Member Article

A recent posting on a popular intellectual property (IP) blog raised an issue that’s becoming increasingly important in the couch-potato / global- village world we now live in: what, if any, legal protection does a TV format enjoy? In South Africa we often watch local versions of foreign TV programs, be they ‘reality’ shows like Big Brother or Come Dine WithMe, ‘talent’ shows like Idols or Masterchef,or game shows like The Weakest Link. But does a South African company that wants to produce a local version of a foreign TV show need any form of licence?

It’s not that clear.  What does seem pretty clear, though, is that it’s highly unlikely that a broadcaster will get apatent for a TV format in South Africa. That’s because, although the Patents Act provides that you can patent a new invention that involves an inventive step and that can be applied in trade, industry or agriculture (entertainment is, of course, an industry), there are a number of specific exclusions. For example, you cannot get a paten tfor any literary, dramatic, musical or artistic work, or any other aesthetic creation. And you cannot get a patentfor any scheme, rule or method for playing a game or doing business. These exclusions would seem to put paid to the idea of patent protection for a TV format in this country.

So what about copyright, the field of law that most commonly protects works that fall within the spheres of creativity and entertainment? The South AfricanCopyright Act protectsvariousclearly defined categories of works, including literary works, artistic works, musical works, dramatic works, films and broadcasts. Anything that does not fall within these specific categoriesdoes not enjoy copyright. Arecorded TV show falls within the definition of a film and it willobviously qualify as a broadcast, but a TV format does not fall within the definitions of either a film or a broadcast. It has, however, been suggested that a TV format is a ‘dramatic work’. A ‘dramatic work’ is a sub-category of thecategory‘literary work’, whichis defined to include‘dramatic works, stage directions, cinematograph film scenarios and broadcasting scripts’.

So does a TV format qualify as a dramaticwork?The issue has never come up in South Africa, but it has come up in thecountry from where we get our copyright law, the UK. Inthe Hughie Green casean individual called Hugh Green created a quiz show called Opportunity Knocks. The show had a particular format that involved certain catchphrases, contestants being introduced by sponsors, and a ‘clapometer’ to measure audience reaction. When the Broadcasting Corporation of New Zealand copiedboth the name and format of the show, Green sued for copyright infringement, claiming copyright in a dramatic work. But his case failed, because the court felt that what he had created lacked the specificity or detail for it to be performed - the scripts only provided a general idea, and the repeated features (the format) were not dramatic works because a dramatic work must have sufficient unity for it to be capable of being performed.  The court went on to say that the repeated features were unrelated to one another except as accessories to be used in the presentation of someother dramatic performance. Although a later UK case gave a broad and liberal interpretation to the expression ‘dramatic work, it seems unlikely that this judgement has much relevance to TV formats. So copyright protection is probably not available.Which is pretty much the consensus in the blog.

Broadcasters have, in fact, been calling for specific protection to be created for TV formats, perhaps by way of a separate category under copyright law. The blog seems to support this call, saying that in the same way that it was a mistake to stretch the definition of a ‘literarywork’ to covera computer program when the issue of computer software protection first raised its head (copyright has since been amended to add ‘computer programs’ as a separate category), it would also be a mistake to artificially extend the meaning ofa ‘dramatic work’ to include TV formats.

So what’s left? It is possible to get a trade mark registration for the name of a TV show (provided that it’s distinctive and meets the other criteria specified in the Trade Marks Act), and also other branding such as the logo and perhaps even catchphrases - broadcasters like the BBC assiduously protect the trade marks of their big shows around the world. But a trade mark registration does not cover the format and it doesn’t stop a third party from coming up with a similar show under a different name. There’s also  unlawful competition - that area of the law that decrees that it’s unlawful to compete in a way that’s beyond the pale, that offends against the morals and ethics of the marketplace – but the courts are generally slow to find that something that doesn’t infringe an IP right  constitutes unlawful competition.  As for passing off – itself a species of unlawful competition - it’s unlikely that there'll be any confusion if a different name and branding is used.

So what’s the creator of a TV show to do?  Well it should certainly adopt distinctive trade marks, it should register those trade marks, and it should try to use and promote them in such a way that a copycat feels obliged to use them. It might want to get around the issues raised in the Hughie Green case by makingtheuse of the repeated elements so extensive and so integral to the show that they might be regarded as a ‘dramatic work’.   It might also want to agitate for amendmentsto the law. In the meantime, it’s worth noting that there is an organization that offers 'registration' of TV formats, see www.frapa.org.Although this is not official registration of any sort, this service may be useful if you ever sue for copyright infringement and you need to establish just what you created and when you created it. It must be borne in mind, though, that this won’t make it any easier for you to persuade the court that a TV formatper sedoes enjoy copyright protection.

VICKY STILWELL: Director & Trade Mark Attorney in ENS’ IP Department ([email protected])