC also allowed Shazam’s passing off claim. It was held that (i) Shazam had built up significant, continuing goodwill attaching both the OFAH name and the leading characters; (ii) the OFDE name was liable to confuse and mislead and cause a significant number of people to think that it was a spin-off of OFAH; and (iii) Shazam was incurring damage as it was likely that fans of OFAH would be diverted from buying tickets for the OFAH musical, choosing instead to go to the OFDE Show.

(Shazam Productions Ltd v Only Fools The Dining Experience Ltd [2011] EWHC 1379 (IPEC) (8 June 2022) — to read the judgment in full, click here).