Format of TV show not copyrightable

Court of Appeal of New Zealand – The plaintiff had developed the program ‘Opportunity Knocks’ on British television. He claimed copyright in the general structure or format of a similar television programme in New Zealand, and also in passing off. By ‘dramatic format’ the appellant meant the characteristic features of the show which were repeated in each performance. These were the title, the use of various catch phrases, the use of a device called a ‘clapometer’ to monitor audience reaction and the use of sponsors to introduce competitors.
Held: The format of the show was not was a dramatic work protected by copyright. The evidence given to the court was particularly diffuse, taling of gimmicks, such as the use of a ‘clapometer’, and there was no sufficient unity or coherence for a dramatic work to exist under copyright law.
Lord Bridge said: ‘It is stretching the original use of the word ‘format’ a long way to use it metaphorically to describe the features of a television series such as a talent, quiz or game show which is presented in a particular way, with repeated but unconnected use of set phrases and with the aid of particular accessories. Alternative terms suggested in the course of argument were ‘structure’ or ‘package’. This difficulty in finding an appropriate term to describe the nature of the ‘work’ in which the copyright subsists reflects the difficulty of the concept that a number of allegedly distinctive features of a television series can be isolated from the changing material presented in each separate performance (the acts of the performers in the talent show, the question and answers in the quiz show etc.) and identified as an ‘original dramatic work’. No case was cited to their Lordships in which copyright of the kind claimed had been established.
The protection which copyright gives creates a monopoly and ‘there must be certainty in the subject matter of such monopoly in order to avoid injustice to the rest of the world:’ Tate v Fulbrook [1908] 1 KB 821, per Farwell J . . The subject matter of the copyright claimed for the ‘dramatic format’ of ‘Opportunity Knocks’ is conspicuously lacking in certainty. Moreover, it seems to their Lordships that a dramatic work must have sufficient unity to be capable of performance and that the features claimed as constituting the ‘format’ of a television show, being unrelated to each other except as accessories to be used in the presentation of some other dramatic or musical performance, lack that essential characteristic.’

Lord Bridge
[1989] RPC 700, [1989] UKPC 26
Bailii
England and Wales
Citing:
Approved – Tate v Fulbrook 1908
Farwell LJ said of the Copyright Acts: ‘The Act creates a monopoly, and in such a case there must be certainty in the subject-matter of such monopoly in order to avoid injustice to the rest of the world.’ Copyright subsists in different categories . .
Cited – Francis Day and Hunter Limited v 20th Century Fox Corporation Limited PC 12-Oct-1939
(Ontario) Copyright protection was asserted on in connection with the title to a film (‘The Man Who Broke the Bank at Monte Carlo’).
Held: It was not a literary work capable of attracting copyright protection. As a rule, such titles do not . .
Appeal from – Green v Broadcasting Corporation of New Zealand 22-Sep-1988
(Court of Appeal of New Zealand) The plaintiff had created a hugely sucessful TV programme in the UK, called Opportunity Knocks. He now appealed against rejection of his claim in copyright alleging that the defendant had copied the format, and also . .

Cited by:
Cited – IPC Media Ltd v Highbury-Leisure Publishing Ltd ChD 21-Dec-2004
The claimant magazine publisher alleged breach of copyright by the defendant in their magazine, as to the cover page designs used. It was not clear just which cover was said to have been copied.
Held: The first step in a copyright action is . .
Cited – Baigent and Another v The Random House Group Ltd (The Da Vinci Code) ChD 7-Apr-2006
The claimants alleged infringement of copyright by the defendant publishers and author in the plot and otherwise in the book ‘The Da Vinci Code’. They said that their own work had been copied substantially, using themes and copying language. The . .
Cited – Nova Productions Ltd v Mazooma Games Ltd and others ChD 20-Jan-2006
The claimant alleged copyright infringement in respect of computer games in the coin operated video market. It was said not that the games copied bitmap graphics, but rather the composite frames which appeared on the screen.
Held: The games . .
Cited – Meakin v British Broadcasting Corporation and Others ChD 27-Jul-2010
The claimant alleged that the proposal for a game show submitted by him had been used by the various defendants. He alleged breaches of copyright and of confidence. Application was now made to strike out the claim. . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Leading Case

Updated: 01 November 2021; Ref: scu.231500

References: [1989] 2 HKC 330
Links: HKLii
Coram: Sears J
Ratio: (High Court of Hong Kong) – Tort – Passing off – whether action lies when no active business in Hong Kong – International reputation and goodwill – Damages whether recoverable if sustained outside the jurisdiction.
Sears J ihearing an application for an interlocutory injunction held that mere reputation was enough to found a passing off claim.
This case is cited by:

• Cited – Starbucks (HK) Ltd and Another v British Sky Broadcasting Group Plc and Others SC ([2015] ETMR 31, [2015] ECC 19, Bailii, [2015] UKSC 31, [2015] WLR(D) 229, [2015] 1 WLR 2628, WLRD, Bailii Summary, [2015] 3 All ER 469, [2015] FSR 29,#, UKSC 2013/0274, SC, SC Summary)
  The court was asked whether, as the appellants contend, a claimant who is seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether, as the courts . .

(This list may be incomplete)

Last Update: 22-Aug-16
Ref: 566015

References: [2002] 212 CLR 411, [2002] HCA 59, (2002) 194 ALR 485, (2002) 77 ALJR 398, [2003] AIPC 91-838, (2002) 56 IPR 129
Links: Austlii
Coram: Gaudron, Mchugh, Gummow, Kirby, Hayne and Callinan JJ
Ratio: Austlii (High Court of Australia) Patents – Revocation – Obviousness or lack of inventive step – Patent for an oral pharmaceutical preparation – Whether invention obvious and did not involve an inventive step having regard to what was known or used in Australia on or before priority date – Combination of integers – Preparation arrived at by group of pharmaceutical chemists after period of experimental research – Whether hypothetical non-inventive worker in the field would have been led directly as a matter of course to pursue one avenue in expectation that it might well produce claimed invention – Relevance of publications discoverable by ‘routine literature search’ but not found to have been part of the common general knowledge in Australia at the priority date – Whether invention obvious if it was apparent to a non-inventive skilled worker that it would be ‘worthwhile to try’ each of the integers that was ultimately successfully used – Relevance of attempts to replicate the process of invention by a skilled person aware of the desired result – Whether attempts futile.
Appeal – Whether decision of primary judge in respect of obviousness affected by legal error – Where conclusions of primary judge affirmed by Full Court of the Federal Court.
Kirby J said: ‘The conclusions on obviousness in the proceedings below represented the outcome of a judicial evaluation of a mass of evidence. In the assessment of that evidence, and in the conclusion to be derived from it, the primary judge and the Full Court were better placed to perform the function of fact-finding than this Court is. Unless some error is shown in the application of the relevant law, it would be a rare step for this Court to condescend to re-evaluate such a factual conclusion, reached by concurrent decisions at two levels of the judicial hierarchy.’
After quoting from Biogen, he said: ‘Any exposition of judicial reasons explaining such factual findings is ‘inherently an incomplete statement of the impression which was made upon [the judge] by the primary evidence.’ Judges having replaced juries in such matters in Australia, and having entangled themselves in a web of horrible verbal formulae, must do their best to explain their conclusions where, in the past, juries simply announced their verdicts.’
This case is cited by:

• Cited – Human Genome Sciences Inc v Eli Lilly and Company SC (Bailii, [2011] UKSC 51, Bailii Summary, , )
  The court considered an appeal against the declaration of invalidity of a biomedical patent for a new human protein on the grounds that it was not susceptible of industrial application.
  Held: The patentee’s appeal succeeded. The court had to . .

(This list may be incomplete)

Last Update: 02-Aug-16
Ref: 450170

References: [1988] NZCA 180, CA40/84, [1988] 2 NZLR 490, (1988) 2 TCLR 701
Links: Nzlii
Coram: Somers, Casey, Gallen JJ
Ratio: (Court of Appeal of New Zealand) The plaintiff had created a hugely sucessful TV programme in the UK, called Opportunity Knocks. He now appealed against rejection of his claim in copyright alleging that the defendant had copied the format, and also in passing off.
Held: Courts have a discretion whether or not to order a new trial where fresh evidence is sought to be introduced and, in exercise of that discretion, they should apply the tests in Ladd v Marshall
Ongley J considered the claim to copyright in the words ‘Opportunity Knocks’ and held that copyright did not subsist in the title. His Honour noted that it is a difficult but not an impossible task to establish copyright in a title. He referred to the Privy Council decision in Francis
This case cites:

• Applied – Ladd v Marshall CA ([1954] 1 WLR 1489, [1954] 3 All ER 745, Bailii, [1954] EWCA Civ 1)
  At the trial, the wife of the appellant’s opponent said she had forgotten certain events. After the trial she began divorce proceedings, and informed the appellant that she now remembered. He sought either to appeal admitting fresh evidence or for a . .
• Cited – Francis Day & Hunter Limited v 20th Century Fox Corporation Limited PC ([1940] AC 112, Bailii, [1939] UKPC 68, [1939] 4 All ER 192)
  (Ontario) Copyright protection was asserted on in connection with the title to a film (‘The Man Who Broke the Bank at Monte Carlo’).
  Held: It was not a literary work capable of attracting copyright protection. As a rule, such titles do not . .

(This list may be incomplete)
This case is cited by:

• Appeal from – Green v Broadcasting Corporation of New Zealand PC ([1989] RPC 700, Bailii, [1989] UKPC 26)
  Court of Appeal of New Zealand – The plaintiff had developed the program ‘Opportunity Knocks’ on British television. He claimed copyright in the general structure or format of a similar television programme in New Zealand. By ‘dramatic format’ the . .

(This list may be incomplete)

Last Update: 29-Jul-16
Ref: 567719

References: (1985) 19 DLR (4th) 90, 50 OR (2d) 726, 30 BLR 152, 34 CCLT 1, 5 CPR (3d) 433, 1985] OJ No 2526 (QL), 10 OAC 14
Links: Canlii
Coram: Morden, Zuber, Robins JJA
Ratio: Canlii (Court of Appeal, Ontario) Torts — Passing off — Goodwill — Pest control company carrying on business in United States but not in Canada — Company having reputation among Canadian customers for services performed for them in United States — Company intending to expand its business into Ontario — Company having goodwill which Canadian court will protect in passing-off action.
The plaintiff was an American company which did not carry on business in Canada. The defendant was a Canadian company, carrying on business in Metropolitan Toronto. The defendant started using the plaintiff ‘s name in its business and later it began using the plaintiff ‘s logo on invoices it sent to customers under its own name. The plaintiff brought an action against the defendant for damages for passing off and an injunction. The trial judge gave judgment for the plaintiff. The defendant appealed to the Ontario Court of Appeal.
Held, the appeal should be dismissed. The trial judge was right in concluding that the plaintiff was entitled to relief on the basis that it had a reputation (built up in several different ways including having customers) in Ontario and intended to expand its business into Ontario. A plaintiff does not have to be in direct competition with the defendant to suffer injury from the use of its trade name by the defendant. If the plaintiff ‘s trade name had a reputation in the defendant’s jurisdiction, so that the public associated it with services provided by the plaintiff, then the defendant’s use of it would mean that the plaintiff had lost control over the impact of its trade name in the defendant’s jurisdiction. The practical consequence of this would be that the plaintiff would then be vulnerable to losing the Ontario customers it had as well as prospective Ontario customers, with respect to services provided in the United States. Also, it could result in the plaintiff being prevented from using its trade name in Ontario when it expanded its business into Ontario. Bearing in mind that the defendant had a virtually infinite range of names and symbols from which to choose, it is difficult to see the enjoining of it from using the name and logo of a well- established company in the same business as an unreasonable restraint on its freedom to carry on business as it sees fit. The public are entitled to be protected from such deliberate deception and the plaintiff, which had laboured long and hard and made substantial expenditures to create its reputation which had spread to Ontario, was entitled to the protection of its name from misappropriation. The spectre of the plaintiff having a monopoly in Ontario in its name and distinctive logo, even though it did not carry on business here, was considerably less troubling than the deceptive use of its name and symbol by another. As far as freedom of trade and the reasonable expectations of business people are concerned, the interests of a dishonest defendant are entitled to less weight than those of a defendant who has acted in good faith. That is not to say that the defendant’s bad faith alone will confer a cause of action on a foreign plaintiff, but it is a relevant factor to take into account in adjusting competing interests. The plaintiff ‘s goodwill existed outside the area where it carried on business. In this kind of case the main consideration should be the likelihood of confusion with consequential injury to the plaintiff. Generally, where there is such confusion there is goodwill deserving of protection. In any event, the applicable principles could be framed without using the word ‘goodwill’.
The competing rights of the parties had to be determined as of the date when the defendant started using the plaintiff ‘s name in Ontario. At the time the plaintiff ‘s reputation in Ontario, based on its customers in Ontario and advertising of various kinds, was of sufficient strength to make its rights superior to those of the defendant. Its reputation had grown steadily since. The defendant’s decision to use the plaintiff ‘s name in Ontario was evidence that the plaintiff ‘s name had commercial value at that time in Ontario and was an important indication of goodwill in a ‘foreign’ territory. The defendant argued that no damage to the plaintiff ‘s goodwill had occurred in Canada because the defendant and the plaintiff were not competitors. Without damage there can be no passing off. However, the plaintiff had suffered damage, sufficient to support a cause of action against the defendant, by virtue of its loss of control over the impact of its trade name in Ontario and the creation of a potential impediment to its using its trade mark upon entering the Ontario market — both arising from the defendant’s use of the plaintiff ‘s name in Ontario.
Although the plaintiff’s business was conducted in the USA, it enjoyed thousands of Canadian clients who used its pest control services for their properties in Canada. It sought an injunction in passing off.
Held: Morden JA granted the order, specifically relying on the fact that the plaintiff had goodwill ‘including having customers’ in Canada, although he did express disquiet about Lord Diplock’s notion in Star Industrial that goodwill had to be divided up nationally.
This case cites:

• Doubted – Star Industrial Company Limited -v- Yap Kwee Kor trading as New Star Industrial Company PC ([1976] FSR 256, Bailii, [1976] UKPC 2)
  (Singapore) The plaintiff Hong Kong company had manufactured toothbrushes and exported them to Singapore, for re-export to Malaysia and Indonesia, but with some local sales as well. Their characteristic get-up included the words ‘ACE BRAND’ and a . .

(This list may be incomplete)
This case is cited by:

• Cited – Starbucks (HK) Ltd and Another -v- British Sky Broadcasting Group Plc and Others SC ([2015] ETMR 31, [2015] ECC 19, Bailii, [2015] UKSC 31, [2015] WLR(D) 229, [2015] 1 WLR 2628, WLRD, Bailii Summary, [2015] 3 All ER 469, [2015] FSR 29,#, UKSC 2013/0274, SC, SC Summary)
  The court was asked whether, as the appellants contend, a claimant who is seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether, as the courts . .

(This list may be incomplete)

Last Update: 28-Jun-16
Ref: 566011

References: [1998] ZASCA 44, 1998 (3) SA 938 (SCA), [1998] 3 All SA 175 (A)
Links: Saflii
Coram: Smalberger, Harms, Marais, Schutz, Plewman JJA
Ratio:(South Africa: Supreme Court of Appeal) the plaintiff sought to prevent the defendant, as it claimed, passing off their cars as its own.
Held: On the facts, the case failed. However, the only component of goodwill of a business that can be damaged by means of a passing-off is its reputation and it is for this reason that the first requirement for a successful passing-off action is proof of the relevant reputation.
This case is cited by:

• Cited – Starbucks (HK) Ltd and Another -v- British Sky Broadcasting Group Plc and Others SC ([2015] ETMR 31, [2015] ECC 19, Bailii, [2015] UKSC 31, [2015] WLR(D) 229, [2015] 1 WLR 2628, WLRD, Bailii Summary, [2015] 3 All ER 469, [2015] FSR 29,#, UKSC 2013/0274, SC, SC Summary)
  The court was asked whether, as the appellants contend, a claimant who is seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether, as the courts . .

(This list may be incomplete)

Last Update: 28-Jun-16
Ref: 566014

References: [1987] NZCA 13, [1987] 2 TCLR 91, [1987] 2 NZLR 395, (1987) 9 NZIPR 367, (1988) 2 NZBLC 102
Links: NZLII
Coram: Somers J
Ratio:(Court of Appeal of New Zealand) The court considered looked at the degree of activity required to justify a finding that an international company had sufficient business connection in New Zealand to which goodwill could attach.
Held: Somers J said: ‘One important limitation on the right of a trader to restrain another is that he must show an invasion of that tangible right of property compendiously described as goodwill . . The existence of a trading reputation is not by itself sufficient – there can be no damage other than to a right of property . . ‘
This case is cited by:

• Cited – Starbucks (HK) Ltd and Another -v- British Sky Broadcasting Group Plc and Others SC ([2015] ETMR 31, [2015] ECC 19, Bailii, [2015] UKSC 31, [2015] WLR(D) 229, [2015] 1 WLR 2628, WLRD, Bailii Summary, [2015] 3 All ER 469, [2015] FSR 29,#, UKSC 2013/0274, SC, SC Summary)
  The court was asked whether, as the appellants contend, a claimant who is seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether, as the courts . .

(This list may be incomplete)

Last Update: 27-Jun-16
Ref: 566012

References: [1992] FCA 159, (1992) 23 IPR 193, (1992) Aipc 90-892 (Extract), (1992) 106 ALR 465, (1992) 33 FCR 302
Links: Austlii
Coram: Lockhart(1), Gummow(2) and French(3) JJ.
Ratio: Austlii Intellectual Property – passing off – bases and elements of passing off action – whether carrying on business within jurisdiction or place of business within jurisdiction – sufficiency of nexus with the jurisdiction – necessity and method of establishing reputation within jurisdiction – requirement of goodwill – whether fraud is a necessary element of passing off – relevance of establishing fraud. Trade Practices – misleading and deceptive conduct – relationship between reputation in passing off action and establishing misleading and deceptive conduct.
Although the claim in passing off failed, and after a very full review of the common law authorities Lockhart J said that it was ‘no longer valid, if it ever was, to speak of a business having goodwill or reputation only where the business is carried on’, relying on ‘[m]odern mass advertising . . [which] reaches people in many countries of the world’, ‘[t]he international mobility of the world population’ and the fact that ‘[t]his is an age of enormous commercial enterprises’. ‘it is not necessary . . that a plaintiff, in order to maintain a passing off action, must have a place of business or a business presence in Australia; nor is it necessary that his goods are sold here’, saying that it would be ‘sufficient if his goods have a reputation in this country among persons here, whether residents or otherwise’.
This case is cited by:

• Cited – Starbucks (HK) Ltd and Another -v- British Sky Broadcasting Group Plc and Others SC ([2015] ETMR 31, [2015] ECC 19, Bailii, [2015] UKSC 31, [2015] WLR(D) 229, [2015] 1 WLR 2628, WLRD, Bailii Summary, [2015] 3 All ER 469, [2015] FSR 29,#, UKSC 2013/0274, SC, SC Summary)
  The court was asked whether, as the appellants contend, a claimant who is seeking to maintain an action in passing off need only establish a reputation among a significant section of the public within the jurisdiction, or whether, as the courts . .

(This list may be incomplete)

Last Update: 27-Jun-16
Ref: 566013