Banner Universal Motion Pictures Ltd v Endemol Shine Group Ltd and Others
| Jurisdiction | England & Wales |
| Judge | Mr. Justice Snowden |
| Judgment Date | 19 October 2017 |
| Neutral Citation | [2017] EWHC 2600 (Ch) |
| Docket Number | Case No: HC-2016-001395 |
| Court | Chancery Division |
| Date | 19 October 2017 |
[2017] EWHC 2600 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Rolls Building, Fetter Lane,
London, EC4A 1NL
Mr Justice Snowden
Case No: HC-2016-001395
Ms. Madeleine Heal (instructed by Fox Williams LLP) for the Claimant
Mr. Edmund Cullen QC (instructed by Wiggin LLP) for the Defendants
Hearing dates: 8–11 November 2016
Judgment Approved
Introduction
This is a case management conference in a claim relating to a TV gameshow format called " Minute Winner" which was devised and committed to writing by 2005 by Mr Derek Banner. Mr. Banner is a Danish citizen, and the Claimant company, Banner Universal Motion Pictures Limited ("BUMP"), is an English company recently formed by him which contends that it is entitled to pursue claims as assignee of the rights in relation to the format.
BUMP claims that the document in which the Minute Winner format is contained ("the Minute Winner Document") is a dramatic work in which UK copyright subsists. It also alleges that the information in the Minute Winner Document was disclosed by Mr. Banner to the Second Defendant ("Friday TV"), which is a Swedish television production company, at a meeting in Stockholm on 11 November 2005 in circumstances that gave rise to an obligation of confidence upon Friday TV. It is alleged that the information was subsequently misused in the UK and elsewhere by the Defendants. In particular, it is said that the Defendants were involved in the broadcast by ITV2 in England between September to November 2011 of eight episodes of a game show called " Minute to Win It" which it is contended was derived in substantial part from the Minute Winner format, and that rights to exploit Minute to Win It gameshows have also been sold by the Defendants in over 70 countries worldwide. BUMP's claim is for infringement of copyright, breach of confidence and passing off.
The claim is resisted by the Defendants. Friday TV has applied for a declaration as to non-jurisdiction pursuant to CPR Part 11 in relation to the claims made against it, and all three Defendants have applied for summary determination of the claim and/or for it to be struck out or stayed, inter alia on the grounds (i) that the contents of the Minute Winner Document did not qualify for protection as a copyright work; (ii) that BUMP is estopped from bringing the claim for breach of confidence because the Swedish Courts have already finally determined that neither the Minute Winner Document nor the information in it were disclosed at the meeting in Stockholm, and that such information was not of a type that gave rise to any claim against Friday TV for infringement of Swedish trade secrets law; and (iii) that the claim for passing off must fail because Mr. Banner had no goodwill in the Minute Winner format in the UK.
For its part, BUMP has applied for permission to add or substitute three new defendants to the claim as joint tortfeasors in reliance on further information received from the existing defendants as to the corporate entities involved in the development and licensing of Minute to Win It. BUMP wishes to substitute Shine TV Limited ("Shine TV") which is an English company in place of the First Defendant ("Endemol Shine Group"); it wishes to substitute Universal Media Studios International Limited ("UMS"), which is also an English company, in place of the Third Defendant ("NBC"); and it wishes to add Universal City Studios Production LLP ("UCSP"), a Delaware limited liability partnership as the Fourth Defendant and to have permission to serve UCSP out of the jurisdiction.
BUMP also seeks to make amendments to its Particulars of Claim, and further amendments were advanced in draft by Ms. Heal during the course of the hearing. As is conventional, I shall address the position on the basis of those draft amendments, since if a case can be saved by a timely amendment it should ordinarily be allowed to remain on foot.
The Minute Winner Document
BUMP claims that in or around 2003, Mr. Banner developed a format for a television game show which was set out in a short document entitled, "Minute Winner". The title page to the Minute Winner Document describes the format as follows,
"MINUTE WINNER
Mini-format Game show
Daily or weekly show.
Or short one minute between main programs.
Morning, Evening or Afternoon program.
One minute, or 30 minutes with several winnings."
The document then continues,
"SYNOPSIS
Minute Winner is a television program in which people are given one minute to win something.
WHERE?
The program takes place in a studio (and in location: street, shopping mall or unexpected at people's homes). The program is cheaper to produce on location, as it only requires a cameraman, soundman, a host and a stopwatch
PRIZES
The prizes are sponsored by firms/companies in exchange with advertisements during the program."
Under the heading "EXAMPLES OF WHAT PEOPLE CAN WIN" there are then four examples given.
"AT A BICYCLE SHOP
The host randomly stops a customer inside the shop and offers her/him a set of 10–20 keys. The customer then has one minute to find the right key that would open the lock of a chosen brand new bicycle. If the customer succeeds she/he wins the bicycle.
ON THE STREET
A brand new car is parked on the street. The host randomly stops a by-passer and gives her/him a set of car keys. Within one minute the by-passer has to find the right key and open the car. The by-passer wins the brand new car if she/he succeeds before one minute is gone.
PRIVATE AT SOMEONE'S HOME
The host starts by mentioning: "Today we're going to surprise someone at Fifth Avenue!" Then afterwards we see him knock at a door that he chooses at random. And when someone opens the host says: "Hello, we're from the television program called Minute Winner. Do you have one minute to win a TV set?" Of course the person says yes. Who wouldn't want to win a brand new TV? The host then gives the person one minute to try to turn on the TV and code in two-three channels. The person wins the TV set if she/he succeeds.
IN A CLOTHES SHOP
The host stops a customer at random inside the shop and gives her/him one minute to choose a set of clothes, go to the dressing room and try them on. If the clothes fit and the person has put them all [on] in one minute she /he wins the clothes."
The Minute Winner Document then adds,
"The program can also take place at different various places: at a paint shop, fish shop, butcher shop, shoe shop, wood shop, dentist, candy shop etc."
Various reasons are then given as to why people might want to see the program. Among these is the statement,
"The combination of luck and pure coincidence is a factor that would make people wish that one day they could be stopped on the street and be given a chance to win something on television."
Under the heading "WHEN CAN THE PROGRAM BE SHOWN?" it is suggested that,
"The program can be shown daily (optional) as a one-minute fill in, before or after a main program. Minute Winner can also be shown either as a morning program, afternoon program or evening access prime time program."
At the end of the Minute Winner Document, in very small type, are the words,
"Concept created by Derek Banner/Bump Productions. Copyright 2003, all rights reserved. This format is protected under the international copyright law and intellectual property protection. It shall not be transmitted, exploited, copied produced, used, disclosed or distributed, in part or in its entirety, without permission from its owner."
Factual Background
On 11 November 2005, Mr Banner had a meeting in Stockholm with the principals of Friday TV, Jock Millgardh and Matthias Olsson. Mr Banner claims that at that meeting he handed Mr Millgardh and Mr Olsson a non-disclosure agreement (NDA) relating specifically to Minute Winner together with NDAs for several other television show formats. Mr. Banner accepts that Mr Millgardh and Mr. Olsson told him that they would not sign any NDAs, but he claims that they acknowledged that everything which was said or disclosed at the meeting would nonetheless be in confidence. Mr. Banner then says that he pitched his idea for Minute Winner, including the catch-phrase, " You have a minute to win it", at the meeting, and that he made some further suggestions in relation to the show, e.g. in relation to digital media and a Christmas edition.
In his evidence, Mr Millgardh says that Minute Winner was not mentioned at the meeting on 11 November 2005, the purpose of which was to discuss another proposed TV programme devised by Mr. Banner called Celebrity Birthday. He also says that Mr Banner put a NDA to him and Mr Olsson but they told Mr Banner that they did not enter into such agreements and did not do so. Mr. Millgardh produced a note of the meeting which is consistent with his account, and Friday TV did subsequently enter into an agreement with Mr Banner in relation to the development of Celebrity Birthday.
Ten days after the meeting, Mr Banner sent an unsolicited email to Mr Millgardh on 21 November 2005 which said, "Nice speaking to you. Attached are 10 more of our new formats". One of these was Minute Winner and attached to the email was a version of the Minute Winner Document. On its face, that email is not consistent with the suggestion that Mr Banner had already pitched the Minute Winner format at the face-to-face meeting ten days earlier.
Nothing else of any relevance occurred for a number of years. In 2009, Friday TV's holding company was acquired by Shine Limited, a well-known TV production company, and in the same year, Friday TV sold the idea for a...
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Copyright protection of TV Formats in the UK: Banner Universal Motion Pictures Ltd v. Endemol Shine Group Ltd [2017] EWHC 2600 (Ch)
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