On February 22, 2012 the IP Court of Rome issued a landmark decision on format rights.
The case was commenced in the second part of 2011 by BBC Worldwide, as the BBC's exclusive licensee for the very well-known format "Strictly Come Dancing", against - among others - the Italian broadcaster RTI that launched a TV dance competition based on a Mexican format named "Bailando por un Sueno". BBC Worldwide claimed that the production of TV programs based on the Mexican format amounted to infringement of its copyright in the "Strictly Come Dancing" format.
The basic features of "Strictly Come Dancing" are, among others: (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 defendants claimed that the BBC format could not be protected because it was based on elements widely used in other shows.
The Court was persuaded that the concept of "novelty" has no basis in copyright law and that 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, the Court maintained that the defendants' format production bible had the same features of the claimant's one and that the differences between the two would have been irrelevant in the eyes of the public.
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.
This decision is no doubt a breakthrough in the context of format rights which reverses the approach followed over the years by the Italian IP Courts.
Courts have always applied a very restrictive approach to format protection based on the concept that formats, just like any other work, attract copyright protection to the extent they are based on creative / new elements, as distinct from existing formats and TV programmes. This is clearly a high threshold to be met for a vast number of valuable formats that circulate in the market (especially, talent formats). Accordingly, Courts denied protection to format owners in most, if not all, cases.
The "no novelty" approach followed by the IP Court of Rome will clearly have the effect of significantly strengthening format protection, making Italy a leading jurisdiction to litigate over format rights.
Feel free to contact me, Alessandro Ferrari (firstname.lastname@example.org), if you want to discuss or further information.