In Lucasfilm v Andrew Ainsworth the Court of Appeal has ruled on various copyright issues including what constitutes a ‘sculpture’ within the Copyright Designs and Patents Act 1988 (CDPA) and whether US copyright can be directly enforced in the English courts.

Background

Section 4 of the CDPA defines an artistic work as

“..a graphic work, photograph, sculpture or collage irrespective of artistic quality”

A “sculpture” is further defined as

“a cast or model made for the purposes of sculpture”

Section 51 of the CDPA provides:

“It is not an infringement of any copyright in a design document …for anything other than an artistic work …to make an article to the design …..”

Facts

Lucasfilm was the production company behind the Star Wars films. In 1976, Lucasfilm approached Mr Ainsworth to make helmets and armour for the Stormtrooper characters in the films. Lucasfilm provided Mr Ainsworth with two drawings of the stormtroopers and a prototype helmet. Using these, Mr Ainsworth created moulds to produce the helmets and armour.

Mr Ainsworth kept the moulds he created and in 2004 set up a website selling helmets and armour made using these moulds. Although Mr Ainsworth was based in the UK, sales were made to customers in the US through the website.

Lucasfilm brought copyright infringement proceedings against Mr Ainsworth in the US courts resulting in $10 million of compensatory damages being awarded to Lucasfilm. Lucasfilm subsequently commenced copyright infringement proceedings against Mr Ainsworth in the English courts. The proceedings centred on the helmets.

The High Court held that the prototype model was neither a sculpture nor a work of artistic craftsmanship and was not protected by copyright. Mr Ainsworth’s was producing helmets using his mould which reproduced the drawings of the helmets but as the helmets were not artistic works Mr Ainsworth had a defence under section 51. The court refused to enforce the US judgment but agreed to directly enforce US copyright here and granted an injunction restraining Mr Ainsworth from advertising in any publication aimed at the US or sending replica helmets to the US.

Lucasfilm appealed.

Decision

The Court of Appeal agreed that the prototype helmet was not protected by copyright as an artistic work as it was not a sculpture. To be a sculpture a work must be created primarily for the purpose of visual appeal in the sense that it might be enjoyed for that purpose alone. A purely functional item could not be a sculpture. The prototype helmet was utilitarian and lacked any artistic purpose.

The drawings were protected by copyright as artistic works. Making the helmets reproduced the drawings. However, Mr Ainsworth had a defence to this copyright infringement under section 51 as the helmets were not artistic works.

The parties accepted that Lucasfilm had US copyright which Mr Ainsworth had infringed. However, the Court of Appeal refused to directly enforce Lucasfilm’s US copyright. Such an issue was not justiciable in the English courts. Infringement of an IP right was essentially a local matter involving local policies and local public interest. It was matter for local judges. Granting an injunction to restrain Mr Ainsworth’s acts of sale into the US would place a restraint on actions in another country – an interference which a foreign judge should avoid. Assuming jurisdiction in relation to US copyright law could lead to a clash of national IP enforcement policies and may lead to increased forum shopping. Also, no international agreement had ever put in place a regime for the international litigation of copyright issues. For these “sound policy reasons” international jurisdiction over copyright infringement claims did not exist.

The Court of Appeal also refused to enforce the US judgment. The court said that it was only able to enforce the judgment if Mr Ainsworth had sufficient presence in the US. Mr Ainsworth’s only presence in the US was via his website. This was not sufficient to give Mr Ainsworth a presence in the US. Merely advertising or selling goods in a foreign country could not render the advertiser present there and the advent of the Internet and websites did not change that established rule.

Further reading Click here for a copy of the judgment