BUMP

Author Hydragyrum
Reproduced with kind permission of the copyright owner
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Jane Lambert

Chancery Division (Mr Justice Snowden) Banner Universal Motion Pictures Ltd v Endemol Shine Group Ltd and others [2017] EWHC 2600 (Ch)

In Denmark there was once a game show called "Minute Winner" which was devised by a Mr Derek Banner. Mr Banner claimed to have assigned his rights in the format for the game show to a company that he had set up called Banner Universal Motion Pictures Ltd. ("BUMP"). The rights that BUMP claims to have acquired were essentially copyright in a document entitled

"MINUTE WINNER
Mini-format Game show
Daily or weekly show.
Or short one minute between main programs.
Morning, Evening or Afternoon program.
One minute, or 30 minutes with several winnings"

and the benefit of an obligation of confidence under Swedish and English trade secrecy laws. The obligation of confidence is said to have arisen when Mr Banner met Jock Millgardh and Matthias Olsson of the Swedish company Friday TV AB ("Friday") to discuss Mr Banner's ideas for TV shows. BUMP says that Mr Banner disclosed the idea for Minute Winner to the Swedish TV executives and that they breached his confidence by passing on his idea to an NBC company which made the "Minute to Win It" TV series that has been licensed all around the world. BUMP complains that Minute to Win It is derived from Minute Winner.

The Causes of Action
BUMP claimed that the document that I have described above was a dramatic work in which copyright subsisted, that it was the owner of the copyright in the work and that copyright had been infringed by broadcasting eight 60 minute versions of Minute to Win It in the UK in 2011. BUMP sued Friday for breach of confidence and the other defendants for copyright infringement and passing off.  The claim was resisted by all defendants. Their first line of defence was that the document was not a dramatic work within the meaning of s.3 (1) of the Copyright, Designs and Patents Act 1988 ("CDPA") and, even if it was, any copyright that subsisted in it had not been infringed. Secondly, Friday denied that it had ever received details of Minute Winner in confidence (though it conceded that it had discussed another of Mr Banner's ideas for a TV show) adding that the Swedish courts had already decided that issue in its favour.

The Case Management Conference
The action came on for a case management conference before Mr Justice Snowden, At the CMC the defendants asked for summary judgment or the striking out or staying of the action on the grounds that:
  • copyright did not subsist in the Minute Winner format document;
  • the beach of confidence claim was res judicata and that the attempt to relitigate it was essentially an abuse of the process of the court; and
  • the passing off claim had to fail because BUMP had no goodwill in England.
The judge decided all three issues in the defendants' favour.

Can Copyright subsist in the Format for a Game Show?
Even though the Privy Council had rejected Hughie Green's claim for copyright in the format of Opportunity Knocks in  Green v Broadcasting Corporation of New Zealand [1989] RPC 700, it was common ground that copyright might subsist in some TV show formulations. The defendants drew the judge's attention to the following passage of the 17th ed, of Copinger and Skone James on Copyright at para 3.93 which his lordship quoted at para [39] of his judgment:
"There is no reason in principle … why a format should not be protectable as a dramatic work if it contains a sufficient record of how the show is to be presented. Today, such formats, in addition to recording the central idea of the show or game, will often contain scripted spoken elements, directions for what the participants should do at particular stages, and details for the staging, lighting and sound effects. A useful test to determine whether there is a protectable dramatic work is to ask whether, using the written script or other record as a basis, it is possible to present a coherent and meaningful show which is capable of being performed."

The judge accepted that proposition at para [43]:

"I think that the authorities and commentary to which I have referred above indicate that it is at least arguable, as a matter of concept, that the format of a television game show or quiz show can be the subject of copyright protection as a dramatic work. This is so, even though it is inherent in the concept of a genuine game or quiz that the playing and outcome of the game, and the questions posed and answers given in the quiz, are not known or prescribed in advance; and hence that the show will contain elements of spontaneity and events that change from episode to episode."

He added in the next paragraph:

"What I think is apparent from the authorities, however, is that copyright protection will not subsist unless, as a minimum, (i) there are a number of clearly identified features which, taken together, distinguish the show in question from others of a similar type; and (ii) that those distinguishing features are connected with each other in a coherent framework which can be repeatedly applied so as to enable the show to be reproduced in recognisable form."

His lordship set out in some detail the relevant parts of the above-mentioned document in paragraphs [6] to [11] of his judgment and considered whether it met the above requirements between paragraphs [47] and [59].  In his judgment, there was no realistic prospect of BUMP persuading a court that the contents of the Minute Winner Document qualified for copyright protection. In his view, those contents were both very unclear and lacking in specifics, and even taken together they did not identify or prescribe anything resembling a coherent framework or structure which could be relied upon to reproduce a distinctive game show in recognizable form. He concluded that "the features were, in truth, commonplace and indistinguishable from the features of many other game shows" and therefore dismissed the claim for subsistence and infringement of copyright at paragraph [60].

Res Judicata 
After considering Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd [2014] AC 160, [2013] UKSC 46, [2014] 1 AC 160, [2013] WLR(D) 265, [2013] 3 WLR 299, [2013] RPC 29, [2013] 4 All ER 715 and Johnson v Gore Wood & Co  [2001] 1 All ER 481, [2000] UKHL 65, [2002] 2 AC 1, [2001] 2 WLR 72, the judge addresssed the issues that had been decided by the Swedish courts. The claim before the Swedish courts had been an action for the infringement of the Swedish Trade Secrets Act. He noted at paragraph [71]:

"As explained by the District Court in its judgment, the Swedish Trade Secrets Act only accords protection to information qualifying as a "trade secret", and that requires the information to be such that, viewed objectively, its disclosure is likely to cause damage to the claimant in terms of competition. As explained by the District Court, that requires that the information must be more than information of a general nature: it must have reached some level of detail. It was on that basis that the information in the Minute Winner Document was held not to amount to a trade secret."

As he observed at [72] very much the same principles apply here:

"The same type of considerations apply in a claim for breach of confidence under English law. It is clear on the authorities that in order to found an action for breach of confidence, the information in question must "have the necessary quality of confidence about it": see e.g. Coco v Clarke [1969] RPC 41."

The judge also noted that Mr Banner had not yet paid the costs of the Swedish proceedings and said at paragraph [78]:

"What seems to me to be particularly abusive is that the claim has been brought by Mr. Banner through his newly incorporated English company. That seems to me to be a transparent ploy by Mr. Banner (to which BUMP is a party) to attempt to obtain the benefits of a new claim in England without paying the outstanding costs orders to which Mr. Banner is subject in Sweden."

He, therefore, concluded at paragraph [79] that the claim for breach of confidence is barred res judicata and/or is an abuse of process.

Passing off
Mr Justice Snowden said at paragraph [81] that it is fundamental that a claimant in passing off who is seeking to protect the use of a name must have goodwill in that name. As Mr Banner's show had never been screened in this country the claim for passing off failed at the first hurdle.

Comment
Perhaps the most interesting feature of this case is not the ratio decidendi but the obiter dicta that copyright can subsist in a game show format notwithstanding the Privy Council's decision in Hughie Green's claim. The judge's test for subsistence of copyright is useful. Interestingly, he seemed to expect a similar degree of detail for information to have what Sir Robert Megarry VC called the "necessary quality of confidence about it". Mr Justice Snowden said at paragraph [73]:

"This means (among other things) that it cannot be too vague. So, for example, in Fraser v Thames Television [1984] QB 44, Hirst J considered a claim for breach of confidence arising out of the communication by the plaintiffs of their idea for a television series to a scriptwriter, who had passed it on to a television company. Hirst J stated, at pages 65-66,

'I accept that to be capable of protection the idea must be sufficiently developed, so that it would be seen to be a concept which has at least some attractiveness for a television programme and which is capable of being realised as an actuality: see per Harris J. in Talbot v General Television Corporation Pty. Ltd. [1981] RPC 1, 9, lines 20-22. But I do not think this requirement necessitates in every case a full synopsis. In some cases the nature of the idea may require extensive development of this kind in order to meet the criteria. But in others the criteria may be met by a short unelaborated statement of an idea.'"

Further Information
Should anyone wish to discuss this case or any of the issues in it generally, he or she should call me during office hours on +44 (0)20 7404 5252 or send me a message through my contact form.

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