Practice and Procedure

Lucasfilm Ltd and others v Ainsworth and another [2009] EWCA Civ 1328; [2009] WLR (D) 368

PUBLISHED December 18, 2009

COPYRIGHT ? Infringement ? Whether design of models of ?Star Wars? helmets consituting work of sculpture ? Claim for infringement of United States copyright ? Whether claim justiciable in England ? Whether United States judgment for ?compensatory damages? for breach of copyright enforceable in England ? Whether advertising on internet by English defendant constituting sufficient presence in United States ? Copyright Designs and Patents Act 1988, ss 4, 51
CA: Rix, Jacob, Patten LJJ: 16 December 2009

A maker of plastic ?Star Wars? helmets was not producing a work of sculpture for the purposes of s 4 of the Copyright Design and Patents Act 1986 and was entitled to a defence under s 51 permitting production of a three-dimensional object in accordance with a design which was itself copyright. A claim against the helmet-maker for breach of United States copyrights was not justiciable in England because the infringement was essentially a local matter involving local policies and local public interest and was a matter for local judges. There was no international jurisdiction over copyright infringement claims and if one were to be created it should be done by international treaty rather than by the courts themselves.
The Court of Appeal so held, dismissing an appeal by the claimants, Lucasfilm Ltd, Star Wars Productions Ltd and Lucasfilm Entertainment Co Ltd, from a finding by Mann J in the Chancery Division on 31 July 2008 [2008] EWHC 1878 (Ch) that helmet prototypes produced by the defendants, Andrew Ainsworth and Shepperton Design Studios Ltd, were not sculptures and thus fell under s 51 of the 1986 Act. The court allowed in part a defendants? cross-appeal against the enforcement of ?compensatory damages? of US$10m ordered by a US court.
JACOB LJ, giving the judgment of the court, said that it was not possible or wise to attempt to devise a comprehensive definition of ?sculpture?. The judge had been right to adopt a multi-factorial approach and to treat the helmet as being utilitarian and lacking in artistic purpose. The instant case involved mass-produced plastic toys, not highly-crafted models designed to appeal to the collector. It was not disputed that the claimants did have US copyrights which the defendants had infringed. The acts of infringement had all been done in the UK. It was to be noted that the extent to which US law extended a ?long arm? to acts done only in the UK was itself a question of American and not English law. The court had personal jurisdiction over the defendant because of his domicile, but following British South Africa v Cia de Mo?ambique [1893] AC 602, it lacked subject matter jurisdiction because of the essentially local nature of the claim. The effect of the judge?s injunction was to restrain the defendant from doing acts in the UK which by the laws of this country were legal. In addition, extraterritorial jurisdiction would and did here involve a restraint on actions in another country, an interference which prima facie a foreign judge should avoid. For sound policy reasons the supposed international jurisdiction over copyright infringement claims did not exist. The defendant?s internet presence was not fundamentally different from other matters which had enabled business persons to present themselves and their products where they were not themselves present, such as advertisements, salesmen, the post, telephone, telex and the like. The sheer omnipresence of the internet suggested that it did not easily create, outside the jurisdiction or jurisdictions in which its website owners were on established principles to be found, the presence partaking in some sense of allegiance which was a necessary ingredient in the enforceability of foreign judgments.
Appearances: Michael Bloch QC and Alan Bryson (instructed by Harbottle Lewis) for the claimants; Alastair Wilson QC and George Hamer (instructed by Simmons Cooper Andrew LLP) for the defendants.
Reported by: John Spencer, barrister