Lucasfilm Case Breaks New Ground for the Enforcement of U.S. Copyrights in the UK

In Lucasfilm Limited v Ainsworth, the Supreme Court of the United Kingdom answered the following question:

 

Whether the English court may exercise jurisdiction in a claim against persons domiciled in England for infringement of copyright committed outside the European Union in breach of the copyright law of that country.

(Opinion paragraph 50)

The court determined that the answer to this question is yes, English courts may exercise jurisdiction in such a case.  However, the court ruled that its decision is very narrow and does not apply to cases in which an intellectual property right depends on a grant from a foreign state or to cases in which the issue is validity, as opposed to infringement.  Patents are granted by national governments, so the court’s decision does not apply to patent disputes.  In contrast, in the U.S. copyright protection for a work starts when it is fixed in a tangible medium of expression.  17 U.S.C. §102.  This distinction between a right that exists because it is granted by government authority and a right that exists without such governmental action is the foundation for the court’s decision.

Facts

This case arises out of the creation of the first Star Wars film, released in the U.S. in 1977.  George Lucas conceived the film’s story line and characters.  He visualized the Imperial Stormtroopers as “threatening characters in fascist white-armoured suits” (Opinion paragraph 2).  Artist Ralph McQuarrie made drawings and paintings of the Imperial Stormtroopers.  Nick Pemberton, a scenic artist and prop maker, and Andrew Ainsworth, the respondent in this case, produced the three-dimensional form for the helmets.  Ainsworth made the vacuum-molded plastic helmets that were used in the film.  All of these events occurred in England, where the film was made.  Lucasfilm is comprised of the three companies that own the copyrights in the artistic works created for the Star Wars films. 

Lucasfilm developed a licensing business around the Star Wars films and characters and licenses models of the Imperial Stormtroopers and their equipment.  In 2004, Ainsworth made versions of the Imperial Stormtrooper helmet and armor, some of which he sold in the U.S.  The value of what he sold was between $8,000 and $30,000.  Lucasfilm sued Ainsworth in U.S. District Court, Central District of California in 2005 and obtained a $20 million default judgment, $10 million of which was for triple damages under the Lanham Act (trademark act).  Lucasfilm also sued Ainsworth in England for copyright infringement under English law, to enforce the U.S. judgment and for claims under U.S. copyright law.

The case went to trial in England in 2008.  The trial court dismissed Lucasfilm’s claims based on English copyright law and held that Lucasfilm’s judgment was unenforceable for lack of personal jurisdiction over Ainsworth.  See my June 1, 2011 and June 15, 2011 posts discussing personal jurisdiction.  Of great interest to IP attorneys, the trial court held that Lucasfilm’s U.S. copyright claims were justiciable (the court can decide the case) in England and, further, that Ainsworth infringed those copyrights.

The Court of Appeal agreed that the U.S. judgment was unenforceable and Lucasfilm did not appeal that ruling to the Supreme Court.  The Court of Appeal also agreed that Lucasfilm’s claims under English copyright law should be dismissed, but disagreed on justiciability of the U.S. copyright claims in England, ruling that those claims should be dismissed, too.  On appeal to the Supreme Court, the two issues were whether the helmet was a sculpture under English law and whether Lucasfilm’s U.S. copyright claims were justiciable in England.  The Supreme Court agreed with the two lower courts on the English law copyright issue and ruled that that claim should be dismissed.  This blog post addresses only the justiciability issue.

The justiciability issue

The court discussed at length the history of the local action rule and the act of state doctrine.  It then discussed the changes in law that have occurred since those legal theories were created, how the breadth of those theories eroded over time and why those theories should not be applied to this case.

The local action rule prohibits an English court from exercising jurisdiction over a case involving a right of title to, right of possession of or trespass to any immovable situated outside of England.  The court articulated four strands to the act of state doctrine:  1.  There is a difference between local and transitory actions and a claim for something that has a definite locality, such as a patent, cannot be heard outside of that locality.  2.  “[A]n act done abroad was only actionable in England if it was actionable as a tort according to English law, that is, was an act, which if done in England, would be a tort.” (Opinion paragraph 62).  3.  “[R]ights in immovables were created by the exercise of the sovereign power of the State, and that controversies relating to such property could only be decided in that State.”  (Opinion paragraph 63).  4.  “Every sovereign State is bound to respect the independence of every other sovereign State, and the Courts of one country will not sit in judgment on the acts of the government of another done within its own territory.”  (Opinion paragraph 65).

Two important developments in European law have undermined any argument that there is a substantial policy reason for the view that actions for infringement of intellectual property rights cannot be brought outside the State in which they are granted or subsist.

(Opinion paragraph 87).

The first important development is that under article 22(4) of the Brussels I Regulation, “there is a fundamental distinction between intellectual property claims which involve the registration or validity of intellectual property rights which are required to be deposited or registered, and those which are not.”  (Opinion paragraph 90).

The second important development is the enactment of Regulation (EC) No 864/2007, which demonstrates that there is no public policy in the European Union against litigating foreign intellectual property rights.  Even though this Regulation came into force on January 11, 2009, and does not apply to the Lucasfilm case, the court considered it a relevant expression of public policy.

In applying the law to the facts of this case, the court emphasized that

the substantial dispute has always been about the ownership of the relevant copyrights and their infringement rather than about their subsistence.

As long as the existence of the U.S. copyrights was not an issue, the court determined that this is the kind of claim that is justiciable in English courts, provided that there is in personam jurisdiction (personal jurisdiction) over the defendant. 

The effect of this decision is to provide Lucasfilm a court in which its U.S. copyright infringement claims could be heard and enforced.  Lucasfilm could not collect its default judgment against Ainsworth for copyright and trademark violations in the U.S., so filed suit in England.  The English trial court and Court of Appeal refused to enforce the judgment Lucasfilm obtained in California because they determined that the California court lacked personal jurisdiction over Ainsworth.  If the U.S. copyright infringement claims were not allowed to be brought in England, Lucasfilm would not be able to enforce those claims anywhere.

Many thanks to Robert C. Cumbow for alerting me to this case.  Bob is a shareholder at Graham & Dunn in Seattle.  His practice focuses on intellectual property, advertising, privacy and Internet issues.  Bob is also an adjunct faculty member at Seattle University School of Law, where he is highly regarded by the students.  I have it on good authority that some of the students even refer to him as “Uncle Bob.”