Lucasfilm Limited and others v Ainsworth and another

An artefact qualifies as a sculpture for copyright purposes through the ordinary meaning of that term, assessed by a reasoned, multi-factorial inquiry. Artistic purpose matters, although artistic merit does not. An object serving as costume or prop in producing a film may remain utilitarian and need not be a sculpture merely because it contributes to the film’s artistic effect.

An English court may determine a claim against an English-domiciled defendant for infringement of foreign copyright. Copyright infringement is not subject to a general rule of non-justiciability derived from the rule governing title to foreign land. This applies where personal jurisdiction exists and does not decide the position for registered intellectual property rights whose validity is disputed.

The appellants owned copyrights associated with the Star Wars films. The principal respondent had originally manufactured Imperial Stormtrooper helmets for the first film. He later used his original tools to make and sell replica helmets and armour, including sales in the United States.

Mann J dismissed the English copyright claims, holding that the helmet was not a sculpture and that statutory defences applied. He nevertheless held that claims under United States copyright law were justiciable and had been infringed: [2008] EWHC 1878 (Ch). The Court of Appeal upheld the English copyright result but held the United States copyright claims non-justiciable: [2009] EWCA Civ 1328.

The Supreme Court considered whether the helmet was a sculpture under the Copyright, Designs and Patents Act 1988 and whether an English court could adjudicate upon infringement of foreign copyright where the defendants were domiciled in England.

1. The appeal was dismissed on English copyright and allowed on justiciability. Lord Walker and Lord Collins delivered the joint judgment, with which Lord Phillips and Lady Hale agreed. Lord Mance agreed with both conclusions.

2. “Sculpture” in section 4 of the Copyright, Designs and Patents Act 1988 bears its ordinary meaning. The inquiry is reasoned and multi-factorial. The court must consider artistic purpose but must not assess artistic merit. The statutory reference to casts or models “made for purposes of sculpture” does not convert every industrially cast or moulded object into a sculpture. Nor should full copyright protection be allowed to expand into the field covered by the graduated protection afforded to functional and industrial designs.

3. The Stormtrooper helmet was not a sculpture. Its function was to serve as costume and prop within the production of the film. Although it expressed an idea and contributed to the film’s artistic effect, the film was the work of art and the helmet was an element of its production. The trial judge applied the correct principle and reached a tenable evaluative conclusion. The Court of Appeal properly declined to interfere. Section 51 therefore provided a defence to the claim based on the underlying graphic works, while section 52 did not arise.

4. An English court may adjudicate a claim against an English-domiciled defendant for infringement of foreign copyright where it has in personam jurisdiction. The remaining rule in British South Africa Co v Companhia de Moçambique [1893] AC 602 concerns proceedings principally about title to, or possession of, foreign land. Its former trespass limb had been abolished and supplied no sound basis for treating foreign copyright infringement as non-justiciable.

5. The foundations of Potter v Broken Hill Pty Co Ltd had also been eroded. The double-actionability rule had been abolished, and the act of state doctrine did not prevent adjudication of the copyright claims. United States registration was procedural and a prerequisite to suit, rather than to subsistence. European legislation and modern conflict-of-laws developments supported adjudication of foreign intellectual property rights, particularly where registration or validity was not in issue.

6. Tyburn Productions Ltd v Conan Doyle [1991] Ch 75 was wrongly decided. The Court of Appeal’s contrary conclusion was set aside. Whether article 2 of the Brussels I Regulation would compel jurisdiction over a claim otherwise regarded as non-justiciable did not arise and was left undecided.

1. United Kingdom Supreme Court: The appeal was dismissed on whether the helmet was a sculpture but allowed on the justiciability of the United States copyright claims: [2011] UKSC 39.
2. Court of Appeal: The court upheld the dismissal of the English copyright claims but reversed the conclusion that the United States copyright claims were justiciable: [2009] EWCA Civ 1328.
3. High Court, Chancery Division: Mann J dismissed the English copyright claims, held the United States judgment unenforceable, and held that the United States copyright claims were justiciable and infringed: [2008] EWHC 1878 (Ch).