A new approach to format protection in Italy

In February 2012, the IP Court of Rome issued a decision that will have the effect of significantly strengthening copyright protection for TV formats and shows. This is a breath of fresh air for owners of valuable formats, in light of the widespread copycatting practice that had emerged in the market, and had also been endorsed by court decisions which effectively permitted plagiarism of TV programmes.
Following the decision of the IP Court of Rome, the question “Why pay for a TV format if you can imitate it for free?” is no longer going to be rhetorical.
The threshold for format protection
TV formats enjoy copyright protection under the laws of many countries, including Italy. However, it is a fact that, for one reason or another, decisions granting remedies against format plagiarism can be counted on the fingers of one hand.
In Italy, IP Courts tended to apply a restrictive approach to format protection based on the following two principles: (i) copyright does not protect mere ideas but only the expression of ideas; and (ii) formats, just like any other work, attract copyright protection to the extent they are based on creative or new elements, as distinct from existing formats and TV programmes.
It does not take a course in copyright law to realize that the threshold for copyright protection set out by the above principles would hardly be met by a vast number of the formats that circulate in the market. This is even more true when considering, for instance, talent show formats that, albeit very much loved by the public and hence valuable, are often centered on basic features common to many other shows. In principle, only highly innovative formats (for example, Big Brother) would satisfy such requirements.
In addition, the Italian copyright law, like the copyright laws of virtually all other countries of the world, does not contain specific provisions governing “format rights”; nor is there in Italy a commonly accepted definition of “format” (although there have been attempts to produce a definition by the Italian Media Authority and the Italian collecting society).
As a result of this approach, in most cases the Italian IP Courts denied protections to TV formats, maintaining that (i) format bibles represented more an idea for a programme than a finished programme scheme, (ii) the setting, characters’ role, characteristics of the contestants, contestants’ selection criteria and structure of the programme, were too vague or not sufficiently described, leaving too much to improvisation. In some other cases, IP Courts stated that the elements of the format were not new, in that they were commonly used in existing programmes. For example, IP Courts deemed the following format elements incapable of attracting copyright protection: the mechanism whereby a contestant is eliminated each week, the concept that all contestants live in the same place, contestants’ interviews; and televoting.
The new approach followed by the IP Court of Rome.
In its February 2012 decision, the IP Court of Rome reversed the approach described above.
The claimant was BBC Worldwide which is the BBC’s exclusive licensee for the very well-known format “Strictly Come Dancing”. Based on this format, eight series of a successful TV programme named “Ballando con le stelle” have been produced in Italy since 2005. The basic features of the format are: (i) a weekly knockout dance competition between couples comprising a celebrity and a professional dance partner; (ii) each couple dances one after the other and is judged by a panel of judges; (iii) each week a couple is eliminated; (iv) each episode comprises rehearsals filmed during the previous week and; (v) viewers can vote and their vote is combined with the judges’ votes.
The claimants commenced injunction proceedings against, among others, the Italian broadcaster RTI, that launched a TV dance competition entitled “Baila!” based on a Mexican format named “Bailando por un Sueno”. The defendants’ show had the above features although with some differences in the selection of the contestants, dancers’ roles, composition of the panel of judges and televoting mechanism.
Predictably, the defendants claimed that the BBC format could not be protected because it was based on elements widely used in other shows.
The IP Court of Rome took a drastically different approach, which favoured the rightsowners. The Court maintained that the concept of “novelty” has no basis in copyright law. As a result, it is immaterial, from a copyright perspective, whether or not the elements of a format are new: the only question to be answered is whether the combination of all such elements has a level, albeit limited, of creativity. The court found that the claimant’s format satisfied this test. In addition, as to infringement, the Court maintained that the differences between the defendants’ show and the claimant’s format were irrelevant as the defendants’ show appeared, in the eyes of the public, an imitation of the show “Ballando con le stelle” based on the claimant’s format.
The Court granted an injunction against the defendants producing or broadcasting programs based on the “Bailando por un Sueno” format, set a penalty of €500,000 for each violation of the injunction, and ordered the decision to be published in four newspapers.
Whether this approach will be confirmed more widely by the Italian courts remains to be seen. A positive indication comes from the fact that, on October 2011, the IP Court of Rome already adopted this new approach in another copyright dispute in the context of TV show rights. If confirmed, this new approach will no doubt make Italy a leading jurisdiction to litigate over TV formats.