Square Peg in the Round Hole Problem:

How Using the Copyright "Dramatic Works" Hammer

Inflicts Unnecessary Carnage to TV Formats.

Nekoal Phoenix1

I. Introduction

"A format sale is a product sale. The product ... is a recipe for re-producing a successful television programme, in another territory, as a local programme. The recipe comes with all the necessary ingredients and is offered as a product along with a consultant who can be thought of as an expert chef."2

The TV format industry is big business. According to the 2009

Format Recognition and Protection Association [FRAPA] report,

original formats adapted for local television markets internationally

almost doubled (45%) from 2002-2004 to 2006-2008.3 In monetary

terms this equates to a business value of $13.5 billion USD or $9.3

billion Euro.4 The two leading exporters of TV formats are the U.K. in

the first position with the U.S. in second position.5 TV formats lends

themselves to be highly exportable with little to no investment after

the initial expenditure of capital and labor to create the product.

This is the appeal for the buyer and the seller because TV

viewers can be particularly finicky when it comes to what they will

spend their time watching. Profitability is reached faster and easier

with a proven TV format. This is especially important in the highly

1 J.D. candidate, Hamline University School of Law, 2010. B.A., Organizational Behavior, College of Saint Scholastica, summa cum laude, 2005. The author wishes to thank Professor Edward Humphreys for providing helpful guidance through his TV Format seminar and paper International Copyright and the TV Format Industry, IUR - Information, IUR - Institutet For Utlandsk Ratt, Nummer 8 - 2007. Also, a thanks to Andrew Hodny, Hamline Law School cohort, for providing background on U.S. copyright protection.2 ALBERT MORAN, UNDERSTANDING THE GLOBAL TV FORMAT 19 (Intellect Books) (2006) (quoting David Bodycombe).3 Gun Akyuz, Formats Business Worth $13.5bn, C21MEDIA.NET, Oct. 7, 2009, http://www.c21media.net/common/print_detail.asp?article=52341# (last visited Oct. 31, 2009).4 Id.5 Id.

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competitive television industry that has seen cable, satellite, and

internet slowly take market shares from established "free to air"

providers.6 The TV format serves as a kind of insurance policy against

a heavy front end investment in a TV show that fails.7 Distilled down,

the product that is being sold is "success in a can" - a film can that is.

A TV format is generally "a style or manner of arrangement or

presentation, a mode of procedure".8 Depending on what product the

TV format takes - it can include a number of components.9 Some of

these components are the "paper format, format Bible, production

consultancy services, blueprint and set specifications, computer

software and graphics, titles, sound, scripts, dossier of demographic

and ratings data, scheduling slots and related information, off-air

videotapes of programmes, and insertable footage".10 As components,

these are rather generic to the production of a TV show, however it is

not the components in themselves that make the sale - it is the

knowledge that underlies the component's "arrangement or

presentation".11 The downside of producing a successful TV format is

the attraction it has for copycat TV formats.

It is this attraction that has TV formats and intellectual property

rights at a crossroads. Because of the dramatic increase in the sale of

TV formats, emerging markets will become an even larger battle

ground as big business seeks to exploit its capital investment. In

order for big business to exploit its TV format product, it needs to

protect its investment with some type of intellectual property rights.

Usually, "dramatic works" find protection under the traditional

auspices of copyright, however TV formats are generally an

"arrangement or presentation" of generic components with a script

6 MORAN, supra note 2, at 10-11.7 Id. at 11.8 Id. at 19.9 Id. at 23.10 Id. at 23-25.11 Id. at 26-27.

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only for certain TV formats. The result is a ticket on the blue line of

the idea/expression dichotomy within copyright.

This paper argues that, in order for TV formats to find solid

ground within copyright protection, TV formats should be re-

categorized as compilations or databases. A classification of a TV

format being a compilation or database is more in line with the

business treatment of the TV format. This paper also argues that

there exists a psychological barrier to defining a TV format as a

"dramatic work".

Part II briefly introduces international and national copyright

law. Part III examines both U.S. and E.U. copyright protection for

compilations and databases. Part IV proposes that TV formats are

more akin to a compilation or database than "dramatic works".

Copyright infringement is not within the scope of this paper. For the

purposes of this paper, the unscripted TV format is the focus as it is

missing the key element that would qualify it for copyright protection

as a "dramatic work".

II. Copyright12 - "Dramatic Works"

Copyright protects expressions not ideas. As a result, the

idea/expression dichotomy is found throughout international and

national copyright law. Under TRIPS, copyright protection excludes

"ideas, procedures, [or] methods of operation...".13 Even though, the

Berne Convention does not specifically remove ideas from its

protection14, its use of the word "expression" implies otherwise. The

TRIPS agreement makes the Berne convention compulsory for

members of the World Trade Organization15, therefore casting a broad

12 I will not be diving into the elements of copyright other than to say there is an "originality" requirement and depending on the national law there may be a "fixation" requirement.13 Agreement on Trade Related Aspects of Intellectual Property Rights 1994 (TRIPS Agreement) Part II, § 1, Art. 9 (2). 14 Berne Convention for the Protection of Literary and Artistic Works, Art. 2 (1) (1979).15 TRIPS, supra note 13, at Part I, Art. 1 (3).

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net when excluding ideas from copyright protection. Additionally,

national statutory and/or case law must be taken into account as it

has the potential to further restrict copyright protection.

One example of a restrictive statutory law is the U.S. Copyright

Act of 1976, which adds "process, system, concept, principle, or

discovery ..." to the TRIPS copyright exclusions.16 The purpose is to

prevent "ideas" in whatever form they may take from being protected

under copyright. The case law regarding TV formats is nothing if not

unsettled as it grapples with where a TV format belongs - if at all - as

an intellectual property right. The central issue for courts is whether

a TV format sans a scripted component qualifies as a "dramatic work"

and therefore an expression rather than an idea.

Over 20 years ago, the Privy Council of the U.K. tried to answer

the issue regarding a TV game show. In Green v. Broadcasting Corp.

of New Zealand, the court commented on the difficulty in finding an

"original dramatic work" in the isolated components of a television

series that did not change from week to week.17 Furthermore, the

court quoted Somers J. who stated that the script did nothing "more

than express a general idea or concept ...".18 The court even used the

term "dramatic format" to describe what Green was seeking to protect

under copyright.19 However, the court could not seem to reconcile the

concepts of a "dramatic format" and "dramatic work" being equal

under copyright because to the court, the "dramatic format"

facilitated the performance of the "dramatic work".20 Therefore, the

"dramatic format ... lack[ed] that essential characteristic."21 The court

held that a "dramatic work must have sufficient unity to be capable of

performance ..." and dismissed the appeal.22

16 17 U.S.C. § 102 (b) (2008).17 Green v. Broadcasting Corp. of New Zealand, [1989] R.P.C. 700, 702 (Privy Council).18 Id.19 Id.20 Id.21 Id.22 Id.

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An opposite result can be found in the U.S. case CBS

Broadcasting Inc. v. ABC, Inc.23 The problem with CBS is that it is an

unreported case, which subsequently makes it only useable in rare

circumstances - not precedential. CBS does however move the

discussion of accepting TV formats for copyright protection closer to

realization. As a seat of power within the entertainment industry,

New York district court case law is more developed than other

districts. For this reason, the court cited its own precedent for what it

excludes under copyright: "facts, generalized themes, ideas,

subthemes, stock themes, general imagery, literary formulas, actual

true or historical events, episode or scenes a faire, and scenes that

necessarily result from the choice of a setting situation."24

Despite these exclusions, the court also recognized that

copyright could be found in a party's "selection, organization, and

presentation" of generic ideas.25 To support this, the court also cited

the U.S. Supreme Court case Feist Publications Inc. v. Rural

Telephone Service Co.26 and the "selection or arrangement"

requirement for compilations of facts as analogous.27 The court held

in CBS that the reality TV show "Survivor" was copyrighted material

and the "Celebrity" reality TV show was not an infringement of its

copyright, as such the preliminary injunction was denied.28

Even though these cases are a little more than thirteen years

apart, the primary issue still remains - Where do TV formats belong

within copyright and the idea/expression dichotomy? As the top two

exporters of TV formats, the U.K. and U.S. will continue to confront

this issue with varying degrees of success because the big business

production model that is TV formats has changed the appearance of

23 CBS Broadcasting Inc. v. ABC Inc., 2003 U.S. District Lexis 20258 (S.D.N.Y).24 Id. at 7.25 Id. at 8-9.26 Feist v. Rural, 499 U.S. 340 (1991). 27 CBS, at 7.28 Id. at 14.

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"dramatic works" into a metal press spitting out license plates.

Instead of trying to find similarities between a reality TV show such as

Survivor and Shakespeare, the better compare/contrast would be

phone books and/or football fixture lists - compilations and databases.

III. Compilation and Database Protection (Copyright and

Sui Generis Right)

Compilations and databases are two names for relatively the

same thing. The difference is one of jurisdiction. The U.S. provides

copyright protection for compilations under the Copyright Act of 1976

while the E.U. provides database protection under both copyright and

Sui Generis within its Database Directive. Generally, copyright

protection for compilations and databases are based on the author's

"originality" in selecting or arranging the underlying information. The

underlying information, often referred to as facts, material or data, is

not included in the copyright protection. Compilations and databases

get passed the idea/expression dichotomy by relying on the author's

expression of selecting or arranging the underlying information rather

than the content being ideas or facts. The Sui Generis right provides

database protection in cases where the author cannot meet the

"originality" requirement under copyright. The first law to be

examined is the U.S. followed by the E.U.

A. United States

The U.S. Copyright Act of 1976 [1976 act] requires the subject

matter to be 1) original and 2) fixed in a tangible medium.29 In

addition to the traditional categories that qualify for copyright

protection, the 1976 act also provides protection for compilations or

derivative works.30 A compilation is defined as a "work formed by the

collection and assembling of preexisting materials or of data that are

29 17 U.S.C. § 102 (a) (2008).30 Id. at § 103 (a).

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selected, coordinated, or arranged in such a way that the resulting

work as a whole constitutes an original work of authorship."31 The

1976 act specifically removes copyright protection for the "preexisting

material" that is used in the work, however there may be independent

protection for the "preexisting material" if it qualifies on its own

merits. 32 The leading case on what qualifies as a compilation

protectable under copyright law is Feist v. Rural Tel. Serv. Co.33

In Feist, the issue was whether there is copyright protection for

telephone white pages.34 Feist and Rural both published telephone

books.35 Feist needed Rural's white page data (names, towns, and

telephone numbers) in order to complete its larger area wide

telephone book.36 Rural denied Feist's request to license the

information so Feist copied the data from Rural's white pages.37 Rural

sued for copyright infringement.38 The U.S. Supreme Court held that

Feist did not infringe Rural's copyright because the data Feist used

was not covered within Rural's copyright as it was not "original".39

To qualify as "original" a compilation, the court explained,

requires "independent creation plus a modicum of creativity ...".40 The

court reasoned that compilations were most often nothing, but raw

data and therefore lacking an original written expression.41 And due

to the universal rule that no copyright exists in facts or ideas42, the

court looked to what mode of expression a compilation can take to

become copyrightable. The court found the answer in the 1976 act's

31 Id. at § 101.32 Id. at § 103 (b).33 Feist v. Rural, 499 U.S. 340, (1991).34 Id. at 1286.35 Id.36 Id.37 Id. at 1286-1287.38 Id.39 Id. at 1297.40 Id. at 1288.41 Id. at 1287.42 Id.

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compilation definition - "selection or arrangement of facts"43.

"Independent" means selecting or arranging the facts without copying

another's work - the result could be the same.44 "Modicum of

creativity" means a minimum level of creativity in the "selection or

arrangement" of the facts, which cannot be "mechanical", "routine" or

"inevitable" like a "time honored tradition" for it fails for

obviousness.45

B. European Union

The E.U. “Database” Directive 96/9/EC [DBD] defines a

database as a "collection of independent works, data or other

materials arranged in a systematic or methodical way and individually

accessible by electronic or other means."46 The protection afforded

databases is broad as the DBD covers "any form" a database may

take.47 Furthermore, the preamble lists "literary, artistic, musical or

other collections of works or collections of other material such as

texts, sound, images, numbers, facts, and data ... " as qualifying

subject matter.48 In Fixtures Marketing Ltd. v. Organismos

Prognostikon Agonon Podosfairou AE (OPAP), the European Court of

Justice discussed the database requirements of: 1) independent, 2)

systematically or methodically arranged, and 3) individually

accessible.49

43 Id. at 1289-1290.44 Id. at 1294.45 Id. at 1296-1297.46 Directive 96/9/EC, European Parliament and of the Council, Art. 1 (2) (Mar. 11, 1996). 47 Id. at Art. 1(1); Fixtures Marketing Ltd. v. Organismos Prognostikon Agonon Podosfairou EG (OPAP), C-444/02, para. 20. (2004).48 Directive 96/9/EC, Preamble (17).49 Fixtures v. OPAP, at para. 29-36.

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In Fixtures v. OPAP, the dispute was over the use of fixture lists

related to English and Scottish football league matches.50 Fixtures

created the fixture lists and licensed the lists to other companies.51

Instead of licensing, OPAP used the fixtures lists so Fixtures sued for

infringement of its Sui Generis right.52 As a threshold matter, the

court had to determine if the fixture lists qualified as a database.53

The court found "independent" to mean the underlying materials or

data is separable from each other without losing its value.54 As

related matters, the court found the "systematic or methodical"

arrangement to mean that the information was organized or classified

in such a manner as to allow the information to be "individually

accessible".55 For the court, this implies a fixed base where access is

achieved through a technical process like an electronic means.56 The

definition of a database does not require the underlying information

be a product of the author's own intellectual creation.57

Even though "intellectual creation" is not required for the

definition of what is a database58, it is required if a party is seeking

copyright protection of a database.59 The "intellectual creation" is

related to the "selection or arrangement" of the underlying

information.60 The "intellectual creation" has to be more than an

author's labor.61 As previously stated, the Sui Generis right is

available if the database is not capable of satisfying the "intellectual

creation" element for copyright. One example is using objective

50 Id. at para. 7-8.51 Id.52 Id. at para. 9.53 Id. at para. 10.54 Id. at para. 29.55 Id. at para. 30.56 Id.57 Id. at para. 25-26.58 Edward Humphreys, Intellectual Property Law Autumn Term 2009, L5 Lecture Outline – Protection of Databases, and of Designs, in the EU, Part I, § 3.59 Directive 96/9/EC, Art. 3 (1).60 Id.61 Edward Humphreys, Jonkoping International Business School, Intellectual Property Law, Lecture 5: EU Protection of Databases and Designs, slide 12.

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criteria in the "selection or arrangement" of the underlying

information in the database. As such, the Sui Generis right looks at

the investment that the "maker"62 expends in the database.63

Because the investment is a stand in for the "intellectual

creation" requirement under copyright, the investment has to be more

than a natural extension of what the maker does as a day to day

business. The maker must show "qualitatively and/or quantitatively a

substantial investment in either the obtaining, verification, or

presentation of the contents ..." of the database.64 In Fixtures v.

OPAP, the court defined "qualitatively" as those substantial

investments like "intellectual effort or energy" that is incapable of

being represented quantitatively.65 For that which is capable of being

reduced quantifiably goes under "quantitatively".66 Next, the court

defined "obtaining, verification, and presentation". For "obtaining",

the court looked at the "resources used to seek out existing

independent materials and collect them in a database ..."67 If a maker

of a database is also the creator of the underlying information, then

the resources used in the creation of the information cannot be

figured into the substantial investment analysis.68 For "verification",

the court assessed the resources used to ensure the "reliability of the

information contained in [the] database, to monitor the accuracy of

the materials collected when the database was created and during its

operation."69 For "presentation", the court included "resources used

for the purpose of giving the database its function of processing

information ..."70 In Fixtures v. OPAP, the court held the Fixtures lists

62 Directive 96/9/EC, Art. 7 (1).63 Id. at Preamble (40).64 Id. at Art. 7 (1). 65 Fixtures v. OPAP, at para. 44.66 Id. 67 Id. at para. 40.68 Id. at para. 40-41.69 Id. at para. 43.70 Id.

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to be databases, however there was no Sui Generis right because no

substantial investment was found in "obtaining, verification, or

presentation" of the database, as it was a natural function of Fixtures'

day to day business to create the fixtures lists.71

IV. Square Peg in the Round Hole

The saying "Square Peg in the Round Hole" denotes the obvious

lack of similarity in the subjects and the subsequent inefficiency in

trying to force a square peg into a round hole. The square peg/round

hole quandary is analogous to trying to fit TV formats under the

"dramatic works" category in copyright. TV formats are about big

business and proven successful formulas - ideas. Also, a TV format

presents a psychological barrier to calling it a "dramatic work"

because a TV format generally is missing a scripted component.

Finally, the solution is to find a square hole for the square peg, which

means protecting TV formats as either compilations or databases.

A. A Business of Ideas

The TV format is about big business combining generic

components or ideas into a successful TV formula. The business is not

concerned with the expression that these ideas take rather the

business is concerned with the construction of the formula. The

contribution that TV formats give to society in exchange for the

monopoly is in the "selection or arrangement" of these generic ideas

commonplace within the television industry. It is where the so called

"originality" can be found.

The formula uses all the same TV industry ideas that other TV

shows are using, however it is the unique sequencing of the TV format

and therefore effect on the audience that makes the TV format

valuable. TV formats are moving society along in the ever changing

television landscape, but the end product of a TV format looks nothing

71 Id. at para. 47-52.

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like the traditional "dramatic works" associated with TV. TV formats

are like car manuals where every component is exposed - the "how-to"

book. Whether it stays on the road is up to the driver or buyer of the

TV format.

As entertainment industry businesses seek to cut expenses, the

TV format represents a short cut to profits. This drive for profits has

seen the TV format industry almost double in six years. There is likely

to be no slowing this market exploitation down and as such the

sequencing (selection or arrangement) of generic ideas will come fast

at the courts. The courts have a responsibility to protect TV formats

and the businesses that invests in them. The TV format market needs

a level of predictability in the intellectual property law so it can

function effectively.

B. Is a "Dramatic Work" still a "Dramatic Work"

without a "Dramatic Work"?

Generally, it is easier to move a product that can be adapted to

multiple uses and for TV formats the script can be problematic.

Dramatic content fit for a U.S. audience may not be easily translated

into a successful program in Brazil so it is a simple extraction to

remove the dramatic content from TV formats. The obvious problem

is that TV formats then become nothing, but ideas and directly

confronts the idea/expression dichotomy in copyright.

In Green, the Privy Council confronted a psychological barrier

when it was asked to extend copyright protection to a "dramatic

format". To the court, performance is necessary for a "dramatic

work", however a TV format is incapable of such - there is no

performance related to the camera sequencing or lighting. The

sentiment surrounding a "dramatic work" is more about romanticism.

The emotions as interpreted by the performer of the author's

expressions make the dramatic in "dramatic works". Based on these

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definitional expectations, a TV format cannot possibly satisfy the

burden.

In CBS, the court pulled support from Feist, which was a case

about telephone white pages. This is a much fairer comparison than a

play because the white pages, although capable of performance, is not

likely to be mistaken for a "dramatic work". By admitting that TV

formats are more industrial in their usefulness than "literary or

artistic", it is easier to find a better fit for TV formats within the

intellectual property rights legal framework.

C. Square Hole for the Square Peg - Compilations and

Databases

In the U.S., a TV format is akin to a compilation as it uses

preexisting material or data such as what ideas or components work

best together to garner the successful viewership necessary for a

successful TV format. In aligning itself with the business aspect

rather than the artistic aspect, TV formats do not have to defend itself

against the idea/expression dichotomy. What should be protected in a

TV format is the original "selection or arrangement" of the preexisting

material or data. This is where a TV format is capable of satisfying

the "originality" requirement for compilation copyright protection.

Because the field of new ideas is sparsely populated, TV formats

can be similar as long as the TV format meets the burden of

"independent" and "modicum of creativity". One area of concern

relates to the increased exposure of TV formats and how some

creative "selection[s] or arrangement[s]" may seem "routine" or

"inevitable" thus preventing the creativity requirement for originality,

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however this concern can be mitigated by proper pleadings. The

compromise for the creators of TV formats is that they cannot seek

protection for the facts or ideas (preexisting material). This leaves for

the public domain new ideas that may serve to further advance the

knowledge of society as it pertains to television programs (lighting,

editing, etc.).

Furthermore, by using existing law there is no time or money

lost in soliciting new legislation or waiting for a "cherry" case to come

along on which case law can be built. The CBS case shows that some

courts may be open to receiving a TV format case framed as a

compilation. The TV format industry needs to make it easier for the

courts to provide copyright protection, however arguing under the

"dramatic works" category is walking uphill on roller blades and is

likely to lay down precedent more harmful than beneficial.

In the E.U., there is more opportunity for TV formats to find

database protection either under copyright or Sui Generis right. In

meeting the database definition, first a TV format needs to show that

the information in the database is independent of each other like each

of the TV format ideas or components is separable. Second and third,

there has to be method or system to the organization of the database

that lends itself to facilitating each TV format's components individual

accessibility. The ECJ favors the electronic transmission, but the "any

form" seems to suggest a paper copy in a three ring binder with a

table of contents or index would suffice. As for copyright protection

for database, the standard "intellectual creation" in the “selection or

arrangement” is necessary to comport with the overall idea that an

author must have contributed to the work.

The best opportunity for TV format protection is the Sui Generis

right, which contemplates a situation where the business investment

is front and center in justifying the database protection. The Sui

Generis right even uses the term "maker" instead of "author", which

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further implies a more sterile relationship between the underlying

information and the creator of the database. The area of concern

however is the situation where the creator of the TV format created

the information being used in the TV format. It is important that the

TV format be able to prove additional substantial investment in the

"obtaining, verification or presentation" of the database; an

investment separate from the day to day operations of the business

that provides an additional step in the databases creation.

V. Conclusion

TV formats are unrecognizable as a "dramatic work" and

therefore have an uphill battle in justifying the extension of a

monopoly right under copyright. Traditionally, copyright has been

linked to an author's intellectual expression with the monopoly as a

reward or incentive; however TV formats are turning that upside

down. Protecting TV formats becomes more about rewarding the

efficiency of big business as it slowly erodes the literary and artistic

nature of copyright. This is not likely to appeal to the judicial

appetites as the court struggles with reconciling business models as

the creative spark and a definitional background with traditional

notions of what is literary and artistic.

A direct confrontation is not necessary with the existing laws on

compilations and databases. It is better to start making inroads into

these specialized areas of copyright and Sui Generis right than to

stubbornly push for the expansion of the "dramatic works" category.

The potential damage to TV formats in general is not worth the risk.

TV formats are a big business like publishing telephone books and

English or Scottish football matches. By owning the obvious, TV

formats will embrace what the courts have been conflicted with.

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Robert Frost is not the only who will benefit from taking the "road less

traveled by"72.

72 Robert Frost, "The Road Not Taken", http://en.wikipedia.org/wiki/The_Road_Not_Taken_(poem) (last visited Nov. 8, 2009).

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