Judge Rules Only Fool And Horses Knock Off Had Fallen Off The Back Of a Lorry

Why Is This Case So Important?

In the sphere of Intellectual Property law and more specifically the laws about copyright, this case is of historical importance. This is primarily due to it being the first time in legal history that the England and Wales courts have considered the defence of ‘fair dealing’ about copyrighted work and one was created for pastiche or parody reasons. This is a historic legal first in that an entirely fictional character has been held to be an independent copyrighted work. Before this case, those advising clients in this space in the profession did not have any form of judicial guidance to support them through claims of this nature. However, following this judgment legal professionals now have such a guide and will be able to know with a touch more certainty how to approach such matters, know what arguments are likely to fly in open court in front of a judge and greater clarity on the defences of pastiche and parody.

So What Is Pastiche Or Parody?

According to the Oxford English Dictionary, the word ‘pastiche’ is a written or musical piece created in a style which copies another piece of work, period or artist.

What Happened In The Case?

The case involved John Sullivan’s comedy classic ‘Only Fools and Horses. The scripts are owned by Shazam Productions Limited. The son of Mr Sullivan named Jim Sullivan somehow became aware that there was a company running an Only Fools and Horses style Dining Experience. He sought legal advice due to his concerns about potential breaches of any legal rights because the Dining Experience appeared to be a new show with characters taken from the scripts. The creators of the dining experience also seemingly had the audacity to include material from the scripts including amongst other things:

• catchphrases
• jokes and
• histories

of the characters. Mr Sullivan appears to have strongly objected to the behaviour of the Dining Experience. He felt as though he had no other feasible alternative but to instigate legal proceedings for breach of copyright and claimed that the marketing strategy of the Dining Experience was purporting to pass itself off as the sitcom.

What Did The Judge Say?

The judge has reviewed the evidence and found it in favour of the Shazam. The judge agreed that the Only Fools and Horses Dining Experience format equated to an entirely new episode and found that the marketing of the Dining Experience amounted to passing itself off as there was a purported link to the famous situation comedy. The Dining Experience creators argued that it was dealing fairly with the copyrights owned by Shazam. However, following an independent assessment by the judge, it was held that this could not possibly have been true as it was not dealing fairly for pastiche or parody reasons.

What Should Lawyers Be Advising Their Clients?

lawyers should be advising their clients wanting to utilise similar characters to identify if the copyright is owned by a party such as a:

• writer
• creator or
• another party.

They would then be best advised to seek consent to utilise the particular character from the relevant identified owner. It would also be prudent for those seeking put on similar experiences to approach the whole creative process with a touch of honesty. They should seek to communicate with the owners of any scripts and characters with a view to putting in place a written licensing arrangement. The owner would licence the show to the party in return for a royalty fee. This would mitigate the risk of a dramatic legal battle and save valuable court resources.

ASSESSING FIRMS

#Allen&Overy #Bird&Bird #BristowsLLP #CMS #MishcondeReya #TaylorWessingLLP #BakerMcKenzue #DLAPiper #Fieldfisher #GowlingWLG #HerbertSmithFreehills #OsborneClarke #Simmons&Simmons #WigginLLP #AddleshawGoddard #BrowneJacobson

THE ARTICLE WAS WRITTEN USING THE FOLLOWING SOURCES

[1] Steele, Carl – Only Fools and Horses Copyright Case Win Sets New Precedent – Ashfords – 08 June 2022 - Only Fools & Horses copyright case win sets new precedent | Ashfords Solicitors

[2] Shazam Productions Limited v Only Fools and Horses Dining Experience and Others [2022] EWHC 1379 - Only Fools & Horses copyright case win sets new precedent | Ashfords Solicitors

[3] Section 30 Copyright Design and Patents Act 1988

[4] Section 1 Copyright Design and Patents Act 1988

[5] Section 3 Copyright Design and Patents Act 1988

[6] Section 153 Copyright Design and Patents Act 1988

[7] Norowzian v Arks [1999] EWCA 3018; [2000] FSR 363

[8] Martin v Kogan [2017] EWHC 2927

[9] Copinger and Skone James on Copyright, 17th Edition

[10] Sweeney v Macmillan [2002] RPC 35

[11] Re Pippi Longstocking [2014] ECC 27

[12] Kelly v Cinema Houses Ltd [1928-35 MacG.C. C 362

[13] Corelli v Gray (30 T.L.R. 116)

[14] Section 1(2) Copyright Act 1919

[15] Copinger & Skone on Copyright – 18th Edition – 2021

[16] Exxon Corp v Exxon Insurance [1982] Ch 119

[17] Navitaire Inc v Easyjet Airline Co [2004] EWHC 1725

[18] Laddie & al - The Modern Law of Copyright and Designs (3rd Edition)

[19] Hollinrake v Truswell (1894) 3 Ch D 420

[20] Marleasing SA v La Comercial Internacional de Alimentación SA(Case C-106/89) [1990] ECR I-413

[21] Vodafone 2 v Revenue and Customs Commissioners[2009] EWCA Civ 446[2010] Ch 77 at [37] and [38]

[22] Cofemel v G-Star Raw[2020] ECDR 9

[23] Klinger v. Conan Doyle Estate, Ltd., 755 F.3d 496, 498 (7th Cir. 2014)

[24] Sheeran v Chokri [2022] EWHC 827

[25] Designers Guild Ltd v Russell Williams [2000] 1 WLR 2416

[26] Ladbroke (Football) Ltd. v. William Hill (Football) Ltd. [1964] 1 W.L.R. 273

[27] Newspaper Licensing Agency Ltd v Meltwater Holding BV [2011] EWCA Civ 890, at [24]-[28]

[28] Mitchell v BBC [2011] EWPCC 42

[29] Infopaq International A/S v Danske Dagblades Forening [2009] ECDR 16

[30] Designers Guild Ltd v Russell Williams [2000] 1 WLR 2416

[31] Warwick Film Productions Ltd. v. Eisinger [1969] 1 Ch. 508

[32] Regulation 5(1) of Copyright and Rights in Performances (Quotation and Parody) Regulations 2014/2356.

[33] Glyn v Weston Feature Film [1916] 1 Ch 261

[34] Carlton v Mortimer (1917-23) MacGillivray’s Copyright Cases 194 (Avory J); Joy Music v Sunday Pictorial newspapers (1920) [1960] 2 QB 60

[35] Schweppes v Wellington [1984] FSR 210, 212

[36] Bently, ‘Parody and Copyright in the Common Law World’ in Copyright and Freedom of Expression (ALAI, 2008) p.355.

[37] Directive 2001/29/EC of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the Information Society (‘the Info Soc Directive’)

[38] Article 5(3)(k) of the Info Soc Directive

[39] Article 5(5) of the Info Soc Directive

[40] Art.9(1) of The International Convention for the Protection of Literary and Artistic works

[41] Art.9(2) of The International Convention for the Protection of Literary and Artistic works

[42] Article 13 of The Agreement on Trade-related Aspects of Intellectual Property Rights (‘TRIPS’)

[43] Annex 1C to the Agreement establishing the World Trade Organisation

[44] Article 10(2) of The World Intellectual Property Organisation Copyright Treaty agreed in Geneva on 20 December 1996 (‘WIPO’)

[45] England and Wales Board Limited v Tixdaq Limited[2016] EWHC 575 (Ch) at [90] - [92]

[46] Painer v Standard VerlagsGmbH[2011] ECR I-1253at [134]

[47] Deckmyn v VandersteenC-201/13

[48] Ashdown v Telegraph Group Ltd[2001] EWCA Civ 1142, [2002] Ch 149

[49] Laddie, Prescott & Vitoria, The Modern Law of Copyright and Designs (3rd edition, 2000)

[50] Stichting Brein v Wullems C-527/15

[51] Pro Sieben media AG v Carlton UK Television Ltd [1999] 1 WLR 605

[52] Sweet v. Parsley[1970] AC 132

[53] Reckitt & Colman Products Ltd v Borden Inc (No.3)[1990] 1 WLR 491.

[54] Starbucks (HK) v British Sky Broadcasting Group[2015] UKSC 31.

[55] Interflora Inc v Marks and Spencer Plc[2012] EWCA Civ 1501, [2013] FSR 21).

[56] Harrods Ltd v Harrodian School Ltd[1996] RPC 697

[57] Sodastream Ltd. v. Thorn Cascade Co. Ltd.[l9821 R.P.C. 459

[58] Slazenger & Sons v. Feltham & Co. (1889) 6 R.P.C. 531

[59] Fenty v Arcadia[2015] EWCA Civ 3

[60] Irvine v Talksport[2002] EWHC 367 (Ch)

[61] IPC Magazines v Black and White Music[1983[ FSR 348 at 350