Banner Universal Motion Pictures Ltd v Endemol Shine Group Ltd & Anor

A television programme format may in principle qualify as a dramatic work, but copyright requires clearly identified distinguishing features arranged in a coherent framework capable of repeated reproduction in recognisable form. General ideas, commonplace features and an unstructured collection of options are insufficient.

A foreign judgment may create cause of action estoppel and issue estoppel in England where the foreign court had jurisdiction and finally determined the relevant matters. Passing off requires actual goodwill, involving customers, in the jurisdiction; reputation or advertising alone is insufficient.

The claimant alleged that a written television game-show format, Minute Winner, had been copied in the development and exploitation of Minute to Win It. It brought claims for copyright infringement, breach of confidence and passing off against television production and broadcasting companies.

The defendants applied for summary determination, strike out and related relief. One defendant also challenged jurisdiction. The claimant sought to amend the claim, substitute defendants and add a further defendant. The central issues were whether the format disclosed an arguable copyright work, whether the confidence claim was barred by Swedish proceedings, and whether the claimant had goodwill sufficient for passing off.

1. Disposition. The defendants’ application was granted and the claim was dismissed. The causes of action had no realistic prospect of success, and the breach of confidence claim was in any event barred by res judicata and abuse of process.
2. Summary judgment. The court applied the principles summarised in EasyAir Ltd v Opal Telecom Ltd [2009] EWHC 339 (Ch), as approved in A.C. Ward Ltd v Catlin Fire Ltd [2009] EWCA Civ 1098. It had to distinguish a realistic prospect from a fanciful one and avoid a mini-trial, but could decide a short legal or construction point where the evidence was sufficient.
3. Copyright. A television game-show or quiz-show format was capable in principle of being a dramatic work. The minimum requirements were clearly identified distinguishing features, taken together, which differentiated the show from others of the same type, and a coherent framework connecting those features so that the show could be repeatedly reproduced in recognisable form. The Minute Winner document was too unclear, general and lacking in specifics. Its features were commonplace and did not define a coherent, repeatable structure.
4. Even if copyright subsisted, the two formats differed materially. The claimant’s format involved a randomly selected member of the public, a single one-minute task, coincidence and a sponsored prize. The defendants’ programme involved contestants selected and trained in advance, a series of detailed skill games, a monetary prize ladder and studio production. There was no realistic prospect of proving copying of a substantial part.
5. Confidence and estoppel. The Swedish claim and the English confidence claim were in substance the same claim. The Swedish proceedings had finally determined that the relevant information was communicated by a later email and attached document, not at the earlier meeting. The claimant and its assignee were barred by cause of action estoppel and issue estoppel. The later English proceedings were also a Henderson v Henderson abuse of process.
6. The court added that the document was too vague and insufficiently developed to have the necessary quality of confidence under English law. An unsolicited email sent after refusal to sign a non-disclosure agreement could not itself establish an obligation of confidence.
7. Passing off. The claimant had no arguable actual goodwill in England. There were no customers, licensed programmes or completed shows, and the website and isolated inquiry amounted at most to advertising. Nor was there sufficient similarity to create a risk of confusion.
8. The court therefore did not need to determine the further jurisdiction, limitation or joinder arguments.