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“Help me, Lord Walker! You’re my only hope!”

The Justices at the end of last term handed down a decisive judgment in this hard-fought dispute about international copyright.

The case preview discussed the facts and issues, and is here. In brief, Mr Ainsworth (the first respondent) had been involved in making the familiar helmets for the iconic “Stormtroopers” in the first Star Wars film. In order to do so, LucasFilm had provided him with pictures and a clay model on which to base the helmets’ manufacture. Mr Ainsworth did so, and made the helmets; he also made several others from the same model, which he sold over the internet.  LucasFilm sought to assert copyright in the clay model, infringed by Mr Ainsworth’s sale of the copies; in the alternative, LucasFilm sought enforcement of their US copyright, which it was agreed Mr Ainsworth’s activities did infringe. The court came down differently on the two questions.

Lord [Sky]Walker and Lord Collins wrote the judgment of the court, with Lady Hale and Lord Phillips agreeing in full. Lord Mance also agreed, save for a short reservation of his opinion as to the pertinence of the distinction between intellectual property rights (IPRs) for which one must apply (such as patents and registered trade marks) as against those which subsist without registration (such as copyright).

The first question – about the English copyright – was the more important for Mr Ainsworth.  On this, the judgments of both lower courts (per Mann J in the High Court, and then Jacob LJ for the court in the Court of Appeal) were upheld: the clay model was an object with a functional purpose, not an artistic one.  As such it was not a “sculpture” within s. 4 Copyright, Designs and Patents Act 1988.  Since it was not a sculpture, copyright did not subsist, and the issues on the availability of defences to copyright infringement under ss. 51—52 CDPA fell away.  It still remains the case, somewhat frustratingly for some, that no clear positive definition exists of what actually is a sculpture.  Lord Justice Jacob’s “elephant test” at §77 in the Court of Appeal – you know one when you see one – was expressly rejected (in a slightly dry tone) by Lords Collins and Walker (§47).  As it is, though, we have a series of decisions as to what is not a sculpture, but we await positive guidance. For now, the definition offered by counsel in a different sculpture copyright case – “a three-dimensional work made by an artist’s hand” – appears to be the one that has attracted least disapproval.

For Mr Ainsworth, though, the effect of the decision on this point is clear: there was no subsisting copyright in the UK, and so he had not infringed it. For him, it feels like a clear win.

There was a second question to be decided by the Supreme Court, though, and for the lawyers this is arguably the more interesting part of the decision. Mr Ainsworth had admitted that he had infringed the US copyright, but he had not personally submitted to the US courts’ jurisdiction, and he contended that the UK courts had no such jurisdiction.

The Court of Appeal was overturned on its finding that the US copyright claim was not justiciable in the UK court.  Rather, the Supreme Court held that the Moçambique principle was limited to questions of title to property, which this was not.  Looking at the policy questions in the round, the Supreme Court considered – contrary to the result of Jacob LJ’s considerable analysis on the same point – that there was no real impediment to justiciability, at least in the case of rights that in the UK are unregistered, such as copyright.

There would still have to be made out some basis for UK jurisdiction of a foreign copyright issue in each individual case – usually, this would be that the defendant is resident in the UK – but the Supreme Court found that there was no general barrier to the UK courts assuming such jurisdiction.  Commentators’ responses to this have varied between panic that this would lead to a flurry of foreign claims being made in the UK courts on the one hand; and a somewhat sardonic observation from one academic that “he doubts that this will lead to a sudden rush of US claimants to the British courts”.

Certainly, though, this is a significant change in the law. It means that it will now be much harder for British infringers to take refuge back home from a copyright infringement action abroad – as Mr Ainsworth had sought to do. It remains to be seen how frequently people will seek to persuade the UK to take up jurisdiction of foreign copyright actions, to consolidate proceedings or to catch defendants who might be out of the reach of foreign courts.

Mr Ainsworth is happy, though: all that the justiciability finding means for him is that he can’t sell his wares in the US, which he had long since stopped. This case is a pretty clear illustration of the fact that what we lawyers are interested in, and what the client needs and cares about from a judgment, can be very different indeed.

Stuart is the pupil at Three New Square, the specialist intellectual property chambers of Simon Thorley QC. He is the chair of the  Oxford International Intellectual Property Moot and Conversazione.