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Lucafilms Ltd. V. Ainsworth Notes

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FACTS The first Star Wars film 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. 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 whitearmoured 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 propmaker) 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). 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. 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)). 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. 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. ISSUES The issues that are open in this Court are:

1. 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)

2. Justiciability in England of the United States copyright claims (on which the Court of Appeal disagreed with the judge). HOLDING The Court rejected the contentions of the appellant on English law and held that the defendant had not violated the plaintiff's copyright under English Law. WHETHER


Application of the Mocambique rule to IP by Potter v. Broken Hill Broken Hill said that an action for the infringement in New South Wales of a New South Wales patent was not justiciable in the Victorian courts… the effect of the decision in Potter v. Broken Hill Pty Co Ltd was to apply the Moçambique rule and, especially, the act of state doctrine to actions for patent infringement. There are four strands to the conclusions reached by the Full Court and the High Court of Australia.

1. The first strand is based on that aspect of the Moçambique rule which turns on the distinction between local and transitory actions. He considered that the patent had a definite locality: Potter claimed in effect that in no building and no land in New South Wales could the company use his invention.

2. The second strand is that the action was precluded by what became known as the first branch of the rule in Phillips v Eyre (1870) LR 6 QB 1, namely that an 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.

3. The third strand is found in the reliance on the Moçambique case by the High Court of Australia. Both Griffiths CJ and Barton J said that the question did not depend on the distinction between local and transitory actions. They (and the third member of the court, O'Connor J) took their inspiration from those parts of the speeches in the House of Lords, and of the dissenting judgment of Lord Esher MR in the Court of Appeal, which emphasised that rights 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.

4. As a result there is a fourth, and decisive, strand in the decision, namely the act of state doctrine…. the idea that the courts of this country cannot sit in judgment upon an act of a sovereign, effected by virtue of his sovereign authority abroad. Departure from the Mocambique rule That invitation was taken up, and that part of the Moçambique rule was abolished by section 30(1) of the Civil Jurisdiction and Judgments Act 1982, which came into force in 1982, and provides: "The jurisdiction of any court in England . . . to entertain proceedings for trespass to, or any other tort affecting, immovable property shall extend to cases in which the property in question is situated outside that part of the United Kingdom unless the proceedings are principally concerned with a question of the title to, or the right to possession of, that property." Article 22(1) (formerly article 16(1)(a) of the Brussels Convention) provides that the courts of the Member State in which the property is situated have exclusive jurisdiction, regardless of domicile, "in proceedings which have as

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