UK Supreme Court Opens Door to Overseas Copyright Claims in UK Courts
By John Wilks and Damian Herrington, DLA Piper UK
In its first ever ruling on an intellectual property case, the UK's Supreme Court has decided in Lucasfilm v Ainsworth that the stormtrooper helmets used in the Star Wars films were not "sculptures", and thus were not protected by the English law of copyright.
Significantly, however, the Supreme Court also ruled that the infringement claims based on US copyright brought by Lucasfilm in respect of Mr Ainsworth's acts in the US were justiciable in the English courts, a ruling which could have wide-ranging implications for the ability of English courts to decide claims for acts taking place in foreign countries which infringe the copyright in those countries. The case indicates that if a defendant is resident in England, the English courts will be prepared to deal with claims for infringement of foreign copyright.
Whether the decision leads to full scale forum shopping by copyright infringement claimants remains to be seen. But it will give claimants a useful litigation option in cases where there is international infringement of copyright by an English-domiciled defendant.
Where it all Began
The case was concerned with intellectual property rights in various items made for use in the Star Wars films. Lucasfilm owns copyrights in the artistic works created for the Star Wars films and has built up a hugely successful licensing business, including licensing manufacture and sale of models of the well-known stormtrooper characters.
Back when the original Star Wars film was made in 1976, Mr Ainsworth was engaged to produce costumes for the film, including the stormtrooper uniforms. In 2004 Mr Ainsworth used his original moulds to make versions of the stormtrooper helmet and outfits for sale to the public, and his internet sales included US sales totalling between $8,000 and $30,000. Lucasfilm obtained judgment against Mr Ainsworth in the United States, and also brought proceedings in the English High Court for the infringement of various intellectual property rights, including claims for infringement of UK copyright and claims under US copyright law. By the time of the Supreme Court hearing, the only remaining claims were based on copyright infringement.
This side of the pond: what is a sculpture?
The UK copyright infringement claim was based on Lucasfilm's alleged copyright in the stormtrooper helmets as "sculptures", which sculptures were derived from design drawings for the helmets, copyright in which was owned by Lucasfilm.
Mr. Ainsworth argued that the helmets were not "sculptures" within the meaning of the UK Copyright, Designs and Patents Act 1988 (the "Act"), and also relied on defences under sections 51 and 52 of the Act in respect of the claim that the helmets were made to the design recorded in the design drawings. These provisions remove copyright protection where physical articles which are not "artistic works" (such as sculptures) are made from design drawings.
The key question was whether or not a stormtrooper helmet was a “sculpture” within the meaning of the Act. Under the Act, copyright subsists in, amongst other things, original “artistic works”, which includes a “sculpture”, irrespective of artistic quality. If the stormtooper helmet was a sculpture, any copying of the helmets which Mr Ainsworth had originally produced would infringe Lucasfilm’s copyright in that sculpture. In addition, the question had relevance for whether Mr Ainsworth could avail himself of the defences under the Act. Under Section 51, "it is not an infringement of any copyright in a design document … for anything other than an artistic work… to make an article to the design or to copy an article made to the design". If the helmet did not qualify as sculpture, and was therefore not an artistic work, Mr Ainsworth had a defence to an English copyright action based on the claim that the helmets were made to the design recorded in the documents.
The Supreme Court (agreeing with the Court of Appeal and first instance judge) held that the stormtrooper helmet was not a "sculpture" under the Act and that Mr Ainsworth had a defence under the Act. Lords Walker and Collins stated:
"It would not accord with the normal use of language to apply the term “sculpture” to a 20th century military helmet used in the making of a film...however great its contribution to the artistic effect of the finished film. The argument for applying the term to an Imperial Stormtrooper helmet was stronger, because of the imagination that went into the concept of the sinister cloned soldiers dressed in uniform white armour. But it was the Star Wars film that was the work of art. The helmet was utilitarian in the sense that it was an element in the process of production of the film."
As a result, Mr Ainsworth is free to continue making and selling stormtrooper helmets in the UK.
The US Angle
The Supreme Court then considered the question of whether the US copyright claim was justiciable in the English courts.
Previously, the Court of Appeal had decided the claim was non-justiciable, applying by extension the rule in the nineteenth century case of British South Africa Co v Companhia de Moçambique. That rule said the English court had no jurisdiction to entertain an action for the determination of title to, or the right of possession of, foreign land, or the recovery of damages for trespass to such land. The Court of Appeal decided the rule was an example of a general principle which applied by analogy to claims for infringement of foreign intellectual property rights and further that the English court was not required to exercise jurisdiction in respect of such a claim under article 2 of the Brussels I Regulation.
However, the Supreme Court held that, provided there is a basis for personal jurisdiction over the defendant, an English court does have jurisdiction to try a claim for infringement of the type involved in this case, that is to say infringement of the US copyright in the helmet. The Supreme Court went on to state that "there is no doubt that the modern trend is in favour of the enforcement of foreign intellectual property rights", citing the Brussels I Regulation and the Rome II Regulation in support, and emphasizing "there are no issues of policy which militate against the enforcement of foreign copyright". In light of this conclusion, the Supreme Court did not feel it necessary to decide on argument based on the Brussels I Regulation.
The decision on the meaning of "sculpture" will come as no surprise, given that it seems to accord with the natural meaning of the word, and follows the decision of the two courts below.
The conclusion on justiciability of the US copyright claim is of far greater potential significance. Even if it does not bring a flood of new cases from overseas claimants, it may lead to claims which would have been brought in the UK anyway being broadened to include acts of infringement committed abroad as well as those committed here. The Supreme Court also indicated that this principle could also apply to intellectual property rights other than copyright, at least those rights the existence of which is not dependent on the grant or authority of a foreign State. This would seem to rule out, at least for the present, the justiciability in English courts of claims for infringement of overseas patents, at least those in which there is put in issue the patent's validity.