How to protect a TV format

One-minute read

There has never been sufficient protection for formats of TV programmes and game shows, despite the rapidly growing size of the industry. An unfortunate decision in New Zealand set a precedent that the idea of the show could not contain copyright, despite obvious copying. Even recent victories for format owners in Europe have been based on unfair competition or breach of confidential information. But that does not mean that format owners have no means to defend the structure of their programmes. Recording the evolution of the format, controlling its distribution and including as many copyright aspects as possible can all help.

The recent legal action by BBC Worldwide in Italy to prevent a rival version of its show Strictly Come Dancing from being shown on Silvio Berlusconi's television network, Mediaset, has shone a spotlight on the question of protecting television formats.

Television formats are not recent phenomena and have been around since the 1950s. Game shows such as the The $64,000 Question, Double Your Money, Wheel of Fortune and The Price Is Right were initially created by American television networks and then licensed to other broadcasters around the world. Although estimates vary (and it is often difficult to establish what a genuine 'format' sale is) it is believed the industry generates around $4 billion a year. Given the massive earnings potential of leading formats such as Pop/American Idol, Who Wants To Be A Millionaire and X Factor it is hardly surprising that there is an increasing amount of litigation in this area, and a growing frustration that the law in most countries struggles to provide effective protection for so-called format rights.

The first task is to identify precisely what a 'format' is. The most obvious examples are quiz shows and game shows that follow a clear formulaic structure such as Who Wants To Be A Millionaire. Formats also encompass formatted entertainment shows, and indeed the leading case in the area (and one which many believe has inhibited a development of the law to provide effect protection for formats) concerns Opportunity Knocks, a well-known talent show. In recent years the concept of format has been developed into formatted reality shows such as Wife Swap and Super Nanny (both of which have been the victim of blatant copy-cat shows in the US), and has even stretched as far as factual series such as Who Do You Think You Are? The final genre is so-called scripted entertainment, drama and sitcom programmes. Whilst these are less common, at MIPCOM recently BBC Worldwide was showing the first extracts from the Russian version of Life On Mars, and there have been a number of attempts over the years to produce changed format versions of popular sit-coms (not always very successfully!).

It is first important to draw a clear distinction between scripted entertainment on the one hand, and reality and game shows on the other.

Since, by definition, scripted programmes are based on scripts, the main protection will be based on copyright law, and therefore format licensing in this context is merely granting a licence to use existing scripts and storylines as the basis for a new programme. In this context, it is very similar to granting the rights to adapt a book as the basis of a film or television programme, and the same basic copyright protection as an author will be available to a script writer, or more commonly to the production company that commissioned the script.

Where there is no obvious copyright work to rely on, as in the case of game shows and entertainment programmes, can formats be protected at all? The leading case in the area is Green v Broadcasting Corporation of New Zealand (1989) which involved Opportunity Knocks, where an almost identical version of the iconic UK show had been produced in New Zealand. Although at face value it was an obvious case of copying a format (including using the same title and catch phrases in the original programmes), the Privy Council (on appeal from the New Zealand Court of Appeal) found that there was no "copying" of a copyright work, an essential element to find an infringement. No scripts were presented as evidence, and the court rejected an argument that the programme was a dramatic work which had been copied. The Court therefore reaffirmed the general principle of UK law that there could be no copyright in an idea. Many believe that the case was decided on its own facts (and that Hughie Green and his legal team failed to provide the necessary evidence of copying) but it has served as an effective barrier to the development of the law in this area ever since. More recent cases in the US have also highlighted the difficulty of protecting basic (albeit clearly identifiable) ideas or concepts, but many of these cases turn on their particular facts. In 2003, CBS failed in its action against ABC, claiming that the show I'm A Celebrity was based on the format of its Survivor show.

Recently, in some jurisdictions, the courts have started to recognise that formats should be protected in appropriate circumstances as clear intellectual property. Castaway (the creators of Survivor) failed in their action against Endemol in Holland, claiming that Big Brother was based on Survivor, although the Dutch Supreme Court did at least decide that the Survivor format was a copyright work, but that the Big Brother format was not an infringing copy.

Ironically Endemol, in a 2003 case brought against Brazilian broadcaster TV SBT, was successful in claiming that a programme entitled Casa Dos Artistas (the Artist's House) was an infringement of its own Big Brother format (which it had already licensed to TV Globo). Again the particular facts are relevant. Endemol had entered into negotiations with TV SBT in the course of which Endemol provided extensive information on the Big Brother format. TV SBT chose not to acquire a licence for the format and produced its own programme instead. Endemol sued (seeking an injunction and damages) and TV SBT claimed that a reality show is no more than an idea, citing the lack of scripts. They claimed that the format bible was "in reality a simple manual that describes methods and procedures…the idea of locking up people inside places and observing them is not new". Indeed, they went on to suggest that "1984 by George Orwell deals with this theme"! The Court found that the Big Brother format enjoyed protection under the Brazilian law of copyright. Clearly the actions of TV SBT in entering into detailed negotiations with Endemol (which in the UK would probably have enabled Endemol to mount an action based on breach of confidential information) may have influenced the judge's view of the defendants, since the judge stated that "the whopping similarity between both programmes does not stem from chance, but from a badly disguised and rude copy of the format of the programme Big Brother" and awarded total damages of nearly £1.5 million.

Finally, earlier this year, Endemol enjoyed success in France in an action brought against its archrival Banijay, over the programme Dilemme (which Endemol claimed was based on its own programmes), and secured a judgment of nearly €1 million. That case is still the subject of an appeal, but as with many cases in this area, the judgment is based primarily on concepts of unfair competition and breach of confidential information, rather than a finding that the format was protected as a copyright work.

There have been a number of attempts in the UK over the years to introduce legislation to address the issue of protection for programme formats, but to no avail. The Copyright (Programme Formats) Bill failed to make it to the statute book, and the recent Hargreaves Review did not address the issue. Accordingly, whilst some of the cases in other jurisdictions support the concept of a copyright for a programme format, they are they are not binding under English law, and the basic position still appears to be that a format is an idea and in itself cannot be protected under copyright law.

So how do you effectively protect a format (other than a scripted programme)?

First, we must distinguish between a paper format (something which is yet to be made into a television programme) and a format which has already been produced. As long ago as 1984 (interestingly, before the Opportunity Knocks case) the UK Courts in the case of Fraser v Thames Television established that so long as the essential elements were present, a programme format (or specific ideas for a television programme) could be protected as confidential information. This case involved the television programme Rock Follies and clearly established that if information which was sufficiently detailed to be of commercial value was disclosed by one party to the other in a business context then it would be protected as confidential information as between the party disclosing the information and the recipient. This case was followed in Maudsley v Palumbo in 1995 (which concerned the original idea for the Ministry of Sound nightclub), where it was found that the information in question was not disclosed in a business context.

Although the protection is limited to information disclosed by one party to another, it provides an effective remedy during the development of a programme idea, even if there is no formal confidentiality agreement with the other party. The format creator therefore needs to ensure that its format, when disclosed to others, is protected as confidential information. The other problem facing format owners is to prove that their confidential information was actually used, rather than the third party having come up with similar concepts or ideas without copying their confidential information.

For this reason format owners should always:

• Describe their formats in a written document in as much detail as possible. It will be these details which will show if their format has been copied, rather than a third party having come up with the same idea independently. For example, Who Wants To Be A Millionaire is simply an accumulator game, of which there are many examples. However, its unique elements (such as the "phone a friend" and "ask the audience" lifelines) set this particular format apart from any other accumulator game.

• Try and include as much potential copyright material within the description as possible (such as graphics, set designs, props, catch phrases).

• Format development naturally goes through many stages. Make sure that each stage is documented, that the format bible is kept up to date and that where third parties are engaged to work on the development of format, an effective assignment is secured from them.

• Ensure that the manner of disclosure is in a "business" context, and that the other party is therefore deemed to have accepted the material as 'confidential information':

• Don't send the material in an unsolicited manner;

• Clearly mark the document describing the format as confidential information;

• Keep a record of each person a copy of the format has been given to.

Once a format has been produced as a television programme (even as a simple run-through pilot) format owners may be able to rely on a range of different remedies to protect it:

• There may be a specific set that is an essential part of the programme and this may be protected by copyright and/or design rights – for example the set used in the recently successful programme The Cube.

• Once produced and broadcast (particularly where the format has become successful) format owners may be able to rely on unfair competition, passing off or similar remedies in various jurisdictions.

• The main protection for many established formats is through trade marks. Once established a format should be treated and nurtured like a brand. Not only would this involve trade mark and URL registrations, but also ensuring that licence agreements include requirements to strictly adhere to a format bible, assign ownership of any enhancements or improvements to the original format owner and obtain approval for any new format versions.

The flip side of the debate is, as a producer or broadcaster, how you avoid unwarranted claims that your programme is somehow a breach of someone else's format rights. Whilst the television industry is ever more inventive, the reality is that most programmes are bound to have similar elements to existing programmes or ideas. The nightmare scenario for most television executives is that having created a successful programme with a potentially valuable format, someone comes out of the woodwork to claim that it is based on their format or ideas.

The horror of such a scenario was graphically illustrated recently in the case of Meakin v BBC Celador, where the BBC and Celador (the creators of Who Wants To Be A Millionaire) expended considerable sums in defending a claim by Meakin that the BBC's lottery programme Come And Have A Go ..If You Think You Are Smart Enough was a copy of his idea for a show called Cash Call Challenge Live. Whilst the judge granted the application for summary judgement in favour of the BBC and Celador (on the basis that Meakin had no real prospect of success based on the facts of this case), the BBC and Celador are unlikely to recover all their costs, let alone the management time expended in dealing with such an action.

So what can actions can producers or broadcasters take to avoid such false accusations? Ensure that there are clear and transparent procedures for accepting material from third parties:

• Accept materials through a non-creative filter (such as the legal department) that can check if the company is already working on similar ideas before it is shown to anyone in a creative role;

• Make sure rejected material is returned (and copies are not kept) as soon as possible;

• Make sure there is a procedure for logging receipt and return of scripts and programme ideas; and

• Make sure that the development of programming ideas is properly recorded at each stage so that, if necessary, conclusive evidence as to the origin of a particular programme can be produced quickly (if claimants are seeking an interim injunction there is often little time to gather the necessary evidence).

While recent judgments in a number of jurisdictions where format rights were involved have shown that the courts are trying to bridge the gap between law and reality, format owners, particularly in the key territories, still face an uphill battle to effectively protect their rights. There will always be a difficulty (and a balance to be struck) between providing effective protection for formats on the one hand, whilst preventing powerful producers and broadcasters from stifling creative development on the other. Although the basic rules of a game cannot be protected, there is much that format owners can do to put themselves in the best position to protect their unique programming ideas, as well as enabling them to exploit their formats in an effective manner.

© Medwyn Jones 2011. Jones is a partner at Harbottle & Lewis in London

On managingip.com

Strictly Come Formatting: The Managing IP guide, September 2011 Hot topics in Latin America, October 2007 The drama over format rights, May 2002