A FORMAT DEVISORS TOOLBOX – PART 1 10 tools to protect your format Presented by: Jonathan Coad (the lawyer)
TV Formats – big money and prestige • Huge commercial and prestige value • American Idol valued at $2,5b; Channel 5 half the cost of a Big Brother license • No express statutory protection for format rights • But a growing body of caselaw • Format owner must secure protection under laws relating to copyright, breach of confidence, passing off or unfair competition or, in some jurisdictions, other areas of law • How much protection you get is to a large extent up to you
1. Know Your Rights • The law of copyright Copyright does not protect ideas, only how they are expressed The work must be both original and sufficiently identifiable in form and structure to qualify for the monopoly accorded to copyright works Reality TV stretches that requirement to the limit (Big Brother/the Glass House, Celebrity/Survivor)
1. Know Your Rights • The law of confidence Allows creator of format to protect it against unauthorised exploitation if programme is not already in public domain Will imply a duty of confidence in certain situations e.g. if information imparted where you would expect duty to arise to maintain confidentiality Only protects against person bound by duty of confidence Case Law: Fraser v Thames Television (1982 – UK) Case Law: Belo v ITV (2013 – UK)
1. Know Your Rights • The law of passing off Prevents producer “B” from passing a format off as his own when it belongs to producer “A legal protection when one format is sufficiently similar to another to cause confusion amongst trade or public special application to Programme Titles Three elements (goodwill, misrepresentation and damage) Case Law: A & E Television v Channel 4 (the “Intervention”) – titles of popular documentaries very difficult to protect Unfair Competition – related claim
2. A Good System for Keeping a Record of the Creative Process • Put it in writing (before giving / showing it to anyone) > put your idea in writing and develop all aspects of it as much as possible > record minutes of all format “ideas” meetings • Date and identify it > make sure that the date, author and those responsible for the ideas being recorded > which idea should be attributed to who are noted every time > record whether the input to modify an idea is from internal or external source
2. A Good System for Keeping a Record of the Creative Process • Create a paper trail > record detailed and exact specifications of the elements of the format during the entire development process > keep hard copy file of all format proposals that have been submitted (to whom, when and data and credit), or return unopened to sender > create a directory and relevant sub-directories to be accessed by all > save/archive all emails referring to the format in a central directory (DON’T delete any emails relating to the format!)
3. A Good Contract for the Hire of Freelancers to Work on Your Format • Set parameters for confidential information – as wide as possible • Include confidentiality provisions in the contract for freelancers which binds them to teat as confidential what they have worked on for you • Include obligation on the freelancer to procure confidentiality from third parties/agents to whom the freelancer discloses any information on your format • Consider what measures may be taken for breach of confidentiality
4. A Domain Name in Your Catchy Title • •
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Register the title for your new programme Register the corresponding generic and country code top level domains (such as “.com” and “.co.uk” respectively) An unconventional use of a country code top level domain name (such as “.tv” or “.es”)? Register relevant usernames on social networking sites Pre-broadcast registration of domain names and usernames can often be a pre-emptive measure to prevent squatting Sends a clear signal of intent
5. Get yourself a Trade Mark •
Brand it (© / ® or™ / registered designs) > Develop a well defined brand identity for your format > Titles and catchphrases may be registered as word marks > Logos may be registered as figurative marks > Two-dimensional and/or three-dimensional designs > Consider the territories in which you intend to register your marks and/or designs > Key benefits of registration
5. Use your Industry and Trade Bodies •
Register it > Format Recognition and Protection Association (FRAPA) > Deposit and register a copy of the format with FRAPA with the date of receipt confirmed > No guarantee for copyright protection but evidence of the date of the concept of the idea in case of dispute > International chronological registry of formats > Pre-clearance mechanism for broadcasters where conflicting formats are pitched to them > Offers dispute resolution > Launched a joint mediation service with WIPO
5. Use your Industry and Trade Bodies International Format Lawyers Association (IFLA) • • • • • •
Launched 2005 International network of specialist format lawyers with expertise in television, copyright and related issues Shared expertise and case law English speaking Provides both pre and post broadcast and litigation advice Provides expert evidence
6.Research before Investing Time/Resources • •
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Conduct your own analysis of predecessor programme? Are there common key elements and narrative structure? no infringement if new treatment of old idea incidental and inevitable similarities do not constitute infringement similarity between rival formats shows only prima facie evidence of copying Mix and Match if have to borrow, borrow only one or two elements from a number of rivals do not appropriate key elements from only one or two pre-existing programmes
7. Create a comprehensive Format Bible •
The Format Bible This needs to contain as much detail and know-how as possible covering every aspect of the programme It should have key phrases, competition elements, casting etc. Include shooting script In particular the structure of the format must be clearly set out Mark your format bible with a “confidential” notice on its cover and in headers on each page
7. Create a comprehensive Format Bible •
Details, Details, Details title sample scripts principal characters set role of the presenter, any participating professionals, members o the public and celebrities catchphrases manner in which contestants are sourced, recruited and eliminated order of the programme economic structure of the programme elements
8. Pitch Perfect - Keep it confidential Keep your circle small prior to pitch Make sure you have protections in place before pitching Non Disclosure Agreements ideally before disclosure at a pitch Drop a line before and after to make it clear pitch information is confidential Mark the pitch materials “Confidential” Make a note of the pitch meeting
9. Licensing Your Format •
License it Contract will provide better protection than intellectual property laws (N.B. not binding on third parties) Contract will give buyer access to “know how” Consider referring all disputes under the contract to one of the WIPO dispute resolution procedures, i.e. WIPO’s Arbitration and Mediation Centre or FRAPA Or consider referring all disputes under English law – the UK courts are experts in this field with specialist judges But require licensee to grant the rights back to you if they add any improvements
10. Broadcast your Determination to Protect your IP •
Protect your investment and investors Nobody buys property they can steal Nobody licenses property that can be stolen It is hard to sell disputed programmes
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Role models Disney Endemol
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Take and telegraph robust measures against copycats If you do not the other nine tools are of little use
Thank you Jonathan Coad jonathan.coad@lewissilkin.com jc@ifla.tv