A recent decision of the English Court of Appeal considered the meaning of the term "sculpture" in a copyright context well as a conflict of law issue.
During the course of making the first Star Wars film, Lucas Film Limited ("Lucas Film") had created for it paintings and drawings showing scenes that included storm troopers and their helmets and armour. Lucas Film asked a designer who was a UK national to develop a final version of the helmet and armour of the storm trooper in plastic.
After the film was made, the designer kept the moulds that he used to make the helmets and the armour. In 2004, the designer set up a website from which he sold copies of the helmet and the armour he had created for the film. It was emphasized that the replicas were made from the original moulds. Some of the replicas were sold to customers located in the United States. The server was located in the United Kingdom but the price for the products was quoted in US dollars.
When Lucas Film became aware of the designer’s activities, it initiated an action for infringement of copyright and other related relief in California. The designer unsuccessfully challenged the Court’s jurisdiction. Eventually, a US default judgment was obtained for $10 million dollars. Subsequently, proceedings were brought in the UK to enforce the US copyright and the default judgment.
Under US law, the designer’s actions were an infringement of the US copyrights owned by Lucas Film, however, under UK law, the helmet and armour would only be protected if they were "sculptures" within the meaning of the UK Copyright Act.
The Canadian Copyright Act contains a similar concept relating to "sculptures" but the exemption from infringement applies to useful articles which are defined to mean articles, including models, which have a utilitarian function, that is, a function other than merely serving as a substrate or carrier for artistic matter. Most sculptures will not likely be considered to be a "useful article."
Meaning of "Sculpture"
The Court said that a precise definition of the term was not possible but agreed with the Trial Judge’s list of considerations, which were described as signposts to the right answer. It is not possible or wise to attempt to devise a comprehensive or exclusive definition of "sculpture" sufficient to determine the issue in any given case.
The list of considerations developed by the Trial Judge was as follows:
- Some regard should be made to the normal use of the word "sculpture."
- The concept can be applicable to things beyond what one would normally expect to find in an art gallery.
- It is inappropriate to stray too far from what would normally be regarded as sculpture.
- No judgment should be made about artistic worth.
- Not every three dimensional representation of a concept can be regarded as a sculpture.
- It is of the essence of a sculpture that it should have, as part of its purpose, a visual appeal in the sense that it may be enjoyed for that purpose alone, whether or not it might have another purpose. The purpose is that of the creator. An artist (in the realm of the visual arts) creates something because it has visual appeal which he wishes to be enjoyed.
- The fact that the object has some other use does not necessarily disqualify it from being a sculpture, but it still has to have the intrinsic quality of being intended to be enjoyed as a visual thing. For example, a pile of bricks, temporarily on display at the Tate Modern for 2 weeks, is plainly capable of being a sculpture. The identical pile of bricks dumped at the end of a homeowner’s driveway for 2 weeks preparatory to a building project is equally plainly not. The difference is determined in having regard to purpose. One is created by the hand of an artist, for artistic purposes, and the other is created by a builder, for building purposes.
- The process of fabrication is relevant but not determinative. There is no reason why a purely functional item, not intended to be decorative, should be treated as a sculpture simply because it is, for example, carved out of wood or stone.
After applying these considerations, it was decided that the helmet and armour were primarily utilitarian and lacked artistic purpose and therefore, not protected.
The Enforcement of Foreign Intellectual Property Laws The Court said that foreign intellectual property rights should be treated in the same fashion as claims concerning foreign property. Rights concerning foreign intellectual property are strictly territorial in nature and courts following the common law tradition should decline to entertain actions concerning their enforcement.
The Court referred to the following reasons in support of its decision:
- Infringement of copyright is essentially a local matter involving local policy and local public interest, which is a matter for local judges.
- Enforcement may involve a clash of the IP policies of different countries.
- Extra-territorial jurisdiction will involve a restraint on actions in another country which should be avoided.
- If national courts of different countries all assume jurisdiction, there is too much room for forum-shopping.
- International agreements about copyright have refrained from putting in place a regime for the international litigation of copyrights by the courts of a single state.
- The decision is consistent with previous decisions involving patents.
As a result, the Court refused to enforce US copyright owned by Lucas Films. The Court also refused to enforce the US judgment.
The decision has restated the law concerning sculptures and will be persuasive in Canada. It is also helpful on the conflict of law issue.