Protecting Money-Spinning Ideas And Formats

ON-GOING copyright litigation in America involving social networking site Facebook raises interesting questions about intellectual property protection for money-spinning business concepts.

To what extent are commercial ideas, concepts and formats protected by copyright? Can you gain intellectual property rights merely from brainstorming discussions with friends and collaborators? And what practical steps can entrepreneurs take to shore up intellectual property rights as far as possible under existing law?

In the American litigation, Facebook founder Mark Zuckerberg is accused of stealing the idea behind the networking site from former student colleagues. He faces a claim for copyright infringement, misappropriation of trade secrets, and breach of contract and confidence, among other things.

His ex-colleagues claim that they asked him to write computer code for a networking site which was to be completed by June 2004 but that Zuckerberg took the idea and the format and launched his own site, Facebook.com, in February 2004.

It’s a big deal. Facebook now has more than 30 millions users and is said to be worth around $10 billion. In contrast, the colleagues’ rival website, ConnectU, which launched in May 2004, has only 70,000 users.

The Boston judge hearing the case has queried the basis of the claim, remarking: “Dorm room chit-chat does not make a contract.”

It seems the claimants may have an uphill struggle. They’ve been given until 8th August to file further papers to bolster their case.

The litigation will run its course, but it begs the question: what is the position under English law where a money-spinning concept or format is exploited without the author’s permission, or where shared business ideas are ripped off?

Uncertainty surrounding ‘format rights’

In the few decided cases, English courts have been sceptical about copyright in abstract concepts, as opposed to the form in which they are expressed.

For example, in a leading case in 1989, the Privy Council ruled that there was no copyright in the format of TV gameshow Opportunity Knocks. The court was given only limited details of the show’s format and was concerned that ideas should not be ring-fenced by proprietary ownership under copyright.

One of the judges pointed out that the protection which copyright gives creates a “monopoly” and there must be certainty in the subject matter of such monopoly in order to avoid “injustice to the rest of the world”. In other words, all must be free to use and develop ideas.

The principle that there is no copyright in ideas was most recently confirmed by the Court of Appeal this year in the copyright dispute over novelist Dan Brown’s The Da Vinci Code. The authors of an earlier similar book, The Holy Blood and The Holy Grail, lost their copyright claim that Brown’s novel had copied the ‘central theme’ of their book, which they claimed consisted of 15 elements – one of which was said to be the idea that Jesus was of royal blood with a legitimate claim to the throne of Palestine.

Lord Justice Lloyd reiterated: “Copyright does not subsist in ideas; it protects the expression of ideas, not the ideas themselves.”

Another judge added that in order to establish copyright infringement it was insufficient for an alleged infringing work “simply to replicate or use items of information, facts, ideas, theories, arguments, themes and so on, derived from the original copyright work”.

Although English law is sceptical about copyright in abstract concepts, that hasn’t stopped so-called ‘format rights’ in TV programmes such as Who Wants To Be A Millionaire? being bought, sold and licensed internationally, akin to copyright.

The market has clearly been prepared to embrace ‘format rights’, even if their status remains legally uncertain.

Moreover, recent court rulings in Holland and Brazil show that courts in some jurisdictions are willing to recognise format rights under copyright law.

In Brazil, Endemol, which owns the format to Big Brother, successfully sued a TV company for ripping off the show’s format. The court boldly declared: "The whopping similarity between both programmes does not stem from chance, but from a badly disguised and rude copy of the format of the programme Big Brother.”

In the Dutch case, the court ruled that copyright did exist in a TV show’s format. But, on the facts of the particular case, no infringing copying was actually proved.

As regards English law, there’s nothing in recent case law to suggest that well-evidenced money-spinning formats and concepts cannot be protected by copyright, given the right circumstances.

Each case will turn on its own facts and evidence. However, the UK’s Copyright, Designs and Patents Act 1988 (‘the Act’) does not specifically recognise ‘format rights’. It requires copyright to be shoe-horned into certain categories of original works, such as ‘literary’, ‘artistic’, ‘dramatic’, and ‘graphic’ works.

A person claiming that a colleague has infringed copyright by ripping off a business format would have to be able to produce evidence that the whole, or a substantial part of, his original ‘literary’, ‘artistic’ (etc.) work had been copied without permission.

In other words, for legal purposes, the format would have to be broken down into the different elements recognised by the Act, and evidence of copying produced in relation to these. It could be very tricky to formulate a watertight copyright claim.

Another hurdle is that it can be extremely difficult to prove that a rival has actually copied your work, rather than legitimately emulated it. No doubt the Facebook claimants are grappling with such issues right now.

Practical steps

Unfortunately, the reality is that a rival could quite easily take your format, make some changes, and argue that it hasn’t copied the whole, or a substantial part, of your original work.

But although copyright protection for formats remains uncertain, there are steps you can take to strengthen your position.

Keep finely detailed records of all the elements of the format, which may include things such as website design, stage design, catchphrases, packaging, logos, spoken and written text, computer programs, theme tunes, and so forth. This will help prove authorship and copyright ownership, and will assist in demonstrating that your work has been copied, not just emulated. Reliance on evidence from “dorm room chats” will not be sufficient.

As to initial brain-storming discussions with friends, even with a good record of conversations, it is most unlikely that such half-baked plans will give you the basis for a successful copyright claim in the event that someone later disloyally exploits your proposed format for their own gain.

But one precaution you can take is to ensure that collaborators sign a confidentiality agreement so that you could claim damages for breach of confidence if your secret plans and ideas were disclosed and exploited to your detriment. Make sure this agreement spells out that you own the intellectual property rights in the information discussed. This at least provides some evidence of the parties’ intentions if the information is subsequently disclosed elsewhere without permission.

It also makes sense to register any proposed business names and logos as trade marks immediately to help prevent rivals ripping off your new brand.

You should also consider registering design rights in appropriate aspects of your format to stop any designs being ripped off.

Published 03/08/2007. The author of this article is Nigel Hanson