The Voice, So You Think You Can Dance, The X-Factor and may other TV shows have become popular worldwide. All these shows were adapted for TV viewers in various countries, so they could watch their “local” product. Today, a TV format is the moving force of progress within the television industry.
As the first TV formats were created, their owners started to think about how best to protect their intellectual property rights. The thing is, a TV format is not recognized as intellectual property either by national regulations or under the Berne Convention on the Protection of Literary and Artistic Works.
There are two significant legal precedents in the Ukrainian judicial practice resulting from the disputes over TV show formats. The first one is the legal battle between TV shows titled Karaoke na Maidani (eng: Karaoke on the Square) and Karaoke u Fontana (eng: Karaoke by the Fountain).
The second one, which is the case in point in this article, is the legal battle over the format between the TV shows titled Revizor (eng: inspector) and Inspector Freimut.
Channel “Novy Kanal” and channel “Studiya 1+1” are the popular national TV channels in Ukraine.
In 2011, Novy Kanal launched the reality show about the quality of customer services provided by Ukrainian hotels, restaurants, shops, health centers, etc. The show turned out to be very popular and won numerous Ukrainian TV awards. Its presenter Olga Freimut officially left Novy Kanal for Studiya 1+1 on December 24, 2013.
The 4th season of Revizor started on January 6, 2014. The show was still very popular and boosted Novy Kanal rating. However, hardly had the channel released 4th season finale, when Studiya 1+1 launched its own TV show with the title Inspector Freimut presented by Olga Freimut.
Studiya 1+1 argued that Inspector Freimut had been developed independently. The purpose of the show was to check schools, clothing stores, supermarkets and other places for trustworthiness and quality of provided services.
As a result, both Revizor and Inspector Freimut carried out inspections of customer service providers and evaluated the quality of services.
History of proceedings
In September 2014, Novy Kanal filed the copyright infringement lawsuit with the Kyiv Commercial Court and sought the redress from Studiya 1+1 LLC and Foreign Enterprise 1+1 Production.
The claimant provided the following arguments:
1) the content of publicly broadcasted Inspector Freimut indicates that this show was created as a result of unlawful (without permission from the person who has the exclusive right to authorize or prohibit any use of the work) modification of the literary work, i.e. the Template Script of Revizor TV Show and audio-visual work, i.e. Revizor TV show. The claimant provided the list specifying the parts of the said works used in Inspector Freimut.
2) Before filing the lawsuit, the claimant addressed the respondents three times and requested to discontinue the infringement of the claimant’s intellectual property rights. Though, there was no response.
The defendants admitted that the TV show titled Inspector Freimut had been produced and broadcasted on TV. However, they argued that the claims stated by the claimant were unreasonable.
The defendants’ arguments were as follows:
1) the TV show was created based on the concept, which had already been used by TV channels throughout the world (a certain person visits customer service providers and checks how they work);
2) according the Law of Ukraine “On Copyright and Related Rights”, “legal protection applies only to the form of expression of the work and doesn’t apply to ideas, theories, principles, methods, procedures, processes, systems, means, concepts, discoveries, even if they are expressed, described, defined and illustrated in the work” (i.e. legal protection applies only to the form of expression of the work, and not its scope);
3) “Inspector Freimut” may not be deemed the derivative of the claimant’s literary work, since these two shows are completely different, and neither work is a modification based on the other. The audio-visual work, i.e. “Revizor” show, was not used as the sample during the creation of the other TV show, i.e. “Inspector Freimut”, since the respondents did not use any part or any element of the form of expression of “Revizor”.
Both parties requested the legal expertise to be carried out.
According to the expert opinion admitted by the court as the evidence in the case, the work contains several elements, some of which have no legal effect (not protected by copyright), while some constitute legally relevant facts (protected by copyright).
For example, such legally relevant elements of a literary work are the following elements of the form
- Internal (the composition of the work, its structure, imagery);
- External (language, specific vocabulary, the style of speech, etc.).
The elements with no legal effect include the theme, material, plot, idea, etc. Their use by other persons does not constitute any infringement of rights of the original work’s author.
The expert opinion in the case contains the results of comparative study of Inspector Freimut episodes and Revizor episodes.
The Expert witness summarized the comparative study results and noted that the following elements of the form characteristic of Revizor had been used in Inspector Freimut:
- The presenter’s image that forms the TV show’s character (a journalist carrying our investigation; style, language, significant detail (a glove or kerchief);
- Inspection specifics (unexpected, public, may be carried out against the personnel’s and management’s will; the shooting crew may force its way into staff only areas);
- In both shows, the owners and the management are not involved in any inspections (the management and shooting crews of both shows do not cooperate with the owners; inspections are carried out without any agreements with the owners or the management; the latter have no interest in carrying out such inspections and being advised on how to improve their services; the type of relations with the owners and the management is indicated in the credits);
- According to the structure is the show, which is the same for every episode, inspections are carried out in a certain city; the show starts with the spots offering cheap services and moves to the spots offering expensive services;
- Inspection criteria: environment (exterior, interior), the quality of services, prices, food, cleaning.
- Outcome (as a result of inspection, service providers may be either recommended or not recommended by inspectors; if recommended, service providers receive the special “recommended” sign plate (the outcome of “Inspector Freimut” and “Revizor” is the same).
In addition, the expert witness noted that apart from their different titles, these shows have some minor distinctive features, which are not really essential for people who watch both shows.
Expert witnesses’ findings:
- Both the literary work titled The Template Script of Revizor TV Show and the TV show titled Revizor meet the criteria of originality and novelty.
- The TV program titled Inspector Freimut, which consists of episodes that are not chronologically connected, is based on the works that have been modified, i.e. the literary work titled The Template Script of Revizor TV Show and the audio-visual work, i.e. TV show titled Revizor, which consists of episodes that are not chronologically connected.
- The TV show Inspector Freimut is not a derivative of the literary work The Template Script of Revizor TV Show, since the creators of Inspector Freimut neglected the rights of the author of the said literary work.
- The TV show Inspector Freimut is not a derivative of the TV show Revizor, since the creators of “Inspector Freimut” neglected the rights of the author of the said TV show.
- The TV show Inspector Freimut has been created with the use of characteristic features and copyright-protected elements of the TV show Revizor, which have been modified.
The Kyiv Commercial Court found that the claimant’s copyright had been infringed by the respondents during the production of Inspector Freimut, and upheld the claim in part.
The court upheld the following claims:
1) to cause to discontinue the infringements of proprietary copyrights of Novy Kanal in the literary works (The Template Script of Revizor TV Show and Revizor TV show) as a result of modification of the said works with the purpose of creation of similar works, including the TV show titled Inspector Freimut).
2) to prohibit the publication of the TV show Inspector Freimut, production of videogram samples, announcement, distribution or any other use, as specified by the applicable laws of Ukraine.
3) to cause 1+1 Productions to recover 414 120 UAH (26 235, 36 USD according to the exchange rate) for the benefit of Novy Kanal.
Studiya 1+1 appealed the decision of the Kyiv Commercial Court of Appeal
The petition of appeal contained the following arguments:
1) The lower court has failed to fully examine the evidence relevant in the case; the findings, on which the decision of the lower court has been based, are inconsistent with the circumstances of the case.
2) the law (the Law of Ukraine “On Television and Radio Broadcasting”) does not provide a definition for the use of the work in the form of broadcasting.;
3) the legal expertise of intellectual property by the expert witness has been carried out improperly; the expert witness’s opinion is unreasoned.
The Kyiv Commercial Court of Appeal resolved the case based on the following:
- According to the Law of Ukraine “On Copyright and Related Rights”, protection is granted to published and unpublished, finished and unfinished works, irrespective of their purpose, genre, scope, objective (education, information, advertising, popularization, entertainment, etc.).
However, legal protection applies only to the form of expressions of the work and does not apply to ideas, theories, principles, methods, procedures, processes, systems, methods, concepts, discoveries, even provided that they are expressed, described, explained, illustrated in the work.
- According to Berne Convention for the Protection of Literary and Artistic Works, as well as under the national regulations, copyright protection does not apply to TV show formats.
- The conclusion of the expertise assigned by the Kyiv Commercial Court, may not be used as the major evidence in the case, since in view of the established facts, special expertise is not required to establish the facts in the case to be proven.
In addition, this expert opinion is based on the analysis of elements of the content of examined objects (i.e. the script if the TV show titled Revizor) Revizor and Inspector Freimut TV shows. However, their form of expression, protected under the Law of Ukraine “On Copyright and Related Rights” (paragraph 3, Article 8), has not been examined.
Under such circumstances, the court of appeal found that the lower court made the improper conclusion that the infringement by the defendants of the claimant’s exclusive right to grant permission for the use of Revizor TV show and its script protected by copyright had been the established fact. Therefore, the court held that the judgment of the lower court based such findings was unlawful.
On September 3, 2015, the Kyiv Commercial Court of Appeal upheld the appeal petition filed by Studiya 1+1 and dismissed the claim filed by Novy Kanal.
Novy Kanal lodged the cassation appeal
On October 10, 2015, the court of cassation sustained the cassation appeal, reversed the ruling the Kyiv Commercial Court of Appeal and upheld the judgment of the Kyiv Commercial Court dated January 21, 2015.
1+1 Studio applied to the Supreme Court of Ukraine; however, on February 17, 2016, the Supreme Court dismissed the claim as meritless.
Following 1,5 years of legal proceedings, the creator of Revizor format (Novy Kanal) finally won the battle. In facts, the outcome of the case attested to the fact that the format was stolen by 1+1 channel.
However, one month later, the legal battle continued.
1+1 Studio attempts to change the current situation by applying for the revision of the case based on the newly discovered evidence.
Studiya 1+1 applied for the revision of the case based on the newly discovered fact, i.e. the conclusion of the technical expert witness’s legal expertise conducted by Shevchekivskyi District Department of Interior in the criminal case. According to the expert opinion, one of the acts of transfer of copyrights in the Template Script of Revizor TV show was signed by the CEO of Novy Kanal on the date other that indicated on the act, i.e. not in 2012, but “probably, in August 2013 at the earliest”.
The court sustained the said application, reserved its own judgment dated April 4, 2015, and on August 30, 2016, dismissed the Novy Kanal’s claim in full.
Novy Kanal applied to the court of appeals
Special consideration should be given to the opinion of the court of appeal.
The Court of Appeal found that, even considering the fact established in the above expert witness’s report referred to by Studiya 1+1 as the newly discovered fact and assuming that the act of transfer of rights was signed by one of the parties to the contract in August 2013 at the earliest, in any case, when Novy Kanal learned that its rights had been violated and applied to court, the exclusive proprietary copyrights disputed over in this case had been already transferred from the author Novy Kanal. In addition, on May 12, 2014, the State Intellectual Property Service of Ukraine registered the said the author’s contract. Therefore, the court found the facts referred to by Studiya 1+1 could not be interpreted as newly discovered.
According to the judicial board, legal certainty is one of the fundamental aspects of the rule of law which, inter alia, requires that the final decisions of courts must be regarded as binding. Cases resolved by the courts may be reviewed based on the newly discovered evidence at the request of either party to a dispute only when material judicial errors require to be corrected, provided that this procedure is applied in accordance with Article 6 of the Convention for the Protection of Human Rights and Fundamental Freedoms. The principle of legal certainty requires that the final decisions of courts must be regarded as binding and ensures that no party may seek a review of a final and binding decision in an attempt to reach out for a new trial and new decision. Courts may only depart from this principle when the newly based on irrefutable and solid facts. Considering the materials in the case, the revocation of the final decision in this case would have been unreasonable. (Similar reasoning was made by the European Court of Human Rights in the case of Zheltiakova v. Ukraine).
As a result, on October 10, 2016, the Kyiv Economic Court of Appeal took the appellant’s side and upheld the decision of the Kyiv Economic Court dated April 1, 2015.
The Supreme Economic Court of Ukraine examined the cassation appeal filed by Studiya 1+1 and sustained it in part, considering that the petition of review based on the newly discovered facts had been examined by the judges who had heard the case earlier (ruling dated July 13, 2016).
Therefore, the case is currently retried by the Kyiv Economic Court of Appeal.
The legal battle between Revizor and Inspector Freimut is still under way.
Such disputes are difficult to resolve since the Ukrainian regulations, just like the regulations in other countries, fail to specify the full list of works protected by copyright. Indeed, TV show format has strong links with copyright. However, it should be noted the efficiency of such protection does not depend on the genre of the show. Therefore, the author’s rights may be protected only provided that the TV format is described in detail. For example, it may be a script, plan, story, or dialogue. FRAPA (Format Recognition and Protection association) recommends building a production or format bible (short profile of a TV program).
According to FRAPA, recognition of authorship in reality and variety shows is quite a tricky task. It is easier to recognize authorship in game shows and scripted programs.
In case the claimant, i.e. the right holder of Revizor TV format provided the template script to the court, which was helpful for the case trial. In addition, legal expertise divided “Revizor” and “Inspector Fremut” formats into components, and therefore, identified that some components and been copied by the respondent.
It’s important to understand that to create a TV format, it is necessary to develop a TV program template containing the detailed description of a show and its and its constituent elements (music, the number of hosts and their roles, the set, etc.). The template is the baseline for several episodes that may be identified by the viewers as the certain TV format. Although it is difficult to identify similar elements in different formats, Ukrainian courts are in a fair way to interpret TV format as the separate object of intellectual property. Moreover, in one of its rulings, the Kyiv Commercial Court of Appeal used the word “format” (yet, no definition was provided).