“Lovely jubbly”: protecting fictional characters and creative worlds against unlicensed reuse
‘Only Fools and Horses’ is a British cultural icon – last year, it also became the centre of a significant copyright dispute.
The case is the first time a fictional character has been identified as a protectable work under UK law – at a recent CITMA webinar, Solicitor and Chartered Trade Mark Attorney Carl Steele, of Ashfords LLP, and Jonathan Hill, Barrister, 8 New Square shared key details of the case.
Only fools and horses - background
Loveable rogue Derek ‘Del Boy’ Trotter, hapless brother Rodney, irascible Uncle Albert and wheeler-dealer Boycie graced our TV screens from the mid-eighties until 2003.
Del Boy’s several catchphrases have been immortalised in the Oxford English Dictionary, and characters from the sitcom appeared during the opening ceremony for the London 2012 Olympics, almost a decade after they were last seen on screen.
Set in 1980s Peckham, it captured the lives, loves, hopes, and misadventures of the Trotter brothers with a unique brand of down-to-earth humour, coupled with superb physical comedy.
It was the creation of the late scriptwriter John Sullivan, whose exceptional skill at building imaginary characters, relationships and settings would prove crucial when the successor to his rights (Shazam Productions Ltd, originally established by John) launched a legal challenge against a business offering an Only Fools and Horses themed dining experience.
The case
The premise of the case was that John Sullivan had created a distinctive imaginary world through the scripts and that the world and its characters, as a body of work, could be protected by copyright, preventing others from profiting from it without a license.
The defendants had created “Only Fools The (Cushty) Dining Experience”, an interactive experience taking characters, back stories, and relationships, and placing them in a new scenario.
The defendants contended that this was a new show, not written by John Sullivan, and therefore did not infringe copyright.
Initially, defendants were sent a formal letter with detailed evidence of infringement. Following unsatisfactory responses, a claim was issued in December 2019 in the Intellectual Property lists, including 170 features that Shazam Productions Ltd alleged had been copied from Sullivan’s scripts.
The defence was unclear, so the team issued a Part 18 request. At this time, the defendants also requested that the claim be transferred from Chambers to the Intellectual Property Enterprise Court (IPEC), due to their financial inability to defend the case.
This request was granted and the trial was set for just three days’ duration. This forced the claimant team to restrict the scope of works that could be relied on to make the case.
Del Boy as a paradigm case for character copyright protection
As a result of the restricted trial period, the claimant team chose to rely on:
- Individual script elements such as catchphrases and dialogue that had been copied
- The argument that the body of scripts qualified for copyright protection
- One sample character - in this case Del Boy – as a fictional character that should be protected by copyright law
Should it succeed, this case would break new ground, as under the pre-Copyright Directive English law no case had found that a character could be a copyright work and some cases rejected claims based on copying characters.
The judge had to apply a two-stage test established in CJEU case law. First, the originality requirement states that it is necessary and sufficient that the subject matter reflects the personality of its author as an expression of his/her creative choices.
This was easily met through evidence of John Sullivan’s creative process and the resulting distinctive features of Del Boy’s character.
The identifiability requirement is met when subject matter is expressed in a manner which makes it identifiable with sufficient precision and objectivity.
In this, Shazam relied on features that were precisely and objectively discernible in the scripts. The judge had initial concerns that the actor, David Jason’s interpretation could be said to have contributed to the character’s features, but on analysis, concluded that the features were clearly evidenced in the scripts; Del Boy is John Sullivan’s creation entirely.
Consequently, the judged agreed with Shazam Productions’ assertion that Del Boy was a character capable of being protected by copyright law.
As Jonathan explained, the success of this case hinged on the fact that Del Boy’s character is strongly defined in John Sullivan’s scripts; people watching the sitcom form a rapid conception of what he is like.
Where a character is less well-defined it may be more difficult to find sufficient unique features on which to base a claim.
The key is to find specific details and, in the optimum case, a clear narrative around how the author created them.
In the case of Del Boy, John Sullivan’s son Jim was able to clarify that his father’s creations were often based on characters he had known when working as a market trader in Balham.
Further takeaways
The judge in this case rejected that a body of scripts could be protected as a work under copyright, relying on the fact that no previous case recognised such a body of work and stating that there was no “intention” to create such a body of scripts at the outset.
Jonathan casts serious doubt on the validity of this judgement as the scripts seem to adequately satisfy the EU test.
The defendants also tried to rely on parody and pastiche as a defence, citing that this constitutes fair use.
However, the judge held that parody is not mere imitation, it must be an expression of humour or mocking of the original work, which did not apply in this case. On the issue of pastiche, the judge held that the work must be notably different from the original work, which again, given the number of elements directly copied from Sullivan’s creation, did not stand.
This did not constitute fair dealing as the taking was extensive, and it was not a type of expression, but a straightforward lift.
The judge also accepted the claimants’ case for passing off on the basis of the likelihood that customers of the interactive dining experience would assume that this was an officially licensed extension of the Only Fools and Horses brand.
Concluding their thoughts on the case, Carl and Jonathan noted that the transfer of the case to the IPEC forced them to select “best examples” of copying, which limited the ability to show the true scale and extent of copying that had taken place.
Nevertheless, they felt that although you are “never going to get perfect justice in IPEC – but you can get justice nevertheless!”
They also advised that the case means you can’t write a new story involving a fictional character that is protected by copyright – there is no need for substantive copying from original works.
To learn more about the case, view the webinar on-demand.