Shazam Productions Ltd v Only Fools the Dining Experience Ltd
| Jurisdiction | England & Wales |
| Judge | John Kimbell |
| Judgment Date | 08 June 2022 |
| Neutral Citation | [2022] EWHC 1379 (IPEC) |
| Docket Number | Claim No. IP-2021-000001 |
| Court | Intellectual Property Enterprise Court |
[2022] EWHC 1379 (IPEC)
John Kimbell Q.C.
(sitting as a Deputy High Court Judge)
Claim No. IP-2021-000001
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY ENTERPRISE COURT (Ch.D)
Royal Courts of Justice
Rolls Building, London, EC4 1NL
Jonathan Hill (instructed by Ashfords LLP) for the Claimant
Thomas St Quintin (instructed by Brandsmiths) for the First to Third and Fifth to Eighth Defendants
Hearing dates 1 – 3 March 2022
APPROVED JUDGMENT
This judgment was handed down remotely by circulation to the parties' representatives by email and released to the National Archives. The date and time for hand-down is deemed to be 10.30 am, on Wednesday 8 June 2022
Table of Contents
| Sec | Heading | Sub-heading | Paragraphs |
| A | Introduction | 1 – 23 | |
| B | The Issues for Trial | 24 | |
| C | The witness Evidence | 25 – 61 | |
| D | The Statutory Framework | 62 – 63 | |
| E | The Alleged Works | 64 - | |
| The Scripts | 65 – 67 | ||
| The Scripts as a body of work | 68 – 75 | ||
| The character of Del Boy | 76 – 120 | ||
| The two stage test | 92 | ||
| The two cumulative conditions | 94 | ||
| The originality requirement | 95 | ||
| The identifiability requirement | 97 | ||
| Application of the tests | 98 – 113 | ||
| Pippi Longstocking | 114 – 118 | ||
| Sherlock Holmes | 119 – 120 | ||
| Literary or dramatic work? | 121 | ||
| Conclusion on Del Boy as character | 122 | ||
| F | Infringement | 123 – 134 | |
| The legal principles | 125 | ||
| Del Boy | 127 – 130 | ||
| The Scripts | 131 – 136 | ||
| G | Fair Dealing under Section 30A CDPA | 137 - | |
| The submissions | 140 – 142 | ||
| 143 – 145 | |||
| The Three Step Test | 144 – 151 | ||
| Fair dealing | 150 – 155 | ||
| “For the purpose of” | 156 – 158 | ||
| IPO Guidance | 157 | ||
| Parody | 160 – 180 | ||
| Pastiche | 181 – 190 | ||
| H | Application of Section 30A to the facts | ||
| No parody | 194 | ||
| No pastiche | 195 | ||
| No fair dealing | 196 | ||
| I | Passing off | ||
| The legal principles | 198 – 199 | ||
| Goodwill | 200 – 203 | ||
| Misrepresentation | 204 – 208 | ||
| Damage | 209 | ||
| J | Conclusions | 210 |
John Kimbell QC, sitting as a Deputy High Court Judge:
A. INTRODUCTION
Only Fools and Horses (‘ OFAH’) is a well-known television comedy. It was originally broadcast by the BBC in 64 episodes over seven series (1981 – 1991) and a number of Christmas specials until 2003. The scripts for all the episodes of OFAH (‘ the Scripts’) were written by John Sullivan OBE. He died in 2011.
OFAH has as its subject the ups and downs in the life of the Trotter family. It is set in South London during the 1980s and 1990s. The main characters are a market trader, Derek Trotter (‘ Del Boy’), and his younger brother, Rodney, who live together in a high-rise council flat in Peckham. The third occupant of the flat was originally Derek and Rodney's grandfather but he was later replaced by an elderly uncle (‘ Uncle Albert’). Other characters include a louche used car salesman (‘ Boycie’), his wife Marlene, a road sweeper called Trigger and Cassandra, who is Rodney's girlfriend and subsequently his wife.
OFAH won the British Academy Television Award for best comedy series three times — in 1986, 1989 and 1997. It was awarded the National Television Award in 1997 for most popular comedy series and the Royal Television Society Award in 1997. John Sullivan won the Writers' Guild of Great Britain top comedy writer award in 1991 and the best situation comedy writer award in 1997 for OFAH. There have been two spin-off sitcoms broadcast by the BBC: one is a sequel to OFAH, called The Green Green Grass (2005–2009). This features Boycie and Marlene. The other is Rock and Chips (2010–2011), which is a prequel to OFAH. Rodney and Del Boy also appeared in opening ceremony of the London Olympics in 2012 replaying a scene from OFAH in which they dress as Batman and Robin. The fact that they appeared in the ceremony, some nine years after the last OFAH special Christmas episode was broadcast, is an indication of its impact and national resonance with the public.
The Claimant (‘ Shazam’) is a company owned and controlled by John Sullivan's family. Shazam was formed in 2003 to exploit the intellectual property rights held by John Sullivan in connection with OFAH (as well as other shows written by him, such as ‘Citizen Smith’).
In February 2019, Shazam launched a musical based on the characters from OFAH at the Theatre Royal Haymarket (‘ the Musical’). The Musical is written by John Sullivan's son, Jim Sullivan, and Paul Whitehouse.
OFDE
In May 2018, the Third Defendant (Ms Pollard-Mansergh) and the Fourth Defendant (Mr Mansergh) decided to develop an interactive dining show using the characters from OFAH. The show was produced and marketed under the name “Only Fools The (cushty) Dining Experience” (‘ OFDE’). The actors in the OFDE Show used the appearance, mannerisms, voices and catchphrases of Del Boy, Rodney, Uncle Albert, Cassandra, Boycie, and Marlene as they appeared in the broadcast version OFAH. The backstories of those characters and their relationship to each other as that had developed by Series 6 of OFAH was carried over into OFDE. The characters were presented, however, in a new context of an interactive pub quiz, which had not appeared in OFAH itself.
Whilst the audience is being served a three-course meal, the actors in the OFDE Show perform scenes based on a script produced collaboratively by a number of people over the course of a few weeks. 1 The script was compiled by the Fifth Defendant. It gave flexibility for the actors to interact spontaneously with the diners and to improvise. OFDE was usually performed in hotel function rooms in front of an audience of no more than 120.
The commercial vehicle for developing the OFDE Show initially was the Second Defendant (‘ ITI’). However, the rights to OFDE were subsequently transferred to the First Defendant.
FTDE
OFDE was not ITI's first venture in the area of TV-show themed dining shows. ITI had for many years offered a similar interactive dining experience based on the characters
from the BBC comedy Fawlty Towers. This was called the Faulty Towers Dining Experience (‘ FTDE’)The aim of both FTDE and OFDE was the same. It was to make the audience feel that they are in the presence of the characters they knew and loved from the respective television show. The idea was for the audience to feel immersed in “a similar imaginary universe” to that created by the TV show in each case. A marketing email for the OFDE Show said this:
“Only Fools The (cushty) Dining Experience is an immersive theatre show created in loving tribute to the BBC's Only Fools & Horses TV Series. The ITI show does not use script or music from the TV series”
The first letter before action
In July 2018, solicitors instructed by Shazam wrote to the Second and Sixth Defendants to complain that, based on the advance publicity they had seen for OFDE, any performance would inevitably involve an infringement of the intellectual property rights held by Shazam. Mr Mansergh responded to this letter by saying that:
“Having had long discussions with my legal counsel, trademark and patent attorneys, I am satisfied that no trademark, copyright or PRS infringements will result due to performances of the tribute/improv show/pub quiz/trivia night: ‘Only Fools The (cushty) Dining Experience’”.
OFDE began to be performed in September 2018. It has continued since then save for a period when due to Covid outbreak performances were not possible.
The second letter before action
On 22 July 2019, solicitors on behalf of Shazam sent a further letter before action. The letter enclosed a draft Particulars of Claim. This alleged that OFDE constituted a copyright infringement and passing off in respect of OFAH. It sought voluntary undertakings to cease those activities.
Brandsmiths were instructed to respond on behalf of the First to Fourth Defendants. They answered the letter the very next day. No undertakings were offered and all the allegations were denied.
Issue of proceedings
Proceedings were subsequently issued in the High Court (Chancery Division) on 19 December 2019. No interim injunction was sought preventing OFDE from being performed.
The Works
The Particulars of Claim allege that copyright subsists in the following works (‘ the Works’):
a. Each script for an episode of OFAH
b. The body of scripts for OFAH taken as a whole, which collectively establish the characters, stories and imaginary “world” of OFAH
c. The characters (namely Del Boy, Rodney, Marlene, Cassandra, Uncle Albert, Boycie, Trigger and DCI Slater).
d. The lyrics and opening theme song for OFAH
The Defences
Separate Defences were filed by the First to Third Defendants and the Fifth Defendant on the one hand and the Fourth Defendant (Mr Mansergh) on the other. By an order made on 29 October 2020, Master Teveson permitted Shazam to amend its Particulars of Claim to add the Sixth to Eighth Defendants. The claim was transferred to IPEC.
The Annexes
The Amended Particulars of Claim was accompanied by three Annexes:
a. Annex 1 described the features of the eight characters said by Shazam to be protected by copyright.
b. Annex 2 contained an analysis of two scripts used for OFDE (one from March 2019 and one from...
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