Lucasfilm Limited and others v Ainsworth and another

The Supreme Court considered whether the Imperial Stormtrooper helmet was an "artistic work" under section 4(1) of the Copyright, Designs and Patents Act 1988 and whether statutory defences in sections 51 and 52 of the 1988 Act, and related subordinate legislation, protected the respondent. The Court upheld the judge and the Court of Appeal that the helmet was not a work of sculpture or of artistic craftsmanship but an item made as a prop and costume in the production of a film. Because the helmet was not sculpture, the appellants’ English copyright claims failed and the statutory defences were operative. The Court also decided a separate private international law issue: an English court may entertain an action against a defendant domiciled in England for alleged infringement of foreign (United States) copyright committed abroad, and the prior Court of Appeal decision that such claims were non-justiciable was wrong.

The case concerned intellectual property rights in artefacts created for the first Star Wars film, in particular the Imperial Stormtrooper helmet. Lucasfilm (three companies) claimed copyright under English law in various drawings and three-dimensional items and sought remedies against Mr Ainsworth, who had used original tools made in England to produce and sell replicas. Litigation had already produced a default United States judgment in favour of Lucasfilm, and separate proceedings were brought in England.

The trial judge (Mann J) found the helmet to be a substantial reproduction of works by Mr McQuarrie and others but dismissed Lucasfilm’s English copyright claims because the helmet was not a sculpture and because Mr Ainsworth relied on statutory defences under sections 51 and 52 of the Copyright, Designs and Patents Act 1988. The judge also held the United States judgment unenforceable for want of personal jurisdiction but found United States copyright claims justiciable in England and infringed.

Lucasfilm appealed to the Court of Appeal and then to the Supreme Court. The Court of Appeal agreed the helmet was not sculpture and upheld the statutory defences, but held that the claim for infringement of United States copyright was non-justiciable (applying an extension of the Moçambique principle). The Supreme Court was asked to determine (i) whether the helmet was a sculpture or otherwise an artistic work within the 1988 Act and (ii) whether an English court may adjudicate an English-domiciled defendant’s alleged infringement of foreign copyright committed abroad.

Issues framed by the Supreme Court included (a) statutory construction of "artistic work" and the scope of "sculpture" in section 4(1) and section 4(2) of the 1988 Act, (b) applicability of sections 51 and 52 of the 1988 Act and the 1989 Order, and (c) the private international law question whether the Moçambique rule, Phillips v Eyre principles, or the act of state doctrine preclude English jurisdiction over claims to enforce foreign copyright against a defendant domiciled in England, and whether European rules (Brussels I / Rome II) affected the matter.

The Court held (i) that the helmet did not qualify as sculpture: it was a mixture of costume and prop whose primary function was utilitarian in the production of the film and therefore did not possess the necessary quality of artistic creation for sculpture; accordingly the English copyright claims failed and the statutory defences applied; and (ii) that the Court of Appeal was wrong to treat the claim for infringement of United States copyright as non-justiciable: much of the legal basis for that approach (the trespass limb of the Moçambique rule, the first limb of Phillips v Eyre and aspects of the act of state doctrine) had been eroded by statute and subsequent developments including the Brussels I and Rome II regimes, and English courts may exercise jurisdiction over such claims where in personam jurisdiction exists. The Court therefore dismissed the appeal on English copyright issues and allowed the appeal on the justiciability point.

The appeal was allowed in part. The Supreme Court dismissed the appellants’ English copyright claims in respect of the helmet because it was not a work of sculpture or of artistic craftsmanship under section 4(1) of the Copyright, Designs and Patents Act 1988 and the statutory defences (sections 51 and 52, and the 1989 Order) applied. On the private international law point the Court allowed the appeal, holding that a claim against a defendant domiciled in England for infringement of foreign copyright committed abroad is justiciable in England provided there is in personam jurisdiction; the Moçambique-based restriction on jurisdiction was no longer applicable to copyright in the form asserted by the Court of Appeal.

Appeal to the Supreme Court from the Court of Appeal ([2009] EWCA Civ 1328). At first instance Mann J decided on the substantive facts in [2008] EWHC 1878 (Ch), [2009] FSR 103. The Court of Appeal ([2009] EWCA Civ 1328, [2010] Ch 503) agreed that the United States judgment was unenforceable and that intellectual property rights in the helmet belonged to Lucasfilm, but held the United States copyright claim non-justiciable; the Supreme Court allowed Lucasfilm’s appeal on justiciability but dismissed the English copyright point.