Tribunal sets out guidance on public benefit test for use of rooftops as telecoms sites
Out-Law Analysis | 10 Oct 2016 | 11:22 am | 6 min. read
Last month the BBC lost the rights to broadcast the next three series of the show to Channel 4 following an auctioning off of the rights by content producer Love Productions.
The sale attracted a lot of attention as, to many of the show's followers, 'Bake Off' is synonymous with the BBC brand. However, that fact did not prevent Love Productions from selling the rights to the show to a higher bidder.
There is no such overarching or umbrella TV format right in the UK. Instead, a TV format can be protected through a collection of separate, discrete legal rights. None of the rights on their own or in combination can entirely protect TV formats from being copied by rival broadcasters or production houses.
Despite this, there are steps that broadcasters can take to safeguard the value they generate from new TV formats and make it difficult for copycat programmes to be created.
Copyright protects the expression of ideas and not ideas themselves. It cannot therefore protect the idea or abstract theory behind a programme, however original that idea may be. However, elements of a TV programme, such as a script, artwork or theme music could qualify for copyright protection as literary, artistic or musical works.
Copyright claims in respect of TV programmes broadcast in the UK have been dealt with by the courts on occasion.
In a case concerning claims that the creation of the format for and showing of the popular TV quiz programme 'Who wants to be a Millionaire?' was an infringement of copyright, the High Court in London held that "copyright exists in the format for [a programme] ... not in any idea or thought process which may underlie it".
Game show Opportunity Knocks, which ran for more than 40 years on British television, was also the subject of a dispute over rights to the format of the show.
In 1989 the Judicial Committee of the Privy Council dismissed claims made by Hughie Green, author, presenter and compere of Opportunity Knocks, that New Zealand Broadcasting Corporation had engaged in copyright infringement and passing off by broadcasting a similar show under the same name in New Zealand.
The decision centred on a lack of evidence over the contents of scripts for the show. The scripts, it was held, only expressed a general idea or concept for a talent contest and were thus not the subject of copyright.
In terms of reality TV, it is difficult to prove copyright protection exists regarding the content of the show because whilst some elements may be scripted the content is usually subject to change and/or is partially unscripted.
Under UK copyright laws an author of copyrighted works also enjoys moral rights in those works once they have sold the works on, as may happen in the case of creators of TV formats.
Moral rights include authors' right to assert that they be identified as the author of works and not have others' work falsely attributed to them, as well as the right to object to their work being subjected to derogatory treatment.
Names, logos and other symbols associated with television programmes are often registered as trade marks. Registering these as trade marks can prevent others from creating rival shows with the same or similar branding.
Creators of TV formats should consider registering trade marks for names and logos in multiple countries if their programme is to be marketed and sold globally.
In the UK if you can prove that there is 'goodwill' in a business asset, then this goodwill is protectable. Goodwill is essentially the value in creating a recognised business reputation.
If another businesses 'passes off' their services as being yours and appears to claim that their services are yours or that you are in some way connected or have endorsed the services, then you can take action. You can claim damages or seek an injunction to prevent that use, so long as you can show that you have or are likely to suffer damage as a result of the use.
Creators of TV formats might be able to point to large audiences and sales of merchandise as evidence that their programmes benefit from the goodwill necessary to take action against copycat producers under the law of passing off.
However, it is likely that a copycat producer would strive to make very clear the origin of their show, even if the format mirrors that of the original. A creator of a TV format would have to demonstrate that there has been misrepresentations made to viewers that mislead them as to the origin of the copycat show.
Contract law, and in particular restrictive covenants or restraints of trade, can be used to prevent people working on TV shows from developing, producing, participating in, and sharing know-how with other shows, including would-be competitors or copycats.
Broadcasters should consider what arrangements they have with their talent. They may wish to put in place contractual arrangements which would stop their talent working for a rival show. However, such restrictions are likely to be limited by at least time and geography, and are often difficult to enforce.
It might be possible for broadcasters to allege tortious interference of contract if a copycat producer intentionally convinced or caused talent to breach their contract with them.
Although ideas on their own do not benefit from copyright protection, they can be protected under the law of confidence.
Creators of TV formats should ensure any pitches they make to broadcasters for their TV shows are carried out under a confidentiality agreement or non-disclosure agreement, and that those involved are subject to appropriate confidentiality undertakings.
While the legal issues relevant to TV formatting are important, reputational issues must also be kept in mind.
In the UK viewers are acutely aware of the difference between genuinely innovative new programming, and rip-offs of existing shows. The main UK broadcasters pride themselves in coming up with and supporting fresh ideas, knowing that viewers are likely to be turned off by lazy copycat productions.
Steps to take to protect rights and interests in TV formats
To guarantee maximum protection in terms of copyright, a production bible should be collated which contains comprehensive details of: scripts, phrases, set designs, floor plans, logos, costumes, theme tunes and anything else relevant to the look and feel of the show. This bible should only be shared on a confidential basis.
Logos, costume designs and other features of the programme might benefit from design rights. These rights can be registered, although designs can also be protected in more limited circumstances if they are unregistered.
Aggressive brand management and marketing, particularly the creative elements of a new format, can increase the likelihood that it is associated solely with its owner or creator. This might be enough to persuade would-be competitors to steer away from developing copycat or rival shows for non-legal commercial reasons.
Prior registration of all relevant social media profiles that are to be associated with the format or programme, including all domain names rooted at relevant top level domains, such as .uk, .com or .tv, can also help prevent abuse and cybersquatting.
If the format is to be sold globally, producers should also consider how the various intellectual property rights and issues of contract law and confidentiality are engaged in other countries. There may be additional rights that apply in other jurisdictions that can help creators protect their formats.
Developers should also be aware that that there are two international lobbying groups supporting the protection of copyright in TV formats – namely, the International Format Lawyers Association (ILFA) and the Format Recognition and Protection Association (FRAPA).
FRAPA operates a registry system that may assist in proving that a format existed before the creation of a copycat programme, so developers should consider registration with FRAPA as an option.
Before developing and launching new shows, broadcasters and content producers should carry out pre-emptive research into formats. Knowing what is already out there can not only help those organisations identify potential legal barriers to putting ideas into practice, but also gaps in the market for innovative new formats.
Those involved in the broadcast industry often talk about establishing four points of difference when creating new shows. That refers to having four elements of a programme that vary from shows that are already on TV, even if the broad format of the programme is the same.
Establishing four points of difference is an industry norm that creators of TV shows should conform to. Not only can it help those creators avoid legal risks, it can help them introduce new programming that captures audience interest and open up opportunities to commercially exploit those shows.
Victoria Bentley, James Robb and Laura Clayton are intellectual property law experts at Pinsent Masons, the law firm behind Out-Law.com.
Tribunal sets out guidance on public benefit test for use of rooftops as telecoms sites