Matt Lonsdale is a graduate of the Schulich School of Law at Dalhousie University.
On July 27, 2011, the UK Supreme Court released its long-awaited decision in Lucasfilm Limited v. Ainsworth. While Andrew Ainsworth is presumably happy with the court’s ruling that the Storm Trooper armour from the Star Wars franchise is utilitarian and does not receive protection under UK copyright law, others have expressed concern with the court’s decision on the second issue of the case: the justiciability of foreign copyright laws by UK courts.
The history of the case has been detailed several times here on IPOsgoode, first when it reached the UK Court of Appeal and then again when it was heard by the UK Supreme Court. At the Supreme Court level, two issues were raised. The first concerned the armour itself. UK copyright law provides protection to “sculptures”, but not to purely functional items. This was an important detail; if the armour was purely functional and did not receive copyright protection, then Lucasfilm could not succeed in their allegations that Ainsworth had infringed their copyright by selling reproductions of the armour. Counsel for Lucasfilm submitted that as the helmets were merely props used to illustrate a fictional universe, they could not be considered functional items. Regardless of how they were depicted in the films, their purpose was not to “to keep their wearers warm or decent or to protect them from injury in an inter-planetary war”, but merely to “make a visual impression on the filmgoer”. The court rejected this argument, finding that the armour “was utilitarian in the sense that it was an element in the process of production of the film”. In doing so, the Supreme Court largely upheld the decision of the Court of Appeal.
The Supreme Court reversed the Court of Appeal on a few points. One of these was the effect that the relatively recent emergence in UK law of registered design rights, which provides some limited protection to functional items, should have on the court’s interpretation of the word “sculpture”. The Supreme Court held that while functional items received less protection than artistic works, this was a policy decision that should not be disturbed “and the Court should not, in our view, encourage the boundaries of full copyright protection to creep outwards”.
Lucasfilm had had more success against Ainsworth in the US courts under US copyright law, obtaining a default judgement against him in the sum of $20 million. Rather than asking the UK courts to enforce the US judgement, they instead sought to obtain a UK judgement directly against Ainsworth by arguing that the UK courts should apply US copyright law to the case, thus raising the second issue of the case: the justiciability of foreign copyright laws in the UK courts. The Court of Appeal, by extending the decision from an 1893 case involving the ownership of foreign land to apply to foreign intellectual property rights, had held that UK courts did not have jurisdiction to hear claims of infringement of foreign copyright laws. The Supreme Court reversed this aspect of the decision, holding that legal developments subsequent to that case had limited this principle to apply only to questions of title of “immovable property”. Claims of infringement of foreign copyright laws were justiciable, provided the UK courts had personal jurisdiction over the defendants. It is unclear whether damages would be calculated according to the rules of the UK or of the foreign country.
The decision has generated mixed reactions. Some commentators have speculated that the UK will see an increase in copyright tourism, with UK citizens being sued in the UK courts for actions which, while legal in the UK, are illegal under the copyright laws of another country. Others have been skeptical of this outcome, and have pointed out that the decision is largely consistent with the Canadian approach.