Businesses in the UK entertainment and advertising industries ought to tread carefully when using popular characters born out of TV shows, books or other works unless they have the necessary rights or permissions to do so.
In Shazam Productions Ltd v Only Fools the Dining Experience Ltd & Others  EWHC 1379 (IPEC), the High Court recently found that the infamous protagonist of the British sitcom Only Fools and Horses, also known as ‘Del Boy’, is a ‘work’ under the Copyright, Designs and Patents Act 1988 (the “1988 Act”), demonstrating that copyright can exist in a fictional character.
In reaching its decision, the High Court considered, firstly, whether copyright could subsist in a fictional character and, secondly, the meaning of the fair dealing exception for the purposes of parody or pastiche.
The Claimant, Shazam Productions Ltd, is the family company of the writer of the scripts behind the hit TV show, and creator of the character, Del Boy. Shazam raised an action for copyright infringement against the creators of an interactive dining show titled “Only Fools The (cushty) Dining Experience”.
The dining show features the main characters from the sitcom and incorporates their appearance, mannerisms and catchphrases as well as their backstories and relationships with one another. For Del Boy, this includes his sales patter and famous phrases, muddled use of French, optimistic nature, and tendency to get involved in ‘dodgy deals’.
The Court found that the dining show amounted to the creation of a new episode of the sitcom which had been adapted to enable diners to interact with the beloved characters. The Claimant argued this infringed their copyright in the sitcom’s scripts and in the character of Del Boy himself.
Copyright in characters
The Court considered whether a character, such as Del Boy, is a work that qualifies for copyright protection. This was a novel question for the High Court which it addressed from first principles.
In answering this question, the Court applied the two-stage test that was developed in case C-683/17 Cofemel v G-Star Raw  EDCR 9. The first strand of this test, the ‘originality requirement’, notes that there must be “an original subject matter” of “the author’s own intellectual creation”. In the present case, the Court found that Del Boy is an original creation in light of his complicated and well-rounded character profile, and satisfied this strand of the test. The character’s many quirks, such as his poorly executed use of French, make him distinctive. The Court emphasised that Del Boy is not a cliché, nor a generic character, but in fact a character that is well developed and recognisable.
Under the second strand of the test, the ‘identifiability requirement’, the work must identify the elements of the original creation. Del Boy satisfied this test because he is “precisely and objectively discernible in the scripts”. Del Boy’s appearance, character traits, relationships and views are described in-depth within the scripts, making the nature of his character objectively clear. With both strands of the Cofemel test satisfied, the Court held that the character Del Boy was protectable by copyright, and fell under the category of a literary work for the purposes of the 1988 Act.
Although this is the first time that a fictional character has been afforded copyright protection in the UK, this is not a novel concept internationally. The German Supreme Court applied the same test to a case concerning the children’s book character Pippi Longstocking and found that she too was protected by copyright. The fictional detectives Sherlock Holmes and Dr Watson are also protected by copyright in the United States. It is not yet clear whether the Defendants will appeal this aspect of the decision however, unless the decision is overturned, there is a strong argument that copyright should extend to other distinctive fictional characters like Harry Potter or Willy Wonka.
The ‘parody or pastiche’ exception
Once the Court established that Del Boy qualified for copyright protection, they found that the evidence of infringement by the Defendants was “overwhelming and obvious”. In their defence, the Defendants sought to rely on s30A of the 1988 Act which provides that fair dealing with a work for the purposes of parody or pastiche will not amount to infringement. The High Court considered the meaning of this provision for the first time since its introduction in 2014 and found that the exception did not apply in this case.
The Court found that a parody must “express some kind of opinion by means of its imitation, but noticeable difference, from the work parodied”. It should be humorous, and mocking or critical of the original work, unlike the dining show which was a tribute to the sitcom. The dining show was merely an imitation and lacked the additional opinion element that was required to constitute a parody.
Similarly, the Court found that the dining show did not qualify as a pastiche. A pastiche is comprised of two essential elements. These are that:
“a. The use imitates the style of another work; or
b. It is an assemblage (medley) of a number of pre-existing works.
c. In both cases, as with parody, the product must be noticeably different from the original work.”
The dining show was found to be closer to a “reproduction by adaptation” as opposed to a pastiche or parody. It incorporated the characters, language, jokes and backstories that were featured in the original sitcom, thereby borrowing the aspects which made the show humorous. Ultimately, there was not enough distance between the dining show and the original work in order for it fall under the s30A exception.
Impact of the decision
Those who own intellectual property rights in famous fictional characters may now be able to prevent third parties from using these characters without first obtaining their consent. This puts owners in a strong position when it comes to negotiating licensing agreements and fees. Meanwhile, third parties must be cautious in how they use such characters to avoid infringing any copyright.
Additionally, the Court’s commentary on the meaning of the parody and pastiche defence under s30A of the 1988 Act provides a good foundational understanding of this provision which is likely to develop further in future litigation.