Monday 1 August 2011

A long time ago in a galaxy far, far, away ...

The Stormtrooper helmet case has been decided by the UK Supreme Court - Lucasfilm Ltd and others v Ainsworth and others [2011] UKSC 39.

Lucasfilm Ltd - (a company owned by Mr George Lucas the creator of Star Wars) - sued in the English High Court's Chancery Division claiming infringement of copyright in the Stormtrooper helmets.  The main defendant was Mr Andrew Ainsworth who is skilled in vacuum-moulding in plastic. 

Previously, Lucasfilm had obtained a judgment in California and, in the High Court action, they asked for enforcement of the Californian judgment (which had not been satisfied) and also asked the High Court to rule on copyright infringement claims arising under United States copyright law.

In the Chancery Division, Mann J gave judgment in July 2008.  He held: (1) that the English infringement of copyright claims failed because the helmet was not a sculpture within the Copyright, Design and Patents Act 1988 (CDPA); (2) the Californian judgment could not be enforced in England and (3) the United States copyright claims brought by Lucasfilm were justiciable in England and Mr Ainsworth and his company had infringed those rights.

The Court of Appeal [2009] EWCA Civ 1328 agreed that the helmets were not a sculpture.  They also agreed that the U.S. judgment could not be enforced in England and there was no further appeal on that point.  The Court of Appeal disagreed with Mann J on the justiciability of the US copyright claims.

The Supreme Court, in a very detailed judgment, approved nine "guidelines" contained in Mann J's judgment (para 118) and which Mann J had
extracted from the decided cases.  He called them guidance rather than points of principle, because that gave them the right emphasis.  Judges had not tried to lay down hard and fast rules in this area where subjective considerations were likely to intrude.  The Supreme Court did not like what they called the "elephant test" - (para 77 of the Court of Appeal's judgment).  (Basically, just because you cannot define an elephant you know one when you see it)!  A "multi-factorial" approach was preferred based on the evidence and submissions.  The Supreme Court agreed that the helmets were not a sculpture.  It followed that Mr Ainsworth had a defence under the CDPA section 51.

The other interesting point in the case was whether the English court could exercise jurisdiction in a claim against persons domiciled in England for infringement of copyright committed in a country outside the European union in breach of the copyright law of that country.  The Supreme Court held that there was jurisdiction provided that the court was able to act "in personam" against the defendant.  (In essence, the defendant has to be within reach of the court's powers).  The Supreme Court referred to this as a "narrow point."  Nevertheless, the Supreme Court judgment engaged in a very considerable journey through what they described as "legal archaeology."

In short, the effect of certain long-established jurisdictional rules of English law had been reduced, both by Acts of Parliament and also by Regulations made by the European Union.  The modern trend generally favoured enforcement of foreign intellectual property rights where national courts were able to do so.  The effect of this decision is to provide Lucasfilm with a court in which its US copyright infringement claims can be decided.

As ever, comments are appreciated particularly from those with in depth knowledge of copyright law.

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