335

Whither the shadow>:

The copyright protection of concepts,
characters and titles
GPMcLay**

Copyright has traditionally been said to protect expression rather than ideas. This
article examines the appropriateness of this distinction in the entertainment industry in
which plots, characters and formats have considerable value. In particular the author
contrasts two recent New Zealand cases, Wilson which allowed the protection plots
contained in summaries, and Green which refused protection for the format of a popular
talent show. The author criticises the approach of the Privy Council in Green, arguing
that the ideaslexpression distinction is oversimplistic in a world that gives great value to
ideas. He argues that many ideas are sufficiently well developed to deserve protection.

This article was awarded the 1990 Loman-Friedlander award by the New Zealand
Institute of Patent Attornies.

I INTRODUCTION

Our revels now are ended; these our actors,

As I foretold you, were all spirits, and
are melted into air, into thin air...
- The Tempest, IV i

Prospero, unlike his own creator, produced his visions solely for enlightenment He
accepted that his characters and their stories would fade away. His creator did not want
his characters, stories and ideas to fade away. Nor do today's creators. They are their
livelihood.2

1 Between the idea/and the reality/between the motion/and the act/Falls the shadow
TSEliot 'The Hoolw Men” Selected Poems ( Faber and Faber, London, 1982) 77, 80.
* This article was originally prepared as part of the LLB(Hons) programme. The author
acknowledges gratefullythe assistance of Mr C F Finlayson, counsel for both Mrs
Wilson and Mr Green. Mr Finlayson let the author have a considerable amount of
material on Green including the arguments presented by himself and Mr Laddie QC on
behalf of Green as well as the arguments presented by Mr Baragwanath QC on behalf
of the BCNZ. The author used this material as a guide to his research and it no doubt
influenced his opinions. He would also like to thank Mr Crotty of Chapman Tripp
Sheffield Young, for seeing him and giving the other side of Wilson and Mr J Hodder,
Barrister. Any mistakes or omissions are of course the authors alone.
2 See B W F Brown "Concepts - How to Protect Them" Paper presented at the LES ANZ
Conference 22 March 1990. Mr Brown's article contains very valuable analysis of
336 (1991) 21 VUWLR

Entertainment along with the computer software industry is bedeviled by the

problem of protecting ideas.*3 There are markets for plots and concepts.4 5Television
6
series are developed around an original format which sets down the overriding ideas,
locations and characters. Formats make game shows like Sale of the Century or Blind
Date?

Ideas, characters, names and plots can be protected through a variety of devices - the
tort of passing of, actions for breach of confidence and the developing statutory tort of
unfair trade practice can all be used. This article examines the extent to which copyright
should protect ideas that fall through the gaps and uncertainties of the other actions. It
will first look at the difficulties associated with protecting ideas, plots and themes and
will then look at examples where judges have attempted to get around the obstacles in
the way of granting protection. An examination of the Privy Council decision in Green
v The Broadcasting Corporation of New Zealand? wil, however, show that the
conservative view not only of copyright but of the scope of intellectual property is
beginning to strike back and has caused grave problems for those whose business is the
creation of ideas.

II THE IDEA-EXPRESSION DICHOTOMY7 8 9

New Zealand copyright law is codified. Broad protection is given to original

"literary", "dramatic", "musical" and "artistic" works? They cannot be reproduced in
any material form? Infringement of a copyright work is by substantial
copying.Infringement includes situations where the defendants copied "many of the the
things which gave [the material] its special individuality".10 The quality of the
reproduction is more important than its quantity.11 "Original" does not require
originality but rather that work is the author's own.12 Original literary works have
included such things as betting slips13 and compilations of other people's work. The

many of the issues raised in this article and has clarified the writer's thoughts about
many of them.
3 John K Halvey "A Rose by Any Other Name : Computer Programmes and the Idea
Expression Distinction" (1985) 35 Copyright Symposium ASCP 1.
4 R Meadow 'Television Formats - The Search For Protection" (1970) 58 Cal L R 1169.
5 The Observer Newspaper 3 December 1989 p 63 "Opportunity takes a hard knock".
6 Green v Broadcasting Corporation of New Zealand [1989] 3 NZLR 18.
7 See RY Libott "Round the Prickly Pear : the Idea-Expression Fallacy in a Mass
Communications World" (1968) 16 Copyright Law Symposium ASCAP 30.
8 Section 7(1) Copyright Act 1962.
9 Above n 8 s7 (3)(a).
10 LB (Plastics) Ltd v Swish Products Ltd [1979] RPC 551, 622 per Lord Wilberforce.
11 Ladbroke (Football) Dd v William Hull (Football) Ltd [1964] 1 WLR 273, 276, per
Lord Reid see also the judgments of the Court of Appeal [1980] RPC 539, 545-6 per
Lord Denning MR.
12 University of London Press v University Tutorial Press Ltd [ 1916] 2 Ch 601, 608.
13 Above n 11.
 WHITHER THE SHADOW 337

aim is to protect authors', creators' or compilers' skill in their work.14 There is one
great exception to protection. Copyright is said to protect the expression of ideas, not
ideas themselves. A novel cannot be "substantially copied”, it is said, but its plot or
characters are fair game.

Judges almost too easily observe in a wide range of cases that there is no copyright
in "ideas", only in their actual expression. In the Wham-O15 Frisbee protection case,
for instance, the judges were at pains to emphasize that they were giving protection to
drawings of Frisbees rather than the conception behind them.16 The copyright
protection of computer software has been greatly complicated by the Courts both in
New Zealand17 and in Australia18 denying that they can protect the ideas behind software
and then going through the rigmarole of finding something else about a program that
they can protect. Yet computer programs are essentially ideas that solve a particular
problem in a structured way.

This dichotomy's origin is historical Its justification philosophical. Before 1911

the English Copyright Act was designed to stop the literal copying of writing or
material capable of being written down. So, in Tate v Fulbrook19 it was decided that
dramatic scenes could not be protected by copyright The 1911 Act extended copyright,
so that the totality of the dramatic form as well as its written substance could not be
pirated.20 Despite the legislative change, the old position is part of legal culture and is
reinforced by cases like Tate v Thomas21 which concluded that a synopsis could not be
copyright. The synopsis' contribution to the final play in Thomas was in fact minimal.

The philosophy behind the distinction is more important. Everybody involved in

creative enterprise draws on common ideas developed by others. Shakespeare invented
few characters and fewer plots. He drew on the ordinary to create the extraordinary. If
someone could use a work to protect an idea, that person would gain a monopoly on
what was previously a common idea and prevent its future development22 Even newly
created characters may become part of the common stock of ideas, as the Sherlock
Holmes industry shows.23 Unlimited copyrighting of ideas would monopolize our
culture and our future.

But the theory is stretched by a world that values sophisticated concepts. There is a
point where a concept ceases to be a general idea and becomes distinct. Copyright

14 MacMillan & Co v Cooper (1924) 93 UPC 113.

15 Wham-0 MFG v Lincoln Industries [1984] 1 NZLR 641.
16 Ibid, 652.
17 International Business Machines Corp v Computer Imports Lid [1989] 2 NZLR 79.
18 Apple Edge Pty Ltd v Apple Computer Inc (1986) 161 CLR 171.
19 [1908] 1 KB 821.
20 See Laddie, Prescott, Vitoria The Modern Law Of Copyright (London, Butterworths,
1980) 31-41, esp 32-33.
21 [1921] 1 Ch 503.
22 See LA Kurtz "The Independent Lives of Legal Lives of Fictional Characters" [1986]
Wise LR 429.
23 Above n 22, 424-5.
338 (1991) 21 VUWLR

would protect only the effort and skill which makes the concept unique. Lord
Hailsham, in a case about the design of interlocking cabinet doors, acknowledged the
distinction. He agreed that copyright did not protect ideas but went on:24

But, of course, as the late Professor Joad used to observe, it all depends what you
mean by "ideas”. What the respondents in fact copied was no mere idea. It was ... to
"follow the pattern” or "principle" ... with minor changes.

Copyright, then, often does protect delineated ideas. It often focuses on the idea
behind the expression. In considering whether a book or a system of interlocking
cabinets has been substantially copied, judges must be guided by not just literal
similarity but also by a more fundamental connection between the copied and the
original. In Plix Products Prichard J concluded that the system behind a complete
range of Kiwi-fruit trays was protected.25 In Ladbroke26 the concept behind a system of
betting slips listing football games was protected even though the infringer did not copy
the exact lists. The idea could be protected if it was expressed.

Copyright gives a kind of monopoly. It is said that because of this it is unfair if a

copyright is granted over ideas which are by their nature vague. Either too much would
be protected or others could not be sure what was protected. This criticism fails so long
as the ideas are sufficiently delineated to justify protection in the first place. Phrases
like "Ideas are as Free as Air" or "Copyright protects expression not ideas" risk losing
their essential truth and becoming cliches if we stop analysing the cases in front of us.

Ill ENTERTAINMENT AND COPYRIGHT

Many ideas are first communicated in confidence. A breach of confidence is

actionable. A creative person who approaches a television producer with an idea for a
programme will almost certainly get a remedy if the producer uses the idea without
paying for it. There may also be an express or implied contract under which a court
might be able to find damages if a producer takes a concept from a co-worker without
paying for it. It has become customary to stamp story-lines, plot summaries and
similar documents with "Copyright and Confidential".

The problems really begin when some one who has seen a story line in a film or a
format of a television programme, pirates it. There is no link. There is no obligation
of confidence. There can be no contract A "passing off action might work if the ideas
person can establish that the producer is playing off the creator's established reputation
in that area but if the programme has never been seen in that area or the creator has a

24 Above n 10, 629-630.

25 See Plix Products v Frank M Winstone (Merchants) Ltd (1984) 3 IPR 390 but note
that the Court of Appeal dismissed the appeal on other grounds [198S] 1 NZLR 376.
26 Above nil, Court of Appeal 546.
 WHITHER THE SHADOW 339

low profile passing off can not succeed.27 Only copyright may be left to remedy the
situation.

Cases which justify the non-protection of ideas tend to be cases about very broad
ideas. But there are cases where well developed ideas have been protected.28 An Oscar
Wilde short story was infringed by a ballet based on its plot, its plot being a unique
combination of otherwise common place ideas.29

In Zeccola30 the Victorian Court of Appeal found that an Italian film, "Great White",
which bore a ramarkable resemblance to the film JAWS breached the film’s copyright.
The court decided that the Italian film breached the copyright of the book on which the
film was based. It was necessary to consider the copyright in the book because the
Australian Copyright Act provides, like the New Zealand Act,31 that copyright in a film
is infringed by actual copying or unauthorized showing or distribution. The Court
accepted there could be no copyright in the general theme of a 'monster' movie but
concluded "Great White" developed this theme substantially as the original novel had. It
held that copyright subsisted in the:32

[combination of situations, events and scenes which constitute the particular

working out or expression of the idea or theme.

The Court rejected an argument that each particular incident of the film was
commonplace once the overriding "monster” story was established. It was enough that
the particular sequence of events had been taken from the novel. A plot should be
protected against those who take the developed plot rather than the general idea. In
similar cases but in other cases without a book or other base, it might be argued that
the offending movie breached the copyright in the film’s script or plot outline.

In Plix Products Prichard J examined the traditional justification for denying

protection to ideas. The first stage of a creative enterprise, the selection of a general
idea or plot, "boy meets girl", and the form of presentation, such as a poem, cannot and
should not be protected. There are thousands of possible love poems -the person
arriving first should not claim the whole territory. But the second stage of creation, the
artist's or writer's or thinker's filling in of the general concept, should be protected. As
the concept is filled in, the work becomes intimately the writer's own, having now
created something unique, something valuable.33

27 This is essentially what happened in Green. Mr Green was denied a passing off
remedy because he had an insufficient reputation in New Zealand to say that the BCNZ
were playing off his reputation, see below n 55, 493-494.
28 Above n 20, 39-41.
29 Holland v Vivian Van Dan Productions Ltd (1936-45) MCC 69.
30 Zeccola v Universal City Studios (1983) 46 ALR 189.
31 Section 14(5).
32 Above n 30, 192.
33 Above n 25, 418-419.
340 (1991) 21 VUWLR

The American Courts have long accepted that there are ideas and ideas. Their
starting point is Hand J's "abstraction" test in Nichols.34 35
He acknowledged that there
are various layers of abstraction in all works. As a work is abstracted out, and the idea
becomes more general, a point arrives where it is not protected. Some ideas, are
however, sufficiently distinctive to be protected. The "boy meets girl" theme may not
be copyright but a particular, well developed version may be. Concepts like “patterns”
and “concreteness” are discussed in judgments. As patterns become more developed and
more concrete or filled out the more likely they are to be protected. Mere evidence of
plot similarity is not enough, as the intrinsic concept may be different even if there are
factual similarities.33

But the American position is far from satisfactory. Some argue that the Nichols
test places too great an emphasis on the copyrightability of a plot, and too little on the
actual copying. Copying is what copyright is about, while there is an exception for
mere ideas.36 Others argue that some American cases focus too much on punishing
pirates for copying than considering whether a particular idea is sufficiently developed to
be copied. Care is needed also to prevent too much being protected.37

It is submitted that courts should move towards a test based on the programme or
films being "substantially similar beyond the level of general ideas or themes". If a
programme can properly be said to have copied another, then it must have taken
something more than a merely general idea.

IV THE PROTECTION OF CHARACTERS

There are few English cases on protection of characters outside their protection as
part of their stories.38 What cases there are are not favourable; they relegate characters
to mere ideas.39 But they involved loose general concepts of characters, not distinctive
and developed characters like Sherlock Holmes.

In the United States there has been a lot of litigation over characters outside the
original storyline, Conan the Barbarian,40 Tarzan, ET41 and Micky Mouse42 have all

34 Nichols v Universal Pictures Corporation 45 F 2d 119 (1930) per Learned Hand J.

35 Litchfield v Spielberg 730 F 2d 1352 (1983).
36 Above n 22, 463-466.
37 Above n 22, 458. The prime examples cited are the Tarzan cases which list Tarzan's
attributes without saying why they are unique see Burroughs v MGM (1981) 519 F
Supp 388, 391 per Werker J. Protection was granted to the concept of Tarzan on the
basis of the following 'Tarzan is the Apeman. He is an individual closely in tune
with his environment, able to communicate with animals yet able to experience
human emotions." Why any of these or even their combination made Tarzan a unique
concept worthy of protection issimply not explained.
38 AJ Williamson "Copyright in Literary and Dramatic Plots and Characters” (1983-4)
14 Melb U LR 300.
39 See for instance Kelly v Cinema Houses [1932] MCC 362 and Bolton v British
International Pictures [1936] MCC 20.
40 Conan Productions Inc v Mattel 712 F Supp 353 (1984).
 WHITHER THE SHADOW 341

featured. In one circuit, the Sam Spade** test protects independent characters only if
they "[constitute] the story being told". This makes protection unlikely, because few
characters so dominate the show. In other circuits however courts have applied the
Nichols test to characters, especially cartoon characters. Cartoon characters are visually
defined and therefore less likely to be considered abstractions than mere literary
characters. In Marty Krpffir41
44 the
42 makers
43 of H&R Pufenstuf successfully upheld a claim
that McDonalds had copied the style and feel of their programme in their "McDonalds'
land" commercials, which used puppets and scenery which resembled those on Pufenstuf
to create an overall impression of their hamburger restaurants. The Court adopted a two
stage test, an extrinsic test of whether there had been copying, whether the two
advertisements resembled each other enough to be said to be copied, and an intrinsic test
of whether the copying was improper in the sense that more than just the general ideas
had been reproduced. The Court held that the overall effect of the characters' appearance
was more important than the somewhat marginal differences between the characters.

V THE KIDS FROM OWL AND THE MEN FROM THE BCNZ

Wilson45 is a high-water mark of protection for ideas. In 1979 Mrs Wilson

conceived an outline for a television programme to be called "The Kiwi Kids". The
programme was to chronicle the adventures of a boy in a wheel chair and a girl on a
crutch doing battle together against evil. In March 1980, she began unsuccessful
negotiations with the Broadcasting Corporation of New Zealand (BCNZ). She produced
a longer confidential feasibility study of about 20 pages of quite detailed story-lines.
Mrs Wilson heard nothing about her concept until she read about a similar programme
"The Kids From Owl" in her TV Guide. The BCNZ had developed their series from the
feasibility study. Jeffries J upheld claims of breach of copyright and confidentiality.

His Honour read Mrs Wilson's outline and looked at the corporation's programme.
The BCNZ programme however did differ from the outline. It had a different title, the
BCNZ had worked out many of the details although Mrs Wilson had provided plot
outlines. His Honour was certain that a distinctive idea had been copied. He saw
something more than a base similarity. The BCNZ tried to argued that at most their
producers had only taken an idea. Having considered the "mere idea argument", Jeffries J
held that there existed matieral in which the copyright would exist:46

The Court has little doubt that the quintessential part of the feasibility study relating
directly to "Kiwi Kids" is a dramatic work within [section 7]. The dramatic work is in
a material form ... it was not in the realm of unprotected ideas.

41 See above n 35, 429.

42 Walt Disney Productions v Air Pirates 581 F2d 751(1978).
43 Warner Brothers v Columbia Broadcasting System 216 F 2d 945 (1954).
44 Sid & Marty Krofft Television v McDonalds Corp 562 F 2d 1157 (1977).
45 Wilson v Broadcasting Corporation of New Zealand [1990] 2 NZLR 565 per Jeffries J.
46 Above n 45, 572.
342 (1991) 21 VUWLR

He did not, however, indicate the formula by which he concluded that "The Kiwi
Kids" was more than a bare idea. Nor did his Honour resolve the problem of a
feasibility study that left details to be filled in. His Honour was by implication
protecting the idea behind the outline since the outline at best contained only ideas, and
the BCNZ had changed some of what details there were. Here, the copying was
obvious. Jeffries J's judgment is a big leap forward, but judges must be careful about
leaping too far. If the traditional approach lacks analysis so might a system in which
judges in the very earnest attempt to punish copiers simply begins to protect too much.
There may be times when, although there is an obvious similarity, the central idea may
have been copied and yet the copiers' contribution is sufficiently great that they might
be said to have created something essentially new.

VI THE PROTECTION OF TITLES

Titles suffer the same problems. They are also relegated into the realm of mere
ideas. Even American Courts have traditionally rejected the protection of titles,47 though
the copyrighting of character names appears to be taking root, trademarks have greatly
expanded to meet the need.48

Titles are usually too trite or meaningless to justify copyrights.49 50

The
51leading case
of triteness involved the song "The Man that Broke the Bank at Monte Carlo"30 which
was later used as the title of a film with a different story. The combination of the
phrase "The Man that broke the bank" with Monte Carlo was simply too common to
gain protection even if the film producers had got the idea from the song. The decision
was perhaps harsh, the songwriter had created an image in the popular mind which the
film exploited, but it was only an "idea" or notion of great generality. In Green, the
title "Opportunity Knocks" could not be protected as it was simply too trite, nor could
any of die stock phrases Hughie Green used since they were by themselves simply too
commonplace, the originality coming in the way they were used. Some titles which are
truly original combinations and tied to definite ideas might be protected. Brevity may
continue to be a problem.

Invented titles and names are not trite. However in the leading casesi the name
Exxon was denied copyright because by itself it was meaningless. It was not a literary
work since it was not designed give pleasure or information. This would affect most
titles or names if they are viewed without their context. Graham J accepted that a title
might be protected if it had "qualities and characteristics" in itself. He considered, for
example, that "Jabberwocky" was sufficiently developed by its poem to justify
protection. Some titles and names might justify protection if it could be shown that

47 J M Burcart "No Title to Titles" (1980) 32 Copyright Law Symposium ASCAP 75.
48 Above n 22, 458-461.
49 Above n 38.
50 Francis Day and Hunter v Twentieth Century Fox [1940] AC 112.
51 Exxon Corp v Exxon Insurance Consultants International Ltd [1982] 1 Ch 119.
 WHITHER THE SHADOW 343

they were defined by a well developed format or characterization. Association between a

character’s name and characteristics would have to be strong.32

VII AN OPPORTUNITY TOO FAR?

A The Case

Green is the most recent (and perhaps only) Commonwealth case determining
whether the format behind a television show could be protected. In America, apart from
one much criticized decision, courts have generally declined to grant copyright
protection to mere formats.5253 Hughie Green produced Opportunity Knocks, a talent
quest, from 1956 to 1978, or British television. Each show had the same format. Each
week new "artists" and last week's winner were presented. Each show had a script which
determined when each performer was to appear and how each segment of the show was
to be run. The show followed the same format, Hughie Green always used certain key
phrases, "For [Miss Jones] opportunity knocks", refering to the television audience
"This is your show and I do mean you", he interviewed sponsors, contestants was
judged by applause measured by a "clapometer", but home viewers determined the
ultimate result. The format made Opportunity Knocks and Hughie Green sold that
format. It was his unique creation.

In 1978 South Pacific Television, which was ultimately under the control of the
BCNZ, "created" their own "Opportunity Knocks". They did not even tell Green. The
Courts accepted that BCNZ had lifted his idea. Copyright could, it was argued, exist
either in the format described in the programme's script or in the format recorded in the
actual programmes.

At first instance Ongley J54 doubted the general format approach, but in his
judgment the claim for copyright ultimately failed because there was doubt whether
scripts existed. The scripts were not presented in the High Court but Green mentioned
them casually in his evidence. In the Court of Appeal55 Somers and Casey JJ accepted
that there had been scripts but denied copyright.

Somers J opined that as the scripts themselves were incapable of being performed
they could not be dramatic works,56 nor could they be literary works since they
expressed only ideas about how to run a talent show. Taken item by item the various
elements would not be able to be copyrighted nor could their combination.57

52 Above n 38.
53 Above n 4, 1177-1179, M Nimmer and D Nimmer Nimmer on Copyright (1983,
Times Mirror Books) at 16.62.
54 Green v Broadcasting Corporation of New Zealand (1983) unreported. High Court, 22
December 1983 A662/79, Wellington.
55 [1988] 2 NZLR 490.
56 Above n 55, 497.
57 Above n 55,497.
344 (1991) 21 VUWLR

Casey J decided that Green had failed to present sufficient evidence about the content
of the scripts and therefore he could point only to general similarities which could not
by themselves justify copyright protection. After considering whether the format
described in the scripts was protected, he concluded that while Green's ideas had been
taken they were merely ideas. The freedom to create and market ideas should in his
Honour's opinion remain an important consideration; reform should be left to the
legislature.58

Gallen J dissented. He would have recognized protection on the basis that the BCNZ
had copied substantive features of Green's programme which made it distinctive from a
mere talent quest. He could not square Ongley J's finding that the BCNZ's programme
contained distinctive features taken from Green's programme and his decision not to find
copyright. If the features were substantive enough to be distinctive then, in Gallen J's
view, they had to be substantive enough to be protected. He found the copyright not in
the scripts but in the format itself. Gallen J considered the question was whether a
"sufficient structure" existed within the work itself to justify protection.59

B Is Writing Necessary?

The traditional view is that even for musical and dramatic works, there has to be
some writing or notation before there can be a copyright.60 Copyright started off as a
means to protect literary works. Dramatic works and music were added by accretion.

In Green the Court of Appeal, reversing Ongley J's conclusion, accepted that writing
was not necessary for dramatic works to be copyrighted.61 In particular section 3(8)
provides that copyright is protected from the time that a work is reduced to writing "or
some other material form". The judges accepted that "material form" refers to musical
and dramatic works. Both Somers and Casey JJ appeared to think that material form
could be achieved through making the performance permanent by taping it. Casey J
although denying copyright made the point well:62

It is the performance which attracts copyright as a dramatic work and there is no claim
that anyone of Mr Green's ever changing shows was copied.

He concluded that there was no reason to limit the meaning of section 3(8).63 This
approach is right in policy. It reflects the reality of the performing arts. Protection of
something that lives off the page should not depend on it first being on a page. It also

58 Above n 55, 504-505.

59 Above n 55, 512.
60 See E P Skone James, J F Mummery et al Copinger and Skone James on Copyright
(London, Sweet & Maxwell, 1980) 63, para 164.
61 Above n 55, 497.
62 Above n 55, 502.
63 Above n 55, 503.
 WHITHER THE SHADOW 345

accords with the Bone Convention Revision of 1948 which aims to protect material
"fixed in writing or otherwise".64 65

Gallen J, having seen the importance of format read, "material form" as requiring
"some enduring and accessible form". He also considered that each script, in fixing the
structure of the programme, was also a rendering into "material form”. But, as Gallen J
appeared to acknowledge, this reasoning ought to apply to situations where there is no
script but merely the video taping of television game shows. Taping records just as
well, if not more appropriately, the format of the show.63

But this approach itself does not go far enough. The extension of Gallen J's format
theory is that performance is the means by which a format is expressed rather than the
object of protection itself. But if that is so why should protection of format necessarily
depend upon the rendering of performances in a permanent form? The performance itself
might be said to be the "material" form of the concept in a reality which can be
observed by others, the external manifestation of what has up till then been someone's
thoughts. A travelling road show comedy play might be played hundreds of times
without being written down. Similarly Jazz performances are often improvised. Music
and drama are ephemeral things, which is part of their charm. If the heart of copyright
is the unauthorized copying of another's work why should the ephemeral not be
protected?

But Casey and Somers JJ's approach is clearly the more orthodox one. It gains
support from the interpretation of "material from" in a number of computer software
cases in which it was denied that an "object code” (the form in which a programme is
understood by the computer) could be in material form since it was kept in ever
changing electronic flux within the computer.66 If there is a permanent recording of
something it might be easier to establish whether it had been copied. But surely
evidential problems are bridges that can be crossed when they have to be. If someone
can overcome the obvious difficulties in establishing that a work that existed
momentarily has been infringed why should they not succeed? Another problem with
this approach is that it erodes the exact copying or rebroadcast requirement for
infringement of copyright in film or television programmes. On the other hand, it
recognizes that "dramatic works" are given wide protection by the Act, and so it makes
that protection more real.

C A Missed Opportunity?

The Privy Council tersely dismissed Green's appeal. The evidence presented about
the content of the scripts was "exiguous in the extreme".67 His programmes lacked
sufficient certainty. More importantly Lord Bridge implied that a format show of this

64 Under Article 2(1). See Brown and Grant The Law of Intellectual Property in New
Zealand (Butterworths, Wellington, 1989) 231-2.
65 Above n 55, 512.
66 Above n 18, 410-411.
67 Above n 6, 19.
346 (1991) 21 VUWLR

kind would struggle for protection. He remarked on the difficulty of describing the
nature of the thing Green was claiming protection in. Somewhat remarkably, in light
of the language used in the subsequent newspaper stories about Green, he disputed that
what Green was asking to be protected was even a format:68 69

It is stretching the original use of the word "format" a long way to use it
metaphorically to describe the features of a television series such as a talent, quiz or
game show which is presented in a particular way, with repeated but unconnected use
of set phrases and the aid of particular accessories.

A presentation format lacks sufficient unity to be performed and therefore cannot be

described as a dramatic work. Gallen J's position was struck down on this basis rather
than because of a lack of writing.

No one should own a particular type of show. But a copyright here would not have
granted Green the ownership of talent shows or even talent shows similar to his. What
Green wanted was protection of his labour and skill in developing a way of presenting
such a show that was so successful that others copied it The Privy Council and the
majority in the Court of Appeal failed to take into account Lord Reid's observations in
Labroke69 that the combination of unoriginal material can itself be copyright. Indeed
Lord Reid established that it was wrong to break something down into its constituent
parts merely to show that by themselves the individual parts could not be copyrighted.

The Privy Council could have reached the same result with more satisfactory
reasoning. Green was on its facts a very difficult case in which to claim protection. The
format was slight, the evidence presented was not conclusive. Indeed in a recent debate
in the House of Lords on an amendment aimed to protect programme formats several of
their Lordships considered that the copyright pronouncements were strictly obiter
because the case was really about the inadequate evidence presented in the High Court.70
But surely the better approach would have been to consider whether Green's format was
sufficiently developed to deserve protection. Saying that game shows have an element
of uncertainty ignores that game shows are all about uncertainty. Format shows like
Mastermind or This is Your Life may have a better chance of protection because they
are perhaps more defined but they could also be dissected to appear absurd, just as the
Privy Council dissected "Opportunity Knocks". It would appear the more writing there
is, the greater the chance of protection. But then formats live on television screens, not
on printed pages.

D A Return to Basics or Forgetting the Future ?

Green should not have been a surprise. It is the inheritor of a long tradition, which
owes more to outmoded logic than present experience. The idea-expression distinction

68 Above n 6, 20.
69 Above n 11, 277.
70 See Lord Lloyd of Kigerran in Parliamentary Debates (Lords) (UK) 26 July 1990,
1730.
 WHITHER THE SHADOW 347

has become deeply enshrined in the ways judges and lawyers approach copyright
problems. To ask them to decide differently is to ask them to change the way they
think about copyright

But Green is also the offspring of a much more conservative approach to judging
which has seen the English House of Lords look sideways at the far reaching
developments of the 1970s and early 1980s. The most noticeable example of such
judicial retreat has been the steady destruction of Lord Wilberforce's liability expanding
Anns11 two stage test for a duty of care in negligence culminating in its recent reversal
in Murphy12

A similar trend has occurred in intellectual property law especially in the area of
industrial design. Brilliant counsel, doing what lawyers have always done when faced
with a difficult case, pushed the words of the Copyright, the Trademarks and the
Industrial Design Acts to their limit to fit their clients' cases within the recognized
protection schemes. Industrial objects like cabinets were being copied, for various
reasons they could not or were not patented, so counsel argued that through a doctrine of
indirect copying these cabinet pirates breached the copyright in the original design.7173 72
Copyright, originally intended to protect authors or painters, was protecting design
engineers. Limits had to be found and over the past rive years the House of Lords has
been leading a fight back to dispel the myth that:74

for every mischance in an accident prone world someone somewhere must be liable
for damages.

The spare parts exception was established to prevent manufacturers exploiting

intellectual property law to create monopolies in the spare parts markets for the goods.75
The makers of audio tape reproduction systems were not liable in conspiracy when
others used their equipment to breach the plaintiffs music copyright.76 A Coke bottle
remained (in a judgment whose terseness and brevity is threatened only by Green) a
functional object and not a registrable trade mark.77 Lego block designs condemned as
"uninspired and uninspiring engineering drawings" were denied a copyright which would
have effectively renewed lego's expiring patent.78 Now Green has decided much to
everyone's surprise that formats in game shows are not protected. Lord Bridge's
dismissal of the format as a "repeated but unconnected use of set phrases... with the aid
of particular accessories" presaged the result

71 Anns v Merton London Borough [1978]AC 728.

72 Murphy v Brentwood District Council [1990] 2 WLR 414.
73 Above nil.
74 CBS Songs v Amstrad Consumer Electronics pic [1988] 2 All E R 484, 497.
75 British Leyland Motor Corp v Armstrong Patents Ltd [1986] RPC 279.
76 Above n 74.
77 In Re Coca-Cola Co's Application [1986] 2 All E R 274.
78 Interlego AG v Tyco Industries Inc [1988] 3 All E R 949, 966.
348 (1991) 21 VUWLR

But as much as the claw back was inevitable and perhaps necessary, it is doubtful
that much was served by the Privy Council's brevity and terseness. It is just as much a
myth to say that all judicial extension is necessarily bad as it to say that it is
necessarily good. Development should be principled. Progress restrained but not
stopped. There are problems in intellectual property law. But an indication in Green
that protection might have been granted in a clearer case would have answered a great
need and recognized simple commercial reality.

E AN ALTERNATIVE APPROACH?

In contrast, the Australian courts have moved to protect plots, themes, character
names and even ideas. In the Crocodile Dundee cases they have done it through
extending the tort of passing off to include situations where merchandising rights were
being misused or simply stolen. Traditionally passing off relied on a misrepresentation
in the minds of the audience as to origins of goods or services.79 80 Few, if any of the
audience of a TV advertisement or shoppers in a country store stop to consider whether
Paul Hogan had given his permission for "Dundee" to be used. But the Australian
courts expanded the tort to protect valuable merchandising rights in situations where
"Dundee" was being fixed to everything in sight.*0 The Federal Court of Appeal has
stretched protection further to include an advertisement based on a spoof of a scene from
the movie.81 But is passing off entirely appropriate? The advertisement was a spoof on
a scene which had entered Australian culture. One wonders whether a copyright action,
turning more on the impropriety of taking, might be a more appropriate safety valve.

The Dundee cases also raised the prospect that there might be a successful claim
under section 52(1) of the Trade Practices Act 1974 (Aust) which like s 9 of the Fair
Trading Act 1986 (NZ) prohibits misleading conduct.82 These sections have been
creatively received by both judges and lawyers keen to use their wide phrasing to do
what could not be done in the past. Foster J83 used s 52 to resolve a dispute in which
Yardley of London accused its advertising agency of stealing its "footballer of the year"
competition designed to promote its deodorant In promoting itself as the owner of the
idea, the company was guilty of an actionable misrepresentation. In effect, this protects
the pure idea. Yet one wonders whether the legislation is really the right vehicle.
Foster J's decision was predicated on there being something to own, yet the law
recognizes at the moment no such right to ownership of mere ideas. The advocates of
this approach may be straining notions of passing off or unfair competition beyond
their natural extent Broad statutes need a great deal of filling in.

79 See Wombles Ltd v Wombles Skips Ltd [1977] PRC 99.

80 See Hogan v Koola Dundee Pty Ltd (1989) 83 ALR 187.
81 Pacific Dunlop Ltd v Hogan [1989] 87 ALR 14.
82 Section 9 reads "No person shall, in trade, engage in conduct that is misleading or
deceptive or is likely to mislead or deceive".
83 Yardley of London (Australia) Pty Ltd v Chapman & Lester The Sales Promotion
Agency Pty Dd (1990) ATPR 40,989, 50,854.
 WHITHER THE SHADOW 349

VIII CONCLUSION

The sweeping tone in Green has outraged the entertainment community in England.
There are calls for legislation. Indeed a move to insert an amendment in the British
Broadcasting Bill to protect formats was withdrawn after gaining promises that there
would be further consultation. Certainly there is need to change, not just in legislation
but in the way lawyers and judges attack these kinds of problems. There are real
difficulties in defining what makes format programmes unique. Identifying what should
be protected may not be easy but it is better than hiding behind worn-out logic.
Practically, however, the economic power of the large television companies may
prevent excessive pirating. Ultimately, the thought of an eleven year legal battle may
be encouragement enough to buy rights than to pirate them.84 The protection of
formats is perhaps one idea which has not succeeded in Privy Council but it may in the
future.

84 Above n 5.
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