Lloyd's Maritime and Commercial Law Quarterly
THE FORCE BE WITH EU? INFRINGEMENTS OF US COPYRIGHT IN THE ENGLISH COURTS
Lucasfilm v. Ainsworth
On any view, the decision of the Court of Appeal in Lucasfilm Ltd v. Ainsworth
1 is remarkable. For those, such as the present author, whose memories of growing up are marked by visits to the cinema to see the early Star Wars films, the case provides an interesting insight into the creative processes that led to on-screen success. For intellectual property lawyers, the court’s judgment contains a detailed (but largely otiose) account of the development of copyright and design protection for sculptures. For private international lawyers, the judgment (1) confirms that the growth of the internet has not impacted on the common law rules for the recognition and enforcement of judgments, and (2), more significantly, asserts that a claim based upon an infringement of a US copyright (or other non-Member State intellectual property right) is not justiciable in England, even if the defendant is domiciled in a Member State of the EU and the Brussels I Regulation2 confers “jurisdiction” on the courts of the United Kingdom. The focus of this note is on the last of these issues, which marks a new front in the battle between the rebellious common law and the growing empire of EU private international law.
Mr Ainsworth, the first defendant and sole director of the second defendant, was a trained engineer with an apparent interest in vacuum-moulding plastics. In 1976, he was asked by a neighbour working on the first Star Wars film3 to produce plastic armour, including a helmet, for the stormtrooper characters. The claimant companies were responsible for the production of the film. As the trial judge, Mann J, recorded:4
“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 [first] defendant (Mr Ainsworth) made that armour for the film in vacuum-moulded plastic. He has recently started selling versions to members of the public, both in the form of a complete set and the helmet alone. That is said to infringe the copyright of the claimants. He also sells replicas of other helmets. These again are said to infringe. He is able to make these things because he made the originals for the film, and has kept the tools or moulds on which they are made. This action seeks to enforce the intellectual property rights of the claimants. It is based on copyright infringement and
1. [2009] EWCA Civ 1328. The judgment of the court (Rix, Jacob and Patten LJJ) was delivered by Jacob LJ.
2. Regulation (EC) No 44/2001 of 22 December 2000, esp. art 2.
3. ie, the first in time, not numerically. Star Wars, subsequently retitled Episode IV: A New Hope, was released in 1977. The disappointing Episode I: The Phantom Menace was not released until 1999.
4. [2009] EWHC 1878 (Ch); [2009] FSR 2, [2].
LLOYD’S MARITIME AND COMMERCIAL LAW QUARTERLY
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