The saga so far
A long, long time ago, in a decade far, far away (well - the early 1970s!), a young film maker (George Lucas) wanted the Imperial Stormtrooper characters he intended to appear in his first Star Wars film to wear "fascist white-armoured suits". This concept was put into three-dimensional form by a prop-maker, along with Mr Ainsworth who was skilled in vacuum moulding. Mr Ainsworth produced several prototype plastic vacuum-moulded helmets from clay models. Mr Lucas approved one and Mr Ainsworth made 50 helmets for use in the film.
Lucasfilm Limited and two other companies owned by George Lucas (together Lucasfilm) now own, between them, all the copyrights in the artistic works created for the Star Wars films. The Star Wars films continue today to be a huge commercial success, together with the merchandising empire of Lucasfilm (which includes licensed models of Imperial Stormtroopers and their equipment).
In 2004 Mr Ainsworth started using his original tools to make versions of the Imperial Stormtrooper helmet and other artefacts for his own business and sold them to fans in the US and the UK. Mr Ainsworth was then, and remains, domiciled in the UK.
Lucasfilm moved to protect its rights and in its UK proceedings it originally claimed that:
- these sales infringed its UK copyright - the original helmets being either works of artistic craftsmanship or sculptures;
- the infringement judgment Lucasfilm had already obtained from the US courts should be enforced by the English courts against Mr Ainsworth in the UK; and
- the English courts should decide upon its claim that Mr Ainsworth had infringed its US copyright.
The English High Court decided that:
- the helmets were neither works of artistic craftsmanship or sculptures and
- the US Judgment could not be enforced in the UK; however
- the English courts could entertain Lucasfilm's US copyright claim against Mr Ainsworth.
The Court of Appeal agreed with points 1 and 2, but disagreed with 3.
The empire strikes back
Lucasfilm appealed to the Supreme Court although it did not appeal the finding that the US judgment in its favour could not be enforced in the UK. By the time the action had reached the Supreme Court, Lucasfilm had also dropped its claim that the helmets (and other artefacts in issue) were works of artistic craftsmanship. Therefore the two main issues the Supreme Court had to decide were:
- was the helmet a work of "sculpture" so as to qualify for protection under UK copyright law as an "artistic work" and
- could the English courts entertain Lucasfilm's claim of infringement of US copyright?
A sculpture or a functional prop?
The Concise Oxford English dictionary defines sculpture as the:
"Art of forming representations of objects etc or abstract designs in the round or in relief by chiselling stone, carving wood, modelling clay, casting metal, or similar processes; a work of sculpture."
Under section 4 (1) of the Copyright, Designs and Patents Act 1988 an "artistic work" includes "(a) a graphic work, photograph, sculpture or collage, irrespective of artistic quality".
If the helmet was not an "artistic work" then the replicas made by Mr Ainsworth would not be infringements of UK copyright as under section 51:
"it is not an infringement of any copyright in a... model recording or embodying a design for anything other an artistic work...to make an article to the design or to copy an article made to the design" (although such an act may be protected against by the alternative - but far shorter - unregistered design right).
The Supreme Court reviewed earlier case law on the meaning of sculpture from the UK and elsewhere. This included cases in which the plaster shapes made for the production of Breville® toaster heating plates and the hand carved wooden model for a Frisbee® throwing disc were held to be sculptures.
Several judges had previously suggested that "sculpture" should be given its ordinary dictionary meaning. However the Supreme Court noted that that millions of ordinary household objects (which no ordinary citizen would consider to be "sculpture") were formed by "chiselling stone, carving wood, modelling clay, casting metal, or similar processes". Not enough emphasis had been placed on the words "art" and "work" in the dictionary definition.
To be a sculpture the item needed to have been produced "for the purposes of sculpture" and there must be "some element of artistic expression however unsuccessful". The preferred definition was that "a sculpture is a three-dimensional work made by an artist's hand"; the court is therefore concerned with "the artistic purpose" or otherwise of the item although not its artistic merit.
Lucasfilm argued that the helmet's purpose was wholly artistic (to make a particular visual impression on the film's audience) and had no functional purpose at all. The Court disagreed. The film 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". It was a prop just as much as a replica of a World War II helmet for a more historical film was a prop. The lower courts were entitled to come to this conclusion which was the type of multi-factorial "judgmental conclusion" an appeal court should be slow to interfere with.
The arm of the English courts has surprising force
However Lucasfilm was not wholly defeated, as the Supreme Court held that it could rely on its US copyright in the English courts. It concluded that foreign copyright infringement claims can be entertained by the English courts where there is no dispute as to subsistence and where the English courts have jurisdiction over the defendant.
The Court of Appeal had reached the contrary conclusion, in error, by applying the decision in the Australian Potter v Broken Hill Pty Co Ltd patent infringement case. The Court of Appeal had regarded the Potter case as extending the English Mocambique rule to intellectual property.
The Mocambique (or local action) rule prescribes that the English courts have no jurisdiction to entertain an action for (a) the determination of the title to foreign land and/or (b) damages for trespass to such land. In Potter the Victoria court refused to entertain an action for infringement in New South Wales of a patent granted by the State of New South Wales.
However the Supreme Court found that the predominant basis for the judgment in the Potter case was not in fact the Mocambique rule but the "act of state doctrine". The latter was of questionable application in intellectual property disputes generally and could not apply where the right in question was not a registered right and/or its validity was unchallenged (as here).
Furthermore that part of the Mocambique rule which concerned trespass claims had been extinguished by legislation which expressly granted the courts of England jurisdiction over claims of trespass over foreign land in certain situations (i.e. the Civil Jurisdictions Act 1982 and the EU Brussels II Regulation).
A new hope
The Supreme Court noted with apparent approval "the modern trend...in favour of the enforcement of foreign intellectual property rights". We can be confident that further claims for the infringement of foreign copyrights will follow this one into the English courts.
Of even greater potential significance is the unneeded comment made (or agreed) by the majority of the Supreme Court in respect of the "act of state doctrine" (which the court had already found could not apply here). This doctrine requires the courts of one country to refuse to sit in judgment on the acts of the government of another done within that other country's own territory. The judges in the Potter case considered the registration of a patent to be such an act and so the court of Victoria held itself unable to enquire into the validity of a patent granted by the state of New South Wales.
Four out of the five Supreme Court judges were not impressed by this strand of reasoning in the Potter case, noting that the act of state doctrine:
"should not today be regarded as an impediment to an action for infringement of foreign intellectual property rights, even if validity of a grant is in issue, simply because the action calls into question the decision of a foreign official."
Lord Mance refused to enter into this wider debate concluding only that the doctrine had no application to copyright.
However, it should be noted that the court accepted that the rationale of that part of the Mocambique rule which relates to disputes over title to foreign land could still "be applied to patents at any rate where questions of validity are involved". Further, where the validity of an intellectual property right which is registered in the EU has been brought into question, article 22(4) of the Brussels II Regulation grants the courts of the member state of registration exclusive jurisdiction to determine the dispute irrespective of the domicile of the defendant.
It is interesting that the Supreme Court was keen to point out that this EU provision applies only to intellectual property rights which are required to be deposited or registered. Furthermore, it does not apply to infringement actions in which there is no issue as to the validity of the right.