Lucasfilm Limited and others (Appellants) v Ainsworth and another (Respondents), [2011] UKSC 39

Summary

The Supreme Court has handed down its very first Intellectual Property (IP)-related decision, ruling on a copyright infringement case with a five year heritage.  The claim originated in the US and revolves around the manufacture and sale of replica Imperial Stormtrooper helmets and armour, made from the original moulds.  The Supreme Court found that the helmets could not be classified as “sculptures” within the meaning given in the Copyright Designs and Patents Act 1988 (the Act), and as such the UK copyright subsisting in them had already expired 15 years after first manufacture, allowing the defendant to be free to make and sell them without infringing copyright.

However the Court did uphold Lucasfilm’s claim that the US copyright infringement is justiciable in the UK.

Background

The appeal concerned intellectual property rights in various artefacts made in the 1970s for use in the first Star Wars film produced and marketed by Lucasfilm,  “Star Wars Episode IV – A New Hope”.  Prop designer Andrew Ainsworth was hired to produce the helmets for the Imperial Stormtroopers that were used in the film and subsequently became representative of the Star Wars films generally. Mr Ainsworth produced 50 helmets for use in the film from moulds that he had created from drawings and paintings produced by an artists and it was acknowledged by both parties that Lucasfilm owned the IP rights to the original articles.

In 2004, Ainsworth, realising the commercial potential started using the original moulds to create replica helmets for sale to the public.  When Lucasfilm became aware of the manufacture and sale of the new helmets, it successfully sued Ainsworth in the US for copyright infringement, obtaining a judgment in default. Ainsworth, a UK resident, did not take any part in the proceedings other than to challenge the jurisdiction of the US court on the basis that because he did not have assets in the US, the judgment could not be enforced in the US.

As a result, Lucasfilm also commenced proceedings for copyright infringement against Ainsworth in the English High Court, under English law. It also sought to enforce the US judgment in the UK, or to at least get the English court to determine its copyright claim under US law.

Under UK law, if the helmets were found to be ‘sculptures’ under the Act, they would be protected by copyright as “artistic works” for a term of the life of the author plus 70 years. As a result Mr Ainsworth’s production and sales of the replica helmets copied from the original helmets would infringe Lucas’ copyright and Lucasfilm could prevent Mr Ainsworth from producing and selling the replicas.

If, on the other hand, the helmets were not “sculptures” and therefore could not be protected as “artistic works”, the term of the copyright protection would be effectively reduced to a term of 15 years from the date on which they were first marketed, as a result of the statutory defence under section 51 of the Act (it is not an infringement in a design document recording the design for anything other than an artistic work, to make an article to that design, or to copy an article to that design). As the 15 year time period would have already expired, Mr Ainsworth would be free to produce and sell the helmets.

The High Court found that the helmets were not protected by copyright, as they were not sculptures or works of artistic craftsmanship, therefore Mr Ainsworth had a defence under section 51 of the Act. In addition, even if they had been, they would fall into the category of “design documents”, which once manufactured would accrue unregistered design right and not copyright protection.  However, the Court also held that there were no bars to the UK courts enforcing the US judgment in respect of infringement that took place in the US and that in appropriate cases (this being one), the English courts could and should determine the question of infringement of foreign copyright. As a result, it found that US copyright had been infringed.

The case then went before the Court of Appeal, which again found that the helmets did not fall under the definition of “sculpture” therefore no copyright subsisted in them. However, it did not allow for enforcement of the US judgement.

Appeal to the Supreme Court

Lucasfilm subsequently appealed the matter to the Supreme Court, where it was the first ever IP case to be heard for the newly constituted court. The appeal focused on two distinct issues:

  1. How the term “sculpture” was defined in the Coypright, Designs and Patents Act 1988 (the “Act”), and how three-dimensional objects which have both an artistic purpose and a practical function should be assessed.

Unsurprisingly the Supreme Court unanimously agreed with the previous decisions of the English courts that the three-dimensional helmet, a “mixture of costume and prop” had as its primary purpose, the utilitarian function of expressing an idea as part of a character portrayal in the film, therefore it lacked the necessary quality of artistic creation required of a sculpture. 

  1. Whether an English court has jurisdiction to enforce a foreign claim against a UK domicile for an act committed outside of the EU that constitutes an act of copyright infringement in that jurisdiction.

On the issue of foreign copyright it reversed the decision of the Court of Appeal and held that the US copyright claims were justiciable in English proceedings (on the basis that there is no European public policy against the litigation of foreign intellectual property rights and that Regulation EC864/2007 (Rome II) applies wherever in the world a tort is committed, envisaging that actions may be brought in Member States for infringements of foreign intellectual property rights) and that US copyright had been infringed.

Comment

This ruling confirms that it is actual films that are the artistic works and not the 3D props used in them, the latter serve only a utilitarian function as elements in the process of the production of the film. Therefore, full copyright protection in the UK for 3D objects will generally continue to be limited to works of fine art.

However, the most interesting element of the decision, and the part which has the most significant implications for future litigation is the fact that the US copyright claims were found to be justiciable in English courts. 

This decision allows claims for foreign copyright infringement to be dealt with by the English courts so long as that court has personal jurisdiction over the defendant. It should be noted that, given the narrow scope of the issue in this case, the decision applies to copyright infringement only, not IP infringement claims generally or claims where validity or registration are in issue. However, where the alleged infringer is domiciled in the UK, the English courts may now be considered an option for claims for infringement of copyright law in foreign jurisdictions. Therefore, whilst the sale of the helmets seems unobjectionable from an English law perspective, the Lucasfim empire may yet strike back on the US copyright.

For the full decision, please click here: