IP – The Next Big Thing In Reality TV?

What do the Da Vinci Code, The X Factor and The Block all have in common apart from being stunningly successful? All had to deal with highly publicised claims that they were based on ideas stolen from someone else.

At Shelston IP, we receive many queries along the lines of "I have this great idea for a new TV show [book, movie etc]. How can I protect my intellectual property so someone doesn’t steal it?" And the answer: Not easy, but there are many things you can do to improve your position as discussed below.

In the UK, the owners of the Idol concept sued the producers of The X Factor claiming that The X Factor reproduced over thirty elements of the Idol program format. The case received considerable publicity but settled just before going to trial for a range of reasons including the fact that one of the parties was a key player in both programs.

The Da Vinci Code litigation has also received considerable press. That case involved claims by two authors that Dan Brown had stolen ideas from their earlier book – The Holy Blood and the Holy Grail. Their book did postulate that Jesus and Mary Magdalene had a child and that the bloodline survives to this day. The authors failed spectacularly and are facing serious financial hardship as they cover their own legal bills and 85% of the Da Vinci Code publisher’s.

Closer to home, in an unusual twist, Channel 9 sued Ninox over Ninox’s claim that Channel 9’s The Block program infringed Ninox’s copyright in its Dream Homes program format. Channel 9 had previously licensed Ninox’s Dream Homes show concept and produced two seasons of it. Channel 9 then discontinued production of Dream Homes and began producing The Block. To establish infringement, Ninox had to show both infringement of copyright and that Channel 9 had in fact copied the Dream Homes format.

In relation to infringement, the Judge carefully analysed the elements of each show including mood, themes, emphasis, overall tone, distinctive look and feel, and sound and appearance and found significant differences. He concluded that Dream Homes was more about showing people how to undertake a do-it-yourself renovation while The Block was mainly about reality style interpersonal drama and tension with the renovation aspects being somewhat of a side line.

After examining the careful paper trail provided by Channel 9 on how The Block concept was developed, the Judge concluded that it was arrived at independently and was not copied from Dream Homes.

In the course of his judgment, his Honour made a key finding about reality TV shows involving essentially unscripted drama and text. He said that

it is very difficult to protect these types of shows under copyright law. This is because each show will vary so much as it unfolds.

Now let’s look at some ways to protect TV show and book formats.

It is highly desirable to register a trade mark to protect the name of the show or book. To obtain trade mark protection, you should choose a name which is distinctive (i.e. not descriptive) and which is original. This will mean doing some searching within IP Australia as well as on Google or other search engines to confirm that your name is original. We can assist with these searches.

Once you have decided on the name to be registered, it’s important to register the trade mark in the correct classes. In Australia and most other countries, there are 45 classes of goods and services in which a trade mark can be registered. The most likely classes are 9 (films, video and sound recordings), 16 (books and other printed materials), 25 (clothing- don’t forget the character merchandising), 28 (games and toys) and 41 (entertainment services). Many other classes are possible and the wording used is very important. The above is just a summary.

A good trade mark can be very useful to prevent copycatters and hangers on. There has been a considerable amount of press recently as the owners of the Australian Idol trade mark take action to prevent or shut down other unconnected Idol events. Many proposed Idol events have been cancelled due to concerns over possible action by the trade mark owner. A strong trade mark can provide significant protection for a TV program or book.

However, trade mark protection does have its limits.

It is a simple matter for someone to come up with another name. So while trade mark registration does provide a level of protection, it is not enough to protect the TV concept. The other main area of protection is copyright. Business method patents may be available in some instances but are outside the scope of this article.

As indicated above, copyright cannot protect an idea or concept, only the form in which it is expressed. In Australia, there is no requirement (or indeed forum) to register copyright. It exists on creation of the material. Some overseas jurisdictions do require or at least provide a registry for copyright to be registered.

The Judge in the Block Case was prepared to find that copyright could exist in a particular show format. Format elements which are generic ie common to the particular genre (game show, talent quest, adventure) cannot be protected and will be ignored in assessing infringement. Examples of generic unprotectable elements include holding auditions, having a panel of judges, answering questions to win prizes and team competitions.

To succeed in an infringement case, it is necessary to show copying or that the formats are so similar this could only have occurred by copying. So to enhance format protectability, you must come up with concepts which are unique and the more of them the better. To resist claims of infringement,

keep good records of how the concept was arrived at.

Note that copyright can be infringed where there is reproduction of a substantial part of another show’s format rather than all of it. In this context, "substantial" is determined by reference to quality not by quantity of copying. If your show reproduces a key distinctive element of another program, this may be enough to establish infringement where copying is established.

So what are the key lessons about protecting a TV or book format?

• Devise a name that is unique and strong. Register it as a trade mark in the relevant classes in all jurisdictions where you intend to release the show or the book.
• During development and production, limit disclosure of the concept and deal with reputable established operators.
• Ensure that any persons to whom you disclose the concept sign a non-disclosure agreement before disclosure. Some companies may refuse to sign on the basis that they may have already thought of the idea and signing will prejudice their position.
• If a concept is arrived at independently it will be difficult to claim copyright infringement. This means carefully documenting how the concept was arrived at. Keep good records.
• Create your own mood, tone, features and ensure there are key points of differentiation from existing shows. Only a combination of distinctive elements is protectable.
• Create a format "bible" for your show. The bible is a complete "how to" in relation to the show ranging from the elements of the show, target audience, set design, programming rundowns, website design, logos – as much detail as possible. The bible itself will be protected by copyright and the level of detail will assist in any infringement cases you run.
• Consider registering your format with an established registry such as FRAPA (Format Recognition and Protection Association), Creators Registry, Writers Guild of America (members only) or the US Copyright Office. Registration is quite cheap and will give you a "date stamp" to help establish the date of your claim.
• Very few infringement cases have succeeded. Copycat shows are common and the expenses involved in undertaking infringement litigation are substantial. However, if a show is conceived and protected as set out above, this will deter many would-be copycats.

Protecting intellectual property in TV show and book formats is not easy. But by following the above steps, you will significantly increase your ability to protect your intellectual property and enhance its value and attractiveness.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.