Who Wants To Be A Millionaire?…How To Protect TV Format Rights
The X Factor, The Voice, Love Island, Big Brother, The Weakest Link, The Apprentice, Who Wants To Be A Millionaire? – when cultural commentators examine the television of recent years what is striking is the global domination of prime time by shows made to particular formats. Despite this, it is hard to define precisely what we mean by formats as they intersect different genres (music, sport, quiz, comedy, drama) and rely on different components to make them attractive to viewers. Even if we can’t define a format – we know what it is when we see it, and we know how incredibly successful they can be!
Whilst, this article will look at TV formats, the lessons learnt from the TV industry can be (and in some cases already have been) equally well applied in other industries, including sport formats, e-sports formats, theatre formats (most notably of musicals), on-line gaming formats and more besides. As format rights lawyers we at Hansel Henson see the same patterns across sectors.
Below I look at why successful formats are so valuable in the television industry before turning to the connected issue of their legal protection.
Academics, critics and lawyers have struggled to define what a “format” is, but such definitions seem to fall between so broad as to be meaningless to so precise as to be inaccurate. Suffice to say, all of us can identify a format when we see it, even though formats exist across a range of programming from talent shows (The X Factor, The Apprentice) to magazine shows (Top Gear, Antiques Roadshow) to reality TV (Big Brother, The Real World) to game shows (Deal or No Deal, Weakest Link) to scripted comedy (the Office) to touring theatre productions shows (Les Miserables, Evita). Each format shares an overall concept which exists outside the individual participants and contains common elements making them replicable and scaleable.
A host of things can go into a successful format, including scripts, set designs, jingles, theme music, catchphrases and the concept itself. It’s creating and protecting a detailed collection of such elements and bringing them together as a compelling, cohesive and protected package that makes for valuable format rights.
Look at Who Wants To Be A Millionaire in Afghanistan, with the same music and style of opening credits http://www.youtube.com/watch?feature=player_embedded&v=8rqo8ftQkYU
So, it is important to note that a format is very, very much more than just an idea. Far too many people confuse a collection of thoughts punched into a Word document with a format. When we look at the legal position in protecting a format, each of its different elements can be very important in terms of protecting the format.
There are a number of reasons why TV formats are now part of a multi-billion pound industry, spawning some of the biggest hits on TV channels around the World.
We think there are five big reasons why broadcasters choose to make format TV:
● “Hit TV” – broadcasters and advertisers love hit programmes. A proven hit in one territory is likely to be seen as a safe bet in another. Such formats also allow for localised versions of shows to be produced for watching in individual territories.
● “Event TV” – many formats revolve around some element of competition, whether it be a talent show or simply the person who can last longest in a house! In the modern world event TV is a fantastic way to get an audience, and in particular to attract a youthful demographic, attractive to advertisers.
● “Lucrative TV” – developing a format costs a great deal of money, but if it can be sold numerous times around the word then that can be very lucrative for the rights owner. The investment cost in creating a format is likely to be very large, but so too is the return on investment on a successful format!
● “Cheap TV” – whilst format rights can be lucrative when resold, buying in format rights can be cheaper than developing and testing a new format. Other broadcasters will already have operated the format making the costs of deploying a format more predictable.
● “Litigation Free TV” – broadcasters hate being sued! By licensing a format that has already been used elsewhere a broadcaster gets a lot of comfort that it will not attract an intellectual property claim. Plus the clever broadcaster can seek to shift some of the risk to the format rights owner through demanding contractual indemnities that the programme won’t infringe any intellectual property rights.
A format rights holder can often secure a substantial fee for the use of his format. For instance, TV formats regularly attract format rights fees of 10% of the budget plus further income from ancillary rights such as merchandising and apps. In many cases the format rights holder will secure the right to produce the format and sell to the broadcaster. Money is to be made not just on format rights fees but also in the fees of the “flying producer” who will lend her experience in overseas territories.
Once a TV show has been broadcast, what is there to allow you to control the future exploitation of the event by licensing and to prevent other people from copying your idea or doing the same thing on a larger scale thereby eliminating you from the market? That is when the smart producer looks to the law to help. Let’s look at the legal protections which the format creator can look to, to establish and protect its rights to the event “format”.
The starting point is of course the infamous 1989 New Zealand case Green –v- Broadcasting Corporation of New Zealand, where Hughie Green, the long standing presenter of “Opportunity Knocks” sought to establish a format right to his programme concept as against a New Zealand broadcaster who, without payment to Mr Green, had produced a talent show taking the title “Opportunity Knocks” and including in each programme characteristic phrases such as “It’s make your mind up time” plus the use of a clapometer and sponsors to introduce contestants.
The judgment in this case reaffirmed the general principle in UK law that there is no copyright in an idea, as copyright is concerned with protecting the “expression of thought” and not the “originality of ideas”. The case further established that, on the facts of the case, there could be no copyright in the format of this game-show, or indeed any other programme, however unique, albeit that the format which was presented to the court in this case was limited in scope and would, these days, include a significant amount more detail. This judgement has been much criticised for confusing legal principles, however, it is widely acknowledged that the decision (if not the way in which it was reached) was correct and more recent cases from the UK have supported it.
Two other cases in Brazil and Holland do however, appear to lean the other way and suggest that there may well be copyright protection available to a TV programme format. In Castaway Television Productions Limited & Planet 24 Productions Limited –v- Endemol (2004), heard by the Dutch Supreme Court, the Court concluded that “A format consists of a combination of a series of unprotected elements” and that an infringement “can only be involved if a similar selection of these elements have been copied in an identifiable way.” The Court went on to say that copyright infringement would exist if all the elements have been copied, but that there would be no infringement if only one element has been copied. Rather unhelpfully, but sensibly, the Court went on to reference the grey area in the middle as depending “on the circumstances of the case”. This may therefore entail tracking similarities point by point as evidence of infringement. The premise of copyright protection in a programme, and thus, by analogy, an event format had however been recognised by the Dutch.
Only someone with colossal resolve is going to make it to the end of this video showing The Weakest Link welcome intros from around the world: Welcome to The Weakest Link! (International) | WLTR1 – YouTube.
Leading on from the above, Endemol and their Brazilian licensees were awarded damages for breach of the copyright of the Big Brother format under Brazilian law. The Court heard independent academic opinion that the format of television programmes not only includes the central idea of the programme but also encompasses an extensive group of technical, artistic, economical and business ideas; it is therefore not just the idea of the programme, “it is the idea and much more”. The observations made by the Court before deciding to award damages in favour of Endemol and its official licensees included consideration of the “meticulous description” and detail of the programme format including, amongst others, the positioning of the cameras, the unique characteristic of the images and audio situations captured and the form through which participants would have contact with the outside world.
In February 2012, the IP Court of Rome granted the BBC a preliminary injunction against Endemol and the broadcaster RTI. The BBC had previously licensed its format to the state broadcaster RAI who had produced eight series of “Ballando con le Stelle”. Whilst Endemol and RTI claimed to have based their show, “Baila!”, on a Mexican format called “Bailando por un Sueno”, the Court found against them. Having looked at the basic features of Ballando con le Stelle and Baila! and their similarities and differences, the Court held there was copyright infringement.
These recent overseas cases suggest that a sufficiently detailed programme format, and, by analogy, event format, may well begin to attract protection in copyright. Producing a documented “Format Bible” up front from the original proposal and covering in finite detail the organisation and production of the format (including things like the rules, guidelines, any distinctive outfits, positioning of cameras, music played throughout the event, presentation podia, opening and closing ceremonies, the event venue branding, commentator scripts and catchphrases, any software, graphics and logos used for broadcasts) is likely to lead to a format, which may begin to attract copyright protection in its own right. Such copyright protection and the ability to enforce infringements adds intrinsic value to the event format and in turn helps make it a licensable commodity.
However, it must be remembered that overseas cases are not binding under English law, which maintains the premise that unless a format is committed to writing in sufficient detail it remains an idea, and under copyright law in the UK, an idea (or collection of ideas) alone is generally not capable of being protected.
Recent reported disputes have suggested that a definitive English court decision may be forthcoming in relation to format rights but no doubt the legal uncertainty in this area coupled with the cost of litigation and risk of market alienation have persuaded potential litigants to pursue commercial solutions. Our view is that it will be difficult to persuade the English courts to accept the notion of format rights as being protected by copyright and that it will be individual elements of formats that will be protectable rather than the whole. Pursuing matters in overseas jurisdictions – ‘forum shopping’ – may often be the best way forward to litigate a format.
So, if the developer of a format cannot rely on the protection from English copyright law to protect the general format idea, albeit individual component elements may attract specific copyright protection (i.e. logos, music, artwork, scripts), what else is there at law to assist? Whilst there is no specific legal right to look to, by using a mix of intellectual property and contractual protections, the developer can go some way to protecting and so enhancing the value of its format. The elements of the matrix are as follows:-
Confidentiality obligations offer a means of protection, where a format has not yet entered the public domain. In order to be protected, the ideas must contain some significant element of originality, have been pitched in confidence, be clearly identifiable as the idea of the pitcher, of potential commercial attractiveness and sufficiently well developed to be capable of actual production. This need not mean a complex idea. In an Australian decision, for instance, a small “commercial twist” given to the hackneyed idea of a celebrity interview programme was protected in an action for breach of confidence.
If, therefore, a proposed format has not yet entered the public domain, then the developer should seek to use confidentiality to protect its idea. Getting an interested partner or licensee to sign a legally binding non-disclosure agreement (“NDA”) (or confidentiality agreement) prior to fixing the format is likely to impress upon them the confidential nature of what has been disclosed.
These offer a high degree of protection for format titles and distinctive catchphrases and logos. Provided they are sufficiently distinctive, trademarks can be registered throughout the world in order to protect not only rights in the title and the catchphrases used, but also ancillary rights such as for merchandising. The only difficulty is that, unlike the other protections discussed here, a comprehensive portfolio of registrations can be expensive.
This may well be of use where a producer wishes to prevent infringement of its format provided it can show (1) that there is a significant reputation or goodwill attaching to the format and its title and (2) that the actions of the infringer have misrepresented to a not insignificant section of the market the origins of the format and (3) that the goodwill of the original developer has been damaged as a result. However, passing off is likely to be difficult to establish due to the need to prove the giving of the misrepresentation/false message to the audience, and also relies on established goodwill in the original format.
Merchandising, sponsorship, advertising, production and broadcast agreements will, provided they are well-drafted, help all involved in the exploitation and creation of format rights understand what they can and cannot do in relation to those rights. All too often expensive disputes arise as a result of bad, ill advised contracts.
Whilst commercial practice would indicate that format rights are a licensable commodity and here to stay, the legal reality is that they are not recognised by UK statute or the English courts as attracting their own species of protectable rights. This is out of sync with contracts that talk of format fees and define “format rights”, whilst independents who “own” format rights are known to borrow against the security of the “format rights” that they own.
Until someone is brave enough to test the strength of their rights before the English courts the status of these rights will continue to remain elusive and, accordingly, format rights creators are advised to think carefully and get good advice. Given the cost of developing a format and the money that trades hands on the back of format rights, it will be a brave format rights holder or format rights licensee who tests the waters and risks upsetting both existing or potential business relationships.
The winning formula when dealing with format rights is to identify the array of protections that may assist you in protecting your format and look to use them to protect and add value to the format with the help of Hansel Henson solicitors specialising in format rights. Contact David Hansel with any questions.