Supreme Court rules in Star Wars Stormtrooper costume case

Practical Law UK Legal Update 9-507-0615 (Approx. 8 pages)

Supreme Court rules in Star Wars Stormtrooper costume case

by PLC IPIT & Communications

Background

Copyright, Designs and Patents Act 1988

Artistic works include graphic works (such as diagrams or drawings), sculptures and "works of artistic craftsmanship" (section 4(1), CDPA). A sculpture includes a cast or model made for purposes of sculpture (section 4(2), CDPA).

The copyright in a work is infringed by, among other things, a person who copies the whole or a substantial part of the work, either directly or indirectly, without the consent of the copyright owner (sections 16(1) and (2), CDPA).

Jurisdiction

Brussels Regulation

Article 22(4) of the Brussels Regulation (44/2001/EC) provides an exception to the basic rule that defendants should be sued in the courts of their domicile. It provides that in proceedings concerning the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, the courts of the member state in which the registration has been applied for, has taken place or is deemed to have taken place, have exclusive jurisdiction irrespective of the domicile of the defendant.

Case law

Key cases on jurisdiction include:

British South Africa Company v Companhia de Moçambique [1893] AC 602, concerning trespass of land, in which the House of Lords accepted a distinction between matters which were "transitory or personal" in their nature and matters which were "local" in their nature, holding that the English courts would not exercise jurisdiction in relation to the latter where the matters occurred outside the territorial limits of the English courts (the Moçambique rule). In Hesperides Hotels Ltd v Aegean Turkish Holidays Ltd [1979] AC 508 the Moçambique rule was extended to include actions in which no issue of title arose.
Potter v Broken Hill Pty Co Ltd [1905] VLR 612, affd (1906) 3 CLR 479, in which the Full Court of the Supreme Court of Victoria held that an action for infringement of a New South Wales patent was not justiciable in the courts of the state of Victoria. The court applied:
- the Moçambique rule;
- the rule in Phillips v Eyre (1870) LR 6 QB 1 that an act done abroad was only actionable in England if it was actionable as a tort according to English law, that is, was an act, which if done in England, would be a tort; and
- the act of state doctrine, that every sovereign state is bound to respect the independence of every other sovereign state, and that the courts of one country will not sit in judgment on the acts of the government of another done within its own territory, so that redress for grievances due to such acts must be obtained through the means open to be availed of by sovereign powers as between themselves (Underhill v Hernandez, 168 US 250, 252 (1897)).
Tyburn Productions v Conan Doyle [1991] Ch 75, in which the judge struck out an action for infringement of US copyright, applying the Moçambique rule and also relying on the rule in Phillips v Eyre.
Coin Controls v Suzo International [1999] Ch 33, in which Laddie J declined to accept jurisdiction for infringement of Spanish and German patents on the basis that, as infringement and validity were so closely interrelated, they should be treated for jurisdictional purposes as the same (see Legal update, Infringement of foreign patents). He found the claims were not justiciable relying on the Moçambique and Potter v Broken Hill principles, and under what is now Article 22 of the Brussels Regulation.
Red Sea Insurance Co Ltd v Bouygues SA [1995] 1 AC 190, in which the Privy Council decided that the first limb of the rule in Phillips v Eyre could be displaced so that an issue might be governed by the law of the country which with respect to that issue had the most significant relationship with the occurrence and with the parties. This exception was applied in Pearce v Ove Arup [2000] Ch 403, in which the Court of Appeal held that it did have jurisdiction under Articles 2 and 6(1) of the Brussels Convention to hear the claim for infringement of Dutch copyright (see Legal update, Jurisdiction: infringing acts).

Facts

The three claimant companies (collectively Lucasfilm) were the production and licensing companies for the Star Wars series of films. This case concerned the production of uniforms for the "Imperial Stormtroopers" soldiers in the first film, which was first shown in 1977.

Andrew Ainsworth, the first defendant, was the sole director of Shepperton Design Studios Limited, the second defendant. In 1976, he was approached to make some "Stormtrooper" helmets and was given two drawings and a clay model. He was then asked to make some "Stormtrooper" armour and was given some moulds, from which he made his own. After the film was made, Mr Ainsworth kept the moulds he had made to make the helmets and armour.

In 2004, Mr Ainsworth set up a website from which he sold helmets and armour made from his original moulds. Some of his products were sold and delivered to US customers. Lucasfilm brought copyright and trade mark infringement proceedings against the defendants in the US District Court in California, and judgment was ordered against the defendants for (among other things) $10 million for copyright and trade mark infringement.

In the English proceedings, Mr Ainsworth accepted that the drawings were graphic works for CDPA purposes, and that he had taken substantial parts of what was depicted when he had created the "Stormtrooper" helmet and armour. However, he argued that he had a defence to copyright infringement under sections 51 and 52 of the CDPA. (See Legal update, High Court considers UK and US copyright in Star Wars "Stormtrooper" costume: Background for details of sections 51 and 52, which are not discussed in this update because the Supreme Court did not consider them.)

In the High Court Mann J:

Dismissed Lucasfilm's action for infringement of UK copyright, holding that the helmet and armour were not artistic works and that the defendants had a defence under sections 51 and 52 of the CDPA.
Declined to enforce the US judgment.
Agreed to consider the US copyright, which he considered was justiciable in the English courts, and which he found had been infringed.

See Legal update, High Court considers UK and US copyright in Star Wars "Stormtrooper" costume.

The Court of Appeal upheld Mann J's decision save in respect of his finding that the US copyright claims were justiciable, ruling that the Moçambique rule applied not only to foreign land, but also to claims for infringement of foreign intellectual property rights (IPRs), including copyright. See Legal update, Court of Appeal rules US copyright not enforceable in UK in Star Wars replica costume case.

Lucasfilm appealed to the Supreme Court. The only issues before the court were whether:

The helmet was a sculpture and the defences under sections 51 and 52 of the CDPA applied.
The English court could exercise jurisdiction in a claim against persons domiciled in England for infringement of copyright committed outside in the EU in breach of the copyright law of that country.

Decision

The Supreme Court, in a combined judgment handed down by Lords Walker and Collins, with whom Lord Philips and Lady Hale agreed, and with whom Lord Mance agreed save to expressing no view on one specific issue, held that the helmet was not a sculpture, and that US copyright claims were justiciable in England, for the reasons summarised below.

Was the helmet a sculpture?

Lords Walker and Collins held that the helmet was not a sculpture. They said that the helmets were (as Mann J had said) "a mixture of costume and prop" in order to contribute to the artistic effect of the Star Wars film as a film. They were part of the production process (here, the making of a full-length film). It would not accord with the normal use of language to apply the term "sculpture" to a 20th century military helmet used in the making of a film, whether it was the real thing or a replica made in different material, however great its contribution to the artistic effect of the finished film. It was the Star Wars film that was the work of art that Mr Lucas and his companies created. The helmet was utilitarian in the sense that it was an element in the process of production of the film. Mann J did not err in law or reach an obviously untenable conclusion, and the Court of Appeal was right to uphold his decision on this point.

However, their Lordships thought that the Court of Appeal should have attached more importance, in assessing the meaning of "sculpture", to the policy considerations underlying Parliament’s development of the law in order to protect the designers and makers of three-dimensional artefacts from unfair competition, which it said seemed to support Mann J's conclusion (see Practice note, Overlap between copyright and designs: Overlap between copyright, registered designs and design right for background on the legislative development). It was possible to recognise, from the legislative history of the CDPA, in particular sections 4, 51 and 52 and the relationship that was established between copyright and design right, an emerging legislative purpose of protecting three-dimensional objects in a graduated way, quite unlike the protection afforded by the indiscriminate protection of literary copyright. There were good policy reasons for the differences in the periods of protection, and the court should not encourage the boundaries of full copyright protection to creep outwards.

The court did not deal with the section 51 and 52 defences since Lucasfilm accepted that if the helmet did not qualify as a sculpture, Mr Ainsworth had a defence under section 51 to any appeal based on graphics on which the helmet was based, and that section 52 did not arise.

Were the US copyright claims justiciable in the UK?

Lords Walker and Collins concluded that, in the case of a claim for infringement of copyright of the present kind, the claim was one over which the English court has jurisdiction, provided that there was a basis for in personam jurisdiction over the defendant.

They said that much of the underpinning of the Moçambique rule and the decision in Potter v Broken Hill had been eroded.

Regarding the Moçambique rule, section 30(1) of the Civil Jurisdiction and Judgments Act 1982 abolished that part of the rule which precluded actions for damages for infringement of immovable property rights in jurisdictions outside the UK from being justiciable in English courts, unless the proceedings were principally concerned with questions of title or right to possession of property. There was a parallel development in European law, under Article 22(1) of the Brussels Regulation. The basis for what remained of the rule was said in the Moçambique case to be that controversies should be decided in the country of the property itself because the right of granting it was vested in "the ruler of the country", and in the Hesperides case to be the maintenance of comity and the avoidance of conflict with foreign jurisdictions. This rationale could be applied to patents, at least where questions of validity were involved. For example the claims might touch on the validity of patents in sensitive areas, such as armaments. However, it was very difficult to see how it could apply to copyright. If copyright did involve delicate political issues, such cases could be dealt with by an application of the principles of public policy.

Regarding Potter v Broken Hill, their lordships considered that a decisive strand in the reasoning was the "act of state" doctrine. However, in England the foreign act of state doctrine had not been applied to any acts other than foreign legislation or governmental acts of officials such as requisition, and should not today be regarded as an impediment to an action for infringement of foreign IPRs, even if validity of a grant was in issue. Even if (contrary to this view) actions of officials involved with registration and grant of IPRs were acts of state since, while registration was a pre-requisite to proceedings in the US, under United States Copyright Act, section 411, it was not a prerequisite to subsistence but only to suit, and it was possible to register at the time of suit. Consequently the provision was purely procedural.

The rule in Phillips v Eyre had gone. It had been eroded by Red Sea Insurance and Pearce v Ove Arup, and had then been abolished by statute, specifically section 11(1) of the Private International Law (Miscellaneous Provisions) Act 1995. Consequently, so far as English proceedings were concerned, that basis for the decisions in Potter v Broken Hill and Tyburn Productions Ltd v Conan Doyle had disappeared, and the rule in Phillips v Eyre was no impediment to actions in England for infringement of foreign IPRs.

There was also no doubt that the modern trend was in favour of the enforcement of foreign IPRs, because:

Article 22(4) of the Brussels Regulation, which was an exception to the general domicile rule of jurisdiction, and had to be construed strictly, only assigned exclusive jurisdiction to the country where the IPR originated in cases which were concerned with registration or validity or IPRs which were "required to be deposited and registered" and did not apply to infringement actions in which there was no issue as to validity (C-4/03 Gesellschaft für Antriebstechnik mbH & Co KG (GAT) v Lamellen und Kupplungsbau Beteiligungs KG (LuK) [2006] ECR I-6509) (see Legal update, ECJ considers scope of Article 16(4) of Brussels Convention). This could rarely, if ever, apply to copyright,
Rome II (see Practice note, Rome II: an outline of the key provisions), which applied wherever in the world a tort was committed, plainly envisaged that actions could be brought in member states for infringement of foreign IPRs, including copyright. Rome II did not apply in the present proceedings because it only came into force on 11 January 2009, but it showed clearly that there was no European public policy against the litigation of foreign IPRs.
The fact that professional and academic bodies which had considered the issue, the American Law Institute and the Max Planck Institute, clearly favoured them, at any rate where issues of validity were not engaged.

There were no issues of policy which militated against the enforcement of foreign copyright. States had an interest in the international recognition and enforcement of their copyrights. Their Lordships dismissed the concerns relied on by the Court of Appeal to justify the application of the Moçambique rule as follows:

The Court of Appeal's concern that questions of foreign law would have to be decided would apply to many international cases over which the English court would have jurisdiction.
The court's concern that enforcement of foreign IPR law might involve a clash of policies, such that a defendant might be restrained by injunction from doing acts in this country which are lawful in this country, was rejected; such an injunction would be granted only if the acts were anticipated to achieve fruition in another country, and there was no objection in principle to such an injunction.
There was no objection in principle to a restraint on acts in another country; extra-territorial injunctions were commonly granted here against defendants subject to the in personam jurisdiction.
The fact that there was no international regime for the mutual recognition of copyright jurisdiction and of copyright judgments was no reason for the English court to refuse to take jurisdiction over an English defendant in a claim for breach of foreign copyright.

It followed that Tyburn Productions Ltd v Conan Doyle was wrongly decided, and that on this aspect the decision of the Court of Appeal in the instant proceedings could not stand.

Comment

The Supreme Court's confirmation that the helmets, being costumes or props for a film which are, therefore, essentially utilitarian, are not sculptures, is interesting. This aspect of the court's ruling has been the focus of many of the press reports of the Supreme Court's decision. It represents a victory for Mr Ainsworth, since the net effect of the finding, together with Lucasfilm's acceptance that the section 51 defence therefore applied, is that Mr Ainsworth has not infringed Lucasfilm's UK copyright through his activities in selling "Stormtrooper" helmets made from the original moulds he produced.

However, the more significant aspect of the Supreme Court's decision is its finding that US copyright infringement claims are justiciable in English courts. This could have significant implications for future copyright litigation in the UK, since it would allow claims for foreign copyright infringement to be dealt with by the English courts so long as that court has personal jurisdiction over the defendant. However, the decision by no means opens the doors to all foreign IPR infringement claims being heard in the English courts in such cases, since the decision only concerns copyright infringement claims, given the narrow scope of the issue the Supreme Court had to decide on.

At first instance, Mann J had found that Lucasfilm's US copyright claims were justiciable and, having considered them, that its US copyright had been infringed by Mr Ainsworth. Since this finding was not subject to an appeal to the Supreme Court, it remains in place so that, despite his victory in respect of the UK copyright infringement claim regarding the helmets, Mr Ainsworth is still facing liability with regard to the US copyright infringement claims. However, it is not clear what quantum of damages Lucasfilm could obtain in respect of the US infringement claims.

Case

Lucasfilm Ltd and others v Ainsworth and another [2011] UKSC 39, 27 July 2011 (Lords Phillips, Walker, Mance and Collins, and Lady Hale; Jonathan Sumption QC, Michael Bloch QC and Alan Bryson (instructed by Harbottle & Lewis LLP) for the appellants, and Alastair Wilson QC and George Hamer (instructed by SC Andrew LLP) for the respondents).

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