The UK entertainment industry will be taking stock of a potentially important High Court decision announced last week, Shazam Productions Ltd v Only Fools The Dining Experience Ltd & Ors [2022] EWHC 1379 (IPEC) (08 June 2022) (bailii.org). It could have implications for how they use characters taken from TV shows or other works. The advertising industry could also be affected.

In what could prove a landmark decision, the Court has held that the character of Del Boy Trotter from the famous Only Fools & Horses (OFAH) television series is protected by copyright under English law. As a result, the owners of that copyright can prevent others from using the character in their shows or adverts.

It is believed to be the first time an English Court has gone as far as to specifically protect a character in a television series in this way.

It is important to note that this decision refers to the Del Boy character itself as created within the script for the programme – not to its particular depiction on screen by the actor David Jason – who for many followers of the show is no doubt inextricably connected to the character.

The case arose after the defendants developed a dining quiz experience called 'Only Fools The (cushty) Dining Experience' (OFDE) based on characters from OFAH.

The facts giving rise to the case arose before Brexit had taken place. Therefore, the Judge applied the two stage test for subsistence of copyright as laid down by EU law and drew comfort from the fact that an earlier German Supreme Court decision had reached a similar conclusion in relation to a different character.

It remains to be seen whether an English appeal court will agree with him that this is the correct test to apply or more importantly whether he applied it correctly.

The finding that Del Boy was an original creation of the creator of the OFAH series is unlikely to be controversial (although whether that creation falls into the category of being a "literary work" of copyright is another matter). But the second part of the test "the identifiability requirement" is perhaps the more controversial part of the decision. The European Court has said that to meet this part of the test, the copyright work:

"must be expressed in a manner which makes it identifiable with sufficient precision and objectivity, even though that expression is not necessarily in permanent form”. 

The European Court held the identifiability requirement is not satisfied where an identification is essentially based on the intrinsically subjective sensations of an individual who perceives the subject matter said to be a work. The expressed features must in other words be external to the perceiver and objectively identifiable by third parties and the courts.

Other matters

The Judge also held that even if he was wrong about Del Boy being a protected copyright work and it being infringed, then the defendants had still infringed copyright in certain scripts within the dining experience.

The Judge went on to dismiss the defendants' arguments that their experience was a parody or pastiche of OFAH. Indeed, the Judge held that the script for the quiz included the "wholesale transposition of the characters, language, jokes and backstories", which was closer to the original than a parody. He also held that there was passing off because people seeing the defendants' dining experience would think that it was an authorised by OFAH.

Outcome

It is highly likely that the result will be appealed to the Court of Appeal, at least in relation to the Del Boy copyright point because it is such a novel decision. Although the Judge held that there was copyright infringement even without that finding, the defendants may want to test the Del Boy point and their defences further. If so, it will be interesting to see whether an appeal court reaches the same conclusion as the Judge.

In the meantime, there will be nervousness in some circles. For example, advertisers often like to use well-known TV or film characters in adverts, sometimes using different actors or actresses to portray them. They may be a little more nervous about doing so after this decision…