Fictional Characters and Copyright

Last year, for the first time, the High Court of England & Wales held that a fictional character can be recognised as a copyright work (Shazam Productions Ltd v Only Fools The Dining Experience Ltd and others [2022] EWHC 1379 (IPEC) (link)).

The Court’s finding brings English law in line with international jurisprudence, for example Germany and the USA (see Re Pippi Longstocking [2014] ECC 27; Klinger v Conan Doyle Estate, Ltd 755 F3d 496, 498 7th Cir 2014).

The judgment stated that the character “Del Boy”, from the famous British TV sitcom “Only Fools and Horses” (OFAH), is a literary copyright work.

Background

The BBC broadcast seven series of OFAH from 1981 to 1991, with further shows being broadcast until 2003. John Sullivan wrote the scripts for every episode.

John set up a company, Shazam Productions Ltd (Shazam), to manage and commercialise the intellectual property in various works created by him, including OFAH.

The defendants operated an interactive dining show experience, involving the characters from OFAH. The show was marketed under the name “Only Fools The (cushty) Dining Experience” (OFDE). The premise was simple: diners partook in a sit-down meal and were served by actors playing the characters from OFAH, including Del Boy, Rodney and Uncle Albert. The actors acted out a story around, and involving, the audience members. The actors adopted the mannerisms and appearances and also used the catchphrases of the characters in OFAH and some of their jokes. The characters’ backstories, their wants and desires, all of which were created and developed by John Sullivan for OFAH, were referenced in OFDE. However, the characters were presented in the context of an interactive pub quiz, set at OFAH’s Nag’s Head pub, which never happened in OFAH.

Shazam issued proceedings for copyright infringement of the characters and scripts of OFAH, and also for passing off.

The Court’s decision

The Court held that copyright infringement and passing off had taken place.

To determine whether the fictional character Del Boy qualified as a literary copyright work, it considered the two requirements set out in Cofemel v G-Start Raw (C-683/17):

1. Whether original subject matter exists, in the sense of being the author’s own intellectual creation (first limb).
2. Classification as a work is reserved to the elements that are the expression of that creation (second limb). The European Court of Justice (ECJ) stated in Levola Hengelo (C-310/17)that this only includes elements that can be identified with sufficient precision and objectivity.

With regard to the first limb, the Court held that there was more than enough evidence to show that Del Boy was the original creation of John Sullivan. The Court highlighted features such as Del Boy’s complex motivations, the various layers to his character and personality, his full backstory, his catchphrases and expressions, including his use of mangled French, which “expressed a desire on his part to appear suave and sophisticated whilst at the same time providing comic effect because the phrases were used incorrectly”. All of these features were creative choices of John Sullivan, written and recorded by him in the scripts he wrote for OFAH.

With regard to the second limb, the Court held that the features of Del Boy relied on by Shazam as constituting his character were precisely and objectively discernible in the OFAH scripts.

The Court held that Del Boy was a protected literary work and that infringement had arisen, citing the defendants’ evidence of attempting to be “pitch perfect” in portraying the character in OFDE.

Parody

The judgment also provided guidance as to the defences of fair dealing with a copyright work for the purposes of parody and pastiche, under section 30A of the Copyright, Designs and Patent Act 1988.

The Court stated that there are two types of parody covered by the defence:

* Parody directed at, or concerned with, the original work.

* Parody where the original work parodied is merely the instrument of an intention aimed at a third-party individual or object.

To succeed with a defence of parody, the Court held that a defendant must establish that the new, allegedly infringing work:

* Evokes an existing work.

* Is noticeably different from that existing work.

* Constitutes an expression of opinion, expressed as humour or mockery.

Also, there must be some critical distance between the new work and the original work.

The Court held that OFDE was not a parody. It was closer in form to reproduction of OFAH by adaption to a live dining sitting than it was to parody.

Pastiche

The High Court held that the two essential ingredients for pastiche are:

1. The use imitates the style of a pre-existing work, or it is a medley or assemblage of a number of pre-existing works.
2. In both cases, the end product must be noticeably different from the original work.

The Court found that OFDE did not imitate the style of OFAH. OFDE took the characters, with their full backstories and catch phrases, and simply represented them in a live dining format. Further, it held that OFDE was created with the aim of giving the audience the feeling that they are meeting the characters from OFAH, rather than being an attempt to use the style of OFAH. OFDE was not a pastiche – just an imitation of OFAH.

Conclusion

Authors and script writers will now be able to oppose the use of their recognisable fictional characters in new, original stories and settings, which they did not write or create. They no longer have to prove that the underlying literary or dramatic work in which the fictional character was created by them (for example, a novel, play, TV or film script) has been copied.

Carl Steele is a partner and head of intellectual property at Ashfords LLP. Ashfords LLP represented Shazam Productions Ltd in the case.