Lucasfilm -v- Ainsworth: copyright jurisdiction for claims in the light of the Lucasfilm case

This case considered, amongst other things, the right of the English Court to rule on infringement of foreign copyright which occurs overseas.

In 1976, Ainsworth had been involved in the production of the iconic Stormtrooper uniforms and helmets for the first Star Wars film, Star Wars IV - A New Hope.  The production for the film was carried out by Lucasfilm. 

In 2004, Ainsworth started trading via his website in replica Stormtrooper helmets.

In 2006, Lucasfilm successfully claimed copyright infringement against Ainsworth in the US regarding the replica helmets which were made in the UK but delivered to customers in the US.

Subsequently Lucasfilm brought further proceedings, this time in the UK, claiming:

• enforcement of the US judgment in the UK

• infringement under English law on the basis the helmets were either sculptures or works of artistic craftsmanship; or in the alternative

• to have the English High Court determine whether Ainsworth had infringed US copyright under US law in respect of the alleged infringements in the US

The Court held that no cause of action had been proven against Ainsworth under English law.  Further the Court found that Ainsworth had not submitted to the jurisdiction of the US Court and therefore the US judgment could not be enforced in England.  However, Mann J did find that the English Court can determine "at least questions of infringement of foreign copyright cases".  On that basis Mann J said it would be wrong for the English Courts to take the view "that questions of subsistence [of foreign copyright] can never be decided here".  The Court considered expert evidence regarding US copyright law and concluded that Ainsworth had infringed US copyright by exporting products to the US.  Accordingly, Lucasfilm had a remedy which could be enforced in the UK. 

The case raises interesting possibilities for protection of copyright via the English Courts, particularly in relation to web-based trading or the export of books and other copyright works abroad where foreign rights have been infringed.

For more information, please contact Jill Bainbridge on T: 023 8085 7160; E: jill.bainbridge@bllaw.co.uk.