About the author
Beverley Robinson is a senior associate and trade mark attorney at Appleyard Lees IP LLP. Beverley works with a broad range of clients from start-ups and SME’s to multinational corporations, across a wide variety of industries and has particular experience in the food and beverage and health and beauty sectors. Beverley’s practice includes pre-filing and strategy advice, filing and prosecution, and contentious matters such as oppositions, cancellations and policing and enforcement of rights.
For the first time, UK courts have recognised that a fictional character can be protected by copyright in its own right, independent from scripts. Following the court’s decision in Shazam Productions Ltd v Only Fools The Dining Experience Ltd & Ors  EWHC 1379 (IPEC) , the combined features and traits of the infamous Del Boy, including his dodgy dealings, his catchy phrases such as “lovely jubbly”, his eternal optimism, his mangled use of the French language, and his relationship with his younger brother, are a “literary work” for the purposes of copyright.
This is welcome news for copyright owners who wish to protect the considerable intellectual creativity inherent in the fictional characters they create.
Shazam Productions Ltd. (“Shazam”) owns the IP rights to the legendary television comedy, Only Fools and Horses. Shazam has licensed the use of its rights for various projects, including board games, books, and a musical.
Shazam issued legal proceedings against Only Fools the Dining Experience Ltd. & Ors (“Defendant”), in relation to its unlicensed dinner theatre production, called, “Only Fools The (cushty) Dining Experience”. The interactive, themed dining experience incorporated characters and a pub which feature in the Only Fools and Horses television show. Shazam alleged that it infringed its copyright in its scripts, characters and opening theme song.
Copyright is a property right which subsists in original literary, dramatic, musical and artistic works. Copyright is infringed if, without authorisation, someone uses such a work, or a substantial part thereof, without permission. Here, the IPEC found that Shazam owned copyright in the scripts for the television sitcom as dramatic works, as well as in the character of Del Boy (who was taken as an example) as a literary work. Further, by using the names, mannerisms, catchphrases and full back stories of some of the main characters of Only Fools and Horses, the Defendant’s copying/use of these elements far exceeded the threshold required for a finding of infringement.
The Judge also found that the marketing of the Defendant’s show amounted to passing off. Given the significant commonalities between the television sitcom and the Defendant’s show, consumers would believe that the Defendant’s show was authorised or connected to Shazam.
The case provides an interesting insight into the law concerning the defence of fair dealing of a copyright work.
The mere imitation of a work of comedy is not enough to constitute a parody; the work must be an expression of humour or mockery. The Judge found that the humour in the Defendant’s show came from the material taken from the Only Fools and Horses television show, and its purpose was not to mock the show. The Defendant’s show did not therefore constitute a parody.
For pastiche, a work must imitate the style of another work, and be noticeably different from the original work. It was found that the Defendant’s show aimed to recreate the characters and story of Only Fools and Horses rather than imitate the style of the show, and was therefore considered to be more of an adaption than an imitation.
In any event, the Defendant’s actions did not constitute fair dealing, and as such, they were unable to rely on this defence.