Lucasfilm Ltd v Ainsworth, [2011] UKSC 39 [Link available here], is about intellectual property rights in the Star Wars action figures which Ainsworth helped to design for Lucasfilm, many decades ago. Ainsworth more recently sold toys (including life-sized stormtrooper helmets) based on the designs over the internet for his own profit. A US court held that this infringed Lucasfilm’s copyright.

Lucasfilm sought to enforce copyright claims under UK law and to enforce its US claims in England. The trial judge rejected the former but upheld the latter. The Court of Appeal agreed there was no copyright in the toys in the UK because they were not works of art (sculptures, specifically), but held that Lucasfilm’s IP rights were not justiciable in England (absent a treaty on the subject) because they were a purely local matter. The CA also refused to enforce the US damages award (which it clearly found excessive); enforcement is predicated on the principle that the judgment debtor must be present in the foreign jurisdiction when proceedings were instituted. Selling into the US, whether over the internet or by more traditional means, did not constitute presence in the US for this purpose.

By the time the case wended its way to the UK Supreme Court, Lucasfilm claimed rights only in the life-sized helmets. The UKSC upheld the finding that, like the action figures, they were not sculptures and therefore not subject to UK copyright protection. While there was an imaginative element to them, the film for which they were commissioned was the work of art and the helmets were ultimately just utilitarian props for it; ditto the copies being sold by Ainsworth. The UKSC disagreed, however, about justiciability of the US claims in England: as long as the English court has in personam jurisdiction over the defendant, it may determine copyright claims against him or her which arise in a foreign jurisdiction (although there would be no jurisdiction on a question principally concerned with title to or possession of foreign property and perhaps not where the IP rights depend on the grant of a foreign state).

Net result: Ainsworth is free to sell his wares in the UK but not in the US (but presumably faces enforcement of the US damages award in England)[Link available here].