Most of us would have spent a Wednesday night or two salivating at the wonderful dishes served up in the MasterChef South Africa kitchen, or sharing in the anxiety of the participants when the judges announce that they have 60 seconds left to plate up. MasterChef South Africa is but one of many reality type television programmes which have taken the world by storm in the last couple of years and are particularly popular with viewers. We have had numerous television programmes made and broadcast in South Africa which are local adaptations of well-known television programmes which follow a particular format like Idols, Big Brother, Survivor and Strictly Come Dancing to name but a few. From a legal perspective it is, however, questionable in terms of existing South African law and legal precedent whether the creators of e.g. the MasterChef television format would be able to protect the copying of their format under South African copyright law. This article seeks to examine the existing legal position regarding the protection of television formatting rights under the South African Copyright Act No. 98 of 1978 (“the Act”) and common law and also considers the legal position of television formatting rights and the protection thereof in foreign jurisdictions.
SOUTH AFRICAN COPYRIGHT LAW
The principle that copyright does not protect ideas, but the material expression thereof is one that has been well established in South African case law. It is a principle that has been clearly upheld in our courts through numerous judgements. Copyright protection is only conferred on the material expression of an idea and provided the work meets other criteria set down for the subsistence of copyright by the Act. It is important that an article is capable of being classified as a work that qualifies for copyright protection under the Act and that it meets the definition of that particular work as one would interpret it in terms of the English language as normally spoken. It is an objective test and is not dependant on the intention of the creator of the work. The current categories of works as set out in terms of section 2(1) of the Act are literary works; artistic works; musical works; cinematographic films; computer programs; broadcasts; sound recordings; programme carrying signals and published editions.
It is difficult to define a television format save to say that it is a television programme that follows a particular format as set out by its creators. It is well acknowledged that television formats are a form of intellectual property but to define which sphere has been rather more problematic. A holistic approach should be taken to see which aspects can best be protected by which branch of intellectual property law. Clearly trade mark law will only protect certain aspects of the television format for e.g. if a word, logo or slogan has been developed for use in relation to the television show or format this will be protectable under the Trade Marks Act 193 of 1994. The words Masterchef, Idols or Survivor are protectable as trade marks used in relation to television programmes and catch phrases like “Goodbye you are the weakest link” should also be capable of registration as a trade mark.
A script for a television show or motion picture would enjoy copyright protection as literary works and any special effects, animation or photographs should enjoy protection as artistic works while the actual motion picture produced could furthermore enjoy copyright protection as a cinematographic film.
The Act defines a literary work inter alia in section 1 of the Act as:
“(b) dramatic works, stage directions, cinematographic film scenarios and broadcasting scripts;”
Does this, however, enable the creator of a television format to protect the format as a literary work under copyright law? These reality shows are often uniquely adapted to the country in which a work is being recorded. It has no detailed script as professional actors are not being used but every day people who are most often participating as contestants. The very reason for the success of formatted television programmes is the element of unpredictability which is what compels the audience to keep watching the programme until the culmination thereof. This makes it very difficult to classify a television format as a literary work in terms of the Act, as it is currently worded.
This difficulty is perhaps well illustrated by the Madam & Eve case (Rapid Phase Entertainment CC v South African Broadcasting Corporation 597 JOC (W)) which, although not dealing directly with the concept of the protection of television formats, nevertheless highlighted the potential difficulty of obtaining protection thereof under copyright law in South Africa. The national broadcaster had produced a television advertisement extolling the virtues of its services by using characters which were quite clearly imitations of the well-known cartoon strip Madam & Eve. The court, however, held that, as the national broadcaster had not copied any script, story line or cartoon drawings of the characters, there was no infringement of copyright in a literary or artistic work. The court also dismissed the complaint brought on the grounds of unlawful competition as it was of the view that the broadcaster had not appropriated the characters of Madam & Eve.
Although the finding of the court in the Madam & Eve judgement is open to criticism it must be viewed in light of other copyright judgements at the time and in particular the case of Green v The New Zealand Broadcasting Corporation which was until recently viewed as a precedent setting judgement for the protection of television formats in most commonwealth countries since 1989. In this case Green was the presenter and creator of a television programme called “Opportunity Knocks” which was a much loved programme in the United Kingdom from 1956 -1978. In the 1970’s the New Zealand Broadcasting Corporation created a television programme based on the same format Green had created in the United Kingdom and under the same title. The court held that as Green could not produce any scripts for his programme it could not be proven that copyright subsisted or that there had been any infringement. After the decision in the Green case it could be said that the axiom that there is no copyright in ideas was well and truly established in the field of television formats.
Formatted television programmes have become big business to many producers and broadcasters. According to a study conducted by the University of Bournemouth, the Format Recognition and Protection Association (“FRAPA”) estimated that the value derived from formatted television programmes in 2004 exceeded 2.4 billion Euro’s.
In what can only be said to be an indication of future interpretation by courts of television formatting rights, the Dutch Supreme Court ruled in 2004 in Castaway Television Productions Limited v John De Mol Produkties B.V. and others that a television format was a work protected under copyright law in that country. In this matter the creators of the Survivor television format brought a copyright infringement action against the creators of the Big Brother television format. The court held that, although copyright subsisted in the Survivor format, there was no copyright infringement as, when comparing the 12 key elements of the Survivor format, it was not similar to that of the Big Brother format. This is similar to the objective test developed in South Africa for copyright infringement where one has to show that the works are substantially similar and that there is a causal connection between the works.
The court also dismissed the Plaintiff’s claim based on unlawful competition on the grounds that, as there was no similarity in the two formats, it could not be held that the Defendant’s conduct was unlawful. The courts finding on unlawful competition must, in this instance, be seen in the context of the facts of the matter and it is reasonable to argue that where there was in fact substantial copying of a television format a court is likely to make a finding of unlawfulness.
In the South African context we are likely to find that a claim of unlawful competition where the facts bear a finding of substantial copying of a television format in 2012, the general sense of justice in the community has changed to that expressed in 2006 in the Madam & Eve case. It is submitted, respectfully that where copying can be proven a claim of unlawful competition is likely to succeed.
In CBS Broadcasting Inc. v ABC Inc. and in the United States District Court of New York it was held that, while copyright subsisted in certain elements of a television format, there was no substantial similarity between the Survivor and Celebrity formats. Although caution should be exercised when examining copyright judgements in the United States for purposes of interpretation of South African copyright law, in this particular instance the court made certain findings which could be helpful in a South African context when evaluating the protection of television formats.
Similar to South African copyright law American copyright law does not protect ideas but the expression thereof. When considering whether a television format is capable of protection as a literary work, the Court held that:
“Similarly, even where, a television game show is made up of entirely stock devices, any original selection, organization and presentation of such devices can nevertheless be protected, just as it is the original combination of words or notes that leads to a protectable book or song. Copying of a television producer’s selection, organisation and presentation of stock devices would therefor be a misappropriation.”
In the 2010 United Kingdom case of Meakin v BBC the court approached the matter on the basis that copyright subsisted in the applicant’s game show television format developed as a literary work and / or dramatic work, but, as was the case in the Castaway matter, the claimant fell down on proving substantial similarity between its television format and that developed by the BBC.
In a landmark judgement on the 22 February 2012 a Rome court granted BBC Worldwide an interdict against Mediaset in Italy for the infringement of its television format Strictly Come Dancing. The court held that copyright subsisted in the format production bible created by BBC Worldwide for Strictly Come Dancing and that the Mediaset format Baila! was an infringement thereof.
Creators of television formats that seek protection thereof in South Africa would be well advised to follow a holistic approach to the protection of their intellectual property and not just to rely on copyright law. If a television format is recorded in detail by way of a format production bible, it is arguable that it will indeed enjoy protection as a literary work (broadcasting script) under the Act. Given the existing interpretation and definition of literary works, the position is, however, not clear and the legislature will in all likelihood have to amend the definition of literary works to include television format rights to create certainty in line with international developments in the field of copyright law. In the interim, an international organisation with voluntary membership has been created, called FRAPA, which has been instrumental in lobbying and creating awareness for the protection of television format rights. FRAPA has its own format registration process which can greatly assist creators of television formats in compiling material evidence of the subsistence of their work. It has also formed a co-operation agreement with WIPO (World Intellectual Property Organisation) whereby mediation and arbitration services can be rendered to parties for disputes relating to the protection of television formats.
This article is for general information purposes and should not be used or relied on as legal or other professional advice. No liability can be accepted for any errors or omissions nor for any loss or damage arising from reliance upon any information herein. Always contact us At DKVG Attorneys for specific and detailed advice.