New Judgment: Lucasfilm Ltd & Ors v Ainsworth & Anor  UKSC 39
27 Wednesday Jul 2011
On appeal from:  EWCA Civ 1328
The appeal raised two distinct legal issues:
(1) The definition of “sculpture” in the Copyright, Designs and Patents Act 1988, and, in particular, the correct approach to three-dimensional objects that have both an artistic purpose and a utilitarian function;
(2) Whether an English court may exercise jurisdiction in a claim against persons domiciled in England for infringement of copyright committed outside the European Union in breach of the copyright law of that country.
This appeal was concerned with intellectual property rights in various artefacts made for use in the first Star Wars film, notably the Imperial Stormtrooper helmet. Lucasfilm Ltd appealed against the lower Court’s decision that that the helmet was not a work of sculpture and that the US copyright claims were not justiciable. .
The Supreme Court held that the helmets were not sculptures, meaning that the respondent Ainsworth did have a defence to an English copyright action, but that the US copyright claims were justiciable in English proceedings. While it was recognised that there was an argument for applying the term ‘sculpture’ to a Stormtrooper helmet, because of the imagination that went into the concept of the sinister cloned soldiers dressed in uniform white armour, it was the Star Wars film that was the work of art that Mr Lucas and his companies created. The helmet was utilitarian in the sense that it was an element in the process of production of the film.
However, the Supreme Court also concluded that, provided there was a basis for in personam jurisdiction over the defendant, an English court did have jurisdiction to try a claim for infringement of US copyright, and there was no reason for the English court to refuse to take jurisdiction over an English defendant in a claim for breach of foreign copyright. Following this ruling, Ainsworth will be able to sell his replicas in the UK (but not in the US).