The Supreme Court of the United Kingdom rules on protection of Stormtrooper headgear and justiciability of U.S. copyright in English courts
The UK Supreme Court (which has replaced the House of Lords as the highest judicial body) has upheld the lower courts’ decisions in a dispute involving copyright in the helmets of the “Stormtrooper” characters from the Star Wars film series but widened the scope of non-UK copyright infringement actions.
In Lucasfilm Limited and others v Ainsworth and another, the court held that the helmets were not entitled to copyright protection under English law because they were utilitarian and were not sculptures that could qualify for protection as artistic works.
This aspect of the decision, while attracting widespread publicity, is of relatively narrow application as a point of legal principle. Far more significantly, the court also ruled that the claimants’ complaints that the defendant had infringed their copyright in the U.S. were justiciable before the English courts. In other words, a claim can be brought in the UK for infringement of a foreign (in this case U.S.) copyright.
The claimants produced and licensed the hugely successful series of Star Wars films. The case involved the production of body armour for the Imperial Stormtrooper soldiers that appeared in those films. The first defendant, Andrew Ainsworth, was the sole director of the second defendant (Shepperton Design Studios Limited). He was approached in 1976 to make some Stormtrooper helmets and was given two drawings and a clay model. Following this, he was asked to produce some body armour; he was given some moulds, from which he made his own. After the original Star Wars film was finished, Mr. Ainsworth kept those moulds.
Mr. Ainsworth subsequently set up a website in 2004 from which site he sold helmets and armour made from his original moulds. Some of these products were sold and delivered to U.S. customers. The claimants brought proceedings against Mr. Ainsworth in California, where the District Court ordered that the defendants pay USD$10 million for copyright and trade mark infringement.
It’s Armour, Not Art
In the English proceedings, the High Court had dismissed the claimants’ action for infringement of UK copyright, saying that the helmets and armour were not artistic works. The court also declined to enforce the U.S. judgment that Lucasfilm had obtained because the U.S. court had no personal jurisdiction over Mr. Ainsworth. However, controversially, it did consider the U.S. copyright in these items to have been infringed. The case then went to the Court of Appeal, which upheld the lower court’s decision with the exception that it did not consider the U.S. claims to be justiciable. Lucasfilm then appealed to the UK Supreme Court. The issues the UK Supreme Court had to consider were: (i) whether the helmets were sculptures; and (ii) whether the English courts could exercise jurisdiction in a claim against persons domiciled in England for infringement of copyright committed outside the EU in breach of the copyright law of that country. Lucasfilm did not persist with its challenge to the lack of enforceability of the U.S. judgment.
The UK Supreme Court confirmed that the helmets were not sculptures and that U.S. copyright claims were indeed justiciable in England.
With regards to the helmets, the court said that they were “a mixture of costume and prop” in order to contribute to the artistic effect of the film. The helmets were utilitarian because they were an element in the process of production of the film. The work of art lay in the film that Lucasfilm had created, therefore, and not in the helmets.
Enforcement of Foreign Intellectual Property Rights
In Lucasfilm, the UK Supreme Court also said that the English courts could have jurisdiction over a copyright claim such as the one at issue provided they had personal jurisdiction over the defendant.
In the past, the English (and some British Commonwealth) courts had applied the so-called Moçambique rule which related to a dispute over land and which basically said that the English courts would not exercise jurisdiction in relation to matters that were “local” in nature and that occurred beyond the territorial limits of those courts. In Lucasfilm, however, the UK Supreme Court ruled that the Moçambique rule had been eroded by subsequent legislation and had in any event probably been given wider application than was justified, particularly as regarded disputes relating to non-registrable intellectual property such as copyright. It therefore no longer prevented actions for damages for infringement of immovable property rights in jurisdictions outside the UK from being considered in English courts. The rule survived to the extent that controversies should be decided in the country of the property itself because the right of granting it was vested in “the ruler of the country.” The court said it was hard to see how this applied to copyright (though it might still apply to patents).
The court also observed that the current trend was for the enforcement of foreign intellectual property rights against persons over whom the national court exercised personal jurisdiction, for example through domicile. In addition, there were no policy issues that conflicted with enforcement of foreign copyright. Indeed, states had an interest in promoting the international recognition and enforcement of copyright.
The UK Supreme Court did not have to consider whether the High Court was correct in ruling that Mr. Ainsworth had in fact infringed the U.S. copyright. This means that Mr. Ainsworth still faces liability with regards to the U.S. copyright infringement claims. It is not clear what quantum of damages the claimants are entitled to get in respect of the U.S. copyright infringements.
The court’s analysis of what constitutes a sculpture for English law and its view that the helmets are utilitarian rather than artistic are noteworthy, but the main significance of the ruling is in making clear that U.S. copyright infringement claims are justiciable in the UK. This decision potentially allows claims for foreign copyright infringement to be dealt with by the English courts, provided those courts have personal jurisdiction over the defendant. However, this does not necessarily mean that all foreign IPR infringement claims may be heard in the English courts in such cases, because the case at hand concerned copyright only and the court was asked to consider only a narrow range of issues. For the time being, therefore, claims in the UK for infringement of foreign (for example, U.S.) patents which also concern validity will be probably not be entertained in the UK.
The UK Supreme Court’s ruling on the justiciability of the U.S. copyrights potentially has practical implications. If the court had decided that they were not enforceable before the English courts, this could have had consequences for whether film makers decided to send their work to the UK in the future.