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The United Kingdom's Supreme Court has confirmed that utilitarian articles do not attract copyright protection as “sculptures” in the country, but the door is open to international intellectual property litigation in the English courts (Lucasfilm Ltd. v. Ainsworth,  UKSC 39).
In a key decision handed down on July 27 in the Star Wars Stormtrooper helmets case, the Supreme Court ruled that copyright does not subsist in the Stormtrooper helmets and that Lucasfilm's U.K. copyright in the underlying designs is not infringed by the manufacture and sale of replica helmets by the defendant, Andrew Ainsworth, in the United Kingdom. However, the court did accept jurisdiction to hear claims of infringement of Lucasfilm's U.S. copyright.
The U.K. film and TV industry is likely to be disheartened by the decision which will limit copyright protection for costumes and props featured in productions, at a time when merchandising revenue is crucial. The Supreme Court has unsurprisingly refused to interfere with the trial judge's decision that U.K. copyright is not infringed by the replica Stormtrooper helmets because they are not “sculptures.” The decision reinforces the need for producers to control the ownership and exploitation of secondary rights relating to film productions tightly.
The media industry, software developers, and other rights holders can take comfort, however, from the court's acceptance of jurisdiction to hear foreign copyright claims. This could pave the way for cross-border copyright infringement actions in the United Kingdom and may also lead English courts to accept jurisdiction over other foreign IP disputes.
The case commenced in the United States when Lucasfilm Ltd. took action against Ainsworth for sales of replica Stormtrooper helmets into the United States via his website. Ainsworth had been engaged to produce props for the first Star Wars film back in 1976, including the Stormtrooper helmets, and still owned the original molds. George Lucas had devised the concept and ideas for the props and conveyed these to an artist who had drawn sketches of the characters and their attire, on which Ainsworth based the 3D prototypes with further input from Lucas and with some refinement of his own.
In 2006, Lucasfilm was awarded summary judgment before the U.S. District Court of Central District of California in respect of its claims for copyright infringement, unfair competition, and trademark infringement, after Ainsworth unsuccessfully challenged the court's jurisdiction and then took no further part in the proceedings. Lucasfilm Ltd v. Shepperton Design Studios Ltd., No. CV05-3434 (C.D. Cal. Sept. 26, 2006).
An award of $5 million for copyright infringement, $5 million for trademark infringement and unfair competition, and $10 million in multiple damages for trademark infringement was granted to Lucasfilm. Ainsworth's admitted sales in the United States were modest and not more than $30,000.
After failing to enforce the judgment against Ainsworth in the United States (since he was not present there and had no assets in the jurisdiction), Lucasfilm brought its claim before the English courts. Here it claimed for (among other things) copyright infringement, enforcement of the U.S. monetary judgment, and enforcement of its U.S. copyright.
Taking account of the defenses available to Ainsworth under Sections 511 and 522 of the Copyright, Designs and Patents Act 1988 (“CDPA”), Lucasfilm had to establish that the Stormtrooper helmets qualified as “sculptures” under CDPA Section 4 (such that these defences would not apply).
At first instance, Justice George Mann of the Chancery Division of the English High Court set out a number of factors which may be considered when determining whether a work was a “sculpture.” He held that because the primary function of the helmets was utilitarian, they did not have the necessary quality of artistic creation, lacked artistic purpose and therefore did not qualify as sculptures. The decision was upheld by the Court of Appeal.
The Supreme Court agreed with the decisions of the courts below, affirming the guidelines set out by Mann. The court held that:
“[I]t would not accord with the normal use of language to apply the term ‘sculpture’ to a 20th century military helmet used in the making of a film … however great its contribution to the artistic effect of the finished film. The argument for applying the term to an Imperial Stormtrooper helmet is stronger, because of the imagination that went into the concept of the sinister cloned soldiers dressed in uniform white armour. But it was the Star Wars film that was the work of art that Mr Lucas and his companies created. The helmet was utilitarian in the sense that it was an element in the process of production of the film.”
The court went on to say, in cases such as this, it should be reluctant to reverse the decision of a trial judge unless there has been an error of law or he has reached “an obviously untenable conclusion.”
The high court and the Court of Appeal both carried out an extensive review of case law on jurisdiction over foreign IP disputes. The high court held that an English court can, and in appropriate cases should, determine at least questions of infringement of foreign copyright cases, Mann said he could see no reason why foreign questions of subsistence could not also be decided in England.
His Honour thought the most compelling reason for deciding such a claim was that Ainsworth had not accepted the jurisdiction of the U.S. court and therefore it would be strange to accept the submission that the claim should not be determined in the United Kingdom because the United States was the only appropriate place to bring the claim. Mann recognized that there may be public policy reasons why such issues should not be heard here, but resolved that problem by saying that it could all be dealt with under the doctrine of forum non conveniens.
However, the Court of Appeal disagreed and overturned this element of the decision, holding that there are good reasons why infringement of foreign IP rights, registered or not, should not be justiciable in the United Kingdom, in particular where there is no treaty governing the position.
The jurisdiction issue on which the Supreme Court was asked to decide was a fairly narrow one, namely “whether the English court may exercise jurisdiction in a claim against persons domiciled in England for infringement of copyright committed outside the European Union in breach of the copyright law of that country.”
Overturning the Court of Appeal's decision, the Supreme Court came to “the firm conclusion that, in the case of a claim for infringement of copyright of the present kind, the claim is one over which the English court has jurisdiction, provided that there is a basis for in personam jurisdiction over the defendant” (for example, if the defendant is resident in the jurisdiction or has otherwise submitted to the jurisdiction of the court).
When considering the application of the act of state doctrine,3 the court held that such a doctrine has in England “not been applied to any acts other than foreign legislation or governmental acts of officials … and it 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.”
Further, the court held that recent developments in European law have undermined any argument that there is a policy reason for refusing jurisdiction over foreign IP infringement claims. There are no issues of policy which require English courts to refuse to enforce foreign copyright, and, on the contrary, “states have an interest in the international recognition and enforcement of their copyrights, as the Berne Convention … shows.” A lack of an international regime for the mutual recognition of copyright jurisdiction and judgments was in the Supreme Court's opinion, no reason for refusing jurisdiction.
This case clearly demonstrates the national boundaries of copyright law and the difficulties with cross-border enforcement. Ainsworth is now entitled to continue his activities in the United Kingdom, but it is likely the English court will enjoin him from carrying on such activities in the United States.
As a result of this judgment, the United Kingdom may well be a more attractive place to bring legal action. It will now be possible to sue in the United Kingdom for acts infringing copyrights and other unregistered IP rights which occurred in a number of different countries, provided the defendant is domiciled in the United Kingdom. Previously, rights holders would have needed to litigate the infringements separately in each jurisdiction where their rights had been infringed.
1 Section 51 states that it is not an infringement of copyright in a design document, or model recording or embodying a design, to make an article to the design or to copy an article made to the design, unless that article is itself an “artistic work.” Hence if artistic copyright subsisted in the 3D helmet (Lucasfilm argued it was a “sculpture”), Ainsworth would have been unable to benefit from the defense.
2 Section 52 states that where an artistic work has been made by an industrial process (i.e., more than 50 copies have been made) and such articles have been marketed in the United Kingdom or elsewhere, the term of copyright protection for that work is reduced to a period of 25 years from the end of the calendar year in which the articles are first marketed (note for articles marketed before August 1, 1989, the reduced period was just 15 years). However, “sculptures” are excluded from the operation of Section 52.
3 The act of state doctrine is the principle that “every sovereign State is bound to respect the independence of every other sovereign State, and the courts of one country will not sit in judgment on the acts of the government of another done within its own territory.” Oetjen v. Central Leather Co., 246 U.S. 297 (1918).
Danielle Amor is an associate in the Intellectual Property, Media and Technology group at Hogan Lovells LLP, London.
Judgment at http://pub.bna.com/ptcj/uksc39Jul27.pdf
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