Jonathan Coad: The True value of Protecting Formats

For what you paid for a taxi from Nice to Cannes, 60 years ago you could have bought a TV a popular and highly successful format. What’s My Line was sold for $50, which is an awesome contrast to the valuation recently put on American Idol by Forbes Magazine of $2.5 billion.

However extraordinary that contrast is, perhaps the fact that in July 2010 Richard Desmond bought the UK’s Channel 5 from RTL for just over £100 million, but paid £200 million for a five year license in Big Brother is even more remarkable. The viewing figures however suggest that so far as at least the celebrity version is concerned, it was a good investment, since it enabled Channel 5 to beat ITV’s prime time ratings for a weekend slot.

Strictly the BBC’s Format

The value of this still relatively still young species of intellectual property means that it was no great surprise when earlier this month, lawyers for BBC Worldwide began an action for breach of copyright over an alleged infringement of their format in their Strictly/Dancing with the Stars programme against Mediaset, which is launching a rival show on its Canal 5 channel. The Italian format is to be called Baila, and apparently derives from an Argentinian format called Bailando which features topless dancers and simulated sex. Doubtless the BBC is concerned also that the pre-watershed character of its immensely popular format, which has been licensed to 32 countries and was the world’s most popular television programme amongst all television genres in both 2006 and 2007.

The Challenge facing Business Affairs teams and Lawyers

Whatever the genesis of Dancing with the Stars, this claim has achieved such high profile that no less than Silvio Berlusconi has commented on it, stating in defence of the Italian version that you are allowed to “copy ideas”. The law has for many years had to try and decide where inspiration ends (i.e. the legitimate reuse of ideas) and plagiarism begins (i.e. the copying of the expression of those ideas).

Nowhere is that exercise harder but in reality television formats. Orthodox copyright principles are difficult to apply. How do you protect a television programme where you gather a bunch of people into a house with no script and broadcast footage of their living their confined lives? However, Big Brother has made millions for Endemol in license fees and the company has been fierce and often successful in its protection of the format worldwide.

Brazil gets there first

The first successful defence of the Big Brother format was in Brazil, and the Sao Paulo state Court of Appeal has recently upheld that recent 2003 decision concerning a programme entitled Casa des artistas, produced and aired by local broadcaster TV SBT.

The Brazilian Court found that this was an unlicensed version of Big Brother, and that the Big Brother format enjoys copyright protection under Brazilian law, despite claims by TV SBT that it was merely a loose programme concept which does not deserve such protection. The Brazilian Court however concluded that the format of Big Brother comprised a programme with a beginning, a middle and an end and consists of unique features such as the attachment of microphones to contestants’ bodies, which are linked 24 hours a day; music styles; and the ability of the public to observe the contestants as they engage in certain activities.

Big Brother in Paris

Shortly after this Appellate court endorsement of the first instance decision to protect this format, came a decision of the Tribunale de Commerce de Paris of March of this year. The Paris Court found in favour of Endemol, the show’s producers, in its dispute with ALJ Productions, founded by an ex-employee, over a programme called Dilemme (Dilemma) over what the Court clearly found to be a Big Brother copycat. It found that ALJ Productions had used characteristic elements of Endemol’s “confinement” format: the programme mechanics, the casting methodology, the broadcast methodology and a number of technical elements.

The Court concluded that this plagiarism amounted to unfair competition and whereas Endemol had already proved its investment in the format, ALJ Productions was found to have merely piggybacked that investment. Damages were set at €900,000, which was adjudged to be the value of Endemol’s lost opportunity to have partnered with the broadcaster at a substantial profit, rather as it has with Channel 5. There is an appeal pending.

Got Talent in Brazil

A couple of months later, in May this year, a Brazilian Court upheld Fremantle Media’s claim in unfair competition of copyright concerning its “…Got Talent” format. Although, this judgment is also under appeal, it shows clearly the way in which informed judiciary in countries with a well developed market for television formats recognise that it is a species of intellectual property that warrants protection.

Help is at Hand

The buying and selling of reality formats at MIP Markets generate many millions of euros of business. But if the license in a successful format does not secure a monopoly over the programme then the value of that license is severely diminished, and the purchaser of that license may not be a happy client. Getting expert advice in this field should minimise this risk.

The difficulty in applying traditional legal principles to unscripted television programmes prompted me in 2005 to form the International Format Lawyers Association to try and help format devisors, producers and distributors to protect their investment.

To this end, we have notably developed the free How to protect your format document – available below – and remain on hand here to ensure that the money spent on developing formats, and buying and selling licenses in them brings a proper return. Feel free to ask!

Jonathan Coad is partner, Media, Brands and Technology at London-based legal practice lewissilkin. He is also director of the International Format Lawyers Association.