Facts

The well-known TV comedy Only Fools and Horses (OFAH), which is about the Trotter family who live in a high-rise council flat in Peckham, South London during the 1980s and 1990s, was originally broadcast by the BBC in 64 episodes over seven series between 1981 and 1991. The scripts for all episodes (OFAH Scripts) were written by John Sullivan OBE, who died in 2011.

Shazam Productions Ltd, owned and controlled by John Sullivan’s family, was set up in 2003 to exploit the IP rights held by John Sullivan in OFAH.

In February 2019, Shazam launched a musical based on the characters from OFAH, written by Paul Whitehouse and John Sullivan’s son, James.

In May 2018, Ms Pollard-Mansergh and Mr Mansergh developed an interactive dining show using the characters from OFAH. The show was produced and marketed under the name “Only Fools The (cushty) Dining Experience” (Show). The actors in the Show used the appearance, mannerisms, voices and catchphrases of several characters from OFAH, namely Del Boy, Rodney, Uncle Albert, Cassandra, Boycie and Marlene, as they appeared in the broadcast version of OFAH. The backstories of the characters and their relationship to each other as developed by the OFAH was carried over into the Show. The characters were presented, however, in a new context of an interactive pub quiz. Whilst the audience dined, the actors performed scenes based on scripts produced collaboratively by several people over a few weeks. The scripts gave flexibility for the actors to interact spontaneously with the diners and to improvise.

In December 2019 Shazam issued proceedings against OFDE Ltd (the commercial vehicle for the Show) and others for breach of the copyright alleged to subsist in: (i) each OFAH Script for an episode of OFAH; (ii) the body of OFAH Scripts taken as a whole, which collectively established the characters, stories and imaginary “world” of OFAH; and (iii) the characters. It also claimed breach of copyright in the lyrics and opening theme song for OFAH, but that will be tried at a later date.

Shazam described the features of the characters, identifying five particular features of the character of Del Boy, which 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.

As for demonstrating copying, Shazam relied on an analysis of one script from the Show from September 2019 (the 2019 Script) as the allegedly infringing “work”.

Shazam also claimed passing off by OFDE Ltd.

Decision

Copyright

Subsistence

John Kimbell QC, sitting as a Deputy High Court Judge, found that each Script was not a literary work but a dramatic work under s 3(1) of the Copyright Designs and Patents Act 1988 (CDPA). Mr Kimbell QC noted that in Martin v Kogan [2019] EWCA Civ 1645, the Court of Appeal held that a screenplay was a dramatic work because, as in this case, the primary purpose was for it to be performed. In Mr Kimbell QC’s view, it was a very small step from the binding proposition that a film screenplay is a dramatic work to the proposition that a script for a TV show is a dramatic work, especially because internal scenes in OFAH were always intended to be, and were in fact, always performed, live and recorded before an audience.

However, Mr Kimbell QC found that copyright did not subsist in the body of OFAH Scripts separately from each individual OFAH Script because completing such a body of work was not the same as writing chapters for a book in which copyright would subsist in both the chapters taken separately and in the book as a whole. In the case of the OFAH Scripts, while the body of work built up over time, it was an agglomeration of separate works, each of which was a complete self-contained story. Further, the OFAH Scripts were never intended to be performed as a body of work, and each Script was performed, filmed and broadcast individually. There was no evidence that John Sullivan intended the body of OFAH Scripts to be regarded as a unitary whole and no evidence of any intellectual creation in arranging the OFAH Scripts into a body of work. Accordingly, the imaginary “world” of OFAH as expressed in the body of OFAH Scripts was not a literary work.

As for whether copyright subsisted in the character of Del Boy, Mr Kimbell QC pointed out that there is little discussion in case law or commentary on this proposition. Therefore, he approached the matter from first principles, i.e. by taking the two-stage approach of asking first whether the work qualified as a work under EU law and then considering the CDPA.

Under EU law, for copyright to subsist, two conditions must be met: (i) originality, i.e. the subject matter must be original in the sense of being the author’s own intellectual creation; and (ii) identifiability: i.e., the expression of the subject matter must be identifiable with sufficient precision and objectivity (Case C-683/17 Cofemel v G-Star Raw [2020] ECDR 9).

Mr Kimble QC found that Del Boy as a character was an original creation of John Sullivan, which was the expression of his own free and creative choices because:

1. John Sullivan’s background meant that he had personal experiences that provided the source material for Del Boy and the other characters;
2. Del Boy was a fully rounded character with complex motivations and a full backstory;
3. a great deal of thought was given to how and why Del Boy would express himself;
4. the use of mangled French by Del Boy was both original and important to the character;
5. Del Boy’s character had several layers encompassing both humour and pathos;
6. Del Boy had a complex multi-layered relationship with his younger brother, Rodney;
7. John Sullivan wove in aspects of social commentary on what it was to be working class in London in the last two decades of the 20^th century; and
8. some of the vocabulary and phrases created or adapted by John Sullivan for Del Boy have entered the English language in new or revived forms, e.g. “cushty” and “plonker”.

Mr Kimble QC also found that the character of Del Boy was clearly and precisely identifiable to third parties in the OFAH Scripts. Much of the character features, including the five features particularly relied on by Shazam, were objectively present in and identifiable from the Scripts themselves. These traits were not identifiable just from Sir David Jason’s portrayal of the character. Accordingly, the two-stage test set out in Cofemel was satisfied and the character of Del Boy was a work protected under EU copyright law.

As for English law, Mr Kimble QC had no hesitation in holding that as a protectable work under EU law, the character of Del Boy could be properly subsumed under the concept of a literary work under the CDPA. This did not require any strained interpretation of the CDPA, he said.

Infringement

Mr Kimble QC found that the evidence of infringement by OFDE Ltd in respect of the character of Del Boy was “overwhelming and obvious”. One of the main aims of the Show, and therefore of the 2019 Script, was for the audience to feel that they were in the presence of Del Boy, i.e. he was presented in a form familiar to them from OFAH. According to the evidence, in the creation of the Show, the brief was to create a “pitch-perfect” live version of Del Boy (and the other characters). In short, the commonality between the Del Boy in the 2019 Script and the Del Boy in the OFAH Scripts was almost total. The copying was far more than the substantial copying required for a finding of infringement. While there was no evidence that the OFAH Scripts were used directly to create the Del Boy of the 2019 Script, there was clear evidence that clips from, and whole episodes of, OFAH were watched by the developers of the 2019 Script. The copying of the Del Boy character was therefore a clear case of indirect copying via the broadcast of OFAH episodes.

As for the OFAH Scripts (relevant if Mr Kimble QC was wrong about the subsistence of copyright in the Del Boy character), Mr Kimble QC identified ten original features of the OFAH Scripts that had been copied and used in the 2019 Script, e.g. certain jokes, catchphrases, the use of mangled French, and Del Boy’s eternal optimism. In Mr Kimble QC’s view, these ten features represented a substantial part of the OFAH Scripts. In fact, the evidence showed that a conscious decision was taken to copy such features. Therefore, infringement was established.

Defence

OFDE Ltd relied on s 30A of the CDPA, pleading that it was entitled to a defence of fair dealing for the purposes of parody or pastiche.

Mr Kimble QC, having set out in detail the law in this area, found that the defence failed. In relation to parody, he held that the use made of the characters, their backstories, jokes and catchphrases was not for the purpose of parody under s 30A because, amongst other things, the 2019 Script did not evoke OFAH in order to express humour about OFAH or anything else. It also did not mock or critically engage with either OFAH or situation comedy or anything else. In fact, the Show involved the wholesale transposition of the characters, language, jokes and backstories from OFAH and was therefore closer in form to reproduction by adaptation than parody. The overwhelming audience feedback from the Show was that it felt like being in another live episode of the OFAH.

Mr Kimble QC also said that the Show was not pastiche under s 30A because the 2019 Script did not use elements from the OFAH Scripts to imitate the style of OFAH, nor were the elements taken arranged in any sort of medley or assemblage; rather, it took the OFAH features and simply (re)presented them in a live dining format. Again, the Show involved a wholesale borrowing of content that was closer to reproduction by adaptation than pastiche. It was not, therefore, noticeably different from the OFAH Scripts.

In any event, if he were wrong on parody and pastiche, Mr Kimble QC found that the use of copyright material did not qualify as fair dealing because:

1. the taking from the OFAH Scripts was extensive both in terms of quantity and quality;
2. the use made of the OFAH Scripts was not a type of expression that attracted particular protection or engaged fundamental rights;
3. the aim of putting on the Show was to entertain the audience by bringing them into contact with the copied characters;
4. the Show clearly competed with Shazam’s normal exploitation of OFAH;
5. the Show amounted to the creation of a new episode of OFAH adapted for a dining performance, which unreasonably prejudiced the legitimate interests of Shazam; and
6. Shazam had a legitimate interest in controlling how the characters were portrayed, presented and commercially exploited, which it would legitimately expect to be able to control (e.g., by licence).

Passing off

Mr Kimble QC also allowed that Shazam’s passing off claim because: (i) Shazam had built up significant, continuing goodwill attaching to at least both the OFAH name and the leading characters before the Show was even conceived; (ii) the Show’s name was liable to confuse and mislead and a significant number of people would think that it was a spin-off of OFAH; and (iii) Shazam was incurring damage as it was likely that fans of OFAH would be diverted from buying tickets for the OFAH musical, choosing instead to go to the Show, which was cheaper but offered the same chance to be reacquainted with the OFAH characters in a live performance setting. (Shazam Productions Ltd v Only Fools The Dining Experience Ltd [2011] EWHC 1379 (IPEC) (8 June 2022) — to read the judgment in full, click here).