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25 October 2017

How (not) to protect an idea for a TV format

A rare case alleging that a TV format has been copied has been thrown out of court for having no realistic prospect of success and for being an abuse of process. Unless a format is highly developed, it will not qualify for protection...

The case, concerning the 'Minute to Win It' TV series, was brought by Banner Universal Motion Pictures Limited ("BUMP"), owned by Mr Derek Banner.

Mr Banner claimed that he came up with the format in 2005, he committed the format to a document 'Minute Winner', which thus became a 'dramatic work' and he disclosed the format to a Swedish television production company ("Friday TV"), in circumstances that gave rise to an obligation of confidence.

BUMP also claimed that, by airing Minute to Win It, the defendants actions amounted to passing off.

Copyright claim

BUMP asserted that the Minute Winner document was a dramatic work (and was therefore subject to protection under UK copyright law).

The Judge considered that it was arguable that a television format could be the subject of copyright protection as a dramatic work. Whilst he saw no need to set out the precise conditions, he indicated that copyright protection will not subsist in a TV format unless as a minimum:

1 It must have a number of clearly identified features which, taken together, distinguish the show in question from others of a similar type; and

2 Those distinguishing features must be connected with each other in a coherent framework which can be repeatedly applied so as to enable the show to be reproduced in recognisable form.

The contents of the Minute Winner document had neither of these, they 'did not identify or prescribe anything resembling a coherent framework or structure which would be relied upon to reproduce a distinctive game show in recognisable form' and therefore could not qualify for copyright protection.

The Judge also concluded that, even if he was wrong in his conclusion on the subsistence of copyright, there was no hope in the argument that a substantial amount of the work had been copied.

Breach of confidence

BUMP asserted that the information in the 'Minute Winner' document was of confidential character and was disclosed to Friday TV under circumstances imposing a responsibility of confidentiality, in a meeting in 2005.

Not only did Friday TV provide evidence to disprove this assertion, the matter had also been heard before the Swedish court who decided that the information in the Minute Winner document was not a trade secret because it was not of sufficient quality to enable the court to conclude that its disclosure would cause harm to Mr Banner.

Mr Banner had attempted to appeal this decision through several routes in the Swedish courts, but had been refused permission to pursue any of them.

The Judge found that the case before the English Court was sufficiently similar to the Swedish case so as to be barred res judicata and/or amount to an abuse of process. He did also comment that the decision in the Swedish court would have likely been followed in England, the 'Minute Winner' document was simply not sufficiently developed to benefit from protection as confidential information.

Passing off

BUMP asserted that the 'Minute to Win It' show was deceptively similar to their own 'Minute Winner' show.

It is a fundamental element of passing off that a claimant who is seeking to protect use of a name must have goodwill in that name. For the purposes of passing off in England, that requires actual clients or customers for the product in question to exist in England. There was no evidence in this case that Mr Banner had any clients or customers in England, BUMP simply relied on a website (widely available to television networks and production companies in the UK) belonging to Mr Banner that mentioned the title.

The judge found that this was not evidence of goodwill; he also found that there was 'simply no similarity between the shows produced under the name Minute to Win It and the Minute Winner concept' and hence there was no risk that confusion might arise.

Key point to note

This is positive step for those looking to protect the creation of TV formats in UK. There is no reason why a TV format, committed to a document, shouldn't be protectable as a dramatic work, but there must be sufficient record of how the format is to be repeatedly applied and how it is distinguished from other shows of a similar type.

It is important to note that the Judge in this case was only pointing out minimum requirements. Further judicial analysis is needed if we are to properly formulate a test as to when TV format documents qualify for protection. In the meantime, it is important to continue to mark all documents as confidential, and only to disclose information under conditions of confidentiality.

Banner Universal Motion Pictures Ltd v Endemol Shine Group Ltd & Ors [2017] EWHC 2600 (Ch)


This article was written by Peter Byrd.

For more information, please contact Peter on +44 (0)20 7427 6754 or at peter.byrd@crsblaw.com

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