Hong Kong was struck with an unprecedented quiz show frenzy this summer with ATV' s "Who Wants to be a Millionaire" and TVB' s "The Weakest Link" battling for viewers and sponsors. Both local television stations were licensed by the creators of the respective television shows, with BBC, the creators of "The Weakest Link" generating substantial media coverage by requiring the local Chinese host, Dodo Cheng to adopt a "schoolmistress" manner in order to preserve a consistent tone of the television programme internationally. Television programme creators have, through contractual provisions, retained significant control over the production of localised versions of their television programmes. However, in the absence of contractual agreements, are there any rights in television formats and, if so, how can television creators protect such rights?

One of the first (and few) cases concerning television formats Green v. Broadcasting Corporation of New Zealand [1] involved the creator and compere of a television talent quest programme, Hughie Green and his show "Opportunity Knocks" which aired in the United Kingdom in the early 1960s until 1978. Hughie Green sued a television station in New Zealand for copyright infringement and passing off in relation to the television station' s talent quest programme, also entitled "Opportunity Knocks" . The New Zealand programme contained certain features of the British programme, including, amongst other things, the name, various catchphrases used by Green, the use of "sponsors" to introduce contestants and a "clapometer" to measure studio reaction. Green failed on both the copyright infringement and passing off claims in the New Zealand Court of Appeal and the copyright claim in an appeal before the English Privy Council[2]. This was the case even though the New Zealand Court of Appeal conceded that certain features of the New Zealand version, in particular the catchphrases, had been copied from the original United Kingdom version.

A significant factor contributing to Green' s loss on the passing off claim was that no evidence was adduced showing that the United Kingdom version of "Opportunity Knocks" had any protectable goodwill or reputation in New Zealand. The copyright claim failed because Green could not produce any scripts or written records of the formats for the television series. Accordingly, it was held that in the absence of written scripts or records, there was nothing more than a general idea or concept for a talent contest. Green also argued that the television show amounted to a dramatic work, protectable by copyright law; this failed because the court believed that the show lacked certainty as each show depended on the contestants, the viewers and the ad lib comments of the compere, Green himself.

Television has progressed leaps and bounds since the "Opportunity Knocks" litigation. There is no separate intellectual property right covering television formats but television programme creators have a few more options. In particular, with the introduction and proliferation of satellite and cable television, viewers are exposed to a greater number of television programmes, including television programmes which have been produced overseas. Therefore, there is a good chance that a popular television series televised in its country of origin would, depending on the particular situation, have generated goodwill and reputation in other recipient countries, attracting substantial local and protectable goodwill. Provided that reputation and goodwill can be proved, television companies may have causes of action against a local company who misappropriates and uses the originator's television formats and produces its own local version. For example, a Hong Kong television company who produces a television programme called "The weak link?" using the same or similar format to "The Weakest Link" , is likely to face a passing off action by the original creator, the BBC and/or the local producer of the television show, TVB.

Further, television companies are far more sophisticated these days; they are well advised of intellectual property rights and different ways of protecting them. For example, the formats of television programmes are being reduced in writing to ensure that such written formats are protected by copyright. Creators now commonly produce a bible, i.e. an authorative book covering every aspect of a television programme such as the setting, the sequence of events, music, which can be used as evidence in any litigation.

Well-advised creators are also likely to have trade mark registrations for the name of the programme for goods which may be merchandised under that name and possibly to cover the television programme itself. The proprietors of the name may be able to take trade mark infringement action against parties who use identical or similar names for television programmes. Creators should, however, be aware that a trade mark registration will not guarantee success and all will depend on the trade mark itself, the goods and/or services in which the trade mark has been registered and the facts of the case.

Some creators have had their fingers burnt. For example in, Baywatch Production Co Inc v The Home Video Channel [3], the producer and proprietor of the trade mark registration "BAYWATCH" for goods including "video tapes, video discs, all animation sports or exercise" were unable, at an interlocutory stage, to prevent an adult satellite channel from broadcasting an adult television series known as "BABEWATCH" . The plaintiff failed mainly because it was unable to adduce evidence showing that there was any (or was likely to be) actual confusion; actual confusion being an essential ingredient to succeed in a trade mark infringement action where a similar sign is used in relation to dissimilar goods [4]. The plaintiff failed in its passing off claim because of the absence of actual confusion.

Television companies do recognise the problem of television formats which has resulted in the formation of an association known as the Format Recognition and Protection Association ("FRAPA" ). FRAPA is campaigning to have television formats themselves recognised and protected as intellectual property rights. It also offers a forum for mediation between television companies who are in television format disputes and a registry allowing television companies to register for television formats.

If Hughie Green had litigated today, he may have been successful before the Courts, at least in passing off (assuming that the programme was televised in some manner in New Zealand). It is also likely that he would have been more sophisticated than before by using the existing intellectual property law framework such as copyright and trade marks to protect his rights; he would have most definitely reduced his concepts in writing and may have registered the name "Opportunity Knocks" as a trade mark in several countries. In any event, local television companies are now less likely to take the risk of copying a successful overseas television programme with the cost of paying for the licensing rights to use a successful tried and tested formula being preferable to the uncertainties of success in television and the possibility of running into expensive litigation.

[1] [1988] 2 All ER 490 C.A. [1989] R.P.C. 700 (Privy Council)
[2] The passing off claim was not appealed to the English Privy Council
[3] [`1997] F.S.R. 22
[4] The Court held that "video tapes, and video discs, all featuring music, action-adventure, comedy, animation, sports and exercise" were dissimilar goods to "television programmes" or services relating to "television broadcasting" .

Authors

Wong-Alison

Alison Wong

Partner
China and Hong Kong

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