Lucasfilm Ltd & Ors v Ainsworth & Anor
Reference:  EWCA Civ 1328
Court: Court of Appeal (Civil Division)
Judge: Rix, Jacob and Patten LJJ
Date of judgment: 16 Dec 2009
Copyright - Infringement - Sculpture - Allocation of jurisdiction - Foreign copyright protection - Conflict of laws
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Instructing Solicitors: Harbottle & Lewis LLP for C; SC Andrew LLP for Ds
In 1976, D1 was commissioned by C to make a helmet as part of a costume for the “Star Wars” films. D1 based the helmets on paintings and drawings and a clay model provided by C, incorporating his own improvements and sculpting techniques. In 2004, D1 and D2, which was based in England, produced replica helmets for public sale, which were advertised on a website, with some being sold in the US. C obtained US copyrights which D1 was found to have infringed. C then brought proceedings for copyright infringement inter alia under English law, as well as for enforcement of the US copyright and the US default judgment. D1 counter claimed to enforce its own copyright in the helmet.
The trial judge held that US copyright subsisted in the helmet and had been infringed; the prototypes were not “sculptures”; and that the US default judgment was not enforceable in England. In respect of the counterclaim, it was implicit within the agreement that any copyrights would be assigned to C.
C appealed and D’s cross-appealed on the issue of enforcement of US copyright.
(1) Whether D1 was entitled to a defence under S.51 or S.52 DCPA 1998, including whether the prototype helmets were “sculptures” for the purposes of S.4 of CDPA 1998;
(2) Whether the court had to, or should, accept jurisdiction to enforce C’s US copyright against D1;
(3) Whether the US default judgment could be enforced in the UK; and
(4) Whether D1 enjoyed copyright arising from his work in countries other than the UK.
Dismissing the appeal and allowing the cross-appeal in part:
(1) D1 was also entitled to a defence to the UK copyright claim under S.51 and S.52 CDPA 1998. The armour and helmets were not “sculptures” for the purposes of S.4 CDPA 1998. The trial judge had been right to adopt a multi-factorial approach in determining this issue.
(2) English law regarded claims for infringement of non-EU copyrights as non-justiciable in the UK. Infringement of a copyright was essentially a local matter involving local policies and public interest. D1’s appeal against the judge’s decision to enforce C’s US copyright in the UK was therefore allowed.
(3) A court of a foreign country had jurisdiction to give a judgment capable of enforcement or recognition in the UK if the judgment debtor was, at the time the proceedings were instituted, present in the foreign country. D1’s website did not give it a presence in the US and the judge had been right to refuse to enforce the US default judgment.
(4) D1 enjoyed no copyright in the props either in the UK or elsewhere and part of his cross-appeal had to be dismissed. An obligation to assign copyright had to be implied as it was always inherent in the relationship between C and D that if it proceeded to a contract, D1 would be rewarded for preliminary work but would confer the primary copyright interests on C.
This case highlights the difficulty in defining “sculpture”. The Court of Appeal did not attempt to devise a comprehensive or exclusive definition of “sculpture,” but instead developed a multi-factorial approach, drawing a distinction between the artistic merit of an object and the nature of its intended use.
The court also held that accepting jurisdiction over foreign copyright issues is not a matter for the unilateral decision of the judges of a particular state, as this may lead to a clash of the policies of different countries. Accepting such jurisdiction is likely to be unwise in the absence of further legislation or an appropriate treaty.