Eastern Commercial Lawyers

Has your Club breached copyright when carrying out a promotion ?

17-May-2011
Clubs should take care when developing promotions not to infringe another party’s intellectual property rights.

Clubs from time to time make substantial investments in creating and promoting new promotion.

It is possible that a promotion may infringe another party’s copyright, giving rise to a cause of action for the other party for breach of copyright.

The Copyright Act gives the owner of copyright in a work the exclusive right to reproduce the work, and to publish and communicate the work to the public.

Copyright does not protect general concepts, but it can protect the way ideas are expressed.  To establish whether a promotion format may be protected by copyright it is necessary to consider whether it is merely a basic idea or whether it is sufficiently developed so as to warrant copyright protection.  There is no clearly definable line between ideas that can and cannot be protected, and it is a matter that must be judged from case to case.

While a mere idea or concept is not protected by copyright, an idea that has been developed into a work with staging, scenic effects and structure may be.

By way of illustration, we refer to a TV program as an example being copied as a promotion, such as a game show. The very nature of a TV program format is that it prescribes a method or formula for producing various episodes of that program, but it is generally more than a mere concept.  Although the individual episodes of a TV program may not be scripted if live, the various elements of the format may still be carefully designed and created.

To establish copyright infringement in a format, the owner of the format must first succeed in establishing that his or her format is protected by copyright as a dramatic or literary work.  These concepts are interpreted very broadly by the Courts.  Copyright may subsist in the form of expression of an idea or principle, and on that basis a TV program format that sufficiently describes a concept may be protected.
The Copyright Act prohibits copying or using a substantial part of a work (ie a TV show format).  The owner of the format would have to show that the Club's show substantially reproduces the original show's format.

If a Court does conclude that a format is a protected work, then it will look to see if recognisable elements from that work have been taken.  The issue of substantial reproduction is clearly a matter of degree and one that can only be resolved on a case by case basis.

If, however, the Club merely creates a promotion based on an existing show, and takes only the premise of that show (for example a show in which contestants compete to win through various games for the chance to attempt to win a major prize at the end of the show) that would likely, on its own, not infringe.  If other elements of the original show are reproduced, such as specific contestant challenges, the structure of each program and catchphrases, then a Court might more readily find that the Club has substantially reproduced the original show's format.

Provided that the Club has applied some independent skill and effort in producing a sufficiently different format for the proposed new promotion, the Club's new format is more likely to be considered original.

Therefore, Club managers should take care  to create a format that is sufficiently different from any recognisable format to avoid the risk of breach of copyright.

If you have any queries in relation to copyright and development of Club promotions, please contact Tony Johnston, Partner on 0414 253 181 or by email on tony.Johnston@eclawyers.com.au or John Murray, Partner on 0414 294 260 or by email on john.murray@eclawyers.com.au.

Back