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Jurisdiction: Ainsworth v. Lucasfilm [2009] EWCA Civ. 1328

Posted in copyright by coda on December 18, 2009

The Court of Appeal has handed an important judgment in Ainsworth v. Lucasfilm [2009] EWCA Civ. 1328. The Court of Appeal refused to assume jurisdiction in respect of a dispute relating to the breach of US copyright law.

Key Facts: [para 4-10 Jacob LJ]

These are set out by the Judge at [26-84]. Most of the detail no longer matters so we confine ourselves to the essentials.

In the course of making the first Star Wars film a number of works were created. They include some paintings and drawings by a Mr McQuarrie showing scenes including stormtroopers in their helmets and armour and a clay model of a stormtrooper helmet made by a Mr Pemberton. Mr Ainsworth was asked to produce a final version in plastic based on the model and McQuarrie works and did so, incorporating his own improvements. In doing so he used what can fairly be called “sculpting” techniques. We say a little more about the detail of what happened when we come to Mr Ainsworth’s cross-claim. So far as UK law is concerned it is accepted that the two-dimensional works produced (e.g. the scene paintings) are copyright works. Whether the models for the helmet are in themselves copyright works depends on whether they are “sculptures” within the meaning of s.4 of the Copyright Designs and Patents Act 1988. Mr Ainsworth has admittedly made and sold copies of the helmet and armour. The appeal has concentrated on the stormtrooper helmet, there being no separate point about the armour or helmets made for other characters. He accepts that he has reproduced the paintings but says he has a defence to an infringement claim under ss.51 or 52 of the 1988 Act.

As far as the position under US law is concerned, it is now accepted that US law regards what Mr Ainsworth did as an infringement of various US copyrights. Lucasfilm claims that the English court should itself enforce US copyright law against Mr Ainsworth.

Lucasfilm has obtained a default judgment for trade mark and copyright infringement in California against him in the sum of US$20m. That sum sounds strange to English ears given that he only sold about $US14,500 worth. No less than $10m of the $20m is “compensatory damages” by US law. Lucasfilm claims that the English court should recognise and enforce the judgment to the extent of the $10m. “compensatory” element. Perhaps not wanting to seem oppressive, it only seeks to enforce its US judgment to that extent that if it cannot succeed on its claim to enforce its US copyrights directly in the English courts.

Mr Ainsworth claims that if the work he did in producing the helmet amounts to the creation of a work of sculpture, he is the owner of the copyright in it.

Although there are a mass of other works relied upon by Lucasfilm (e.g. as to the design of parts of the armour) this case turns on the helmets – as was effectively agreed by the parties. If Mr Ainsworth has infringed copyrights relating to these he loses, if not, not. It is not necessary to go into the detail of other works relied on or referred to in the evidence.

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