24 May 2024

According to media reports earlier this year, BBC Studios wrote to a bar in Glenrothes in relation to a proposed “Breakfast with Disney and Friends” event, at which they proposed to provide to guests a full Scottish breakfast with visits from children’s television characters Bluey and her sister Bingo. The letter asked the bar to remove any Bluey references from its events, noting that the Bluey logo, characters and artwork are protected by copyright and that any unlicensed use by the bar would constitute copyright infringement.

This incident serves as a salutary reminder for businesses that might be intending to use popular characters from television shows or books for events, marketing or the like and offers an opportunity to consider the legal position in the UK (as it stands).

Del Boy in the High Court

The question of copyright in characters was explored for the first time in the UK by the Intellectual Property Court as recently as 2022. In this case, the claimant, Shazam Productions Limited, sought to prove that the creators of a theatrical dining experience during which guests partook in an interactive three-course meal whilst actors modelled themselves on the characters from British sitcom Only Fools and Horses, had infringed the copyright that subsisted in 1) the scripts for each individual episode; 2) the scripts taken as a collective whole; 3) the characters and their defining features; 4) the lyrics; and 5) the theme song.

With reference to the third alleged infringement (relating to the characters), the court held that the protagonist, known as Del Boy, is a “work” in terms of the Act and is therefore protected by copyright. The court applied a two part test, explaining that for a character to be protected by copyright, two cumulative conditions had to be satisfied:

a) originality, in the sense of the subject matter being the author’s own intellectual creation; and 

b) identifiability, in that the subject matter was expressed in a manner which made it identifiable with sufficient precision and objectivity.

The court determined that the character of Del Boy satisfied that two-stage test, on the basis that the character was an original creation of John Sullivan (the scriptwriter behind Only Fools), which was the expression of his own free and creative choices, and was clearly and precisely identifiable to third parties in the Only Fools scripts.

The fact that the character had particular character traits, quirks and turns of phrase persuaded the court that it was “original” under the first limb of the test. Under the second limb, the court held that Del Boy satisfied the test because he is “precisely and objectively discernible in the scripts” – the character’s appearance, character traits, relationships and views are described in depth in the scripts, making the nature of the character objectively clear.

As such, the character was held to be a protectable literary work under UK copyright law.

Fair use, parody and pastiche – the defence

It is worth noting that he defendants in this case sought to rely on Section 30A of the Act, which relates to fair dealing of a work for the purposes of caricature, parody or pastiche. What, though, does this mean in practice?

The essential elements of parody are that a work has to i) evoke an existing work; ii) be noticeably different from that existing work; and iii) constitute an expression of humour or mockery. Mere imitation of a work of comedy is not enough to constitute parody – to qualify, the work should be humorous, mocking or critical of the original work. The court rejected the defendant’s argument that the dining show was a work of parody on the basis that it was merely an imitation, lacking any sort of opinion or criticism.

“Pastiche” is a less explored concept and though it can be given a restricted meaning that is akin to parody, it has a broader scope – the word “pastiche” is variously defined as “an artistic work in a style that imitates that of another work, artist or period”; “a novel, poem or painting, etc. incorporating several different style, or made of parts drawn from a variety of sources”; “a work, especially of literature, created in the style of someone or something else”; or “a work that humorously exaggerates or parodies a particular style”. As a general principle, for pastiche to apply, there must be a noticeable difference between the first work and the second

In Only Fools, the court held that the dining show did not qualify as a work of pastiche on the basis that it was closer to a “reproduction by adaptation”, incorporating the characters, language, jokes and backstories that were featured in the original sitcom, without satisfying the essential element of being “noticeably different from the original work”. Reviews for the dining show commented on the fact that it was “like being in an episode” which undermined the defendant’s intended reliance on pastiche. Accordingly, the defendant’s defence failed and the claimant was successful in establishing copyright infringement.

The decision offers useful analysis for those seeking to utilise popular characters (or other elements) from television shows or books for events, marketing or otherwise. However, that the character of Del Boy was held to be protected by copyright does not mean it follows that every character will be – the two part test of originality and identifiability will first require to be met and even it is, the defence of fair use might in other cases be successful. Nevertheless, the case offers useful insight into judicial thinking in relation to copyright in characters.

It remains to be seen whether the same outcome would apply to an analysis of Bluey, which is a cartoon puppy with features that are presumably discernible at least to children. The BBC has kept close watch on the use of this character, not only seeking to stop Bluey related events but also going after merchandise sellers in respect of counterfeit products (most recently in the US, in a lawsuit that involved merchandise being sold by Amazon, Walmart and Etsy). A court action seeking to protect copyright in the character is therefore not outwith the realm of possibility.

Ultimately, the question of copyright in characters will be fact dependent and not always straightforward. Whilst Del Boy is the UK’s first foray into a critical analysis of the question, it is worth noting that the question has been considered in the US, where in 2015, Batman’s Batmobile was held by the Ninth Circuit Court of Appeals to qualify as an “automotive character” that is protected by copyright law. 

Practical impact of the decision

The upshot is that those who own intellectual property rights in famous fictional characters may now be able to prevent third parties from using these characters without first obtaining their consent. As such, third parties should exercise caution when seeking to use characters, and should take advice before doing so.

From a practical perspective, those seeking to utilise famous characters should also be aware that copyright eventually expires (with the general rule being 70 years after the death of the creator) and so concerns of infringement only tend to be relevant when dealing with modern or contemporaneous characters. Older characters – for example the original iteration of Mickey Mouse in which the copyright expired in January 2024 – are from that perspective fair game.

Nevertheless, advice should always be taken in the event of any ambiguity. If you are contemplating the use of a fictional character, whether for an event or otherwise, please contact the Creative Industries team at BTO Solicitors who can help you navigate that from a legal perspective.

Lauren McFarlane, Associate: lmf@bto.co.uk / 0131 222 2939