Copyright Infringement Patents

Question 2

It may well seem that the concept of idea/expression dichotomy is the most complicated and controversial aspects in Copyright Law. Copyright law protects a work that it has been produced by one person and this person retains the right to use this work according his will; any person who without permission copy and use a copyright protected work then he will face an action by the court for copyright infringement. However, the problem arises in the case that a person claims infringement of copyright work on the basis that another person produced a work using his idea in similar ways that according to him constitutes copyright infringement. As you will see later on this text the issue of copyright infringement is enormous as a result of the ambiguous legislation and case law in relation to television formats and whether the idea of a certain television show is protected by copyright law. “Until such time as it is tested, the debate as to whether or not a format can be adequately protected rages on, and the television industry is simply left with a range of inadequate causes of action and legal rights to try to protect a format”. The aim of this text is to provide a brief statement of what is copyright law, explained the idea/expression dichotomy; explores the concept of television formats and whether they are protected under copyright law with reference to case law or whether there is any alternative form of protection.

Firstly, “copyright is a property right that subsists in certain specified types of works provided for by the Copyright, Designs and Patents Act 1988 (CDPA)”. “Original literary, dramatic, musical and artistic (LDMA) works are the main protected works listed in the section 1(1) (a), of the CDPA 1988. Also, section 1 (1) (b) and (c) listed out that “sound recordings, films, broadcasts or cable programmes, and the typographical arrangement of published editions” are works protected by copyright law. Further, under the section 9(1) the “author of a work is the person who creates it”. However, if there is not “obvious creator” the section 9 provides that the “author is usually deemed to be the person by who makes the arrangements necessary for the making of the work in question”. A person who is treated as the owner of a work has the special right to use the work according his will such as to produce a copy, “broadcasting or selling copies to the public”. Finally, under the EC Directive 93/98 the term of years for the main protected works (LDMA) is the life of the author plus 70 years.

Moreover, the use of the word original in the main protected works (LDMA) has a significant role and its proof is essential to establish a copyrightable work. The case of University of London Press v University Tutorials Press Ltd, has firstly examined the issue of originality. In this case, Peterson J argued that the Copyright law “does not concerned with the originality of ideas, but with the expression of thoughts” and that the work must not be copied from another work but it must be originated by the author. This principle was confirmed in the case of Ladbroke v William Hill Ltd. In this case, Lord Pearce said that “the word original does not demand original or inventive thought, but only that the work should not be copied but should originate from the author”. Nevertheless, in determining the question of whether a work is original, it must be examined on the amount of effort that the creator contributed to the final work. Thus based on the previous case of Ladbroke, a work is original and protected by copyright law only if the author “has exercised requisite labour, skill or judgment in producing the work”.

To continue, what is to be considered is the idea/expression dichotomy in order to find out whether an idea is protected by copyright law.

The idea-expression dichotomy in the USA was firstly examined in the famous early case of Baker v Selden by the Supreme Court of America. Even though the decision was based on wrong application of the law the case is still a good law and the later courts have relied in its decision in order to illustrate the idea/expression dichotomy.

The general rule in relation to the idea/expression dichotomy is that the “copyright law does not protect ideas, facts news or information but the expression of such ideas such as a particular book or painting”.

This principle has taken an international form as a result of the introduction of the WIPO Copyright Treaty 1996 which had been signed by more than 100 countries. The article 2 of this Treaty provides that ”copyright protection extends to expressions and not to ideas, procedures, methods of operation or mathematical concepts as such.”

The definition of idea and expression can be construed as that an idea is “the formulation of thought on a particular subject while expression would constitute implementing the said idea”.

Arguably, some ideas can be expressed in various forms. Thus, if an idea is capable of being used in other form then there is not copyright infringement. Further, in case that idea and expression cannot be separated copyright law does not take action for copyright infringement based on the ground that it would monopolize the idea only to one person.

In addition, copyright law does not protect the expression of an idea where any change of the expression can result in a change of the whole idea. Furthermore, there are some ideas which are capable of being said in limited ways and the courts are reluctant to give copyright protection of the expression. In summary, the copyright law may take an action for copyright infringement if a person expresses another person’s idea when there is an alternative method to be expressed.

Moreover, the United Kingdom does not incorporate the idea/expression dichotomy in legislation or case law but English judges tend to use the idea/expression principle in order to “produce similar results”.

Generally, the principles of idea/expression dichotomy in UK and US are similar. In UK the courts followed the position that “thoughts and plans existing in a man’s brain are not ‘works; but once reduced into writing or other material, such ideas through their material form, may be susceptible to copyright protection”. Thus, the use of an idea constitutes copyright infringement if that idea has been used in a more “detailed proposition or a collection of ideas, pattern of incidents, or a compilation of information from the original document/material”.

A well known case in England for the idea/expression dichotomy is the case of Ibcos Computers Ltd v Barclays Finance Ltd. In this case was held that even though an idea cannot be expressed in different way it could still be protected by copyright law if that idea had been expressed in a more detail manner. Also, in the case of Kenrick v Lawrence “effective protection was denied to a drawing showing a hand holding a pen and marking a ballot paper”. The drawing was made in order help “persons with poor literacy skills how to vote”. It was held that a drawing which shows people how to vote cannot be protected by copyright law because there is not any alternative way to show the similar idea. Finally, in the case of Jones was held that “the use of design concepts taken from the common stock of architectural ideas that every one is entitled to use, will not infringe the artistic copyright in an architect’s plans. However, designed concepts and underlying structures and developed ideas may be protected providing they are not too remote from the work as expressed”.

Having explained the copyright law and the idea/expression dichotomy we must continue and examine the meaning of the term “formats” under copyright law and whether television formats are copyright protected or not.

Before introducing you the meaning of the term formats we must explain in details the meaning of the word dramatic since under copyright law television formats may fall into the category of dramatic works. The section 3 (1) of the CDPA 1988 provides that a “dramatic work includes a work of dance or mime”. A work in order to be dramatic work and protected by copyright law must satisfy certain criteria.

The first criterion is that it must be “recorded”. In the case of Tate v Fullbrook , “the court held that visual skit for a music hall sketch involving the use of a firework was not the subject matter of copyright because it had not been reduced to writing”. Also, in the case of Green was held that” the dramatic format of a television show had to have some certainty in its subject matter for that format to be entitled to copyright protection”

The second and most difficult criterion is that it must be capable of being “performed”. In the case of Norowzian v Arks Ltd the claimant produced a film where a man was dancing to music and with the help of the technology he created a film where the position of the man was changed and it was not capable to be performed in reality. The defendants produced a similar film and the claimant sued them for copyright infringement of a dramatic work. On first instance, the court held that the work was not a “dramatic work on the ground that it could not be performed live before an audience”. On appeal, the court held that the trial court was wrong to hold the position that a film could not be a dramatic work; a film can be a dramatic work if it can be performed live before an audience. In this case the fact that the film could not be performed live makes the film not capable of being a dramatic work and the defendants not liable for copyright infringement.

Arguably, formats can be described as the “foundation stones of the burgeoning ranks of game shows, series, serials, soap operas, prequels and sequels which now proliferate on our screens”.

A format is said to be established if the elements of the show in question can be satisfied. For instance, “in a game, chat or quiz show, a format work might be considered to be the fixed and repeated elements which form the dramatic structure of the programme, and cause the dramatic movement through that structure” whereas “in soap operas, fixed, repeated or predictable elements form the setting or background against which the action takes place”. The courts tend to follow the line that creation of a format is generally an idea and not a creative work which is capable of protection by copyright law.

The protection of formats is an issue of debate for the whole world and there are strong arguments which support the position that formats should be protected by copyright law. Arguably, the strongest argument in favour of copyrightable formats was considered to be that since original dramatic and literary works are protected by the Copyright Designs and Patents Act 1988 if the creator has used the requisite skill, labour and judgment then formats should be equally protected since the author use the necessary skill, labour and judgment in order to create the work and the licensing company pays a large amount of money to bring the show in action.

The issue of TV formats in copyright law has been considered in the famous case of Green v Broadcasting Corporation of New Zealand “where presenter Hughie Green lost a Privy Council decision when he sought to establish a format right to his programme concept, Opportunity Knock”.

In this case, Huggie Green brought an action to the court in order to stop the Broadcasting Corporation of New Zealand to produce a similar talent show to the Oppurtunity Knocks on the ground that the talent show was protected by copyright law as a dramatic work. The New Zealand Broadcasting Corporation’s talent show had the same title to the claimants’ talent show and also large number of same features such as “catchphrases and a clapometer to measure studio audience reactions”.

The trial court rejected Green’s argument and on appeal the argument that the talent show could be a literary work was rejected by the Court of Appeal on the ground that even though the claimant had produce a script based on specific elements there are not any evidence to prove that the script was expressed in details as it required by the idea/expression dichotomy principle.

Moreover, as regards the claimant’s basic argument that the talent show was a dramatic work, Gallen J view was contradicted by the rest of the judges on the Court of Appeal. Gallen J stated that the since the combination of the claimant’s elements are considered to have “a recognizable framework or structure then it is protected by copyright law as an original dramatic work”.

Gallen J view was rejected by the Privy Council. “Lord Bridge, who delivered the opinion of the Privy Council, had difficulty in identifying the dramatic format with any degree of certainty”. It was held that the “format of the talent show” cannot be protected by copyright law since the fact that there are some repeated elements does not make clear that the combination of these elements constitutes a dramatic work and fall under the protection of the CDPA 1988. Finally, it was held that in case that a protection is given to TV formats then this should be done only if it is absolutely sure that the format constitutes a dramatic work otherwise there would be miscarriage of justice for the rest of the world to monopolize a format only to few big companies.

The decision in the case of Green merely provided a guideline for the courts in United Kingdom for cases concerns protection of TV formats but the issue is still in question on the basis that in the case of Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd Jacob J stated that “copyright law can protect the copying of a detailed idea”.

The issue of whether a TV format is protected by copyright law as a detailed idea or not was hope to be answered in the recent case of ‘Pop Idol –X Factor’ case (‘Fuller v Cowell’ dispute). In this case, the claimant Simon Fuller was the creator of the talent show called Pop Idol. He brought proceeding to the courts on the basis that X Factor, a rival talent show, infringed his “copyright on TV formats”; also he sued a number of persons who worked in his show for breach of contract on the ground that they worked to the defendants’ show “where they agreed not to work on rival shows”. He also alleged that more than 25 similarities arise between the two shows. “The case settled before trial and so the precise ambit of format rights remains untested in an English court since the 1989 case of Green v Broadcasting Corporation of New Zealand”. The parties decided to share the profits of both talent shows.

The failure or unwillingness of the judges to impose copyright protection to TV formats was considered to be unfair and more than 100 from the television and broadcasting industries agreed to create the “Format Recognition and Protection Association” (FRAPA) in order to tackle piracy on television formats. The aim of the organization was to make sure that “television formats are respected by the industry and protected by law as intellectual property”

The issue of copyright protection for TV formats had concerned US courts and several cases brought before the court for disputes of copyright infringement in TV formats. Generally, US courts have accepted that formats can be protected by copyright law but none of the claimants has succeeded to prove copyright infringement of TV formats as a result of stricter test.

The most recent case on TV formats in US is the case of CBS Broadcasting, Inc v ABC, Inc. In this case the court rejected a claim for copyright infringement on TV format. “Judge Preska followed an existing standard which states that where a copyright work is comprised of an original combination of unoriginal elements, as is the tendency with many modern formats, protection will not extend further than to restrict against the identical reproduction of the elements forming the original work in another work”.

Therefore, it can be argued that both United Kingdom and US courts are very reluctant to impose copyright infringement in TV formats. In UK the courts wholly denied any protection to TV formats and in US protection is given only if the two works are extremely identical.

To continue, as it mentioned above the courts followed the position that copyright law does not protect ideas but the expression of detailed ideas. Also, liability for copyright infringement was denied on TV formats. However, a person who feels that his copyright was infringed by another person may apply to the court under the principles of “confidential information” and “passing off”.

An action for copyright infringement is more likely to succeed under the “passing off” principle. An action to the court under the passing off principle should be based on the argument that the defendant misrepresented the public that his services or products are the same to the claimant.

In the case of Reckitt & Colman Products Limited v Borden Inc. & Ors, the Court of Appeal explained in details the elements that a claimant must establish in order to succeed a claim under the passing off principle. The court held that the claimant must establish 3 elements in order to succeed.

Firstly, that “there was reputation or goodwill in relation to the goods or services which he supplies in the mind of the purchasing public by association with the identifying get-up”. Secondly, he must establish that there was a misrepresentation to the public likely to lead the public to believe the goods or services offered by him were the goods or services of the plaintiff; and thirdly that he suffers or is possible to suffer damage as a result of the defendant’s misrepresentation”.

Furthermore, the confidential information principle protects “reasonably developed ideas for literary and dramatic works and films which are disclosed in confidence”. In contrast to copyright law, a claim under the confidential principle can protect ideas that have been originated by the author and exchange in confidence with the producer in the course of a deal between them.

The definition of the confidential information principle was set out in the case of Fraser v Thames Television LTD. In this case, the “Court of Appeal protected the originators of a developed idea for a television series from the defendants, to whom detailed outlines were shown in confidence”.

To conclude, it can be argued that the area of copyright law can be characterized both important and controversial. On the one hand, the Copyright Designs and Patents Act 1988 provide a clear basis which the courts must follow in questions of copyright infringement. However, on the other hand, the copyright law is ambiguous in issues of whether there is protection of an idea. Both in UK and US the general rule is that an idea is not protected by copyright law; however, in UK judges have said that a detailed idea can be protected and in US that an idea is infringed if it is absolutely same with the work in question. This unclearness has caused confusion both to the public and the courts and there is not certainty on whether someone’s work would be protected or not. Further, the biggest problem arose in matters where the technological development, such as TV formats, involved in the issue of whether the idea of a work is protected by copyright law. The courts in order to avoid monopolies of an idea have denied any protection to TV formats. The leading case on TV formats, the Green case has provided guidelines but the decision is still in criticism and clearly explanation has not achieved by the courts yet. However, protection of idea can be achieved by alternatives procedures such as the passing off and confidential information principles and these principles may be the answer to the problem of whether an idea should be protected by copyright law or not.

Bibliography

Book:

• • Bainbridge. I. Intellectual Property (6^th ed. Pearson Education Ltd, Harlow, England, 2007)

• • Coyle J and Cousin L, Copyright Law(Leeds Metropolitan University 2007-08)

Journals:

• • Charlotte Hinton “Can I Protect my TV formats?” (2006) Ent.L.R.17(3), 91-93

• • David Rose “Format rights: a never-ending drama (or not)” (1999) Ent.L.R. 10 (6), 170-174

• • Harbottle & Lewis LLP “The format factor: television format rights” (2006) Leeds metropolitan website x-stream

• • Klement Ute “Protecting television show formats under copyright law – new developments in common law and civil law countries” (2007) E.I.P.R. 29(2), 52-60

• • Richard McD Bridge and Shelley Lane ‘The Protection of formats under English Law: Part:1′ Ent. L.R. 1990, 1(3), 96-102

• • Simon March “The X and make up factor: the “Fuller v Cowell” dispute” (2005) Comms. L. 10(6), 219-223

Legislation:

• • Copyright Designs and Patents Act 1988

European Community Law

• • WIPO Copyright Treaty 1996

• • EC Directive 93/98

Cases referred:

• • University of London Press v University Tutorials Press Ltd[1916] 2 Ch 601

• • Baker v Selden 101 U.S. 99 (1879)

• • Ibcos Computers Ltd v Barclays Finance Ltd [1994] F.S.R. 275

• • Kenrick v Lawrence (1890) 25 QBD 99

• • Jones v London Borough of Tower Hamlets [2001] RPC 407

• • Tate v Fullbrook [1908] 1 KB 821

• • Norowzian v Arks Ltd [1999] FSR 79

• • Norowzian v Arks Ltd (No2) [2000] FSR 363

10) Green v Broadcasting Corporation of New Zealand[1989] RPC 700

11) Ibcos Computers Ltd v Barclays Mercantile Highland Finance Ltd [1994] F.S.R. 275

12) CBS Broadcasting, Inc v ABC, Inc 02 Civ 8813 (LAP) (SDNY, Preska J, 13 January 2003)

13) Reckitt & Colman Products Limited v Borden Inc. & Ors R.P.C. 341

14) Fraser v Thames Television LTD [1984] QB 44

Websites:

• • Edwards Samuels ‘THE IDEA-EXPRESSION DICHOTOMY IN COPYRIGHT LAW’ (1989) 56 Tenn. L. Rev. 321

• • World Intellectual Property Organisation “The Impact of the Internet on Intellectual Property law”

• • Sankar, A and Chary N ‘THE IDEA – EXPRESSION DICHOTOMY:INDIANIZING AN INTERNATIONAL DEBATE‘ (2008) Vol. 3, Issue 2

• • Challis B and Coad Jonathan “Format Fortunes: Is there Legal Recognition for the Television Format Right?” (2004)

• • FRAPA, The Format Recongnition and Protection Association “Welcome To FRAPA”