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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Help me, Obi-Wan Jacobi; you're my only hope!

A long time ago in a galaxy far, far away… well, in 1976 California, Lucasfilm began developing Star Wars.  The iconic Imperial stormtrooper helmets and uniforms were made by Andrew Ainsworth and his company Shepperton Design Studios Limited in England.  He kept the moulds for the vacuum-forming of the plastic parts.  In 2004 he began selling stormtrooper helmets, including helmets to a value of approximately $14,500 to some US customers.

As a result, a copyright infringement, unfair competition and trade mark infringement action was brought by Lucasfilm Limited and the associated rights holders (together, “Lucasfilm”) against Ainsworth in a District Court in California.  That action succeeded, with Lucasfilm 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.  In a High Court judgement given on 31 July 2008, Lucasfilm largely failed. They appealed. Lord Justice Jacob gave the Court of Appeal judgement yesterday. It should not be a surprise to Star Wars fans that the lone crusader overcame the might of the Lucasfilm “Empire”, but how did the Court of Appeal save the “plucky Brit” from certain bankruptcy and ruin?

UK Copyright

Part of the Lucasfilm claim was that the helmets were a sculpture.  A sculpture is an “artistic work” within the meaning of s.4(1)(a) of the Copyright, Designs and Patents Act 1988, which, by s.4(2)(b), includes a cast or model made for purposes of sculpture.  If Lucasfilm were able to show that the prototype helmet was a sculpture, then copyright in it would have been protected for 70 years from the death of the author/sculptor (s.12(2)).  If the helmet was not a sculpture, then 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 has expired.  How the period of protection ends up being 15 years is set out in the High Court judgement; it is largely the result of transitional provisions in the 1988 Act, so that the 15 years protection in s.10 of the Copyright Act 1956 applies.  If the helmets had been reproduced after the effective date of the relevant provision in the 1988 Act, s.52 (1 August 1989), then the protection period would have been 25 years.

The Court of Appeal upheld the High Court judgement that the prototype helmet was not a sculpture.  

The Court of Appeal upheld the application of the s.51 defence by the High Court, which permits the making or copying of an article to a copyright design document for anything other than an artistic work or typeface.  It also upheld the application of the s.52 defence, which allows anyone to copy an article after a set period from when the article has been subject to mass production under an industrial process and marketed by a copyright owner (or licensee).  In applying the defence of s.52, it was noted that Lucasfilm had licensed the reproduction of the helmet design in toy stormtroopers, so that the defence applied. 

Lucasfilm’s UK copyright actions therefore failed.

US Copyright

It was clear that the Court of Appeal was not minded to allow Lucasfilm to enforce US copyright in the UK.  Having determined that it was not bound by any binding authority, the Court of Appeal decided 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.  This part of the judgement was well argued, as it is one of the points in the judgement that is more likely to be appealed to the Supreme Court by Lucasfilm. 

It was also clear that the UK courts were not sympathetic to the plea by Lucasfilm to enforce the US copyright judgement, particularly as the damages awarded under the US system were massively out of step with what a UK court would award.  This came down to the fact that Andrew Ainsworth had no physical presence in the US, and his website offering the sale of the helmets, although priced in £ and US$ with shipping charges for the US (and Canada), was not determined to be directed at the US, even though there was some advertising of it in the US.  This is an interesting finding for all internet and web-related cases.  The Court of Appeal was not persuaded that owning and operating a website meant that the website owner has a presence in another jurisdiction.

Possible Appeal

As has been noted in other blogs, Star Wars features have tended to come in threes.  Given that we’ve had a High Court Star Wars I and Court of Appeal Star Wars II, we only need the Supreme Court appeal to make the set.  Given the importance of the legal principles raised in the judgements, and the willingness of Lucasfilm to defend its rights in all aspects of the Star Wars films by whatever means, it is to be expected that there will be a Star Wars III.