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Lucasfilm v Ainsworth – The Empire Has Struck Back

27 July 2011

LONDON, 27 JULY 2011 - The Supreme Court has handed down its decision today in Lucasfilm v Ainsworth, the Star Wars Stormtrooper helmets copyright case.

The Court confirmed the earlier decisions of the High Court and Court of Appeal that the Stormtrooper helmets featured in the first Star Wars film do not qualify for copyright protection as "sculptures".

However, the Court disagreed with the Court of Appeal on whether English courts are entitled to exercise judicial authority over foreign copyright claims - as such, the Supreme Court ruled claims for infringement of foreign copyright can be heard in the UK.

The implications of this decision are likely to be felt by film and television industries and far beyond.

Danielle Amor, a copyright lawyer at Hogan Lovells said:

"As a result of this judgment the UK may well be a more tempting place to take legal action. It will now be possible to sue in the UK for infringement of copyright and other unregistered rights which occurred in a number of different countries provided the defendant is resident in the UK.  Before now, you needed to litigate the infringements separately in each jurisdiction where your rights had been infringed.

"The Supreme Court has unsurprisingly refused to interfere with the trial judge's decision in the High Court that UK copyright is not infringed by the replica Stormtrooper helmets because they are not "sculptures".

"The more interesting part of the decision, however, is the acceptance of jurisdiction over foreign copyright infringement claims.  This is a welcome clarification of the extent of the court's jurisdiction and the reasoning could well be applied to other claims relating to foreign unregistered IP rights."

"This case clearly demonstrates the national boundaries of copyright law and the difficulties with cross-border enforcement.  Ainsworth is now entitled to continue his activities in the UK, but it is likely the English court will injunct him from carrying on such activities in the US.

"In what is arguably the most important artistic copyright decision in the last 20 years, this could have significant implications for the media industry.  Claimants may now be able to bring actions in the UK against UK resident defendants for infringement of their rights in multiple jurisdictions.

"This would ease cross-border enforcement which is notoriously difficult in the online arena and would no doubt be welcomed by rights owners seeking to put a stop to online counterfeit operators or streaming websites, such as Pirate Bay, for example."

The centre of the dispute focuses on whether the Stormtrooper helmets attract artistic copyright in the UK and if so, in what form.  The defendant, Mr Ainsworth, the original co-designer and manufacturer of the helmets, had been selling replicas via his website – an activity which Lucasfilm has sought to put a stop to given the value of the merchandising rights in the latest Star Wars Trilogy.

In ruling that the helmets do not attract copyright protection as "sculptures", Ainsworth was entitled to benefit from specific defences under UK copyright legislation and therefore was not liable for infringing Lucasfilm's copyright in the UK by virtue of his manufacture and sales of replica helmets.

However, Ainsworth's victory was fleeting since the Court also ruled that Lucasfilm's US copyright claims can be heard in the UK.  Whilst judgment has been given in the United States in Lucasfilm’s favour, Lucasfilm had been unable to enforce the decision on the UK-resident defendant.  This decision will pave the way for claimants to bring multiple foreign infringement actions against UK resident defendants and is likely to prove particularly useful in respect of online infringement.

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