How ‘Del Boy’ became a literary copyright work

In a landmark decision of Deputy High Court Judge John Kimbell QC, in the case of Shazam Productions v Only Fools The Dining Experience and others [2022] EWHC 1379 (IPEC), the fictional character ‘Del Boy’ (who appears in the famous British TV sitcom “Only Fools and Horses” (OFAH)) has been recognised as a literary copyright work, separate from the scripts for the sitcom in which he featured.

The writers believe this is the first time in this country that a fictional character has been recognised as a standalone copyright work. The decision has major implications for those who wish to use such characters and who, in the past, might not have sought the copyright owner’s permission to do so.

The decision also addresses, for the first time in this jurisdiction, the meaning of the defences of ’fair dealing’ with a copyright work for the purposes of parody or pastiche.

Facts of the case

OFAH was written by John Sullivan and originally broadcast by the BBC between 1981-2003. The show was very successful and won various industry awards, with Sullivan, the writer of OFAH, winning the Writers’ Guild of Great Britain top comedy writer award in 1996.

The claimant in the case was Shazam Productions, a company set up by Sullivan to own and exploit his copyright works, including those relating to OFAH.

The defendants had written and performed an interactive dining experience, called ‘Only Fools The (cushty) Dining Experience’ (OFDE), which featured characters taken from OFAH and their various catchphrases, jokes, wants, desires and backstories. The dining experience was presented in the context of an interactive pub quiz—a storyline which never appeared in OFAH. The defendants’ show amounted in substance to the creation of a new episode of OFAH.

Shazam successfully sued the defendants for copyright infringement and passing off.

The judgment

Scripts for OFAH 
The court found that the individual scripts for OFAH were dramatic works. However, it held that there was no separate copyright in the body of scripts taken as a whole.

In finding that the scripts as a collective whole did not constitute a separate copyright work, the court commented that the entire body of scripts was never intended to be performed as a work in its own right. Each individual script was intended to be performed, filmed and broadcast; however, the scripts as a collective whole were not.

The court commented that there was no evidence to suggest that Sullivan knew how the “Trotter saga would end”, or that the scripts as a whole were to be considered a single work. The court pointed to the fact that the second series had only been commissioned after the first series had been repeated twice and that Christmas specials were separately commissioned.

Del Boy as a literary copyright work
The court identified that there was a lack of substantive discussion in English case law on whether dramatic or literary copyright could subsist in respect of a fictional character. The court commented that German case law recognised that a character created by Swedish author Astrid Lindgren was protectable as a literary work (Re Pippi Longstocking [2014] E.C.C. 27).

Further, the court noted that US case law permits copyright in a character, provided that the character is sufficiently complex and distinctive (Klinger v Conan Doyle Estate, Ltd 755 F.3d 496, 498 (7th Circ 2014).

With regard to the question of whether copyright existed in respect of the character Del Boy, the court was satisfied that the two-stage test in case C-638/17 Cofemel v G-Start Raw [2020] ECDR 9 was satisfied, ie:

1. There was original subject matter (in the sense of Del Boy’s character being the author’s own intellectual creation); and
2. Del’s character was expressed by the author and could be identified with sufficient precision and objectivity in the scripts for OFAH.

The court referenced the fact that Sullivan had grown up in London around the 1950s and 1960s, which provided him with first-hand source material for the character Del Boy. He held that Del Boy was not a ‘stock’ market trader, but had his own complex motivations and backstory, all created and chosen carefully and deliberately by Sullivan.

The character’s features were, in the judge’s words, “precisely and objectively discernible in the scripts” for OFAH.

Parody and pastiche
The defendants argued that they were not infringing Shazam’s copyright, as their activities fell within the scope of the defences of fair dealing with a copyright work for the purposes of parody and/or pastiche, pursuant to s.30A of the Copyright, Designs and Patents Act 1988 (the Act).

Parody
When determining whether the defendants’ show was a parody, the court considered the judgment in Deckmyn v Vandersteen C-201/13 [2014] Bus LR 1368, as well as the Advocate General’s opinion in that case.

The court held that there are two types of parody, namely:

1. Parody directed at or concerned with the original work (‘parody of’);
2. Parody where the original work parodied is merely the instrument of an intention aimed at a third-party individual or object (‘parody with’ or ‘target parody’).

The court held that the essential elements of parody are that the work must:

1. Evoke an existing work;
2. Be noticeably different from that existing work; and
3. Constitute an expression of opinion, expressed as humour or mockery.

Also, there must be some critical distance between the new work and the original work.

The court concluded that OFDE, in essence, reproduced the original work of OFAH, commenting that the script of OFDE included the “whole transposition of the characters, language, jokes and backstories” of the characters of OFAH.

There was no ‘opinion’ being expressed. OFDE was not a parody. It was closer in form to reproduction of OFAH by adaption to a live dining sitting than parody.

Pastiche
The court referenced multiple sources, including the Attorney General’s opinion in Case C-476/17 Pelham v Ralf Hutter EU:C:2019:624 (July 29, 2019). The court held there are two “essential ingredients” for pastiche, within the meaning of s.30A of the Act:

1. The use must imitate the style of an earlier copyright work; or
2. It is an assemblage/medley of a number of earlier copyright works.

In both cases, the new work must be noticeably different from the original work.

The court held OFDE did not “imitate the style of OFAH”. Instead, it merely took the “characters [in OFAH] with their full back story and catch phrases…and represents them in a live dining format”. OFDE restyled OFAH into the setting of a three-course meal. It was not a pastiche, just an imitation of OFAH.

Passing off
The court dealt succinctly with passing off, finding that the legal tests for passing off were met, as per Reckitt & Colman Products v Borden Inc (No3), namely:

1. Goodwill existed;
2. There was a misrepresentation leading to deception or a likelihood of deception occurring; and
3. Damage was likely to arise.

The court found that goodwill existed and was owned by Shazam, not only in connection with the name “Only Fools and Horses”, but also the leading characters in OFAH, in particular Del Boy.

The court found that the issues in relation to misrepresentation were narrow. The court questioned whether:

1. The name of OFDE was sufficiently different to OFAH, such that no confusion will have occurred; and
2. The nature of OFDE was so removed from OFAH that people were unlikely to associate the two.

The court found that the name OFDE was liable to confuse and mislead the public, making particular reference to the shortening by the defendants of “Only Fools and Horses” to “Only Fools” and also the use of the word “(Cushty)”, a word closely associated with Del Boy. Further, the nature of OFDE was not so removed from OFAH as to make it obvious that it was not associated with OFAH.

Finally, the court found that Shazam would suffer damage, as the audience paying to attend OFDE might instead have paid to attend the official OFAH musical, which was licensed by Shazam and operating in the west end of London at the same time.

Further comment

The writers can confirm that there will no appeal of the first instance court’s decision.

The judgment is likely to change the landscape of the entertainment industry. Content creators and advertisers may be cautious to use alleged ‘parodies’ of well-known fictional characters in productions and advertisements, due to the risk of committing copyright infringement.

Ashfords represented Shazam Productions.

Carl Steele is a partner and head of intellectual property at Ashfords. He can be contacted at:  c.steele@ashfords.co.uk.

Christopher Fotheringham is a trainee solicitor at Ashfords. He can be contacted at  c.fotheringham@ashfords.co.uk.