Expression of thought

“Petersen J, giving judgement in 1916, determined that copyright was concerned with protecting the ‘expression of thought’ and not the ‘originality of ideas’. Copyright does not require that an expression must be original – just that it is not copied from another work. This has led to a particular problem with television programme formats in United Kingdom law where there seems to be no protection in law of the basic idea in a format despite the fact that there is a growing business licensing these very format ‘rights’, however unique and original.”

What is to be considered in my work is the tendency of the courts and the copyright law systems of not providing protection to ‘general ideas’ of works, focusing on the works of television (TV) formats. An examination of what is the ‘idea vs. expression dichotomy’ will be provided followed by important United Kingdom (UK) and United States (US) case law, illustrating the approach of the courts to the issues which arose in regards to copyright law protection of television formats. Furthermore, we will consider the alternative ways of protecting TV formats (namely, breach of confidence and passing off).

A suitable starting point would be to introduce you to the basic concepts of copyright law. ‘Copyright is a property right that subsists in certain specified types of works as provided for by the Copyright, Designs and Patents Act 1988 (CDPA 1988).’ The main protected works as provided by the CDPA 1988 include original literary work (“any work, other than a dramatic or musical work, which is written, spoken or sung”), original dramatic work and original musical work, original artistic work including graphic work and photograph, film, sound recording and broadcast.

The copyright owner has the exclusive right of selling the copies of the work, broadcasting it, making copies of it, to rent or lend the work to the public, to perform show or play the work in public, to communicate the work to the public or to make an adaptation of the work.

Copyright protection is given to ‘authors’. The CDPA 1988, s.9 (1) provides that the ‘author’ of a LDMA (literary, dramatic, musical or artistic work) is ‘the person who creates the work’.

The fundamental right under copyright law is the right not to have your work copied. It is a copyright infringement to copy a work or any substantial part of it, as s.16 of the CDPA states.

To continue, we will now look at the concept of ‘originality’ in order to understand which works may be entitled of copyright protection. Some judges have approached this issue by seeking a reasonable amount of effort put in the creation of a work. If such an effort was found the work was said to be ‘original’. Originality is present if a sufficient degree of labour and/or skill and/or judgement and/or knowledge was exercised in the production of a work.

In the leading case of Ladbroke, a company (Ladbroke) went into the fixed-odds football betting business and they copied the form of William Hill’s coupons (the vast majority of their ‘lists’ had the same types of bet). Ladbroke denied that Hill’s lists were ‘original’. However, Lord Pearce stated that the coupons were original because there was a degree of skill involved in selecting attractive bets and the skill used should not be considered as just the minimal labour of compiling the lists.

Furthermore, we will consider and explain the ‘idea vs. expression dichotomy.’ The idea-expression dichotomy was originally formulated to ensure that the manifestation of an idea is protected rather than the idea itself.’ Copyright in general does not protect ideas, facts, news or information, but only the expression of such ideas, facts etc. This principle is an internationally recognised principle of copyright law as a result of the harmonisation of copyright laws of most developed countries through treaties such as the WIPO (World Intellectual Property Organisation) Copyright Treaty 1996 article 2.

The courts do not give a clear-cut definition of what is an ‘idea’ but a simple explanation may be that it is a formulation of thought, whereas ‘expression’ is the implementing of that said idea.

A single idea can have several expressions and at this point issues of copyright arise. If an idea can be expressed in many ways, issues of copyright infringement will normally not arise.

However, where the idea and expression are difficult to be ‘detached’ it is said that they have merged. When this is the case, the expression may not be copyrighted as it would mean that the idea itself has been copyrighted. If the expression is copyrighted in such a case it would create a monopoly of the idea of the copyright owner.

Furthermore, ideas can exist where changing their expression form would result in the changing of the whole idea. Most courts consider these ideas not copyrightable and the merging of the idea-expression in such a case is known as ‘scenes a faire’.

Another type of a merger is where there are only a few ways to express an idea known as ‘idea-expression identity’ exception. Such expressions are not copyrighted as it would in effect mean again that the idea itself is copyrighted.

“Although the idea/expression dichotomy is such a time-honoured doctrine, it has long been subject to fierce criticisms for its failure to provide practical guidelines underneath its metaphysical surface.”

Moreover, we will look at relevant US case law dealing with the idea-expression dichotomy. The US law provides that ideas are not entitled to copyright protection and the US copyright Act of 1976 specifically states that ideas are excluded from copyright protection.

The idea-expression dichotomy in the US originated from the Baker case. In this case, Selden obtained a copyright in a book which disclosed his particular bookkeeping method. The book contained forms illustrating the bookkeeping system and showed how it is to be used. Baker published a book on accounting, which used a similar method so far as results are concerned, but the forms had a different arrangement of the columns, and used different headings. The plaintiff claimed that Baker had used Selden’s system of accounting, but did not allege that Baker had actually copied the forms contained in Selden’s book.

The Supreme Court concluded that Selden had no exclusive rights under the copyright laws to prevent the use of the accounting system. The Court noted that “there is a clear distinction between the books, as such, and the art which it is intended to illustrate.” The former could be copyrighted, the latter could not. “The description of the art in a book (the expression in the instant case), though entitled to the benefit of copyright, lays no foundation for an exclusive claim to the art (the idea) itself.”

To continue, we will now consider the UK law in relation to the issue of idea and expression. UK law does not make any distinctions between idea and expression either in statutes or in case law, even though judges may sometimes recognise the principle.

Lord Justice Jacobs stated in the case of Ibcos that the expression of ‘there is no copyright in an idea’ is likely to confuse. Lord Hailsham in LB (Plastics) Ltd also agreed with Lord Jacobs and observed that it all depends on what is meant by an ‘idea’. However, English judges decided in such a way as to produce similar decisions to the issues which arose in cases.

When deciding whether there has been an infringement by copying, the rule is that there is no copyright infringement to the idea behind a work, so long as you express that idea in your own words or pictures.

In the case of Kenrick, it was held that a drawing showing a hand holding a pen and marking a ballot paper, with the intention of showing illiterate people how to vote was not entitled to copyright protection. This was because any person that wished to create a drawing to show people how to vote would inevitably produce a similar drawing, therefore it was held to be an unprotectable idea.

Moreover, the principle applied by the court in the case of Ibcos is a perfect example of the variance between the law applied in the UK and the US. An issue of copyright infringement arose, alleging that the impugned program was identical to the original program as they were both created by the same developer, in spite of a restrictive covenant signed by the developer not to sell similar comprehensive software or be employed by a company doing so for two years upon his resignation from the appellant’s company.

The court had to consider whether the program in question was ‘original’. It took into account the idea/expression dichotomy and disagreed with a former ruling that ‘an only method of expressing an idea is not the subject of copyright.’ The court stated that a copyright cannot protect a general idea or principle but there is a possibility of infringement if the idea were to be detailed, the determination of which remained a question of degree.

The court did not ignore the utility of the idea/expression dichotomy and its application in the US which stated that a general idea cannot be copyrighted. Thus, the court stated that there was a different application of the principle of law in the US, particularly in relation to works involving functionality and compilations. Therefore, the Court found it appropriate to examine the structure of the computer program as a whole. “The court stated that the component programs and structure are individually subject to copyright as sufficient skill, effort and judgement went into their design.”

To continue, we will now look at what is a ‘dramatic work,’ as TV formats arguably fall into this category of the CDPA 1988 protected works. A ‘dramatic work’ can be a theatre, TV radio or film play, script or scenario. It is a ‘work of actionwhich is capable of being performed before an audience’ (and this can include a film). ‘Copyright does not subsist in a literary, dramatic or musical work unless and until it is recorded, in writing or otherwise’ hence, copyright cannot subsist in a stage performance for which there is no script.

Like ‘idea’, ‘style’ is not infringeable; a ‘remake’ that copies only filming or editing style is not an infringement as seen in the case of Norowzian. In this case, Norowzian claimed that Arks had infringed the copyright of his film by copying it. As a response, Arks argued that copyright in a film can only be infringed if an exact copy of that film was made. The court held that ‘the re-shooting of a film sequence in which not a single frame of the original copyright film had been included could not be said to be a copy for the purposes of the 1988 Act.’

Moreover, what is to be next considered is the eligibility of TV Formats to protection, under the CDPA 1988, as ‘dramatic’ works.

As defined by modern dictionaries, a format is ‘a style plan or arrangement, as of a television programme’ or in other words a format for a TV programme is a combination of elements such as idea, game rules, script, settings, graphics, storyline, etc. “Formats are the foundation stones of the burgeoning ranks of game shows, series, serials, soap operas, prequels and sequels which now proliferate on our screens.”

The protection of formats is a topical and controversial topic in the UK, the US and elsewhere. There are strong arguments in support of copyright protection to TV formats; an author’s creative skill and labour, and a producer’s money are spent in arranging, and inventing the sequences of events, catchphrases, settings and characterisations of the format, as in the case of classic literary or dramatic works, or films. “These important elements in a format are arguably as developed as those in traditional dramatic or literary works, and should be equally protectable.”

Furthermore, the Format Recognition and Protection Association (FRAPA) was formed in the UK in 2000 by industry figures to encourage protection of TV formats which are original and creative.

However, format works in the UK and US are noticeably weak as regards copyright protection. In general, the courts have taken the view that formats are simply standard programme ‘ideas’, “as opposed to creative works in their own right, and have consistently maintained that mere ideas cannot be protected by copyright law.” A reason for this may be to avoid monopolies from the bigger companies by not protecting ‘simple’ ideas, thus protecting the ‘smaller players of the game.’ The right of a ‘dramatic format’ for a game show to be subject to copyright protection was largely denied by the Privy Council in the case ofGreen (the Opportunity Knocks case).

In this case, Green wrote and presented a television show in England called “Opportunity Knocks“. In 1975 and 1978 the respondent broadcast a similar show under the same title in New Zealand. Green commenced an action for infringement of copyright claiming that copyright subsisted in the “scripts and dramatic format” of the show, and relied largely on the use of stock phrases, and a device called a “clapometer” for measuring audience reaction. However, the details of the format presented to the court were limited. Green had a number of unique ‘catchphrases’ but other modern formats are far more detailed than the Opportunity Knocks format.

Lord Bridge, on behalf of the Privy Council stated that the evidence of the nature of the scripts was exiguous and the feature which was claimed to constitute the format of the show lacked the certainty necessary to attract the protection of copyright. The court reaffirmed the general principle in UK law that an ‘idea’ is not subject to copyright protection and established that there could be no copyright in the format of this game-show.

“It appeared that with these words the hopes of format right ‘authors’ to have their works recognised as protected by copyright were dashed.”

This decision has been criticized by some as being flawed as there were several defects in the claim; no script was exhibited as evidence at the trial, only evidence to the fact that scripts had existed. Copinger argues that there is no reason why a TV programme should not be protected as a dramatic work if there is a detailed documentation of how the show is presented.

As stated by Lord Jacobs in the case of Ibcos there is a possibility of infringement of a ‘detailed’ idea, thus, this statement conforms to Copinger’s criticism.

In the idea/expression dichotomy context, it may be said that the courts consider TV formats to be simply ideas that when another person copies in his own expressions does not infringe copyright, so long as there is no copying of the original expression.

Following Green, another format dispute involving the issue of TV format copyright infringement arose; the infamous ‘Pop Idol – X Factor‘ case (‘Fuller v Cowell‘ dispute). In this case 19TV made Pop Idol with FremantleMedia Ltd, a production company that also helped in the production of The X Factor. It issued proceedings for copyright infringement against FremantleMedia Ltd, Simon Cowell and his production company, Simco Ltd, alleging that The X Factor was an obvious copy of Pop Idol and American Idol.

In considering Fuller’s claim, we must first look at whether the ‘Idol’ format is a work that can be eligible for copyright protection. Formats are not listed as a category of copyright work in the CDPA 1988, but format producers argue that formats can be considered as works falling within existing copyright categories (drama or literal). Moreover, had the court considered the ‘Idol’ to be a work entitled to copyright protection, Fuller would have to prove that ‘The X Factor’ infringed this copyright. The two formats had the same basic concept but there were some variations.

Unfortunately, the English courts lost the opportunity to look at the Green case again, as the ‘Pop Idol – X Factor’ dispute was settled before trial and so the ‘precise ambit of format rights remains untested in English courts since the Green case.’ The leading judgment in English law concerning copyright in TV formats is still considered by most as that of the Privy Council in Green.

“Fuller’s decision to settle denied a judgment that could very possibly have revolutionised UK format law.”

To continue, US law on formats is not easy to grasp. There are no strict categories of copyright protected works as in the UK legislation.

Unlike in the UK, there have been many US cases in recent years dealing with formats. However, none of the cases were decided in favour of copyright protection to formats neither have they indicated the legal status of formats. Despite the fact that US courts have acknowledged that a format could be eligible for protection as a copyright work, several cases testify to a stricter standard by which format infringement will be determined in the US than we may expect from the UK courts.

The most recent case concerning TV formats in the US is the case of ‘Survivor’ v ‘I’m a Celebrity-Get me out of here’. In 2003 the US broadcaster CBS issued proceedings against another US broadcaster, ABC, alleging that ‘I’m a Celebrity-Get Me Out Of Here’ copied the format of its ‘Survivor’ show. CBS sought after an injunction against ABC to prevent its show from airing. However, ABC effectively argued that its show was an original format and the injunction was denied.

Judge Preska stated that the claim put forward by CBS (namely, that the programmes were substantially similar) was not even of satisfactory value (Survivor was classed as “win at all cost” while Celebrity was far more cheery and humorous) to give reason for the proceedings being brought before a court. Notably, she stated that ‘television was a continual evolutionary process, frequently involving borrowing from what has gone before’.

In regards to the idea/expression dichotomy the above decision reaffirms the principle that a ‘general idea’ (or in our case the basic concept of the TV show) is not entitled to copyright protection, if the expression of that idea or concept of the alleged infringing TV show differs from the original expression; “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.”

In addition to the above claims for copyright infringement there are also two other ways in which protection for formats can be claimed; breach of confidence and passing off.

The action of breach of confidence is accepted as a way of protecting reasonably developed ideas for literary and dramatic works and films which are disclosed in confidence. Unlike copyright infringement claims, the action for breach of confidence may possibly protect ideas, so long as those ideas are ‘clearly identifiable, original, of potential commercial attractiveness, and capable of being realised in actuality’ (Fraser decision). However, it is restricted to the disclosure of material in confidence and there must be an act which is in breach of that duty of good faith. The information must not be in the public domain, even though this test may be applied generously in favour of the claimant.

The deficiency of this action however, is the fact that the necessary character of confidentiality is lost by publication.

In the case of Fraser the Court of Appeal protected the creators of a developed idea for a television series from the defendants, to whom detailed outlines were shown in confidence.

Moreover, the action of passing off may also be used to protect formats. It requires three elements to be satisfied; passing off arises where the defendant a) misrepresents his goods, services, or in our case, production to be that of the plaintiff. The modern law, as stated by Lord Diplock in the House of Lords in theAdvocaat case has the following characteristics: b) ‘a misrepresentation made by a trader in the course of trade, to a purchaser or ultimate consumer which causes actual damage or is likely to do so.’ Lord Oliver’s formulation in the case of Reckitt also required that c) the plaintiff “must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying ‘get-up’.” Put simply, the principle of passing off states that no one may distribute his goods as those of another.

In the case of Green there was an action for passing off, which if the claimants were able to satisfy (3 elements) their TV format may have been protected.

To conclude, there is no doubt that there are holes in the law protecting formats, as we have seen above. TV formats have significantly developed since the days of Opportunity Knocks. Currently in the UK and US TV formats are not considered as copyright works. Given these problems created by the uncertainty in law, more attention needs to be given to the various issues. A clear-cut decision setting out the broad parameters of copyright protection of a format is really needed and also a straight-forward answer as to whether the Green decision is still good law. “The manner in which intellectual property law is applied to format works raises serious questions of commercial morality and substance.”

“It seems that, with the continuing rise of reality television and the potentially huge amounts of money up for grabs, it is only a matter of time before the courts will have to consider these issues. It will be long overdue.”

Bibliography

Books

1) David I. Bainbridge, Intellectual Property (6th edn Pearson Education, Harlow, England 2007)

2) G. Davies & G. Harbottle, Copinger & Skone James on Copyright (15th edn Sweet & Maxwell, UK 2007)

3) Copyright Law Lecture Workbook

4) Copyright Law Lecture Slides

Legislation, Treaties and Directives

1) Copyright, Designs and Patents Act 1988

2) Directive 2001/29/EC

3) WIPO (World Intellectual Property Organisation) Copyright Treaty 1996

Articles and Journals

1) Abinava Sankar & Nikhil Chary, ‘The idea-expression dichotomy: Indianising an international debate’ Journal of International Law and Technology Vol.3, Issue 2 (2008)

2) Ben Challis & Jonathan Coad, ‘Format Fortunes – is there now legal recognition for the television format right?’ [2004] [accessed 18 April 2008]

3) Charlotte Hinton, ‘Can I protect my TV format?’ (2006) Ent L.R. 17(3), 91-93

4) David Rose, ‘Format rights: a never ending drama’ (1999) Ent. L.R.10(6), 170-174

5) Edward Samuels, ‘The Idea-expression dichotomy in copyright law’ (1989) 56 Tenn. L. Rev. 321

6) Richard McD Bridge & Shelly Lane, ‘the Protection of Formats under English Law: Part 1′ (1990) Ent. L.R. 1(3), 96-102

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

Cases

1) Baker v Selden 101 US 99 (1880)

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

3) Coco v Clark (1969) RPC 41 at 47

4) Erven Warnink v J Townend (1980) RPC 31

5) Franchi v Franchi (1967) RPC 149

6) Fraser v Thames Television [1983] 2 All ER 101

7) ‘Fuller v Cowell’ dispute ‘Pop Idol – X Factor’ case

8) Green v Broadcasting Corpn. Of New Zealand [1989] RPC 469 (CA, NZ)

9) IBCOS Computers Ltd v Barclays Mercantile Highland Finance Ltd [1994] FSR 275

10) Kenrick & Co. v Lawrence & Co. (1890) 25 QBD 99

11) Ladbroke (Football) v William Hill (Football) Ltd [1964] 1 All ER 465

12) LB (Plastics) Ltd v Swish Products Ltd [1979] RPC 551 at 629

13) Norowzian v Arks (Ch. D) [1998] FSR 394

14) Reckitt & Colman Products Ltd v Borden Inc [1990] RPC 341 (HL)

15) Samuelson v Producers Distributing Co Ltd (1931) 48 RPC 580