Case Summary and Outcome

The Intellectual Property Enterprise Court (IPEC) of the High Court of England and Wales (EWHC) ruled that the immersive theatre experience “Only Fools the Dining Experience” (OFDE) infringed copyright by using characters, themes, catchphrases, and other elements from the popular British television show “Only Fools and Horses” (OFAH). The plaintiff, Shazam, claimed that OFDE was an imitation of the television show OFAH, and so infringed its copyright. The defendant argued that OFDE was protected under copyright law because it was a parody intended to pay tribute to the popular program. The Court held that the defendants had taken extensive material from the OFAH program and that the character “Del Boy” was protected as a work of authorship under EU Copyright law. The Court rejected OFDE’s defense of parody and pastiche, stressing that the imitations could not be equated with “parodies”. The Court also held that the imitation did not constitute fair dealing.

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Facts

Only Fools and Horses (OFAH) is an iconic television program originally broadcast by the BBC between 1981 and 2003. The central characters of the show are Derek Trotter (commonly known as “Del Boy”), a market trader, and his younger brother Rodney. Both characters live in a high-rise council flat in Peckham. Their presence at the opening ceremony of the 2012 London Olympics, almost a decade after the last Christmas special of OFAH was broadcast, is evidence of the show’s profound influence and widespread popularity.

John Sullivan, who wrote the scripts for all OFAH episodes, passed away in 2011. His family had set up a company called Shazam in 2003 to exploit the intellectual property rights that John Sullivan held in OFAH and other shows. In February 2019, Shazam launched a musical production at the Theatre Royal Haymarket, based around the characters from OFAH. Jim Sullivan, John Sullivan’s son, wrote the script for the musical with Paul Whitehouse.

In May 2018, Mr. Pollard-Mansergh and Mr. Mansergh decided to create an interactive dining show using the characters from OFAH, which was produced and marketed as “Only Fools the (cushty) Dining Experience” (OFDE). The cast of the OFDE show incorporated the looks, mannerisms, voices, and popular catchphrases of iconic characters such as Del Boy, Rodney, and others from the television version of OFAH. The established backstories of these characters and their relationships, as developed in OFAH, were faithfully retained in OFDE. However, OFDE presented these characters in the fresh setting of an interactive pub quiz, not seen in the original OFAH series.

The cast of the OFDE gastronomic show performs engaging scenes from a script that was developed over several weeks by Ms. Pollard, Mrs. Mansergh and their team. The creation of the script allowed room for the actors to engage in spontaneous interactions with the diners and to incorporate improvisation. OFDE typically took place in function rooms, entertaining an intimate audience of no more than 120 people. 

In July 2018, the petitioner Shazam wrote a letter against Mr. Pollard and Ms. Mansergh complaining of infringement of intellectual property rights, based on the OFDE publicity available at the time. The defendants, Mr. Pollard and Ms. Mansergh, developers of the OFDE gastronomy show, argued that in their view, there would be “no trademark, copyright or PRS infringements will result due to performances of the tribute/improv show/pub quiz/trivia night: “Only Fools The (cushty) Dining Experience” [para. 11]. 

In September 2018, OFDE began performing the gastronomic show. In July 2019, Shazam sent a second letter against the defendant. The petitioner argued that “OFDE has committed copyright infringement and passing off in relation to OFAH. It sought voluntary undertakings to cease those activities” [para. 13]. However, “no undertakings were offered and all allegations were denied” [para. 14].

Following these events, on 19 December 2019, petitioner Shazam filed a lawsuit alleging that the defendants’ gastronomic show infringed its copyright in each script of an OFAH episode; the OFAH scripts as a whole, which collectively establish the characters, storylines, and imaginary world of OFAH; the characters (namely Del Boy, Rodney, Marlene, Cassandra, Uncle Albert, Boycie, and Trigger); and the lyrics and opening theme song of OFAH.

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Decision Overview

Deputy High Court Judge John Kimbell KC. delivered the opinion for the Intellectual Property Enterprise Court of the Business and Property Courts of the High Court of England and Wales. The Court had to decide whether the OFDE — a dining experience that incorporated the characters and storylines of the OFAH show— infringed the petitioner’s copyright, or whether it was a different artistic work that deserved legal protection.

The plaintiff Shazam argued that OFAH is “an original literary or dramatic work” which is protected by copyright under section 1(1)(a) and section 3(1)(a) of the Copyright Designs and Patents Act 1988. Furthermore, the petitioner noted that “the uses made of John Sullivan’s works were not for the purposes of parody” [para. 142]. In this regard, Shazam remarked that the defendants’ aim was merely to imitate John Sullivan’s work in a restaurant or diner context. With this in mind, the petitioner emphasized that “imitation is not parody” [para. 142]. 

On the other hand, the defendants argued that the September script of “OFDE represented fair dealing for the purposes of parody, alternatively for the purposes of pastiche” [para. 141].

First, Judge Kimbell held that OFAH was indeed a dramatic work within the terms of the Copyright Designs and Patents Act 1988, as defined by Nourse LJ,  as “a work of action, with or without words or music, which is capable of being performed before an audience” [para. 66]. Whilst the individual scripts were held to be dramatic works, protected under UK copyright law, the Judge held that there is no copyright protection given to the body of scripts as a literary work in their own right.

Further, regarding the legal protection of popular characters created in OFAH, Judge Kimbell acknowledged that “there is surprisingly little discussion in English case law or commentary on whether (and if so in what circumstance) copyright might subsist in a character from a dramatic or literary work” [para. 76]. Judge Kimbell also added that in European Union law two cumulative conditions are required: “First,… that there exists an original subject matter, in the sense of being the author’s own intellectual creation. Second, classification as a work is reserved to the elements that are the expression of such creation” [para. 94]. The Court considered that both requisites were fulfilled in relation to the character of “Del Boy”, and  therefore it concluded that OFAH is a protected work under EU Copyright law. Also, the judge underscored the presence of various copied elements in the scripts, such as the phrase “Oh shut up you tart!”, among others.

Having established that OFAH and its main character were protected by the Copyright Designs and Patents Act 1988, Judge Kimbell examined whether or not the copyright of any work owned by the petitioner Shazam had been infringed. He stated that the petitioners’ rights regarding OFAH and Del Boy “will have been infringed if they have been copied by the Defendants” in the framework of OFDE’s script [para. 124]. Judge Kimbell remarked that it was essential  to determine whether or not the part of the original that had allegedly been copied contains elements that are an expression of the intellectual creation of the author of the work. On the issue, the Court held that “the evidence of infringement by the Defendants is overwhelming and obvious” [para. 127]. 

After analyzing OFDE’s scripts in detail and comparing them with OFAH’s original work, Judge Kimbell concluded that “in these circumstances, it seems to me to be plain and obvious that (a) a substantial part of the Scripts was copied into the September Script and (b) that what was copied represented the expression of the intellectual creation of John Sullivan as the originator of those characters, their catchphrases and back-stories” [para. 134].  

Then, Judge Kimbell recalled Section 30A of the Copyright Designs and Patents Act 1988 which provides that “fair dealing with a work for the purposes of caricature, parody or pastiche does not infringe copyright in the work” [para. 137]. He mentioned that Section 30A traces its roots back to EU Directive 2001/29/EC of 22 May 2001, which aimed to harmonize specific aspects of copyright and related rights in the Information Society.

The Judge referred to article 5(5) in particular, commonly known as “the three-step test,” which finds its origins in Article 9(2) of the Berne Convention, an international treaty for the protection of literary and artistic works signed on 9 September 1886.  He added that the three-step test establishes the following criteria to determine whether an exception to copyright infringement is valid: 1) that the exception is confined to certain special cases; 2) that the application of the exception does not conflict with a normal exploitation of the work of other subject-matter; 3) that the application of the exception does not unreasonably prejudice the legitimate interests of the rightsholder. Furthermore, Judge Kimbell remarked that article 9(2) grants state parties the authority to allow the reproduction of protected works, and it must be understood in conjunction with Article 9(1), which establishes the basic rights of authors. Moreover, he mentioned that Article 13 of the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS) also incorporates the three-step test. The Court also noted that “Section 30 requires that in order to [be] a permitted use the fair dealing must be for the ‘purpose of parody’, pastiche or caricature” [para. 156].

Judge Kimbell mentioned the case of Deckmyn v. Vandersteen, heard by the European Court of Justice (ECJ), to illustrate the conditions that must be fulfilled for the parody exception to be applied. The ECJ held in that case that the essential characteristics of a parody are to (i) evoke an existing work, (ii) while being noticeably different from it, and (iii) to constitute an expression of humor or mockery. In that case the ECJ also considered that when applying the exception of parody, a court must strike a fair balance between the interest and rights of the persons, and the freedom of expression of the user of a protected work who is relying on the parody exception. The ECJ also highlighted that national courts should determine whether the specific case at stake fulfills the essential requirements of parody and also preserves the aforementioned fair balance.

Judge Kimbell pointed out that the definition given by the ECJ was very wide, in particular when applied to alleged copies of humorous work. The Court noted that “the need for a parody to express an opinion in order to fall within the exception is particularly important in the case of parodies of comedies” [para. 177]. The judge also found that parodies that target comic works as their subject matter are relatively uncommon, and that it is more typical in literary and dramatic parody to mock and satirize serious works. 

Moreover, Judge Kimbell conceptualized the notion of “parody” as “an imitation which exaggerates the characteristics of a work or style for comic effect” [para. 160], quoting John Gross’ “The Oxford Book of Parodies” (2010)” and “The Faber Book of Parodies (1984)”. The Judge also acknowledged that the reason why parody is protected under both the UK and EU regulatory systems is that it involves freedom of expression “in a context where the copyright holder may well be highly unlikely to grant a licence” [para. 171]. In addition, he stated that “parodies may be a form of artistic expression but target parodies may additionally involve considerations of freedom of political expression” [para. 171]. 

On that basis, the Court held that a parody must “express some kind of opinion by means of its imitation, but noticeable difference, from the work parodied” [para. 176]. Judge Kimbell added that the opinion may be about something outside the work, such as a political figure or the policy of a public authority, or it may be an opinion about the parodied work itself, but in any case, it must be an expression of mockery or humor. In turn, the judge agreed with the petitioner that mere imitation (of a humorous work) is not sufficient to constitute parody.

Then the Court referred to the concept of pastiche, in order to analyze whether OFDE’s script constituted fair dealing for the purpose of pastiche.  Following the precedent laid out in cases like Pelham v Hutter, by the ECJ, the Court argued that the term pastiche refers to the “imitation of the style of pre-existing works” [para. 186] and “the utilisation or assemblage of pre-existing works in new works” [para. 186]. The Court considered that this approach is also consistent with the approach to parody laid out in the case Deckmyn v. Vandersteen by the ECJ.

The Court held that these elements  were essential for the configuration of a pastiche: a) “The use imitates the style of another work” ; or b) “It is an assemblage (medley) of a number of pre-existing works” ; c) “In both cases, as with parody, the product must be noticeably different from the original work” [para. 188].

Taking into consideration these criteria, the Court reached the conclusion that “the use made of the characters, their backstories, jokes and catchphrases is not for the purpose of parody within the meaning of section 30A” [para. 194] nor “for the purpose of pastiche within the meaning of section 30A” [para. 195]. Hence  Judge Kimbell considered that even if the script “does involve the use of copyright material for the purposes of pastiche or parody, in my judgment, that use does not qualify as fair dealing and fails steps 2 and 3 of the three step test” [para. 196].

Regarding the passing off claim, the Court concluded that the title of the Defendants’ show had the potential to deceive and draw customers away from Shazam’s recently launched West End musical.

For the aforementioned reasons, the Court decided that petitioner’s claims for copyright infringement and passing off succeeded.

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