Star Wars: Court of Appeal stars in judicial sequel

Star Wars is a science fiction movie franchise which is famous for its sequels. The IPKat notes, however, that life has a funny habit of imitating art. Accordingly, when Mr Justice Mann delivered his blockbusting 280-paragraph judgment in Lucasfilm Ltd, Star Wars Production Ltd and Lucasfilm Entertainment Co Ltd v Ainsworth and Shepperton Design Studios Ltd [2008] EWHC 1878 (Ch) in July 2008, it was almost inevitable that the dark forces which brought this legal battle from the US courts to the Chancery Division for England and Wales would launch a further sequel before the Court of Appeal -- whose judgment was handed down today.

Now for a plot refresher. The three claimants in these proceedings were the production and licensing companies behind the creation of the Star Wars films. These films contained a heavy militaristic element, which required the creation of military uniforms. The first defendant, Ainsworth, was an expert in vacuum moulding plastics and the sole director of the second defendant Shepperton.

When the claimants first approached Ainsworth in 1976 with a view to him producing some uniforms for use in the film, he was given some drawings and a clay model. He was later hired to produce various items of uniform for the film, and once again he was given drawings of what these items were supposed to look like. After the film was made, Ainsworth kept the moulds he had used to create the uniforms and, in 2004, he set up a website from which he started selling replicas, created from the original moulds.

This enterprising activity caught the attention of the claimants, who sued Ainsworth for copyright infringement in the United States where they secured a default judgment, Ainsworth taking no active part in the proceedings other than to challenge the jurisdiction of the US court. Having secured a favourable judgment, the claimants sued in the United Kingdom alleging, inter alia, that Ainsworth had infringed UK copyright laws. Additionally they sought to enforce the US judgment or, if the court refused, to get the UK court to determine its claims under US copyright law.

In these proceedings Mann J held for Ainworth on all points except the enforcement of the US copyright infringement claim, ruling as follows:

* while there were no hard and fast rules for determining whether an object was a sculpture for the purposes of copyright law, various factors must be considered. These included the normal understanding of the word "sculpture" and the fact that it was part of the essence of a sculpture that it should have a visual appeal in the sense that it could be enjoyed for that purpose alone. It did not matter that the object in question had some other use. Even so, none of the items of uniform in this case were "sculptures" since they lacked the necessary quality of artistic creation.

* the objects in dispute were not works of artistic craftsmanship since it was no part of their purpose that they should in any way appeal as a piece of art [This conclusion was not the subject of appeal, much to the disappointment of the IPKat who never tires of reading judicial pronouncements on this point]. Even if the copyright in the designs vested in the claimants, section 51(1) of the Copyright Designs and Patents Act 1988 barred any copyright claim since it provided 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".

* it was well established that a foreign judgment against an individual would be enforced by the English courts if that individual had manifested a sufficient physical presence in the foreign court to justify the conclusion that he had rendered himself amenable to that foreign court, or that he owed some form of allegiance necessary to make it right that he be treated as amenable. Enforceability of a foreign judgment could not be established merely by showing that the individual was trading into that foreign country by remote means such as the internet, no matter how extensive the trading. This being so, the judgment of the US court was not enforceable against Ainsworth.

* there was no absolute bar against an English court hearing an action to enforce a foreign copyright in respect of infringements that took place abroad. The English courts could, and in appropriate cases should, determine at least the question of infringement of foreign copyright. In this case, the court should exercise that jurisdiction. The factual issues in the US action were essentially the same as those arising in the UK, the only specifically US copyright law issue being whether Ainsworth could raise a "functional/utilitarian objects" defence. On the evidence, that defence was bound to fail.

The Court of Appeal (Lords Justices Rix, Jacob -- who gave the judgment to which all three judges contributed -- and Patten) dismissed Lucasfilm's appeal but allowed Ainsworth's in part. As the final paragraph of the 53-page decision conccludes:

"There was no copyright in any sculpture. Nor could it enforce its US judgment. Mr Ainsworth’s cross-appeal, on the other hand, partly succeeds and partly fails. It succeeds to the extent that we reject the judge’s direct enforcement of US copyright. In the circumstances, there is no financial remedy for Lucasfilm to compensate it for the modicum of selling which Mr Ainsworth has managed to achieve into the US: but Mr Ainsworth is aware that were he to seek any further selling into the US, he would be in breach of its copyright laws".

Paragraphs 18 to 98 provide a lucid if lengthy summary of (among other things) the history of the interplay of copyright and design concepts in the protection of designs, sculptures and mass-produced objects incorporating aesthetic designs, as well as the mysteries of sections 51 and 52 of the Copyright, Designs and Patents Act 1988 and the limiting of copyright protection where design law applies.

The Court of Appeal's conclusion on the issue of whether US copyright infringement was justiciable in England and Wales, following a deep analysis of the not insubstantial case law on the subject -- none of which might be said to have decided the matter -- was summarised as follows:

"184. Mann J thought there was international jurisdiction. He said:

[266] I am therefore prepared to conclude that an English court can, and in an appropriate case should, determine at least questions of infringement of foreign copyright cases. Those cases will include cases where subsistence is not in issue. I would not, however, hold that questions of subsistence can never be decided here. In land cases incidental questions of title can apparently now be considered. I can see no reason why the same should not apply to copyright.

185. He recognised that there may be cases where there were public policy reasons why they should not be heard here. He resolved that problem by saying it could all be dealt with by the application of forum non conveniens. With respect we do not agree. We think there are real problems if this doctrine comes into play. Take this case. Mr Ainsworth sold a small amount to the US. Should jurisdiction be assumed here because he did not go to the enormous expense of going to the US to defend himself there? We do not see why. Other cases could be much more complicated. Suppose for instance there are competing parallel cases in several countries. Who is to decide which cases proceeds and the others not (or do they run in parallel)? The problems are potentially much more complex than the sort of case involving a claim on a contract where the issue is whether the case should be held in one jurisdiction or another. In the case of the international enforcement of copyright many jurisdictions could be involved at the same time and there could be a mass of disputes in different courts about where a case should be heard".

The IPKat wonders whether we have heard the last of this dispute. Given the importance of the principle at stake, the uncertainty surrounding it and the fact that the Supreme Court's judges have not yet been given the chance to relive the fond memories of Star Wars within the sternly objective confines of judicial analysis, he thinks there may be room for another sequel ...

IPKat post on the original decision of Mann J here
Star Wars addiction here
Star Wars party ideas, recipes etc here