A “New Hope” for a More Flexible Approach
The LucasFilm case is a very good example of international copyright disputes which answers the question of whether a European national court (i.e., United Kindgdom) may exercise jurisdiction on a claim against persons domiciled in the same country over copyright violations executed outside of the European Union. The facts of the Lucasfilm case are very simple as it concerns the famous first Star Wars movie, released in the United States in 1977.
The Star Wars film (later called “Star Wars Episode IV – A New Hope”) was a tremendous success and won an Oscar for best costume design. Part of this success was due to the Imperial Stormtrooper helmet and armour:
“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.” (extract of the LucasFilm judgment, p. 2).
George Lucas’s concept of the Imperial Stormtrooper costume (helmet, armour and other accessories) took shape in the form of drawings and paintings by the artist Mr. Ralph McQuarrie between 1974 and 1976.
The defendant, Mr. Andrew Ainsworth, transformed the costumes into three dimensional form. He created several prototypes on behalf of Mr. Lucas and once the final version was approved, 50 copies of the helmet were made for the movie. In 2004, Mr. Ainsworth used his original clay models to create new copies of the Imperial Stormtrooper helmet and armour, and eventually sold them to the public over the Internet and made an estimated profit of between 8,000 and 30,000 US$ in the United States.
The plaintiff (a collection of companies own by Mr. Lucas, referred to as Lucasfilm) owned the artistic works of the Star Wars movies and attained a favorable judgment against Mr. Ainsworth in California, United States. In parallel, Lucasfilm tried to enforce this judgment in England while claiming for infringement of its copyright under English law. On appeal, from the English High Court two diverse legal issues were raised: a) the definition of “sculpture” under English copyright law, and; b) the question of whether an English court may exercise jurisdiction on a claim against persons domiciled in England over copyright violations executed outside of the country.
The first question was of great relevance to the defendant as it concerned the clarification of whether the Stormtroopers helmets were considered “sculptures” and, therefore, fall under the scope of the UK Copyright, Designs and Patents Act of 1988. The court upheld that the helmets were not considered sculptures as they served a functional purpose in the movie rather than being artistic works.
The second question is perhaps more interesting for our discussion as it pertains to cross-border jurisdictional issues. In this case, Mr. Ainsworth had allegedly acknowledged the infringement of copyrights in the US, however, he contested the jurisdiction of the British courts. This case spurred the Supreme Court of the United Kingdom to revisit previous court decisions including the well known Mozambique principle which occurred in 1893 regarding a registered land in Mozambique. At the time, the English courts ruled that they had no jurisdiction to hear cases regarding disputes over foreign lands.
Interestingly, during the Lucasfilm judgment, the Supreme Court of the United Kindgdom unexpectedly ruled that there are no obstructions for English courts to hear cases regarding foreign Intellectual Property Rights (IPR) infringements, thus rejecting the old Mozambique rule which was usually referred to in similar IPR cases.
British courts can now decide over foreign (non-EU) copyright law matters thus establishing im personam jurisdiction over the defendant which certainly represents a shift and gives a “new hope” for the supporters of a more flexible approach to the adjudication claims concerning foreign IPR. This suggests that other common law countries might also adopt this new approach.