Lucasfilm Ltd v Ainsworth

JurisdictionEngland & Wales
CourtSupreme Court
JudgeLORD WALKER,LORD COLLINS,Lord Phillips,Lady Hale,LORD MANCE
Judgment Date27 Jul 2011
Neutral Citation[2011] UKSC 39

[2011] UKSC 39

THE SUPREME COURT

Trinity Term

On appeal from: [2009] EWCA Civ 1328

before

Lord Phillips, President

Lord Walker

Lady Hale

Lord Mance

Lord Collins

Lucasfilm Limited

and others

(Appellants)
and
Ainsworth

and another

(Respondents)

Appellant

Jonathan Sumption QC

Michael Bloch QC

Alan Bryson

(Instructed by Harbottle & Lewis LLP)

Respondent

Alastair Wilson QC

George Hamer

(Instructed by S C Andrew LLP)

LORD WALKER AND LORD COLLINS (with whom Lord Phillips and Lady Hale agree)

Introduction

1

The first Star Wars film (later renamed "Star Wars Episode IV – A New Hope" in order to provide for "prequels" as well as sequels) was released in the United States in 1977. It was an enormous commercial success. It won an Oscar for best costume design. This appeal is concerned with intellectual property rights in various artefacts made for use in the film. The most important of these was the Imperial Stormtrooper helmet to which the trial judge (Mann J) referred in his judgment ( [2008] EWHC 1878 (Ch), [2009] FSR 103, paras [2] and [121]):

"One of the most abiding images in the film was that of the Imperial Stormtroopers. These were soldiers clad in white armour, including a white helmet which left no part of the face uncovered… The purpose of the helmet was that it was to be worn as an item of costume in a film, to identify a character, but in addition to portray something about that character – its allegiance, force, menace, purpose and, to some extent, probably its anonymity. It was a mixture of costume and prop."

The parties are agreed that for the purposes of this final appeal the helmet can be taken as the paradigm case that will be decisive of the outcome.

2

The facts are set out in the judge's clear and thorough judgment. For present purposes a brief summary will suffice. The film's story-line and characters were conceived by Mr George Lucas. Between 1974 and 1976 Mr Lucas's concept of the Imperial Stormtroopers as threatening characters in "fascist white-armoured suits" was given visual expression in drawings and paintings by an artist, Mr Ralph McQuarrie, and three-dimensional form by Mr Nick Pemberton (a freelance scenic artist and prop-maker) and Mr Andrew Ainsworth (who is skilled in vacuummoulding in plastic). Mr Pemberton made a clay model of the helmet, which was adapted several times until Mr Lucas was happy with it. Mr Ainsworth produced several prototype vacuum-moulded helmets. Once Mr Lucas had approved the final version Mr Ainsworth made 50 helmets for use in the film. These events all took place in England. Although Mr Lucas and his companies are based in California he had come to live in England while the film was made at Elstree (there was also filming on location in Tunisia).

3

The first appellant is a Californian corporation owned by Mr Lucas. The second appellant is an English company owned by Mr Lucas. The third appellant is a Californian corporation responsible for the group's licensing activities; it is wholly owned by the first appellant. Between them these three companies own copyrights in the artistic works created for the Star Wars films, and they can be referred to generally as "Lucasfilm". Apart from the huge commercial success of the Star Wars films, Lucasfilm has built up a successful licensing business which includes licensing models of Imperial Stormtroopers and their equipment. This litigation has come about because in 2004 Mr Ainsworth, the principal respondent in this appeal, used his original tools to make versions of the Imperial Stormtrooper helmet and armour, and other artefacts that it is not necessary to detail, for sale to the public. The second respondent is a private company owned by Mr Ainsworth but for practical purposes Mr Ainsworth can be treated as the only respondent.

4

Mr Ainsworth sold some of the goods that he produced (to the value of at least $8,000 but not more than $30,000) in the United States. In 2005 Lucasfilm sued Mr Ainsworth in the United States District Court, Central District of California, and in 2006 it obtained a default judgment for $20m, $10m of which represented triple damages under the Lanham Act. The whole judgment remains unsatisfied. Lucasfilm also commenced proceedings in the Chancery Division of the English High Court. The re-amended particulars of claim put forward a variety of claims under English law, including infringement of copyright (paras (1) to (10) of the prayer for relief); a claim for enforcement of the United States judgment to the extent of $10m (para (11)); and claims under United States copyright law (paras (12) to (17)).

5

The trial occupied 17 days during April and May 2008. In his judgment delivered on 31 July 2008 Mann J dismissed all Lucasfilm's claims based on English copyright law (together with some other claims that are no longer pursued). He held that the helmet made by Mr Ainsworth was a substantial reproduction of original work carried out by Mr McQuarrie and other persons working for Lucasfilm. But the English copyright claims failed because the helmet was not a work of sculpture and Mr Ainsworth had defences (to a claim that he was reproducing Mr McQuarrie's work) under sections 51 and 52 of the Copyright Designs and Patents Act 1988 ("the 1988 Act"). The judge also dismissed Mr Ainsworth's counterclaim based on his own claim to copyright in the helmet.

6

The judge held that the United States judgment was unenforceable for want of personal jurisdiction over Mr Ainsworth and his company. But he held that Lucasfilm's United States copyright claims were justiciable in England and that Mr Ainsworth and his company had infringed those rights.

7

The Court of Appeal ( [2009] EWCA Civ 1328, [2010] Ch 503) agreed with the judge that the United States judgment is unenforceable, and there is no further appeal on that point. The Court of Appeal also agreed with the judge that any intellectual property rights in the helmet belong to Lucasfilm, and this Court has refused Mr Ainsworth permission to cross-appeal on that point. The issues that are open in this Court are whether the helmet was a sculpture and the defences under sections 51 and 52 of the 1988 Act (on all of which the Court of Appeal agreed with the judge) and justiciability in England of the United States copyright claims (on which the Court of Appeal disagreed with the judge). The issues on sections 51 and 52 arise only if the helmet was a sculpture (and so an artistic work) within the meaning of the 1988 Act. In the Court of Appeal Lucasfilm abandoned its alternative contention that the helmet qualified as an artistic work because it was a work of artistic craftsmanship.

Part I: English copyright law issues

Current statutory provisions

8

The Court has been taken to the full legislative history but it is better to start with the current legislation, that is the 1988 Act. Under section 1(1)(a) copyright is a property right which subsists in original literary, dramatic, musical or artistic works. Other works, including films, come in under section 1(1)(b) and (c). By section 4(1) "artistic work" means, for copyright purposes,

"(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."

By section 4(2) "sculpture" includes a cast or model made for purposes of sculpture.

9

Sections 51 and 52 are in Part I, Chapter III of the 1988 Act (acts permitted in relation to copyright works). Chapter III contains a variety of exemptions from liability on general grounds, including fair dealing (sections 29-31) and educational, archival and other public purposes (sections 32-50). Section 62 contains a general exemption for buildings, sculpture and works of artistic craftsmanship on permanent public display.

10

Section 51 (design documents and models) as amended provides as follows:

"(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.

(2) Nor is it an infringement of the copyright to issue to the public, or include in a film or communicate to the public, anything the making of which was, by virtue of subsection (1), not an infringement of that copyright.

(3) In this section –

'design' means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article, other than surface decoration; and

'design document' means any record of a design, whether in the form of a drawing, a written description, a photograph, data stored in a computer or otherwise."

11

Section 52 (effect of exploitation of design derived from artistic work) provides as follows:

(1) This section applies where an artistic work has been exploited, by or with the licence of the copyright owner, by -

(a) making by an industrial process articles falling to be treated for the purposes of this Part as copies of the work, and

(b) marketing such articles, in the United Kingdom or elsewhere.

(2) After the end of the period of 25 years from the end of the calendar year in which such articles are first marketed, the work may be copied by making articles of any description, or doing anything for the purpose of making articles of any description, and anything may be done in relation to articles so made, without infringing copyright in the work.

(3) Where only part of an artistic work is exploited as mentioned in subsection (1), subsection (2) applies only in relation to that part.

(4) The Secretary of State may by order make provision –

(a) as to the circumstances in which an article, or any description of article, is to be regarded for the purposes of this section as made by an industrial process;

(b) excluding from the operation of this section...

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