Lucasfilm Limited and others v Ainsworth and another

“Sculpture” bears its ordinary meaning under the Copyright Designs and Patents Act 1988. Artistic quality is irrelevant, but the object must possess an artistic purpose or element of artistic expression. Its method of manufacture is not decisive. A costume or prop serving the production of a film may be utilitarian for this purpose, despite contributing to the film’s artistic effect.

An English court may determine a claim against a defendant within its personal jurisdiction for infringement of foreign copyright. The foreign-land rule, former double-actionability rule and act-of-state doctrine do not bar an ordinary copyright claim concerning ownership and infringement. The position of intellectual property rights dependent upon foreign state grant or involving validity was not conclusively determined.

Lucasfilm Limited and others v Ainsworth and another concerned replica Imperial Stormtrooper helmets and armour made and sold by their original fabricator. Lucasfilm claimed infringement of English copyright, enforcement of a United States default judgment and infringement of United States copyright.

The High Court, in [2008] EWHC 1878 (Ch), [2009] FSR 103, held that the helmet was not a sculpture under the Copyright Designs and Patents Act 1988. It nevertheless held the United States copyright claims justiciable and established. The Court of Appeal, in [2009] EWCA Civ 1328, [2010] Ch 503, upheld the English copyright decision but held the foreign copyright claims non-justiciable.

The Supreme Court had to decide whether the helmet was a sculpture and, if so, whether sections 51 and 52 afforded defences. It also had to decide whether an English court could adjudicate a foreign copyright infringement claim against defendants domiciled in England.

1. The appeal was allowed in part. The Court unanimously rejected the appeal concerning English copyright but allowed the appeal on the justiciability of the United States copyright claims. Lord Walker and Lord Collins delivered the joint judgment, with which Lord Phillips and Lady Hale agreed. Lord Mance agreed on both issues.

2. “Sculpture” in section 4 of the Copyright Designs and Patents Act 1988 bears its ordinary meaning. The court must not assess artistic merit, but it may consider artistic purpose and expression. Neither three-dimensional form nor manufacture by casting or moulding is sufficient. Section 4(2) extends protection only to a cast or model made for purposes of sculpture.

3. The classification is multi-factorial and must be explained by reasons. An object may have both artistic and utilitarian characteristics. The Imperial Stormtrooper helmet was a costume and prop whose function was to contribute to the production of the film. The film was the relevant work of art; the helmet’s contribution to its artistic effect did not itself make the helmet a sculpture.

4. The trial judge had applied the correct principles and reached a tenable evaluative conclusion. An appellate court should be slow to reverse the application of an imprecise legal standard to features of varying importance unless the trial judge erred in principle. That restraint applied with additional force on a second appeal.

5. Because the helmet was not a sculpture or other artistic work, section 51 afforded a defence to the claim based on the underlying graphic works. Section 52 did not arise. The graduated statutory protection for three-dimensional designs also supported avoiding an expansive construction of full artistic copyright.

6. A claim of the present kind for infringement of foreign copyright is justiciable where the English court has personal jurisdiction over the defendant. The surviving rule in British South Africa Co v Companhia de Moçambique is confined to proceedings principally concerned with title to or possession of foreign land. Its rationale did not justify extending non-justiciability to copyright.

7. The former rule in Phillips v Eyre had been abolished, and the act-of-state doctrine did not apply to this copyright dispute. United States registration was a procedural prerequisite to suit, rather than a condition of copyright subsistence. European jurisdiction and choice-of-law legislation likewise demonstrated that foreign intellectual property infringement may be adjudicated outside the protecting state where registration or validity is not in issue. Tyburn Productions Ltd v Conan Doyle [1991] Ch 75 was wrongly decided.

8. The Court did not decide whether article 2 of the Brussels I Regulation would independently override a domestic rule of non-justiciability. Lord Mance also expressly reserved the application of the act-of-state doctrine to validity issues concerning intellectual property rights dependent upon state grant.

1. United Kingdom Supreme Court: In [2011] UKSC 39 , unanimously dismissed the appeal concerning English copyright and allowed the appeal concerning the justiciability of the United States copyright claims.

2. Court of Appeal: In [2009] EWCA Civ 1328 , [2010] Ch 503, upheld the finding that the helmet was not a sculpture and that the statutory defences applied. It reversed the High Court on justiciability and held the United States copyright claims non-justiciable.

3. High Court, Chancery Division: In [2008] EWHC 1878 (Ch) , [2009] FSR 103, dismissed the English copyright claims because the helmet was not a sculpture and sections 51 and 52 afforded defences. It held the United States judgment unenforceable but found the United States copyright claims justiciable and infringed.