IP - THE NEXT BIG THING IS REALITY TV

What do the Da Vinci Code, The X Factor and The Block all have in common, apart from being stunningly successful? All had to deal with highly publicised claims that they were based on ideas stolen from someone else.

If you have a great idea for a new TV show (book, movie, etc.), you should be asking the question, "How can I protect my intellectual property so someone doesn't steal it?" The answer is that it's not easy, but there are many things you can do to improve your position.

Trade Mark protection

It is highly desirable to register a trade mark to protect the name of the show or book. To obtain trade mark protection, you should choose a name that is distinctive (i.e. not descriptive) and original. This will mean doing some searching within IP Australia as well as on Google or other search engines to confirm that your name is original. We can assist with these searches.

Once you have decided on the name to be registered, it's important to register the trade mark in the correct classes. In Australia and most other countries, there are 45 classes of goods and services in which a trade mark can be registered.

A good trade mark can be very useful to prevent copycatters and hangers on. There has been a considerable amount of press recently as the owners of the Australian Idol trade mark take action to prevent or shut down other unconnected Idol events. Many proposed Idol events have been cancelled due to concerns over possible action by the trade mark owner. A strong trade mark can provide significant protection for a TV program or book.

However, trade mark protection does have its limits. It is a simple matter for someone to come up with another name. So while trade mark registration does provide a level of protection, it is not enough to protect the TV concept. The other main area of protection is copyright.

Copyright

Copyright cannot protect an idea or concept, only the form in which it is expressed. In Australia, there is no requirement (or indeed forum) to register copyright. It exists on creation of the material. Format elements that are generic - i.e. common to the particular genre (game show, talent quest, adventure) - cannot be protected and will be ignored in assessing infringement.

To succeed in an infringement case, it is necessary to show copying or that the formats are so similar this could only have occurred by copying. So to enhance format protectability, you must come up with concepts that are unique - and the more of them the better. To resist claims of infringement, keep good records of how the concept was arrived at.

Note that copyright can be infringed where there is reproduction of a substantial part of another show's format rather than all of it. In this context, "substantial" is determined by reference to quality not by quantity of copying. If your show reproduces a key distinctive element of another program, this may be enough to establish infringement where copying is established.

Chris Bevitt is a partner of Shelston IP Lawyers specialising in protection and commercialisation of intellectual property. Phone (02) 9777 2450 or email ChrisBevitt@ShelstonIP.com

The Key lessons

• Devise a name that is unique and strong. Register it as a trade mark in the relevant classes in all jurisdictions where you intend to release the show or the book.
• During development and production, limit disclosure of the concept and deal with reputable established operators.
• Ensure that any persons to whom you disclose the concept sign a non-disclosure agreement prior to disclosure. Some companies may refuse to sign on the basis that they may have already thought of the idea and signing will prejudice their position.
• If a concept is arrived at independently it will be difficult to claim copyright infringement. This means carefully documenting how the concept was arrived at. Keep good records.
• Create your own mood, tone, features and ensure there are key points of differentiation from existing shows. Only a combination of distinctive elements is protectable.
• Create a format "bible" for your show. The bible is a complete 'how to' in relation to the show ranging from the elements of the show, target audience, set design, programming rundowns, website design, logos - as much detail as possible. The bible itself will be protected by copyright and the level of detail will assist in any infringement cases you run.
• Consider registering your format with an established registry such as FRAPA (Format Recognition and Protection Association), Creators Registry, Writers Guild of America (members only) or the US Copyright Office. Registration is quite cheap and will give you a "date stamp" to help establish the date of your claim.
• Very few infringement cases have succeeded. Copycat shows are common and the expenses involved in undertaking infringement litigation are substantial. However, if a show is conceived and protected as set out above, this will deter many would-be copycats. Protecting intellectual property in TV show and book formats is not easy. But by following the above steps, you will significantly increase your ability to protect your intellectual property and enhance its value and attractiveness.