Star Wars Episode III - English Supreme Court decision: A New Hope for the enforcement of non-EU copyrights, or a Phantom Menace for UK-domiciled entities?

Originally published 13 September 2011

Keywords: copyright, intellectual property, Star Wars, infringement, Lucasfilm Limited & others v Ainsworth & another,

The English Supreme Court has ruled that the English Courts are able to hear claims for infringement of US copyright brought against UK-domiciled defendants – and should do so.

The scenario:

US PROCEEDINGS

(1st)

The parties:

Lucasfilm Ltd (US) Star Wars Productions Ltd (English) Lucasfilm Entertainment Company Ltd (US) v.

Andrew Ainsworth (English) Shepperton Design Studios Ltd (English) Nature of both proceedings:

Jurisdiction clause:

Alternative jurisdiction:

Parallel proceedings?

ENGLISH PROCEEDINGS

(2nd)

Article 2 (Brussels I Regulation)

The parties:

Lucasfilm Ltd (US) Star Wars Productions Ltd (English) Lucasfilm Entertainment Company Ltd (US) v.

Andrew Ainsworth (English) Shepperton Design Studios Ltd (English) Infringement of intellectual property rights

None

Non-EU Member State (United States)

Yes, although default judgment already obtained in the US proceedings for US infringement

Summary

THE CASE:

The decision of the English Supreme Court in Lucasfilm Limited & others v Ainsworth & another [2011] UKSC 39 represents the latest plot development in the Star Wars litigation saga.

Although that dispute concerns the alleged infringement of intellectual property ("IP") rights, the proceedings have raised a number of general issues of fundamental importance in cross-border litigation.

THE ISSUES:

Two questions arose before the English Supreme Court.

The first was a technical point of domestic UK copyright law: Were the Stormtrooper helmets utilitarian and so not artistic works, or were they "sculptures" with the benefit of UK copyright protection? The second concerned a question of international jurisdiction: Could/should English Courts hear claims for infringement of non-EU (in this case US) copyright, brought against UK-domiciled defendants? The second issue is the more significant. It arose because the US Court judgment obtained in respect of the US infringement was unenforceable in England. Such questions reflect the international character of not only the Star Wars proceedings, but of modern litigation generally in a brave new "global" world.

THE DECISION:

The Supreme Court decided:

the helmets were not "sculptures" - so there was a defence to the UK copyright infringement claim; but the English Courts were able to hear the claims for breach of US copyright against the UK-domiciled Ainsworth – and should do so. The decision on the second point can be viewed in two ways:

As paving the way for a plethora of infringement claims which utilise the English Courts to give effect to "alien" copyright principles - and thus as a potential Phantom Menace for UK-domiciled entities. OR

As A New Hope for those seeking to enforce non-EU copyrights in an on-line era – providing an effective mechanism for bringing to account UK infringers that might otherwise have escaped retribution. Further details and analysis

THE CROSS-BORDER ISSUES

  1. The Star Wars dispute features many inter-related elements key to any cross-border epic:

    jurisdiction (where one can sue); governing law (which country's law applies); and international enforceability (whether a...

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