Out-Law News 4 min. read
16 Dec 2009, 3:56 pm
In 1977 Lucasfilm made Star Wars, a surprise success that has since spawned five related films and a multi-million pound merchandising industry.
Andrew Ainsworth worked in the UK on the menacing, and now iconic, white helmets worn by the imperial army. Ainsworth worked to drawings provided to him and to a clay model made by a neighbour of his.
Ainsworth now sells replicas of those helmets, an activity which has attracted the wrath of Lucasfilm, which was one of the first companies to make an extensive business out of film merchandising.
Lucasfilm obtained a $20 million copyright infringement judgment in the US by default when Ainsworth did not defend the action. It then took a case in the UK, arguing that Ainsworth's manufacture and sale of the helmets infringed copyright that it held in the helmet design. The company also wanted the UK court system to enforce the US ruling against Ainsworth.
The High Court rejected Lucasfilm's copyright claim, saying that the helmets were not artistic works or sculptures and so did not attract any copyright protection under UK law. Its ruling did, though, enforce the US copyright here and ordered Ainsworth to stop advertising or selling the helmets to the US market.
The Court of Appeal has overturned the High Court's enforcement of US copyright, lifting the ban on Ainsworth's marketing of the helmets to the US. It also agreed that the helmets are not protected by UK copyright.
"Must or should this court accept jurisdiction to enforce Lucasfilm's US copyrights against Mr Ainsworth for what he has done and threatens to do by way of sales from here to the US?" the Court of Appeal judgment asked.
Lords Justice Rix, Jacob and Patten, in a jointly issued ruling, looked at previous cases on the issue but said that "there is no binding authority" in the area.
"Infringement of an IP right (especially copyright, which is largely unharmonised) is essentially a local matter involving local policies and local public interest. It is a matter for local judges," they said. "Enforcement may involve a clash of the IP policies of different countries. This case is a good example. The effect of the injunction granted by [the High Court] is that the defendant is restrained from doing acts in this country which by the laws of this country are lawful. This is because American law says they are not lawful."
They said that governments, and not courts, should decide on the approach to take on the interweaving of different jurisdictions. "It is quite clear that those concerned with international agreements about copyright have refrained from putting in place a regime for the international litigation of copyrights by the courts of a single state," they said. "A system of mutual recognition of copyright jurisdiction and of copyright judgments could have been created but it has not."
"[We] conclude that for sound policy reasons the supposed international jurisdiction over copyright infringement claims does not exist. If it is ever to be created it should be by Treaty with all the necessary rules about mutual recognition, lis pendens and so on. It is not for judges to arrogate to themselves such a jurisdiction."
Lucasfilm argued that the helmets should have been protected by UK copyright law, and that it owned that copyright. The Court of Appeals agreed with the original High Court ruling that the helmets were not copyright protected because they were not artistic works or sculptures.
"The result of [our] analysis is that it is not possible or wise to attempt to devise a comprehensive or exclusive definition of 'sculpture' sufficient to determine the issue in any given case," they said. "Although this may be close to adopting the elephant test of knowing one when you see one, it is almost inevitable in this field. We therefore consider that the judge was right to adopt the multi-factorial approach which he did."
Ainsworth had also argued that the helmets were copyright-protected, but that he owned the copyright because he had carried out his work without a formal agreement in place which transferred copyright to Lucasfilm.
The Court of Appeal said that even if it had found the helmets to be copyright-protected, that copyright would not have belonged to Ainsworth.
"The question, which has to be answered objectively and does not depend in any way on what might in fact have gone through the minds of particular parties, is what the parties would have agreed if the question of licensing opportunities had been raised," they said. "We agree that in those circumstances, it would never have occurred to anyone to say that Mr Ainsworth should have retained any (necessarily limited) copyright interests. We agree that an obligation to assign [the copyright] was necessarily to be implied. It was also reasonable, and there is nothing in the commercial arrangements then made, e.g. in the prices agreed, to suggest that it was unreasonable."
A previous case had established the principle that the court of a foreign country can have effect in the UK "If the judgment debtor was, at the time the proceedings were instituted, present in the foreign country", the judgment said. Lucasfilm tried to argue that Ainsworth's web site counted as 'presence' in the US.
The Court of Appeal rejected that argument. "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," the judges said.
