Format rights in Television Programmes are widely traded. They comprise, as their name suggests, rights to the formats of the programmes which may either be structures replicated in each episode of a programme (such as in The Crystal Maze) or in each series of a programme (such as in American Idol) or a combination of the two possibilities.
The trouble with format rights is that although they are widely licensed, with their annual global trade running into billions of dollars, they are not traditionally recognised intellectual property rights, and the law has (as is often the case) been having a hard time trying to keep up with realities of the commercial and media worlds.
In fact, format rights are so widely recognised by industry that even the Tabilan has, amazingly enough, reportedly obtained a licence from the BBC for the programme What Not to Wear. Formats, as has been repeatedly proved in the commercial world, are reliable money-makers, and it makes sense to use them to attempt to guarantee high viewership and increased revenues. As a result, they are routinely licensed.
Companies have, however, realised that the licensing of format rights is sustainable only as long as format rights are treated as being valuable rights worthy of intellectual property protection by courts, and in recent years, there has been a surge of litigation throughout the world related to format rights as a result of companies trying to protect them (and the benefits they reap by licensing them).
The first case which could be considered to deal with format rights is the 1989 case of Hughie Green v. Broadcasting Corporation of New Zealand. In this case, Hughie Green effectively claimed format rights in his programme Opportunity Knocks. The courts weren’t entirely impressed with his claims though and his actions were unsuccessful. Many lawyers seem to believe that had he initiated legal proceedings today, he would have been far more likely to succeed because of the changed climate and the (rather grudging) acceptance which the judiciary has accorded to format rights.
Also, Hughie Green not only failed to show that the format of his show, which had been broadcast in England, enjoyed any reputation in New Zealand, but also attempted to protect a format which was in itself rather sketchy. Nowadays, formats contained in ‘Production Bibles’ tend to be very detailed and, in fact, a Belgian court has, in a judgment regarding format rights, spoken about what should be included in a Production Bible to give the owner of a format a chance of success, should he choose to initiate legal proceedings to protect his format.
In a 2008 judgment, the Brussels Tribunal of First Instance said that it was not enough for the idea of the format to be original; its description in the document should express its creator’s personality and the intellectual effort the creator claims to have invested in it. Merely enumerating a number of ideas and games, none of which is developed concretely and graphically is insufficient. There must be an adequate number of concrete elements to be considered a copyright-protected format; it should be possible to visualize an episode on the basis of the document. For example, the document should specify whether it relates to a single episode or a series. If the latter, it should also specify: (i) how many episodes would make up the series; (ii) how long each episode would be; how the episodes (or the series as a whole) would be structured; and (iii) how this structure would be reflected in the timing and overall length. Moreover, the document should: (i) state how the programme would be presented; (ii) indicate how the various tests would be shown in a particular episode or the order in which the tests would take place; or (iii) describe in practical terms: how the tests would be conducted, how the questions would be presented or how the winner of the series would be chosen. A vague description of a few ideas which could be used as a basis for numerous different television programmes, each with different characteristics cannot be a protected format.
As such, it would seem that the judiciary is willing to recognise format rights if the formats are systematically documented, and that documentation is provable. Such documentation could include not just the Production Bible concerned but also such things as relevant trade mark certificates, and copyright registrations for, say, music which is integral to the format.
The first instance of format rights being recognised by a court, however, was not in this 2008 Belgian judgment but several years earlier in a 2001 case where format rights were recognised by the Hungarian Supreme Court in a dispute regarding a radio show, Cappuccino. Since then, there have been quite a few instances across the world where format rights have been recognised and protected. However, the protection accorded to them has often been extremely dependent on the facts and circumstances of the dispute in question, and there have been many instances where format rights have not been protected only under copyright law but under laws as diverse as those related to unfair market practices and breaches of confidence.
In fact, in India, although the courts have indicated that the 1957 Indian Copyright Act can protect formats, the fact is that the courts have, so far, only adjudicated disputes where the ownership (and violation) of format rights has been entwined with issues of confidentiality having been breached (as the format rights owners had communicated their formats to those accused of having violated them under the terms of confidentiality agreement). The legal landscape may soon change, but at the moment, Indian law on the subject is not entirely clear. And till the law is clearly defined, there will continue to be a shadow, of sorts, over the format rights licensing industry.
Recognising Format Rights
What is becoming increasingly clear is that even if statutory law does not explicitly recognise format rights as a form of intellectual property, the fact that the industry does recognise them means that disputes arise with reference to format rights, and that those disputes need to be resolved whether in traditional fora or using new means.
Traditionally, of course, when disputes arise, apart from pursuing arbitration — where an arbitration agreement exists — or using some other alternative dispute resolution mechanism such as mediation or conciliation, persons who have believed that their rights have been violated have approached courts, or in some cases, various professional bodies,
In India, with respect to format rights, there have thus far been two cases in which courts have “recognised” format rights. However, in both these cases, there was the factor of confidentiality, and of confidentiality having been breached. And it is on the basis of that latter factor that the courts have reached their conclusions — the recognition of format rights may almost be considered to have been incidental in both of these cases because it was confidentiality issues which were centre-stage.
Thus far, there has not been a conclusive judgment issued by an Indian Court on the “protectability” of format rights, and whether format rights can be protected in the absence of a confidentiality agreement.
From a legal point of view, the issue of format rights is especially tricky because one has to answer the question: Where does the idea of the format end and where does the concrete expression of the idea begin? Copyright law clearly states that ideas cannot in themselves be protected, it is only the expression of an idea which can be protected. As such, as a general rule, the understanding under Indian law is that a format may be protectable if it is expressed in sufficient detail, is unique and original, and if it does not copy any of the unique features of a pre-existing work. Of course, all the standard copyright doctrines also apply to this general rule — for example, merger, scènes à faire, independent creation and substantiality.
In addition to this, once one reaches a conclusion that an format is protectable, to determine whether it has been copied would involve having to watch both the original programme / work which used the format, and the alleged copy. This is because of the test laid down by the Supreme Court of India in the case of R.G. Anand v. Delux Films, AIR 1978 SC 1613, which states that to determine the degree of similarity betwen two works, the deciding factor is the impression left on the mind of the ordinary viewer: Does he think that the latter work copied the earlier work?
With regard to industry associations /venues, In India, it may be possible to register a format with the Association of Motion Picture Producers and Television Programme Producers of India (AMPTPP) or the FWA (Film Writers' Association), while internationally, there exists a Format Recognition and Protection Association (FRAPA) dedicated to the recognition and protection of Format Rights (as its name suggests).
Recently, WIPO (the World Intellectual Property Organization) has also joined in the effort with its Arbitration and Mediation Center collaborating with FRAPA. “Under the new collaboration, according to FRAPA, “the WIPO Center will take on FRAPA’s existing mediation activity and will administer TV format-related disputes filed under the WIPO Mediation and Expedited Arbitration Rules for Film and Media.”
And so, even if legislatures and courts are slow to recognise format rights, other agencies seem to be in the process of creating and structuring procedures which could be used to solve disputes related to format rights.
(This post is by Nandita Saikia and was first published at LawMatters.in.)
The trouble with format rights is that although they are widely licensed, with their annual global trade running into billions of dollars, they are not traditionally recognised intellectual property rights, and the law has (as is often the case) been having a hard time trying to keep up with realities of the commercial and media worlds.
In fact, format rights are so widely recognised by industry that even the Tabilan has, amazingly enough, reportedly obtained a licence from the BBC for the programme What Not to Wear. Formats, as has been repeatedly proved in the commercial world, are reliable money-makers, and it makes sense to use them to attempt to guarantee high viewership and increased revenues. As a result, they are routinely licensed.
Companies have, however, realised that the licensing of format rights is sustainable only as long as format rights are treated as being valuable rights worthy of intellectual property protection by courts, and in recent years, there has been a surge of litigation throughout the world related to format rights as a result of companies trying to protect them (and the benefits they reap by licensing them).
The first case which could be considered to deal with format rights is the 1989 case of Hughie Green v. Broadcasting Corporation of New Zealand. In this case, Hughie Green effectively claimed format rights in his programme Opportunity Knocks. The courts weren’t entirely impressed with his claims though and his actions were unsuccessful. Many lawyers seem to believe that had he initiated legal proceedings today, he would have been far more likely to succeed because of the changed climate and the (rather grudging) acceptance which the judiciary has accorded to format rights.
Also, Hughie Green not only failed to show that the format of his show, which had been broadcast in England, enjoyed any reputation in New Zealand, but also attempted to protect a format which was in itself rather sketchy. Nowadays, formats contained in ‘Production Bibles’ tend to be very detailed and, in fact, a Belgian court has, in a judgment regarding format rights, spoken about what should be included in a Production Bible to give the owner of a format a chance of success, should he choose to initiate legal proceedings to protect his format.
In a 2008 judgment, the Brussels Tribunal of First Instance said that it was not enough for the idea of the format to be original; its description in the document should express its creator’s personality and the intellectual effort the creator claims to have invested in it. Merely enumerating a number of ideas and games, none of which is developed concretely and graphically is insufficient. There must be an adequate number of concrete elements to be considered a copyright-protected format; it should be possible to visualize an episode on the basis of the document. For example, the document should specify whether it relates to a single episode or a series. If the latter, it should also specify: (i) how many episodes would make up the series; (ii) how long each episode would be; how the episodes (or the series as a whole) would be structured; and (iii) how this structure would be reflected in the timing and overall length. Moreover, the document should: (i) state how the programme would be presented; (ii) indicate how the various tests would be shown in a particular episode or the order in which the tests would take place; or (iii) describe in practical terms: how the tests would be conducted, how the questions would be presented or how the winner of the series would be chosen. A vague description of a few ideas which could be used as a basis for numerous different television programmes, each with different characteristics cannot be a protected format.
As such, it would seem that the judiciary is willing to recognise format rights if the formats are systematically documented, and that documentation is provable. Such documentation could include not just the Production Bible concerned but also such things as relevant trade mark certificates, and copyright registrations for, say, music which is integral to the format.
The first instance of format rights being recognised by a court, however, was not in this 2008 Belgian judgment but several years earlier in a 2001 case where format rights were recognised by the Hungarian Supreme Court in a dispute regarding a radio show, Cappuccino. Since then, there have been quite a few instances across the world where format rights have been recognised and protected. However, the protection accorded to them has often been extremely dependent on the facts and circumstances of the dispute in question, and there have been many instances where format rights have not been protected only under copyright law but under laws as diverse as those related to unfair market practices and breaches of confidence.
In fact, in India, although the courts have indicated that the 1957 Indian Copyright Act can protect formats, the fact is that the courts have, so far, only adjudicated disputes where the ownership (and violation) of format rights has been entwined with issues of confidentiality having been breached (as the format rights owners had communicated their formats to those accused of having violated them under the terms of confidentiality agreement). The legal landscape may soon change, but at the moment, Indian law on the subject is not entirely clear. And till the law is clearly defined, there will continue to be a shadow, of sorts, over the format rights licensing industry.
Recognising Format Rights
What is becoming increasingly clear is that even if statutory law does not explicitly recognise format rights as a form of intellectual property, the fact that the industry does recognise them means that disputes arise with reference to format rights, and that those disputes need to be resolved whether in traditional fora or using new means.
Traditionally, of course, when disputes arise, apart from pursuing arbitration — where an arbitration agreement exists — or using some other alternative dispute resolution mechanism such as mediation or conciliation, persons who have believed that their rights have been violated have approached courts, or in some cases, various professional bodies,
In India, with respect to format rights, there have thus far been two cases in which courts have “recognised” format rights. However, in both these cases, there was the factor of confidentiality, and of confidentiality having been breached. And it is on the basis of that latter factor that the courts have reached their conclusions — the recognition of format rights may almost be considered to have been incidental in both of these cases because it was confidentiality issues which were centre-stage.
Thus far, there has not been a conclusive judgment issued by an Indian Court on the “protectability” of format rights, and whether format rights can be protected in the absence of a confidentiality agreement.
From a legal point of view, the issue of format rights is especially tricky because one has to answer the question: Where does the idea of the format end and where does the concrete expression of the idea begin? Copyright law clearly states that ideas cannot in themselves be protected, it is only the expression of an idea which can be protected. As such, as a general rule, the understanding under Indian law is that a format may be protectable if it is expressed in sufficient detail, is unique and original, and if it does not copy any of the unique features of a pre-existing work. Of course, all the standard copyright doctrines also apply to this general rule — for example, merger, scènes à faire, independent creation and substantiality.
In addition to this, once one reaches a conclusion that an format is protectable, to determine whether it has been copied would involve having to watch both the original programme / work which used the format, and the alleged copy. This is because of the test laid down by the Supreme Court of India in the case of R.G. Anand v. Delux Films, AIR 1978 SC 1613, which states that to determine the degree of similarity betwen two works, the deciding factor is the impression left on the mind of the ordinary viewer: Does he think that the latter work copied the earlier work?
With regard to industry associations /venues, In India, it may be possible to register a format with the Association of Motion Picture Producers and Television Programme Producers of India (AMPTPP) or the FWA (Film Writers' Association), while internationally, there exists a Format Recognition and Protection Association (FRAPA) dedicated to the recognition and protection of Format Rights (as its name suggests).
Recently, WIPO (the World Intellectual Property Organization) has also joined in the effort with its Arbitration and Mediation Center collaborating with FRAPA. “Under the new collaboration, according to FRAPA, “the WIPO Center will take on FRAPA’s existing mediation activity and will administer TV format-related disputes filed under the WIPO Mediation and Expedited Arbitration Rules for Film and Media.”
And so, even if legislatures and courts are slow to recognise format rights, other agencies seem to be in the process of creating and structuring procedures which could be used to solve disputes related to format rights.
(This post is by Nandita Saikia and was first published at LawMatters.in.)