So, here's the thing, you know that collection of Star Wars memorabilia you have hidden in the cupboard, it may not in fact be as artistic as we have come to believe (who says Angel figurines aren't art?)
In 1976 Andrew Ainsworth was approached by the makers of Star Wars (Episode IV, A New Hope) to produce stormtrooper helmets on the basis of original concept drawings produced by Ralph McQuarrie, and a clay model, which had been produced by Nick Pemberton. Ainsworth made some modifications to the design in the production process. Ainsworth kept the orignal moulds and in 2004 began using those moulds to produce helmets which he offered for sale via a website. Ainsworth had made sales of approximately US$14,500 via the website to customers in the US.
Lucasfilm brought an infringement action against Ainsworth in the US (US District Court of California) which granted a default judgment in favour of the plaintiffs and awarded Lucasfilm US$20 million in damages (consisting of $5 million for copyright infringement, $5 million for trade mark infringement and $10 million in compensatory damages). Ainsworth did not participate in the proceedings. The plaintiffs then brought an action in the UK courts seeking enforcement of the US judgment and claiming infringement under UK law.
The matter was decided at first instance by Mann J in Lucasfilm Ltd, Star Wars Productions Ltd amd Lucasfilm Entertainment Company Limited v Andrew Ainsworth & Shepparton Design Studios Limited [2008] EWHC 1878 (Ch). Mann J held that:
- the helmets (and other elements of the uniform) were not sculptures nor were they works of artistic craftsmanship;
- Even if the design drawings/prototypes were the subject matter of copyright, section 51 of the Copyright Designs and Patents Act 1988 provided Ainsworth with a defence, providing that: 'It is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design.' Further, section 52 provided a defence to Ainsworth;
- Ainsworth had not manifested sufficient presence in the US to be amenable to US jurisdiction;
- Lucasfilm could enforce its US copyright in the UK, granting an injunction restraining Ainsworth from advertising in or sending to the US any of the stormtrooper helmets.
The Court of Appeal, whose judgment Lucasfilm Limited, Star Wars Productions Limited, Lucasfilm Entertainment Company Limited v Andrew Ainsworth & Shepparton Design Studios Limited [2009] EWCA Civ 1328 was delivered by Lord Justice Jacob, agreed with all of these points, except that the US copyright infringement could be enforced in the UK.
On the issue of whether the helmets were sculptures, the Court of Appeal concluded, after an extensive review of authority, that 'a precise definition of that term is not possible which is why the judge has outlined a number of considerations which should act as signposts to the right answer.' Applying the various factors identified by the primary judge, the court concluded that: 'Although invented, the helmet and armour are still recognisable as such and have a function within the confines of the film as the equipment of the stormtrooper. They are, to that extent, no different from and serve the same purpose as any real helmet or armour used in a film.' Being utilitarian in purpose, neither the armour nor the helmets were sculptures. The toy stormtroopers were found to be 'mass produced plastic toys' and therefore did not qualify as sculptures either.
As the helmets were not a sculpture, the defence under s51 was therefore available to Ainsworth ie 'It is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design.' Further, s 52 was also available to Ainsworth,meaning that the industrial application by Lucasfilm of design drawings meant that the underlying artistic works attracted only a 15 year period of protection.
The Court refused to enforce the US copyright, concluding that infringement of copyright 'is a local matter involving local policies and local public interests', and that it may involve a clash of the IP policies of different countries. Further, the Court said to do do may invite forum shopping. Such a matter would need to be dealt with by international treaty.
Finally, the judgment makes some interesting observations about jurisdiction. The Court of Appeal asks the question; 'whether the operation of an internet website by a person (or company) based in the UK amounts to presence in the US because sales have been effected through such a website to US customers.' The website quoted prices in US dollars and pounds sterling. It also provided shipping charges to the US and Canada. The trial judge had declined to find that this was sufficient to establish US presence. (Interestingly the Court does not mention Ward Group Pty Ltd v Brodie & Stone Plc [2005] FCA 471). The Court of Appeal concludes: 'it is not possible to say that advertising into a foreign country can render the advertiser present there, as the judge himself remarked. Indeed, no case has been cited to us where the targeting of sales in a foreign country by outside sales material has been held to be presence for these purposes.'
The Court concludes (at paras 193-194):
'It is true that the internet and its uses take us into a new world, and that its existence as it were in the ether (but based on servers physically located in the real world) has in general presented novel difficulties to the law and to regulators. It is also true that a website can be both wonderfully expressive and can also, subject to change and removal, be found repeatedly at its web address. The question, however, is whether for current purposes the internet or a website are fundamentally different from other matters which have enabled business persons to present themselves and their products where they are not themselves present: such as advertisements, salesmen, the post, telephone, telex and the like. We do not believe so, and Mr Bloch has been unable to show us any material from other jurisdictions, although he has searched for it, to suggest that a different answer is necessary. (Our own researches have led us to Dow Jones v. Gutnick [2003] HCA 56, 210 CLR 575, where the internet is discussed by the High Court of Australia in the different context of defamation. However, that Court was not there driven by the revolutionary omnipresence of the internet to a view of jurisdiction which was other than answerable to well-established principles.)
On the contrary, it might be said that the sheer omnipresence of the internet would suggest that it does not easily create, outside the jurisdiction or jurisdictions in which its website owners are on established principle already to be found, that presence, partaking in some sense of allegiance, which has been recognised by our jurisprudence and rules of private international law as a necessary ingredient in the enforceability of foreign judgments.'
There are also some interesting reflections upon implied obligations to assign and equitable interests in copyright.
An interesting case, and we may not have heard the last of it, May the Force be with you!
