On 16 December 2009 the Court of Appeal of England & Wales gave its decision in the case of LucasFilm Ltd v. Ainsworth. The Court dismissed an appeal by LucasFilm against a first instance decision denying protection under UK copyright law to the helmets and armour of the Stormtroopers featured in the first Star Wars film and allowed a cross-appeal by the defendant against the decision of the trial court which accepted a claim against his under US copyright (which was held to have been infringed by the defendant through sales of Stormtrooper costumes and models to US customers). Both issues - the availability of copyright protection under UK law to design items and works of applied art, and the issue of the enforcement of foreign intellectual property rights in the UK - are fraught with difficulties and have had a long and complex legal history in legislation and judicial case law.
UK copyright in design items
Copyright protection in the UK has for many years been qualified in respect of works of design made for industrial mass production. Such works can be protected (subject to novelty and other requirements) as registered designs and, even without registration, as unregistered design rights. Unregistered UK design rights, however, are not generally available to non-EU entities. The application of copyright to designs is governed by complex legislation that traces its origins to the early 1800s and which since then went through numerous revisions. Simply put, however, under section 51 of the Copyright, Designs and Patents Act 1988 (UK) (the "CDPA"), it is not an infringement of copyright in a design or design documents (i.e., drawings recording the design) to make articles to the design, except where the design is for an 'artistic work'. Further, under section 52 of the CDPA, where an artistic work is exploited in mass production, copyright protection (which would otherwise last for the life of the designer plus 70 years) is limited to 25 years (which is equal to the term of protection of a registered design), except in the case of sculptures not made for mass production.
In interpreting the legislation, the Court of Appeal in the LucasFilm case was required to decide the thorny question "what is art?" More precisely, the Court had to decide "what is a sculpture". That question is particularly difficult in the context of UK copyright law. UK legislation recognises copyright in a wide variety of "artistic works", a term which extends to graphic works (including drawings and paintings but also diagrams, maps, charts and plans), photographs, collages and sculptures. The legislation states clearly that all of the foregoing are protected "irrespective of artistic quality". Further, the statutory list of graphic works includes works of purely functional purpose and was long held to cover engineering and design drawings created for industrial purposes. In that context, the Court had to decide whether the moulds and models for the helmets and armour of the Stormtroopers, created as props and costumes for fictional film characters, and the models of Stormtroopers and other Star Wars characters created as toys, amounted to artistic works as "sculptures". It held they did not.
The Court adopted the approach of the trial judge who identified a list of guidelines as to what could amount to a 'sculpture'. Both Courts warned themselves against applying artistic judgment which is clearly prohibited by the legislation. No precise definition was adopted but the overarching principle appears to focus on the purpose for which the work was created. The Court held that a sculpture is a work "of the artist's hand" intended to be appreciated as a work of art. This means that whether or not a three dimensional work is a sculpture may depend on whether its creator purported to create it as a work of art and whether it was meant to be appreciated (at least primarily) for its visual or artistic merit. As the trial judge put it, a pile of bricks created by an artist to be displayed in an art gallery is undoubtedly a sculpture; a similar pile made by a builder preparing works across the road is clearly not.
The Court of Appeal was quite clear that objects created as toys would rarely be regarded as sculptures as their primary purpose is play rather than visual appreciation. The same applies to most merchandising articles and articles of applied art, interior design and most functional articles. Although functionality, as such, does not exclude an article from being a 'sculpture', if the article is created primarily for its function it is unlikely to be treated as a sculpture for copyright purposes. In applying this approach to the case at hand, the Court held that although the helmets and armour were not 'real' helmets and armour, they were nevertheless, created as helmets and armour for their utilitarian purposes (within the film) as costumes and props. Their function was to identify fictional characters and to express the nature and characteristics of the characters. Notwithstanding the artistic context, the Court held that neither the helmets and armour nor the Stormtrooper toy models were created to be appreciated as works of art. Although copyright undoubtedly subsisted in the drawings of the Startroopers and the technical drawings of their helmets and armour (as graphic works), these drawings were 'design documents' and, therefore, under section 51 of the CDPA, it was not an infringement of copyright in those drawings to make articles to those designs. The upshot was that it was not an infringement of UK copyright to make and distribute 3 dimensional copies of the Stormtrooper helmet and armour or models of the characters.
Enforcement of non-UK copyright
Whereas UK copyright protection was held not to extend to the Stormtroopers' helmets and armour, it was not in dispute that copyright subsisted in these articles under US law and that it was infringed in the US by the defendant through sales to customers in the US made through the defendant's website. It was argued that the website itself was targeted at the US market but nothing turned on that point. The question the Court of Appeal had to address in this respect was whether the English court had jurisdiction to hear a claim for the infringement of the US copyright. The trial court answered affirmatively giving judgment to the claimants for infringement of US copyright. The Court of Appeal reversed the decision holding that an English court should not enforce US copyright, in any circumstances.
The Court of Appeal cited English, Commonwealth and US cases holding that, as a matter of policy, some issues, such as title in land, should be reserved to local courts. Accordingly, even if a court in another jurisdiction acquires personal jurisdiction over the parties, it may not have jurisdiction over the subject-matter, where it is one of the matters reserved to local courts. This principle was enshrined in the EU's Brussels Convention on jurisdiction of 1968 (now part of an EU Regulation on jurisdiction and mutual recognition of judgments). The Convention or Regulation applied the principle of exclusive 'local' jurisdiction, as between member states of the EU, to certain categories of cases, such as cases concerning title or occupation of land, status of local companies and cases concerning the validity of patents, trademarks, designs and other registered rights (which are granted nationally). On the other hand, the Convention requires the courts in each EU country to accept jurisdiction (in non-reserved cases) where the claim is brought against a defendant domiciled in that country. Accordingly, a UK court will not examine the validity of a patent, trademark or design granted in another EU country but will have to hear a case alleging infringement of copyright in any other EU member state (as copyright does not require registration) if the defendant is based in the UK.
The trial judge adopted a similar approach to the enforcement of US copyright, drawing a distinction between cases that concern the validity of registered rights (such as patents or registered designs) which are in the exclusive jurisdiction of the courts of the relevant country, and cases concerning the infringement of rights, and particularly the infringement of copyright, which subsists without registration.
The Court of Appeal rejected the distinction. It held that whilst it was appropriate to draw such distinctions in an international treaty that deals comprehensively with issues of jurisdiction and mutual recognition of judgments, it is not a matter for judge-made law. All intellectual property rights, whether registered or not, are monopolies or semi-monopolies granted by a state and affecting commerce and prices of goods and services in that country. Therefore, it was held, a court in another country should not assume jurisdiction over the enforcement of such rights, unless it is agreed that it should do so in an international treaty. The Court found support to this view in the US Federal Court of Appeals decision in Voda v. Cordis. The bottom line is that an English court will not hear a case for the infringement of US copyright arising out of sales of infringing items in the US, even if the defendant is based in the UK.
The result in the Star Wars case was very fortunate for the defendant who had made every effort to escape the jurisdiction of the courts in the US. A judgment in default (for $20 million in damages) was handed down against the defendant by a court in California, but the English court (in both instances) held that it was unenforceable in the UK. The reason was that, from an English law point of view, the California court had no personal jurisdiction over the defendant who was not present in the US and did not submit to the jurisdiction of the California court.
Protection of designs under UK law
Whilst copyright protection in the UK is qualified in respect of designs, it is possible to obtain alternative intellectual property right protection to such works. Designs can be protected by registration, either as UK or as Community designs. The latter provide protection throughout the European Community. The external features of almost any article can be registered as a design (except designs dictated purely by their function). Registered design rights can last up to a maximum term of 25 years. In addition, UK law protects unregistered 'design rights' for a term of between 10 and 15 years (depending on the date the design was created and the date it was first put on the market) and European Community law protects unregistered designs for a short period of 3 years from their first commercialisation. UK and Community registered design protection is available to non-EU designers and manufacturers. The UK design right, however, is unique to the UK and (with few exceptions) is only available to UK- and EU-based entities. This means that US and other non-EU manufacturers of articles of functional design, including clothing, toys, fictional characters, merchandising articles and works of applied art, will only have short term protection for three years (as unregistered Community designs) unless they register the designs at the UK or Community level.
The European Community designs registration system (and the UK system which replicates it) allow applicants to acquire intellectual property protection in a simple, inexpensive and quick procedure. It is a notification system without examination or opposition. The scope of designs capable of registration is very wide. The external features of any article (including surface decorations) can be registered if they meet the requirements of novelty and individual character. In order to ensure novelty, an application to register the design has to be filed no more than 12 months after publication or first marketing of the product in question. Registration creates an exclusive right (for up to 25 years) to use the design and any other design "which does not produce on the informed user a different overall impression". This means that protection is not limited to exact replicas but extends also to imitations or copycats which are sufficiently close to the registered design.
There is little doubt that the helmets and armour of the Startroopers could have been registered as Community or UK designs if an application had been filed within the 12 months priority period (although, if any such designs had been registered at the time the first Star Wars movie came out, around 1977, their period of protection as designs would have been over by now). Similarly, most designs for costumes, fictional characters, toys, merchandising goods and most functional designs are capable of protection as registered designs. Where possible, it is also highly advisable to seek registration of such works as trademarks (again, either at the UK or at the European Community level, as Community trademarks). There are no novelty or individual character requirements and registrations can be indefinitely. The scope of protection is also wider than that of registered designs. Trademarks provide very effective protection against imitations and copycats. The difficulty, however, is that in many cases designs will not be accepted for registration as trademarks on the grounds that they do not serve to indicate the origin of the product and, therefore, they may be held to be incapable of distinguishing the products of a particular undertaking. In some cases, defences can also be raised on similar arguments against the enforcement of trademarks. No such defences apply in the context of registered designs.