Ask the audience

While watching Slumdog Millionaire the intellectual property lawyer is struck by several typically pedantic thoughts. Isn’t this blatant product placement of the game show Who Wants To Be A Millionaire? (hereafter referred to as “Millionaire”)? Are the film makers allowed to do this? Did the film makers have to pay the company which makes Millionaire? Did the company which makes Millionaire pay the film makers? And if this is all it takes to win some Oscars, then what’s to stop me making a film based around The Weakest Link? These questions may seem flippant, but they raise serious legal issues.

Slumdog Millionaire can be interpreted as a glorified game show advert, but this sort of “embedded marketing” or “product placement” is not unusual and has existed for almost as long as moving pictures themselves. “Product placement” (see panel) in the context of films and television can be loosely defined as the intentional placement by the film maker of brand name products and services within scenes for clear on-screen visibility, in return for payment or other reward. A celebrated early example arose in 1949 in the Marx Brothers’ Love Happy. Struggling to finance the picture, the producers concocted a Times Square chase sequence which involved Harpo Marx clambering over various sponsored billboards.

Adverts have been packed into films ever since, and companies with products or services to advertise are now taking the next logical step – commissioning films themselves. Slumdog Millionaire was actually part-funded by Celador Films, an arm of Celador Productions Ltd (“Celador”), the company which owns the film rights for the Millionaire game show format. A further example of this increasingly sophisticated type of product placement is Shane Meadows’ 2008 film Somers Town, funded by Eurostar to promote the UK’s first high speed rail service operating from the new St Pancras station. Somers Town has no overt Eurostar branding, but both the station and the train form an integral part of the story.

Going for gold!

Returning to Slumdog Millionaire, if Celador Films has made a profit from contributing funding to the film it could be seen as reward for Celador’s financial investment in establishing and protecting their legal rights in the Millionaire game show format. TV formats can be broadly defined as “a style or manner of arrangement or procedure” of a television programme. In the specific case of game, chat or quiz shows, the format might be defined as the fixed and repeated elements of the show, including the production rules, the programme rules, the script, the sequence of events, catchphrases, set, lighting, music and so on. Millionaire was sold to foreign broadcasters around the world as a package of these elements.

However, commercially successful ideas in the creative world are often imitated or adapted, and establishing legal rights in game show formats is notoriously difficult. This means that the sale or licence of TV format rights is relatively rare. After all, why should anyone pay to acquire rights in a format if it can be copied without repercussions? What legal protection might game show producers fall back on if there is a rush of films based around game shows seeking to emulate the success of Slumdog Millionaire?

Starting from basic principles, it is important to realise that legally there is no definition of TV formats and they fail to fall neatly within the definitions of protected material under international copyright and trade mark regimes, making them difficult to protect from copying or plagiarism. A fundamental tenet of copyright law is that ideas themselves cannot be protected – only the expression of them. Distinguishing between the idea of a TV format and the expression of that format is problematic. It can be argued that most of the various format components of TV formats are in themselves potentially protectable, be it the scripts, set designs, stage designs and lighting plots (as literary and/or artistic copyright – subject to the complex rules of substantial similarity), the design elements (as registered designs), or the logos and programme titles (as trade marks – provided they are original, distinctive and capable of graphic representation). Protection can also be sought in the common law on the narrow grounds of breach of confidence (where there has been a relationship of confidence between the parties), or the more broadly applicable action of passing off (where a format is copied to the extent that the viewer believes the programme is being produced by the originator of the format). Nevertheless case law indicates that protecting TV formats is rarely straightforward.

Whose format is it anyway?

This was established in the leading case of Green v Broadcasting Corp of New Zealand [1989] 2 All ER 1065. Hughie Green was the compère of a long running entertainment programme of the 1960s-70s, Opportunity Knocks, whose format he sought to protect against broadcasters in New Zealand who had introduced a very similar local version. Green argued that the studio design, the use of distinctive catchphrases (“It’s make your mind up time”) and the clapometer system of measuring audience appreciation of participants all amounted to a literary work protectable by copyright. His claim failed on appeal to the Privy Council because, according to Lord Bridge, there was an absence of “sufficient unity to be capable of performance” – indicating that the door was still open for a comprehensive and detailed record of a format to attract copyright protection.

In Celador Productions Ltd v Melville [2004] EWHC 2362 (Ch), Alan Melville, John Baccini and Timothy Boone sued Celador, claiming that the creation and showing of the Millionaire format infringed copyright in works created by them and amounted to a misuse of confidential information in those works. The claims were factually different, but Celador applied for summary dismissal of all three simultaneously under Civil Procedure Rule 24.2, which allows for dismissal where the claimant or defendant has “no real prospect of succeeding” in its claim or defence and “there is no other compelling reason why the case or issue should be disposed of at a trial”.

For present purposes the discussions of the merits of the claims of Mr Boone and Mr Baccini are the most enlightening. Mr Boone’s arguments related to a 11 page document setting out the format for a TV game called HELP!, which Mr Boone alleged had been passed to Celador (via ITV) during the development of Millionaire. The Vice Chancellor acknowledged there were similarities in the dark clothing of the presenters, the sets, use of spotlights, cuts to shots of audience members, the use of a glass-sided box of money, the giving and later destruction of cheques etc, but concluded that “few if any of [these] amount to more than the application of well known presentational techniques”.

In contrast the Vice Chancellor was satisfied that the extent of the similarities between Mr Baccini’s proposed game show and Millionaire was sufficient to give rise to an inference of copying a substantial part. Similarities listed included the fact that both had a real maximum prize of £1m, an initial pool of 10 contestants, the concept of the fastest contestant in the first stage progressing to the next, a quiz with multiple choice questions, the concept of correct answers leading to a doubling of prizes, and the concept of “safe havens” for certain levels of prizes.

The Vice Chancellor decided that only Celador’s application against Mr Boone should be upheld, because Mr Melville and Mr Baccini had real prospects of success against Celador, and were entitled to establish the facts upon which they relied at trial. These trials never occurred because, following the judgment, Celador reached an out-of-court settlement with both claimants – on the condition of confidentiality.

Another challenge to Celador’s rights in the Millionaire format arose around the same time in Denmark. On this occasion Celador sought to rely on copyright when Danmarks Radio launched a similar programme called Kvit eller Dobbelt (“Double or Quits”) in 2004. The bailiffs court rejected the application for an injunction restraining Danmarks Radio on the basis of infringement of Celador’s copyright in the format. However it did grant the injunction on the basis of violation of s 1 of the Marketing Practices Act by “fraudulently copying Celador’s concept and taking unfair advantage of Celador’s efforts and market position”. This breach of marketing law represents a wider version of the common law delict of passing off.

Win, lose or draw?

In Castaway Television Productions Ltd and Planet 24 Productions Ltd v Endemol (unreported, 2004, Dutch Supreme Court), Castaway Television claimed that the format of the TV programme Survivor was entitled to copyright protection from Endemol’s television programme, Big Brother, by virtue of its unique combination of 12 elements. The Dutch Supreme Court agreed with the earlier Dutch Court of Appeal decision in deciding that the Survivor format was a copyright work and should therefore attract copyright protection (on account that the format had been systematically documented), but in this case decided that Big Brother was not an infringing copy.

Endemol then enjoyed further success in Brazil in the case of Endemol v TV SBT (unreported, 2004, Brazil), making a successful claim for copyright infringement based on the Big Brother format. Endemol had entered into negotiations with a production company and provided extensive information on the Big Brother format. The production company chose not to acquire a licence for the format and instead produced Casa Dos Artistas, which was similar to Big Brother. Noting that Brazil was a signatory to the Berne Convention (which provides for copyright works from other signatory states to enjoy certain basic protections), the court found that the Big Brother format attracted copyright protection under Brazilian law, and that the format of Casa Dos Artistas infringed that copyright.

They think it’s all over

Returning to UK disputes, in 2005 the company which created the talent shows Pop Idol and American Idol, 19TV, commenced copyright infringement proceedings against the producers of the talent show The X Factor. It had claimed that the defendants had copied the Pop Idol format in The X Factor, and 30 similarities between the two shows were highlighted to demonstrate substantial similarity, including the logo, music, camera angles and direction (for example cuts to shots of contestants running out of audition room doors, either elated or in tears, and being hugged by presenters). The claim was settled prior to trial and no disputes of this nature have arisen since, meaning that protection of programme formats by copyright remains relatively unexamined in UK courts. Following the success of Slumdog Millionaire that position may change soon.

Given the uncertain nature of legal rights in TV formats, it may be that purely legal methods of protection are not the most pragmatic. Indeed it can be argued that agreements for the purchase of TV format rights franchise the existing elements of IP whilst also allowing for the provision of knowhow and expertise. There are concerns that an explicit statutory embrace of format rights by copyright would undermine the traditional distinction drawn between copyright’s protection of the expression of an idea rather than the idea itself. The Format Recognition and Protection Association was established in 2001 and acts as a lobby group for legal recognition of format rights, aiming “to ensure that television formats are respected by the industry and protected by law as intellectual property”. At present it seems there is more chance of a Mumbai orphan becoming a millionaire.

Product placement: films good, TV bad

In the UK, product placement – of any type, sophisticated or otherwise – with respect to films made for cinema is not prohibited by law and in fact remains entirely unregulated. In regard to product placement, film makers are answerable to neither Ofcom nor the British Board of Film Classification, and this is also true of feature films acquired and broadcasted by UK broadcasters.

In contrast product placement in television programmes is prohibited. The prohibition stems from the Television Without Frontiers Directive of 1989 (revised in 1997) that had to be incorporated into UK law. Whilst not being expressly prohibited by the directive, product placement on television has long been considered to be contrary to EU law, which requires clear separation of advertising from programmes and prohibits any kind of advertising or sponsorship which affects the editorial independence of the broadcaster in relation to programme content or scheduling.

This blanket prohibition is expressed in rule 10.5 of Ofcom’s Broadcasting Code, which defines product placement as: “the inclusion of, or reference to, a product or service within a programme in return for payment or other valuable consideration to the programme maker or broadcaster”.

This prohibition can appear increasingly anachronistic in the face of foreign (primarily American) films and programmes full of product placement which are broadcast on UK television every day. To an extent the new Audiovisual Media Services Directive, adopted by the EU in December 2007, acknowledges this. The directive amends the Television Without Frontiers Directive and, amongst other innovations, permits product placement in certain types of television programmes subject to certain controls and safeguards.

The directive must be implemented by individual member states before the end of 2009, and in the autumn of 2008 the Department for Culture, Media and Sport consulted on its implementation. The result of the consultation was announced by Department minister Andy Burnham on 11 March of this year. Mr Burnham acknowledged that product placement would give commercial broadcasters a new source of revenue, but concluded that “no conclusive evidence has been put forward that the economic benefit of introducing product placement is sufficient to outweigh the detrimental impact it would have on the quality and standards of British television and viewers’ trust in it”. This position is to be reviewed in 2011-12.