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.

European Parliament and Council: pistols at dawn?

The Bois de la Cambre outside of Brussels was once a regular venue for “pistols at dawn”, and 30 December may yet again be a fateful date.

According to a Press Release from the European Parliament, the Parliament and Council begin conciliation proceedings on the telecoms package on 4 November, which must agree a joint text by 30 December.  If they do not agree a text, or if the text is not passed without amendment by both the Parliament (on simple majority of votes cast) and the Council (by qualified majority), then the telecoms package falls and the whole process must be started with a new proposal from the Commission.

There is one open issue: the question of internet access.  This involves amendments to Article 8 of the Framework Directive 2002/21/EC (as set out in the Parliament’s second reading position paper – see relevant documents here).  In particular, the Council does not accept the Parliament amendments:

in paragraph 4 [of Article 8], points (g) and (h) shall be added:

[4.  The national regulatory authorities shall promote the interests of the citizens of the European Union by inter alia:]

(g)  promoting the ability of end-users to access and distribute information or run applications and services of their choice;

(h)  applying the principle that no restriction may be imposed on the fundamental rights and freedoms of end-users, without a prior ruling by the judicial authorities, notably in accordance with Article 11 of the Charter of Fundamental Rights of the European Union on freedom of expression and information, save when public scrutiny is threatened in which case the ruling may be subsequent.

The Council have yet, as far as we are aware, to make known to the Parliament their objections to this amendment.  It is suspected that the “prior ruling by the judicial authorities” phrase is the stumbling block, but as this has now been introduced (albeit with some controversy over the method) in France’s HADOPI II, the only member state so far with a “three strikes” law, it is a surprise that it continues to hold up the whole telecoms package.

Skype -v- Joltid: Ebay did their IPR due diligence?

As the VoIP peer-to-peer telecommunications service Skype is almost universal (currently almost 13m users online at the time of this post), there has been quite a bit of excitement about the recent Securities and Exchange Commission quarterly filings made by Ebay, Inc, the owners of Skype Technologies SA.  In the April 2009 and July 2009 filings Ebay has reported that it is in dispute with Joltid Limited, the original sellers of Skype to Ebay for $2.6billion.

In a smart bit of forum shopping, Skype has brought a case against Joltid in the English High Court, with Joltid making a counterclaim that alleges, amongst other things, that the licence agreement between the parties has been terminated.  Continued possession and use of Joltid’s Global Index peer-to-peer software technology by Skype would therefore be an infringement of Joltid’s copyright in that software.  The SEC filings describe how a successful counterclaim by Joltid could ultimately shut down Skype, unless Ebay/Skype can develop alternative software before the outcome of the court case.  The case is reported to be listed for a hearing in June 2010.

Although there is a lot of comment on the case in the public domain and on the Internet, it is not entirely clear what the cause of action is for Skype’s claim in the High Court.  It appears that Skype has got in first at the High Court, seeking declaratory relief that it is not in breach of its software licence with Joltid.  From the counterclaim, it appears that Joltid believes that Skype has breached the software licence by disclosing some of the Global Index source code in defence of various patent actions in the US, including by order of US courts.  Until the software licence is disclosed in the public domain, however, the actual cause will remain a subject of speculation.

Although there may be some commercial manoeuvring going on here, given that Joltid are reported to be looking to buy Skype back from Ebay, this does suggest an obvious lesson.  When buying a company that has a successful product or service that is highly dependent upon a key technology or other intellectual property, it serves to do a thorough job on the intellectual property rights’ due diligence.  If the relevant intellectual property rights’ licences are not irrevocable, the buyer should be absolutely clear about the licensor’s rights to terminate the licences, and the effect on the business if any licence were terminated, before completion of the sale.

One would hope that Ebay did a thorough examination of the software licensing between Skype and Joltid, for example, so that the reports of a purported termination of the Jolitd licence in their SEC filings are merely precautionary.

Creative Uncommon?

Do you know what this symbol means?  We admit we did not know, either, until we read a survey report on the use of Crown Copyright carried out by Bunnyfoot for the Office of Public Sector Information.  Yet this is the most common form of the Creative Commons’ family of copyright licences, the “Attribution” licence.

We quite like the idea of using Creative Commons licensing for online content.  Frankly, what is the point of slapping © on online content that can easily be ‘cut and paste’.  Even we use the copyright symbol on our official website.  A Creative Commons licence would seem to be more realistic, even if it only limits the enforcement question by recognising some “fair use”.

There are 6 Creative Commons licences: