By Alison McGinn, Banki Haddock Fiora

Summary points

• This Canadian case, in which a claim for copyright in a television show "format" was successful, teaches us that, in most cases, those who develop television formats and rely on "production bibles" pay insufficient attention to defining the visual and verbal expression of the format by scripts and storyboards, without which there may be little, if anything, protectable at law. This claim succeeded because of the quality of the material form to which the format had been reduced.

• Copyright does not subsist in mere ideas but only in the expression of ideas. It was found that copyright in a television show format was infringed by another television show reproducing non-literal, as well as literal, elements of the original format.

• In an assessment of whether a substantial part of a work has been taken, non-literal as well as literal aspects of the original format, such as the visual appearance and personality traits of characters, visual aspects of the setting, and recurring "scenographic elements" (features of format sketches and storyboards) must be considered together as a whole in order to determine the essential character of the expression of the original, without dissecting out specific words or pictures in order to determine whether those items had been copied.

• In making a determination of infringement, the amount of copied material relative to the whole of the alleged infringing work is irrelevant. What is important is how much of the original work has been copied, in terms of quality and not quantity.

• the "substantial part" test for infringement;

• the role of expert evidence in copyright infringement matters;

• the personal liability of directors and officers in respect of copyright infringement; and

• the assessment and apportionment of damages.

Background
The unanimous decision of the Supreme Court of Canada in Cinar Corporation v Robinson (1) considered a number of issues as important to Australian copyright law as to that of Canada, including how one should assess whether a substantial part of a work describing a television show format had been copied in another television show adopting many of the same concepts.

The television show at issue was an educational show for children, which had never been produced. Claude Robinson (Robinson) had developed a television show called The Adventures of Robinson Curiosity (Curiosity). Inspiration for the concept was taken from the novel Robinson Crusoe by Daniel Defoe as well as from Robinson's own experiences.

Robinson had prepared sketches, storyboards, scripts, synopses and promotional material and obtained copyright registration in this collection of materials as a single work. He was unsuccessful over a number of years in attracting investors to produce the show, having approached a number of companies including Cinar Corporation (Cinar).

In 1995, Robinson became aware of a new children's television show produced by Cinar entitled Robinson Sucroë (Sucroë) which was also based on the Robinson Crusoe novel. Having watched Sucroë, Robinson was of the opinion that it was a copy of Curiosity and he took action for copyright infringement in the Quebec Superior Court. It was found in both the Quebec Superior Court and the Court of Appeal that copyright subsisted in Curiosity, and that it had been infringed by Cinar. Robinson was awarded substantial damages, including punitive damages of the same kind as additional damages under s 115(4) of the Copyright Act 1968 (Cth), and costs. Cinar and Robinson both appealed to the Supreme Court, Cinar in respect of whether it had infringed copyright and Robinson in respect of the amount awarded for damages.

The four issues considered in the decision are:

• the "substantial part" test for infringement;
• the role of expert evidence in copyright infringement matters;
• the personal liability of directors and officers in respect of copyright infringement; and
• the assessment and apportionment of damages.

Conclusion

It was acknowledged that copyright law aims to strike a balance between protection of the skill and judgment exercised in the expression of ideas while not giving authors a monopoly over ideas or elements that should be in the public domain and free for all to use. It was further acknowledged that copyright does not protect "every 'particle' of an original work, any little piece the taking of which cannot affect the value of [the] work as a whole".(2)

The key message of this decision is that television show formats can be legally protected but they must show more development of the visual and textual material (storyboards and scripts). Formats are literary or dramatic works and hence must be capable of being performed.

It is also of some significance that the Canadian Supreme Court has dismissed the "abstraction-filtration-comparison" test of infringement, based as it was upon a now notorious misunderstanding and misapplication of the comments of Learned Hand J in Nichols v Universal Pictures Corp,(3) which has blighted the issue of copyright infringement of computer programs by "look-alike/work-alike" versions.

Rights holders must also remember the lesson of Talbot v General Television Corporation Pty Ltd,(4) in which the format was not only well documented but its confidentiality had been maintained by its developer.

(1) Cinar Corporation v Robinson (2013) SCC 73, McLachlin CJ and LeBel, Fish, Abella, Rothstein, Cromwell and Moldaver JJ. The single judgment was delivered by the Chief Justice.
(2) Above, n 1, at [25], quoting Vaver, D, Intellectual Property Law: Copyright, Patents, Trademarks (2nd edn 2011) at p 182.
(3) Nichols v Universal Pictures Corp (1931) 282 US 902; 45 F 2d 119.
(4) Talbot v General Television Corporation Pty Ltd [1980] VR 224; [1980] RPC 1.

Note: This is an extract from Australian Intellectual Property Law Bulletin, September 2015, Volume 28 No 7