In Lucasfilm Ltd. v. Ainsworth [2009] EW Court of Appeal Civ 1328 (16 December 2009), on an appeal from the Chancery Division, the Court of Appeal (Court of Appeal) rejected the Plaintiff-Appellant Lucasfilm’s appeal in respect of copyright non-infringement and of the lack of enforcement of a US judgement in the UK. Defendant-Respondent Ainsworth cross-appeals the decision to enforce the US copyright.

In the course of making the first Star Wars film paintings and drawings were produced showing “stormtroopers” in their helmets and armour as well as a clay model of a stormtrooper helmet. Ainsworth was asked to produce a plastic version based on the clay model and created a sculpted version incorporating his own improvements. Ainsworth subsequently made and sold copies of the helmet. After trial in the Chancery Court (CC) Lucasfilm had obtained a default judgment for trade-mark and copyright infringement in California against Ainsworth in the sum of $20M (US) and was granted an injunction preventing Ainsworth from advertising the identified props in, or sending them to, the US.

Appeal

The main issues on appeal were: whether the original model of the helmets first used in the first Star Wars film were a “sculpture” within the meaning of § 4 of the Copyright Designs and Patents Act 1988 (the “Act“); whether Ainsworth had a defence under §§ 51 and 52; and whether the US judgement should be enforced in the UK.

The Meaning of Sculpture

The Court of Appeal went into considerable detail in respect of the definition of “sculpture” primarily relevant to the defences under §§ 51 and 52 of the Act. Pursuant to § 4(1)(a) of the Act, an “artistic work” means “a graphic work, photograph, sculpture or collage, irrespective of artistic quality, but the Act provides no further assistance. The CC had found that the helmet was not a sculpture, because it was primarily utilitarian in function, and the Court of Appeal agreed, because it did not “give it the necessary quality of artistic creation inherent in the test suggested by Laddie J”. The CC had found one of the essential characteristics of a sculpture of “being intended to be enjoyed as a visual thing”.

The Defence Under § 51

§ 51 of the Act provides that “(1) 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.” The CC had found that Ainsworth had made the helmet from a design document, but that the helmet was not a sculpture or work of artistic craftsmanship, and therefore the defence under § 51 applied. The Court of Appeal agreed. The Court of Appeal found it unnecessary to discuss the Ainsworth’s defence under § 52, because he could rely on § 51.

Enforcement by English Court of US Copyright

The Court of Appeal then moved to the issue of whether the US judgement should be enforced in the UK. The Court of Appeal used as a starting point the recognition that Lucasfilm had US copyrights, and Ainsworth had infringed them from or in the UK. The infringing acts consisted of “sales to US customers in the US by despatch of products from the UK, advertising on the internet and the placing of advertisements in US publications,” something referred to as “subject matter jurisdiction”.

Lucasfilm relied particularly on two cases: Pearce v Ove Arup [2000] Ch. 403 and Owusu, Case C-281/02, and proposed that the effect of the cases was the existence of an extra-EU jurisdiction. Lucasfilm clamed Owusu decided the courts of the EU Member States must exercise subject matter jurisdiction over any claim against a defendant unless it is an excluded matter provided for in Art. 1 of the Regulation (EC) 44/2001 (“The Regulation”). It made no difference that the acts committed by the Defendant were committed far from the EU, that the acts, if committed in the Member State, might be lawful there; or that the courts where the Defendant had committed the unlawful acts actually had jurisdiction over the Defendant. The Court of Appeal disagreed in both cases and found that, if this were correct, the rule would be rigid.

The Court of Appeal stated that The Regulation is about “both jurisdiction and recognition (and enforcement) of judgments” and that where The Regulation “confers jurisdiction it then goes on to provide cross-border recognition. If it had been intended to confer extra-EU jurisdiction it would have provided also for cross-border recognition.” It was clearly against the legislator’s intention for there to be reciprocity and that there was no purpose in the recitals to create an extra EU jurisdiction.

The Court of Appeal did not agree with Lucasfilm’s position that because Art 2 of The Regulation confers subject matter jurisdiction, that it also has the same effect in respect of acts done outside the EU, at 128. The Court of Appeal continued by stating “[F]or intra-EU events the Regulation is a carefully balanced piece of legislation. Its components are interrelated. Thus it provides for all the consequences of its allocation of jurisdiction rules – exclusive jurisdiction for court first seised, a lis alibi pendens rule in other courts, mutual recognition of judgments and so on. None of that balance or interrelation is provided by the suggested extra-EU jurisdiction. Nor could it be, for to achieve it you need to legislate for all the courts to which the rules apply and The Regulation has no effect on the courts of third countries.”

The Court of Appeal then discussed whether Ainswort hhad had sufficient presence in the US to justify the enforcement of the US judgement, given that Ainsworth had never appeared in the US proceedings, nor had any physical presence in the US. But he had operated an internet website through which he advertised the helmets in the US, and also emailed existing customers. The Court of Appeal found that it did not, and held, at 194, that “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…”

The Appeal was dismissed.