Will the “Empire” triumph in the end?

In an earlier blog – Help me, Obi Wan Jacobi, you’re my only hope – I described Andrew Ainsworth’s battle with Lucasfilm Limited and others concerning the iconic Imperial stormtrooper helmets and uniforms made by him and his company, Shepperton Design Studios Limited, in England.  He had kept the moulds for the plastic parts made for the original Star Wars film.  In 2004 he began selling stormtrooper helmets, including helmets to a value of approximately $14,500 to some US customers.

Lucasfilm Limited and the associated rights holders (together,“Lucasfilm”) succeeded in an action against Ainsworth in a District Court in California, being awarded $5m damages for copyright infringement, $5m for trade mark infringement and unfair competition, together with an additional $10m compensatory damages.  Lucasfilm sought to have the US judgement enforced in the UK, as well as bringing a UK copyright infringement action.  Lucasfilm largely failed in both the High Court and Court of Appeal, but appealed further to the Supreme Court. The Supreme Court handed down its judgment on 27 July 2011 (Lucasfilm Limited and others v Ainsworth and another [2011] UKSC 39).

By the time the case reached the Supreme Court, the issues had narrowed down to whether the helmets could be considered to be sculptures and the justiciability of the US copyright infringement claim (ie could Lucasfilm bring the US infringement case before the English courts, as Andrew Ainsworth is domiciled in England).

The High Court and Court of Appeal had decided that the helmets were not sculptures.  As a result, copyright protection of the drawings of the helmet in which Lucasfilm held the copyright would only be for a period of 15 years from the first marketing of reproductions, a period that had expired.  If the helmets were sculptures, then the copyright in it would have been protected for 70 years from the death of the author/sculptor, a period that was still running, meaning the Lucasfilm would have a valid UK infringement case.

The Court of Appeal had considered that Lucasfilm could not enforce US copyright in the UK, determining that foreign, non-EU (or Lugano Convention) copyrights are non-justiciable in England and that the application of forum non conveniens did not apply to international copyright cases.  In doing so it had overturned the High Court decision.

The Supreme Court unanimously upheld the Court of Appeal’s view that the helmets were not sculptures but ruled that the US copyright claims were justiciable in English courts.

On the sculptures point, the Supreme Court carried out a detailed review of the legislative history of the current statutory provisions and previous authorities on the meaning of “sculpture” before coming to its decision.

On the question of justiciability of foreign copyright claims, the Supreme Court concluded after a careful consideration of common law on jurisdiction, that where there is a basis for in personam jurisdiction over a defendant, an English court does have jurisdiction to try a claim for infringement of copyright.  What will be of interest to copyright lawyers now, is upon what basis will an English court award damages?  Clearly an award in an English court on a US measure of damages would be a major development.

It is tempting in a law blog to describe in detail how the Supreme Court came to its conclusions, but in a welcome sign of the Supreme Court’s new approach to its role, not only is the full judgment relatively short, but the court also published a summary – no longer will law students or court reporters need to prepare case head notes for Supreme Court decisions.  I recommend that if you are interested in the case, read the Supreme Court’s press summary.

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