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8 March 2023

Parody in Copyright Law

The Greek Hegemon of Thasos is considered by Aristotle[1] the inventor of Parodies. The word parody is derived from the Greek parōidía translating to “a song sung alongside another.”[2] This definition forms the basis on which legislation and jurisprudence developed an important exception or defence to copyright infringement as means of safeguarding freedom of expression.

We looked at the case of Shazam Productions Ltd v Only Fools The Dining Experience Ltd[3]  with a focus on the copyright in the fictional character of Derek ‘Del Boy’ Trotter available here.

In this two-part article, we cover in depth at how the court in Shazam applied the parody exception in s.30A of the Copyright Designs and Patents Act 1988 (CPDA). Click here for our second part covering trade mark.

Copyright law is, amongst intellectual property rights, the one that most strikes a chord with the public due to its application to the world of entertainment that we all much follow and enjoy. Those nostalgic for Only Fools and Horses (OFAH) were reminded of this when they learnt that the company holding the rights to OFAH (Shazam) had sued the creators of dining events known as ‘Only Fools: The (Cushty) Dining Experience (OFDE), an interactive dining show performed using the characters from OFAH, for copyright infringement.

Was OFDE a parody, as its creators claimed, or an adaptation of OFAH’s creator John Sullivan’s brilliant work, as Shazam claimed?

Background

Shazam Productions Limited (Shazam) (which shall not be confused with the music service app own by Apple) is a company formed in 2003 owned and controlled by John Sullivan’s family to exploit the OFAH intellectual property rights held by John Sullivan, who died in 2011. Shazam launched a musical based on the characters from OFAH in February 2019.

In May 2018, Mr Mansergh and Ms Pollard-Mansergh developed the OFDA show, performed whilst the audience was being served a three-course meal.  The actors would perform scenes based on a script produced by different people and in which the actors used the appearance, mannerisms, voices and catchphrases of the much-loved characters Del Boy, Rodney, Uncle Albert, Cassandra, Boycie, and Marlene as they appeared in the broadcast version of OFAH. The characters were presented in a new context of an interactive pub quiz, which had not appeared in OFAH itself.

Following ineffective pre-action letters, proceedings were issued in the High Court in December 2019 before being transferred to IPEC. The judgment in Shazam touches on several issues, all fundamental in the application and development of copyright law in the UK, but we will focus on the defence put up by OFDE that their work represented fair dealing for the purposes of parody, alternatively for the purposes of pastiche, falling within the scope of s.30A of the CPDA.

The Legal framework

Prior to the introduction of s.30A into domestic law[4], English law was already familiar with the concept of parody as a defence to infringement to copyright, as it recognised that works of ‘burlesque’ parody may not be held to amount to an infringement of copyright in certain circumstances[5].

Section 30A has its origins in the InfoSoc Directive 2001/29/EC[6], in which Article 5(3)(k) allows Member States to provide for exceptions or limitations to copyright in case of use for the purpose of caricature, parody or pastiche.

Section 30A adopts the provision of Article 5(3)(k) but, consistent with ss. 29 and 30 CPDA, qualifies the exception and made it subject to the non-statutory defined concept of fair dealing: “Fair dealing with a work for the purposes of caricature, parody or pastiche does not infringe copyright in the work”.

Lastly, Article 5(5) of the InfoSoc Directive corresponds to what is usually referred to as “the three-step test”[7] and provides: “The exceptions and limitations provided for in paragraphs 1, 2, 3 and 4 shall only be applied in certain special cases which do not conflict with a normal exploitation of the work or other subject-matter and do not unreasonably prejudice the legitimate interests of the rightholder.” The United Kingdom has not transposed Article 5(5) into its national legislation.

Arnold J (as he then was) applied the three-step test in EWB v Tixdaq[8] concluding that:

  1. The first step is that the exception must be confined to certain special cases. This will be a matter of each case.
  2. The second step, i.e. that the application of the exception must not “conflict with a normal exploitation of the work or other subject-matter”, refers to exploitation of the work by the copyright owner, whether directly or through licensees […].
  3. The third step is that the application of the exception must not “unreasonably prejudice the legitimate interests of the rightholder”. Here Arnold J, adopts the view that this step qualifies the second step: “In other words, it indicates that it is not sufficient for an exception not to apply that there is some conflict with the copyright owner’s legitimate interests, including the copyright owner’s normal exploitation of the work. Rather, the exception can apply unless those interests are unreasonably prejudiced. This requires consideration of proportionality, and a balance to be struck between the copyright owners’ legitimate interests and the countervailing interests served by the exception […].”

There is still uncertainty on whether Article 5(5) constitutes a separate condition, in addition to Article 5(3)(k)[9]. In deciding the present case, John Kimbell Q.C. (sitting as a Deputy High Court Judge) adopted the approach of Arnold J. in EWB v Tixdaq and concluded that it was not necessary for him to decide this particular point because “the factors overlapped to a very large extent with those relevant to whether or not the reproduction in question amounts to fair dealing or not within the meaning of section 30A.”[10]

This takes us to what constitutes Fair Dealing.

The Court of Appeal in Ashdown v Telegraph Group Ltd[11] approved a passage from Laddie, Prescott & Vitoria, The Modern Law of Copyright and Designs[12] in order to find a definition of fair dealing, (although applied in the context of s.30 CPDA):“[B]y far the most important factor is whether the alleged fair dealing is in fact commercially competing with the proprietor’s exploitation of the copyright work, a substitute for the probable purchase of authorised copies, and the like. If it is, the fair dealing defence will almost certainly fail. […]. The second most important factor is whether the work has already been published or otherwise exposed to the public. If it has not, and especially if the material has been obtained by a breach of confidence or other mean or underhand dealing, the courts will be reluctant to say this is fair. […] The third most important factor is the amount and importance of the work that has been taken. For, although it is permissible to take a substantial part of the work (if not, there could be no question of infringement in the first place), in some circumstances the taking of an excessive amount, or the taking of even a small amount if on a regular basis, would negative fair dealing.”

Further, right after the introduction of s.30A, in October 2014, the Intellectual Property Office (IPO) issued guidance[13] for creators and copyright owners in order to assist in the interpretation and application of the new exception.

According to the guidance “There is no statutory definition of fair dealing – it will always be a matter of fact, degree and impression in each case. The question to be asked is: how would a fair-minded and honest person have dealt with the work? Factors that have been identified by the courts […] include: [D]oes using the work affect the market for the original work? If a use of a work acts as a substitute for it, causing the owner to lose revenue, then it is not likely to be fair; Is the amount of the work taken reasonable and appropriate? Was it necessary to use the amount that was taken? Usually, only part of a work may be used.”

If the above sets the fair dealing condition, what constitutes a parody in a legal context?

The legal concept of parody has been considered by the Court of Justice of European Union (CJEU) in Deckmyn v Vandersteen[14] finding its essential elements in that fact that a parody (i) evokes an existing work, hence ‘a song sung alongside another’; (ii) must be noticeably different from that existing work; and (iii) constitutes an expression of humour or mockery.

However, for Deputy Judge Kimbell, this is not sufficient and agreeing with author J. Griffiths[15] that “a parody must target something. It must be a “weapon” of some sort”, concluded that there must be some critical distance between the new work and the original work[16] and accepted the Claimant’s Counsel submission that mere imitation of a work of comedy is not enough to constitute parody.

Case finding

Deputy Judge Kimbell applying the law to the facts of the case found that OFDE could not rely on the parody exception[17] in that it is closer in form to reproduction by adaptation than parody because:

  1. OFDE involved the wholesale transposition of the characters, language, jokes and backstories from OFAH into the setting of an imaginary pub quiz, which while noticeably different from OFAH which was instead intended to be performed before a passive live audience, it does not seek to target OFAH or use OFAH either to express humour about it or mock it (or anything else).
  2. The overall aim of the OFDE script was rather to represent the characters taken from OFAH in a ‘pitch perfect’[18] familiar fashion. The overwhelming audience feedback was that it felt like being in another live episode of the OFAH. One spectator commented: “From start to finish it felt like we were in an episode of ‘Only Fools’”.

The judge went on to apply the fair dealing condition to further affirm that, even in case he was wrong, OFDE could not rely on s.30A as it failed steps 2 and 3 of the three step test of fair dealing for, inter alia, the following reasons:

  1. The taking from the OFDE scripts was very extensive both in terms of the quantity and quality of material.
  2. There was no expression of political view in OFDE’s script or any attempt to engage in criticism of OFAH either specifically about television or popular culture generally, failing to attract particular protection of fundamental rights.
  3. OFDE plainly competed with Shazam’s normal exploitation of OFAH as Shazam had also invested large sums in a musical adaptation of OFAH. There was a significant risk that some people interested in seeing a live OFAH themed performance might go to see the OFDE show rather than go to the Musical.
  4. Shazam had a legitimate interest in controlling how the OFAH characters were portrayed and presented and commercially exploited, for example by licence.

OFDE also failed to rely on the pastiche exception in that the Judge found that OFDE did not use elements from their scripts to imitate the style of OFAH. Nor were the elements taken arranged in any sort of medley or assemblage. We refer you to paragraphs [181]-[193] and [195] of Shazam for the full legal analysis.

 Conclusion

In order to be successful in defending a copyright infringement on the basis of the parody defence available under s.30A CPDA, a defendant must be able to show that their parodied work is noticeably different from an existing work which is a target of the defendant’s work, expressing humour or mockery and that the defendant fairly dealt with it, i.e. the amount of work taken is considered reasonable to a fair-minded and honest person and it is not commercially competing with the proprietor’s exploitation of the copyright work.

 

 

 

[1] Aristotle (Poetics, ii. 5).

[2] https://www.britannica.com/art/parody-literature

[3] Shazam Productions Ltd v Only Fools The Dining Experience Ltd [2022] EWHC 1379 (IPEC).

[4] Provision inserted into CPDA by Regulation 5(1) of Copyright and Rights in Performances (Quotation and Parody) Regulations 2014 /2356.

[5] Glyn v Weston Feature Film [1916] 1 Ch 261 and Carlton v Mortimer (1917-23) MacGillivray’s Copyright Cases 194 (Avory J); Joy Music v Sunday Pictorial newspapers (1920) [1960] 2 QB 60.

[6] Directive 2001/29/EC of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the Information Society.

[7] This first appeared in Art.9(2) of The International Convention for the Protection of Literary and Artistic works signed at Berne on 9 September 1886 (as amended in 1979) (‘the Berne Convention’).

[8] England and Wales Board Limited v Tixdaq Limited [2016] EWHC 575 (Ch) at [90] – [92].

[9] See for example a different application by the European Court in Stichting Brein v Jack Frederik Wullems Case C-527/15.

[10] Shazam Productions Ltd v Only Fools The Dining Experience Ltd [2022] EWHC 1379 (IPEC) at [155].

[11] Ashdown v Telegraph Group Ltd [2001] EWCA Civ 1142, [2002] Ch 149 at [70].

[12] Laddie, Prescott & Vitoria, The Modern Law of Copyright and Designs (3rd edition, 2000).

[13] Exceptions to copyright – Guidance for creators and copyright owners (October 2014) available at https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/448274/Exceptions_to_copyright_-_Guidance_for_creators_and_copyright_owners.pdf

[14] Deckmyn v Vandersteen C-201/13 [2014] Bus L.R. 1368.

[15] Griffiths, “Fair Dealing after Deckmyn – the United Kingdom’s defence for caricature, parody or pastiche” in Richardson and Rickeson, Research Handbook on Intellectual Property in Media and Entertainment, (Edward Elgar, 2017).

[16] Shazam Productions Ltd v Only Fools The Dining Experience Ltd [2022] EWHC 1379 (IPEC) at [175].

[17] Ibid at [194].

[18] Ibid at [50].

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