Lucasfilm Ltd v Ainsworth
| Jurisdiction | England & Wales |
| Judge | Lord Justice Jacob: |
| Judgment Date | 16 December 2009 |
| Neutral Citation | [2009] EWCA Civ 1328 |
| Docket Number | Case No: A3/2008/2878/2893/2897 |
| Court | Court of Appeal (Civil Division) |
| Date | 16 December 2009 |
[2009] EWCA Civ 1328
The Rt Hon Lord Justice Rix
The Rt Hon Lord Justice Jacob and
The Rt Hon Lord Justice Patten
Case No: A3/2008/2878/2893/2897
HC06CO3813
IN THE HIGH COURT OF JUSTICE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE CHANCERY DIVISION
THE HON MR JUSTICE MANN
Royal Courts of Justice
Strand, London, WC2A 2LL
Michael Bloch QC and Alan Bryson (instructed by Harbottle Lewis) for the Appellants/Claimants
Alastair Wilson QC and George Hamer (instructed by Simmons Cooper Andrew LLP) for the Respondents/Defendants
Hearing dates: 3/4/5 November 2009
This is the judgment of the court. All its members have contributed to each part of it. It is an appeal and cross-appeal from a judgment of Mann J of 31 st July 2008, [2008] EWHC 1878 (Ch).
Lucasfilm Ltd and two other claimants (collectively “Lucasfilm”, there being no material distinction between the claimants for present purposes) sue Mr Andrew Ainsworth and his company. Nothing turns on the presence of the latter.
Mr Michael Bloch QC and Mr Alan Bryson argued the case for Lucasfilm. Mr Alastair Wilson QC and Mr George Hamer that of Mr Ainsworth.
The Principal Facts
These are set out by the Judge at [26–84]. Most of the detail no longer matters so we confine ourselves to the essentials.
In the course of making the first Star Wars film a number of works were created. They include some paintings and drawings by a Mr McQuarrie showing scenes including stormtroopers in their helmets and armour and a clay model of a stormtrooper helmet made by a Mr Pemberton. Mr Ainsworth was asked to produce a final version in plastic based on the model and McQuarrie works and did so, incorporating his own improvements. In doing so he used what can fairly be called “sculpting” techniques. We say a little more about the detail of what happened when we come to Mr Ainsworth's cross-claim.
So far as UK law is concerned it is accepted that the two-dimensional works produced (e.g. the scene paintings) are copyright works. Whether the models for the helmet are in themselves copyright works depends on whether they are “sculptures” within the meaning of s.4 of the Copyright Designs and Patents Act 1988.
Mr Ainsworth has admittedly made and sold copies of the helmet and armour. The appeal has concentrated on the stormtrooper helmet, there being no separate point about the armour or helmets made for other characters. He accepts that he has reproduced the paintings but says he has a defence to an infringement claim under ss. 51 or 52 of the 1988 Act.
As far as the position under US law is concerned, it is now accepted that US law regards what Mr Ainsworth did as an infringement of various US copyrights. Lucasfilm claims that the English court should itself enforce US copyright law against Mr Ainsworth.
Lucasfilm has obtained a default judgment for trade mark and copyright infringement in California against him in the sum of US$20m. That sum sounds strange to English ears given that he only sold about $US14,500 worth. No less than $10m of the $20m is “compensatory damages” by US law. Lucasfilm claims that the English court should recognise and enforce the judgment to the extent of the $10m. “compensatory” element. Perhaps not wanting to seem oppressive, it only seeks to enforce its US judgment to that extent that if it cannot succeed on its claim to enforce its US copyrights directly in the English courts.
Mr Ainsworth claims that if the work he did in producing the helmet amounts to the creation of a work of sculpture, he is the owner of the copyright in it.
Although there are a mass of other works relied upon by Lucasfilm (e.g. as to the design of parts of the armour) this case turns on the helmets – as was effectively agreed by the parties. If Mr Ainsworth has infringed copyrights relating to these he loses, if not, not. It is not necessary to go into the detail of other works relied on or referred to in the evidence.
The holdings of the Judge
Mann J rejected all of Lucasfilm's copyright infringement claims under UK law. He held that the models for the helmets did not have an independent copyright as being “sculptures” or “works of artistic craftsmanship” and that Mr Ainsworth had defences under s.51 and 52.
The Judge also rejected claims in passing off and breach of confidence and the claim to enforce the US judgment.
He upheld Lucasfilm's claim to equitable ownership of such copyrights as Mr Ainsworth might have acquired anywhere in the world as a result of his work in the creation of the original helmet and rejected Mr Ainsworth's own conditional cross-claim for infringement. Mr Ainsworth was ordered to execute all necessary assignments of such copyright as may subsist anywhere in the world in his work.
Finally he upheld Lucasfilm's claim to enforce US copyright here, granting an injunction restraining Mr Ainsworth from advertising in any publication directed to the USA or sending to the USA replicas of identified props – including particularly the stormtrooper helmets.
The Issues on the Appeal
These have narrowed compared with those before the Judge. No appeal is pursued in respect of passing off, breach of confidence or the claim that the prototype helmets were works of artistic craftsmanship. What Lucasfilm does appeal are the findings that the prototypes were not “sculptures” and the findings that there is a defence under s. 51 or 52. It also appeals the decision not to enforce the US default judgment.
Mr Ainsworth cross-appeals the decision to enforce the US copyright. He also seeks permission to appeal (for it was refused by the Judge and by Jacob LJ provisionally on the papers) the finding that all the copyrights (if any) in the work done by Mr Ainsworth for Lucasfilm belong in equity to Lucasfilm and that he should make a consequential assignment.
Sculpture
This issue is primarily relevant to the defences under ss.51 and 52 of the 1988 Act. It is also of great significance as to the term of protection. If the prototype helmet is a “sculpture” Lucasfilm will get the full term of protection for an artistic work, 70 years from the year of death of the author. If the helmet is not a work of sculpture then there is a much shorter period of protection (under the copyright in the painting and drawings) – broadly 15 years from first marketing of reproductions – a period which has now expired.
The issue also determines whether Mr Ainsworth could have acquired his own copyright in the helmets which he produced based on the refinements he made to the facial details when working on the prototype. This is dealt with by the judge at [36]. Lucasfilm contends that the helmets and armour and the toy stormtroopers which were subsequently produced (and which are reproductions of the stormtrooper helmet and armour) are “sculptures” within the meaning of what is now s.4(1) of the 1988 Act.
Section 4 defines “artistic work” in the following terms:-
4. Artistic works
(1) In this Part “artistic work” means—
(a) a graphic work, photograph, sculpture or collage, irrespective of artistic quality,
(b) a work of architecture being a building or a model for a building, or
(c) a work of artistic craftsmanship.
(2) In this Part—
“building” includes any fixed structure, and a part of a building or fixed structure;
“graphic work” includes—
(a) any painting, drawing, diagram, map, chart or plan, and
(b) any engraving, etching, lithograph, woodcut or similar work;
“photograph” means a recording of light or other radiation on any medium on which an image is produced or from which an image may by any means be produced, and which is not part of a film;
“sculpture” includes a cast or model made for purposes of sculpture.
In order to deal with some of the arguments about the meaning of these provisions it is necessary to say something about the legislative history of this definition. Copyright protection for sculptures was first granted by an Act of 1798 (38 Geo III. C.71). It was not unlimited. It extended to models or casts of any bust, any part of the human figure, any statue of the human figure or the head of any animal, any part of any animal or the statue of any animal. The word “sculpture” was not used in the Act and the range of models or casts protected seems to reflect eighteenth century taste and fashion. The first reference to sculpture comes in a subsequent Act of 1814 (referred to in the chronological table of statutes as the Sculpture Copyright Act) which extended the protection granted by the 1798 Act to:
“any new and original Sculpture, or Model, or Copy, or Cast of the Human Figure or Human Figures, or of any Bust or Busts, or of any Part or Parts of the Human Figure, clothed in Drapery or otherwise, or of any Animal or Animals, or of any Part or Parts of any Animal combined with the Human Figure or otherwise, or of any Subject being Matter of Invention in Sculpture, or of any Alto or Basso-Relievo representing any of the Matters or Things hereinbefore mentioned.”
The 1814 Act records in its preamble that it was passed for giving further encouragement to the “Art of making new models and casts of busts and other things” and for giving further encouragement to such arts. It remained in force until repealed by the 1911 Copyright Act. This defined an “artistic work” as including “works of painting, drawing, sculpture and artistic craftsmanship, and architectural works of art and...
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