Summary

A documented format for a televised game show could arguably qualify for copyright protection as a dramatic work, but it would need to have identified features distinguishing it from similar types of show, and the features would need to be connected in a coherent framework which could be repeatedly applied to enable the show to be reproduced in recognisable form. In the instant case, the documented format did not qualify for protection, because it was very unclear and lacking in specifics. Claims for copyright infringement, breach of confidence, and passing off were dismissed.

Facts

At a case management conference in a claim by an English film company for copyright infringement, breach of confidence, and passing off, the company applied to add or substitute new defendants to the claim and to amend its particulars of claim. The defendants cross-applied for summary judgment.

The film company had been formed by a Danish citizen who had devised and written a television game show format called "Minute Winner" in 2005. The company's case was that the document in which Minute Winner was contained was a dramatic work in which UK copyright subsisted, and that it had been misused by the defendants, particularly the second defendant, who had broadcast an entertainment show in 2009 called "Minute to Win". The Minute Winner document was short. It contained a "synopsis" section describing the format as a television programme in which people were given "one minute to win". The document's title page indicated that it could be a daily or weekly broadcast, lasting for one-minute between main programmes or for 30 minutes as a show in itself. The programme could take place anywhere, but would ideally be filmed on location. Four example locations were defined, including a bicycle shop, where a customer would win a specific bike if they could, within the minute, locate the correct key from a bunch of keys and open the lock; and a clothes shop, where a customer would win garments that they selected and tried on within the minute. The document explained that the programme would be popular owing to "the combination of luck and pure coincidence". The defendants' case was that the Minute Winner document did not qualify for protection as a copyright work; that the company was estopped by a final determination in the Swedish courts from claiming breach of confidence; and that the passing off claim failed because the author of the document had no goodwill in the Minute Winner format in the UK.

Held

Could a game show format acquire copyright protection as a dramatic work? Possibly. It was at least arguable that it could. It was not necessary for the purposes of the instant hearing to determine the precise conditions that had to be satisfied. As a minimum, there had to be clearly identified features distinguishing the show from similar types of show, and they had to be connected in a coherent framework which could be repeatedly applied to enable the show to be reproduced in recognisable form (see paras 43-44 of judgment).

Was there a realistic prospect of the Minute Winner document qualifying for protection? No. The contents were very unclear and lacking in specifics. The recorded features, such as members of the public performing a task against the clock on television to win a prize, were commonplace and indistinguishable from other game show features. The phrase "one minute to win" was neither clear and distinctive, nor identified in the document as a specific catchphrase. There was no specification as to where the action was to take place, who the contestants should be, or how they would be approached. The reference to "the combination of luck and pure coincidence" suggested that selection was intended to be random. There was no express reference to the source of the prizes. All four examples had tasks involving the very item which formed the prize, but they were nothing more than examples, so that feature could not be characterised as a distinguishing one (paras 46-51).

Even if the document qualified for protection, was the company likely to be able to establish infringement? No. There were material differences between the contents of the company's document and the second defendant's television show. The company's claim had no realistic prospect of success and should be dismissed (paras 52-60).

Was the company estopped by proceedings in Sweden from pursuing the breach of confidence claim? Yes, by the operation of cause of action estoppel, issue estoppel and the Henderson v Henderson principle concerning abuse of process. The English and Swedish claims, although not expressed in precisely the same way, were substantially the same claim, Fraser v Thames Television Ltd [1984] Q.B. 44 and Thomas Marshall (Exports) Ltd v Guinle [1979] Ch. 227 considered (paras 62, 66, 69-76, 78-79).

Did the company's passing off claim have reasonable prospects of success? No. It was fundamental that a claimant seeking to protect the use of a name had to have goodwill in the name, and have that goodwill in the jurisdiction in which the claim was made, Starbucks (HK) Ltd v British Sky Broadcasting Group Plc [2015] UKSC 31 followed. There was no suggestion that the Danish author had ever had clients or customers in England to whom he sold the Minute Winner concept. The company's pleaded case was that he had had a website that was widely available to television networks and production companies in the UK, but that fell short of giving rise to any goodwill (paras 81-85).

Claim dismissed