Only Fools and Characters – can copyright exist in literary characters?

On 8 June 2022, the Intellectual Property Enterprise Court (“IPEC”) handed down its judgment in Shazam Productions Ltd v Only Fools The Dining Experience Ltd & Ors [2022] EWHC 1379 (IPEC), ultimately finding that copyright can exist in a literary character per se.

The judgment currently provides the most detailed guidance on the concept of copyright in characters as literary works. It also analyses the defences of parody and pastiche. The judgment therefore constitutes essential reading for the holders of rights in notable characters.

Background and Facts

The Claimant (“Shazam”) is the family company of John Sullivan, who died in 2011. Shazam was formed in 2003 to exploit the IP rights held by John Sullivan in connection with Only Fools and Horses (“OFAH”) (as well as other shows). Likely familiar to a UK audience, OFAH is a well-known television series that aired between 1981 and 1991 on the BBC (with Christmas specials also running until 2003). The lead character of OFAH was Derek “Del Boy” Trotter.

The Defendants developed an interactive dining show using the characters from OFAH, produced and marketed under the name “Only Fools the (cushty) Dining Experience” (“OFDE Show”). The actors in the OFDE Show used the appearance, mannerisms, voices and catchphrases of key characters from OFAH, including Del Boy. The actors played the various OFAH characters in the context of an interactive pub quiz.

Shazam brought proceedings against the Defendants, alleging copyright infringement and passing off. It contested that copyright subsisted in:

1. Each script for an episode of OFAH;
2. The body of scripts for OFAH taken as a whole, which collectively establish the characters, stories and imaginary “world” of OFAH;
3. The lyrics and opening theme song for OFAH; and, crucially
4. The characters (including Del Boy).

The alleged infringements in the OFDE Show in relation to Del Boy as a character were:

1. His use of sales patter with replicated phrases;
2. His use of French to try to convey an air of sophistication;
3. His eternal optimism;
4. His involvement in dodgy schemes; and
5. His making sacrifices for Rodney (another character from OFAH).

The central questions in front of the Judge in respect of the subsistence of copyright in the Del Boy character were: (1) could the character be protected as a literary work; and (2) if so, did the defences of parody or pastiche outlined in section 30A of the Copyright, Designs and Patents Act 1998 (“CDPA”) apply to the Defendants’ use of the work?

Judgment

Subsistence of copyright in the Del Boy character

The Judge identified the lack of substantive discussion in English case law or commentary on whether copyright could subsist in a character from a dramatic or literary work. It was noted that the German Supreme Court approved a finding that a character created by the Swedish author Astrid Lindgren was a protectable literary work in its own right under German copyright law. In addition, the Judge commented that US law also permits copyright to subsist in characters if they are sufficiently complex and distinctive.

The starting point in English law for making assessments of this nature is to ask whether the work qualifies as a copyright work under EU law, before subsequently asking whether the work can be accommodated within one of the CDPA’s categories of protected works.

Looking at EU law, in Case C-683/17 Cofomel v G-Star Raw [2020] EDCR 9 (“Cofomel”), the Court of Justice of the European Union stated that there are two cumulative conditions to be satisfied:

“First…that there exist an original subject matter, in the sense of being the author’s own intellectual creation.” (the “originality requirement”).

“Second, classification as a work is reserved to the elements that are the expression of such creation.” (the “identifiability requirement”).

In the present case, the Judge accepted that each element of the conditions outlined in Cofomel was satisfied by the character of Del Boy.

• In terms of the fulfilment of the originality requirement, Del Boy as a character was an original creation of John Sullivan which was the expression of his own free and creative choices.
  • The personal experiences of Mr. Sullivan, who grew up in South London in the 1950s and 1960s, provided the source material for Del Boy (and the other OFAH characters).
  • Del Boy is not a stock character or cliché of a working-class market trader but is rather a fully rounded character with complex motivations and a full backstory.
• Turning to the identifiability requirement, the features of Del Boy relied upon by the Claimant as constituting his character are “precisely and objectively discernible in the Scripts” [106].

Regarding categorisation, the Judge found that “if Del Boy is a protectable work under EU law, he can be properly subsumed under the concept of a literary work for the purposes of the closed list of protected English works” [121].

Aside from the concept that a character can be a protectable work, it is also noteworthy that, according to the court, it constitutes a literary work (rather than a dramatic work) on the grounds that the character was fully rounded as a character within the script.

Copyright infringement/application of exceptions?

The Judge found that the evidence that the Defendants had prima facie infringed the Claimant’s copyright to be “overwhelming and obvious” [127].

However, the question remained as to whether the defences of parody or pastiche (contained within section 30A CDPA) could be invoked successfully by the Defendants.

Parody

Parody is a permitted category of fair dealing under English law. In this case, the Claimant argued that the uses of John Sullivan’s works were not for the purposes of the parody, even if the use made by the Defendants did lead to a humorous product; the product was humorous because the subject matter taken was itself humorous.

Furthermore, the Judge found that it was an essential element of parody within the legislation that the parody expressed “some kind of opinion by means of its imitation, but noticeable difference, from the work parodied” [176]. Parody focuses on criticising or mocking the original whereas imitation merely pays tribute to the original work, and, according to the Judge, mere imitation is not enough to constitute parody.

The legislative exception for parody therefore did not apply in the present case.

Pastiche

The Defendants were also unable to rely on the defence of pastiche.

The Judge deemed pastiche to consist of two key elements:

1. The use imitates the style of another work; or
2. It is an assemblage (medley) of a number of pre-existing works.
3. In both cases, as with parody, the product must be noticeably different from the original work.

The Judge held that the pastiche test should also be limited to the “three-stage test” of fair dealing. In the present case, the use of the characters not only constituted a “wholesale borrowing of content” [195], but also rendered the Claimant unable to exploit the rights themselves and thereby leverage its “long established and on-going commercial interest in exploiting OFAH” [196].

Comment

The central and novel piece of law arising from this case is the Judge’s conclusion that the “Del Boy” character could be, and was, protected as a literary work. The owners of rights in iconic characters (especially those that are substantially developed through scripting, or possibly in screenplays or novels) may now have more options to challenge third parties seeking to make use of those characters. We are yet to see if this case will be subject to appeal in a higher court, so the full impact on the scope of protection for characters as literary works remains to be seen.

This case could also be seen as indicative of the potential expansion of what subject matter can be found to amount to a copyright work in the UK, following the application of the Cofomel two-stage approach.

Finally, this case provides rare commentary on the construction of the section 30A defences of parody and pastiche, which only entered into force in the UK in 2014. In particular, the judgment emphasises the requirement to consider whether the use constitutes “fair dealing” and explains the conceptual distinction to be made between parody and imitation.

Co-authored by Alexander Parkin, Trainee Solicitor at CMS.