Strand, London, WC2A 2LL
B e f o r e :
| (1) LUCASFILM LIMITED
(2) STAR WARS PRODUCTIONS LIMITED
(3) LUCASFILM ENTERTAINMENT
|- and -
|(1) ANDREW AINSWORTH
(2) SHEPPERTON DESIGN STUDIOS LIMITED
MR. A. WILSON Q.C. and MR. G. HAMER (instructed by SimmonsCooperAndrew LLP) for the Defendants.
Hearing dates: 8th, 9th, 10th, 11th, 14th, 15th, 16th, 17th, 18th, 21st, 22nd, 24th, 25th, 29th, 30th April and 1st and 2nd May 2008
Crown Copyright ©
Mr Justice Mann :
It is therefore largely unnecessary to distinguish between them; I can call them corporately "Lucas".
Mr Norman Reynolds
Mr Brian Muir
Mr Gary Kurtz
Mr John Richardson
Professor Peter Menell
Professor Roger Fenner
(i) Mr Mark Owen, a solicitor from Messrs Harbottle & Lewis, who provided evidence relating to the US proceedings.
(ii) A Mr Stephen Sansweet, who provided peripheral evidence as to whether the disputed helmets were ever manufactured in the UK (other than by Mr Ainsworth)
(iii) A Mr Peter Anderson, a Californian attorney who gave evidence about the availability of set-off in California. This was only ever relevant to an application for security for costs made by Mr Ainsworth shortly before the trial, and which was made again at the trial. It was dealt with without any need for me to make a ruling.
(iv) Mr David Anderman, who gave formal evidence as to the current ownership of copyrights as between the various claimants.
Miss Bernadette Pitfield
Mr Clive Payne
Mr Nick Pemberton
Ms Nicola Howard-Jones
The conception of the film; the design control of Mr Lucas; and the creation of the Stormtrooper helmet
The Stormtrooper armour
The other helmets and subsidiary items
(i) The "cheesegrater". This is a helmet worn by some Imperial troops. Its nickname comes from two outer plates on the front and rear of an underhelmet which have large holes in them. It features a notional radio-like earpiece, and a deep rear neck covering, reminiscent of some samurai designs. A photograph of one appears in Appendix 5.
(ii) The "jawbone". This is a helmet worn by Imperial gunners. It takes its name from a protruding element which sticks out in front of a thin visor. A photograph appears in Appendix 6.
(iii) The X-wing fighter pilot helmet. This was worn by the rebel fighter pilots. A photograph appears in Appendix10.
(iv) The rebel troop helmet. Its name is self-explanatory. It had various versions; some had visors, some did not. A photograph of one version appears in Appendix 11.
(v) The Tie fighter pilot helmet. This is a helmet and face mask worn in the film by Imperial fighter pilots. The helmet had some sort of origin in another drawing. The mask is a reproduction, in black, of the Stormtrooper face. Because of the face element, it is accepted that this is a substantial copy of the McQuarrie drawings, so there is no dispute about copying. As a result of that concession by Mr Ainsworth, the sometimes extensive evidence and submissions as to this go to credibility only, though on the facts this credibility point is closely related to the liability points in relation to the other helmets.
(vi) A "chest box" worn by the Tie fighter pilots. This was a mock chest-pack connected by gas tubes to a helmet and face mask, and bearing (non-functional) buttons and switches. I need say little about this because it is in substance no longer a disputed item.
The X-Wing pilot helmet
The rebel troop helmets
Subsequent events and the US proceedings
(i) A claim for infringement of copyright.
(ii) A claim in passing off.
(iii) A claim to such copyrights as Mr Ainsworth might himself have acquired.
(iv) A claim in confidence to restrain Mr Ainsworth from making his helmets and armour.
(v) A claim to enforce the US monetary judgment.
(vi) A claim to enforce US copyright (but no other US rights).
Mr Ainsworth counterclaims to enforce his own alleged copyright in the helmets.
(i) Are any of the helmets artistic works within the 1988 Act, so as to attract copyright in themselves? This involves a consideration of whether they are either sculptures or works of artistic craftsmanship.
(ii) If there is copyright in the helmets, is that copyright owned by Mr Ainsworth, either because he was the author himself, or because he contributed his own elements to those which he took from the claimants.
(iii) If Mr Ainsworth is otherwise entitled to the copyright, is he obliged to hold it for, and assign it to, the claimants?
(iv) If Mr Ainsworth is otherwise entitled to use his moulds, is he nonetheless restricted from doing so by duties of, or akin to, confidentiality?
(v) If and insofar as Lucas was or is entitled to any of the copyrights in drawings that it asserts against Mr Ainsworth, does he have a defence under section 51 of the 1988 Act?
(vi) If and insofar as Lucas was or is entitled to any of the copyrights that it asserts against Mr Ainsworth, does he have a defence under section 52 of the 1988 Act?
(vii) Is there a claim in passing off?
(viii) Are the claimants entitled to enforce the US judgment?
(ix) Are the claimants entitled bring an action in this jurisdiction claiming infringement of US copyright? If so, have they made out such a claim?
Are the helmets and other reproductions sculptures or works of artistic craftsmanship?
"'sculpture' includes a cast or model made for purposes of sculpture" (section 4(1)(2)(b)."
In addition there is the provision of section 4(1)(a) which provides that something can be a sculpture "irrespective of [its] artistic quality".
"Having heard the evidence in the case, I am clearly of opinion that the productions in question come within the words 'any subject being the matter of intention in sculpture' … I am not going to defend the phraseology of the section, which is verbose, inaccurate and troublesome; but I think the words of the section which I have quoted do not need any interpretation but leave the matter free from doubt."
He went on to find that the cast had "artistic taste, judgment and arrangement"; that is no longer a requirement of a "sculpture" under the 1988 Act.
"It is tolerably certain that some toys would not fall within the protection of the Act; and the question whether this soldier's or mounted yeoman's figure comes within it must be decided upon evidence as to its artistic character. The evidence before me is all one way. A war correspondent has been called who is at the same time an artist and has shown several of these figures to be artistic productions, in that the anatomy is good, and that the modelling shows both technical knowledge and skill. I see nothing to quarrel with in that statement. On the whole, therefore, although I have great doubt as to the meaning of the Act, I am prepared to hold that the production of a metal figure of a mounted yeoman such as this is good enough to be protected by the provisions of the Act if [certain other provisions] are complied with." (Those other provisions are not relevant to the point I have to consider.)
"I do not see why the word 'sculpture' in s.3 of the Copyright Act 1956 should not receive its ordinary dictionary meaning except insofar as the scope of the word is extended by s.48(1) which provides that '"sculpture" includes any cast or model made for the purposes of sculpture.' The Concise Oxford Dictionary defines 'sculpture' as the
'art of forming representations of objects etc or abstract designs in the round or in relief by chiselling stone, carving wood, modelling clay, casting metal, or similar processes; a work of sculpture,'
a definition forming the basis of paragraph 3.15 on 'sculptures' in [Laddie, Prescott and Vitoria's Modern Law of Copyright] where it is suggested that:
"Since copyright may subsist irrespective of artistic quality it would seem that, for example, carved wooden patterns intended for the purpose of casting mechanical parts in metal or plastic might well be susceptible of protection, although the point has not yet received much attention from practitioners.""
Falconer J then went on to refer to Wham-O Manufacturing Co v Lincoln Industries Ltd  RPC 127 (see below) and said:
"In my view the plaster shapes…were sculptures and as such attracted copyright."
"Insofar therefore as those definitions are merely inclusive and are not exhaustive of the original meanings of 'engraving' and 'sculpture', the court can have regard to the ordinary meaning of such words as ascertained from various sources."
They then set out various dictionary definitions relating to engraving, which I do not need to deal with, and they dealt with a particular authority on the point. At page 153 they dealt with a point about visual appreciation:
"Mr Hillyer submitted than an engraving in the form of a mould or dye could not be an engraving as protected by the Act because it is not meant to be appreciated visually but rather is merely a device used to create an end product, namely the finished plastic disc. This submission cannot be upheld, particularly in view of the developing nature of the law of copyright. The requirement for works to be of artistic quality has been removed from the definition "artistic work" in s.2 of the Act so far as the items referred to in clause (a) of that definition are concerned, and so long as the dye or mould falls within the words of the definition to which we have referred, then it may be the subject of copyright protection." (page 153)
This, if followed, is an answer to one of Mr Wilson's submissions, which is that it is of the essence of a sculpture that it should be intended to appeal to the eye and to be enjoyed for its appearance, whether or not it had an additional function. That seems to be a point which the Court of Appeal did not accept.
"The Shorter Oxford English Dictionary defines 'sculpture' as:
'Originally the process or art of carving or engraving a hard material so as to produce designs or figures in relief, or in intaglio, or in the round. In modern use, that branch of fine art which is concerned with producing figures in the round or in relief, either by carving, by fashioning some plastic substance, or by making a mould for casting in metal.'
Although that definition refers to sculpture as a branch of fine art, for the purposes of copyright, sculpture is classed as an artistic work, 'irrespective of artistic quality.'
"Webster's Third New International Dictionary defines 'sculpture' as:
'1. The act, process or art of carving, cutting, hewing, moulding, welding or constructing materials into statues, ornaments or figures.
2. The act, process or art of producing figures or groups in plastic or hard materials.'
'In the New Encyclopaedia Britannica, vol. 16, p.421 there appears an article on 'Art of sculpture'. The following passages are of some interest:
'Sculpture is not a fixed term that applies to a permanently circumscribed category of objects or sets of activities. It is, rather, the name of an art that grows and changes and is continually extending the range of its activities and evolving new kinds of objects. The scope of the term is much wider in the second half of the 20th century than it was only two or three decades ago, and in the present fluid state of the visual arts, nobody can predict what its future extensions are likely to be.
Certain features, which in previous centuries were considered essential to the art of sculpture, are not present in a great deal of modern sculpture and can no longer form part of its definition. One of the most important of these is representation. Before the 20th century, sculpture was considered a representational art; but its scope has now been extended to include non-representational forms. It has long been accepted that the forms of such functional three-dimensional objects as furniture, props and buildings may be expressive and beautiful without being in any way representational, but it is only in the 20th century that non-functional, non-representational, three-dimensional works of art have been produced.
20th century sculpture is not confined to the two traditional forming processes of carving and modelling or to such traditional natural materials as stone, metal, wood, ivory, bone and clay. Because present-day sculptors use any materials and methods of manufacture that will serve their purposes, the art of sculpture can no longer be identified with any special materials or techniques. Through all of these changes there is probably only one thing that has remained constant in the art of sculpture, and it is this that emerges as the central and abiding concern of sculptors:
The art of sculpture is the branch of the visual arts that is especially concerned with the creation of expressive form in three dimensions."
"But it appears to us to be straining the meaning of the word 'sculpture' to apply it to the discs produced by the injection moulding process used in the present case when the moulds concerned have simply been created by a process of engraving and no original model has been created."
"Furthermore, it appears to be implicit in the definitions of sculpture to which we have already referred and from the article in the New Encyclopaedia Britannica, particularly the passage reading:
'The art of sculpture is the branch of the visual arts that is especially concerned with the creation of expressive form in three dimensions.'
That sculpture should in some way express in three-dimensional form an idea of the sculptor. It seems to us inappropriate to regard utilitarian objects such as plastic flying discs, manufactured as toys, by an injection moulding process, as items of sculpture for the purposes of the Copyright Act. They lack any expressive form of a creator and any idea which the creator seeks to convey.
In the result, we are unable to hold that the final plastic product – the discs – are sculptures in terms of the Act and entitled to copyright protection as sculptures."
"All that is required therefore is that the work in question shall be a sculpture in the ordinary sense of that term or as included in the extended definition of sculpture contained in the Act.
We think that the wooden models of the Frisbees, which were prepared for the various models, do fall within the definition of sculpture, and are thus properly the subject of copyright protection. We agree with Moller J on this point."
The report of Moller J's judgment at first instance  RPC 281 does not fully reveal his process of reasoning in arriving at this conclusion. It refers to the definitions and citations which he had read, and then simply expresses the conclusion that the models were sculptures. However he, like the Court of Appeal, held that they were engravings, and thus "artistic works" within the Act.
(a) It is another example of something which had an ultimate utilitarian function as being a sculpture (the wooden model);
(b) Not every three-dimensional object produced as a result of a human design is capable of being a sculpture. While a utilitarian or other function does not, by itself, exclude, there must nevertheless be some element of artistic expression, however unsuccessful.
(c) It is appropriate to start with what is the normal understanding of the expression "sculpture", though in my view the case demonstrates that that is a pretty loose boundary because many people would be surprised to find that the wooden model was considered to be a sculpture.
"their meaning bears very little relation to the meaning which those not familiar with the law would give to those words."
He referred to (but did not set out) dictionary definitions which accorded with his view that the models and casts were not sculpture. The only reason given is this (at p 410):
"The models and casts … were no more than steps in the production first of the prototype, later in the manufacture of the tooling from which the plaintiffs' production was secured. They were never made for the purposes of sculpture, and it was never intended that they should have any continuing existence."
He distinguished the wooden model in Wham-O by saying:
"A carved wooden model is one thing. A model fashioned in plasticine or some other suitable modelling material, which it was never intended should have any permanent existence, being no more than a stage in production, is another. The claim based on either the models or casts as being sculptures must, in my judgment, fail."
"The law has been bedevilled by attempts to widen out the field covered by the copyright acts. It is not possible to say with precision what is and what is not sculpture, but I think Mr Meade was close to the heart of the issue. He suggested that a sculpture is a three-dimensional work made by an artist's hand. It appears to me that there is no reason why the word 'sculpture' in the 1988 Act should be extended far beyond the meaning which that word has to ordinary members of the public. There is nothing in the particulars in this case which suggests that the manufacturers of these moulds considered themselves, or were considered by anybody else, to be artists when they designed the moulds or that they were concerned in any way with the shape or appearance of what they were making, save for the purpose of achieving a precise functional effect. Nothing in the particulars given here suggests that any consideration of appeal to anything other than functional criteria was in mind or achieved. In these circumstances, it appears to me that there is no arguable case pleaded for the existence of sculpture copyright in the moulds for these products, and I will not allow the statement of claim containing such a claim to be served on [a defendant]."
(a) It should not go way beyond what ordinary members of the public would consider to be a sculpture. It might be said by cynics that that comes a little late, but it is nevertheless, in my view, a valuable limit.
(b) The object has to have a function beyond the merely utilitarian.
(c) It has to be made by "an artist's hand". This seems to me to be another way of requiring something more than the utilitarian; there has to be an appeal to something other than the utilitarian. One can express that other thing as an appeal to the artistic sensibilities. I agree with that too. It does not conflict with the fact that artistic quality is irrelevant. That provision of the statute means that one does not have to make a judgment about the quality of the art, or the level of artistic achievement. But there must be something which of its nature is capable of appealing to artistic sensibilities, whether or not it succeeds in doing so, and that must to some extent be the purpose of the creation of the article.
"a sculpture should in some way express in three-dimensional form an idea of the sculptor",
repeating Laddie Js' theme. He held that the works in his case expressed such an idea. They were "designed to have aesthetic appeal to potential purchasers". This again, in my view, distinguishes the purely functional, and introduces the idea which I have described as appealing to artistic sensibilities.
(i) Some regard has to be had to the normal use of the word.
(ii) Nevertheless, the concept can be applicable to things going beyond what one would normally expect to be art in the sense of the sort of things that one would expect to find in art galleries.
(iii) It is inappropriate to stray too far from what would normally be regarded as sculpture.
(iv) No judgment is to be made about artistic worth.
(v) Not every three dimensional representation of a concept can be regarded as a sculpture. Otherwise every three dimensional construction or fabrication would be a sculpture, and that cannot be right.
(vi) It is of the essence of a sculpture that it should have, as part of its purpose, a visual appeal in the sense that it might be enjoyed for that purpose alone, whether or not it might have another purpose as well. The purpose is that of the creator. This reflects the reference to "artist's hand" in the judgment of Laddie J in Metix, with which I respectfully agree. An artist (in the realm of the visual arts) creates something because it has visual appeal which he wishes to be enjoyed as such. He may fail, but that does not matter (no judgments are to be made about artistic merit). It is the underlying purpose that is important. I think that this encapsulates the ideas set out in the reference works referred to in Wham-O and set out above (and in particular the Encyclopaedia Britannica).
(vii) The fact that the object has some other use does not necessarily disqualify it from being a sculpture, but it still has to have the intrinsic quality of being intended to be enjoyed as a visual thing. Thus the model soldier in Britain might be played with, but it still, apparently, had strong purely visual appeal which might be enjoyed as such. Similarly, the Critters in Wildash had other functions, but they still had strong purely visual appeal. It explains why the Frisbee itself should be excluded from the category, along with the moulds in Metix and Davis. It would also exclude the wooden model in Wham-O and the plaster casts in Breville, and I would respectfully disagree with the conclusions reached by the judges in those cases that those things were sculptures. Those decisions, in my view, would not accord with the ordinary view of what a sculpture is, and if one asks why then I think that the answer is that the products fail this requirement and the preceding one – there is no intention that the object itself should have visual appeal for its own sake, and every intention that it be purely functional.
(viii) I support this analysis with an example. A pile of bricks, temporarily on display at the Tate Modern for 2 weeks, is plainly capable of being a sculpture. The identical pile of bricks dumped at the end of my driveway for 2 weeks preparatory to a building project is equally plainly not. One asks why there is that difference, and the answer lies, in my view, in having regard to its purpose. One is created by the hand of an artist, for artistic purposes, and the other is created by a builder, for building purposes. I appreciate that this example might be criticised for building in assumptions relating to what it seeks to demonstrate, and then extracting, or justifying, a test from that, but in the heavily subjective realms of definition in the artistic field one has to start somewhere.
(ix) The process of fabrication is relevant but not determinative. I do not see why a purely functional item, not intended to be at all decorative, should be treated as a sculpture simply because it is (for example) carved out of wood or stone.
Works of artistic craftsmanship
"(c) a work of artistic craftsmanship"
No definition or elaboration of that term is provided for by the Act. The leading House of Lords authority on the point, George Hensher Ltd v Restawhile Upholstery (Lancs) Ltd  AC 64 contained 5 differing forms of elaboration. It was conceded in that case that the work (a prototype piece of furniture) was a work of craftsmanship so the debate focussed on the "artistic" requirement.
Lord Reid explained the significance of the intention of the maker or designer as follows:
"It is I think of importance that the maker or designer of a thing should have intended that it should have an artistic appeal but I would not regard that as either necessary or conclusive. If any substantial section of the public genuinely admires and values a thing for its appearance and gets pleasure or satisfaction, whether emotional or intellectual, from looking at it, I would accept that it is artistic although many others may think it meaningless or common or vulgar. [page 78]
During last century there was a movement to bring art to the people. I doubt whether the craftsmen who set out with that intention would have regarded all their products as works of art, but they were certainly works of artistic craftsmanship whether or not they were useful as well as having an artistic appeal. [pp 78-9]
In the present case I find no evidence at all that anyone regarded the appellants' furniture as artistic. The appellants' object was to produce something which would sell…no doubt many customers bought the furniture because they thought it looked nice as well as being comfortable, but looking nice appears to me to fall considerably short of having artistic appeal. I can find no evidence that anyone felt or thought that the furniture was artistic in the sense which I have tried to explain." [page 79]
"If it is asked whether works which possess distinctive features of design and skill in workmanship or works which possessed distinctive characteristics of shape, form and finish or qualify to be called artistic, I would say that the word 'artistic' calls for something additional and different. If it is asked whether there is artistry if there is an appeal to the eye, I would say that something more is needed. In any event, and apart from this, such questions would tend to suggest or to impose a clamp of rigidity and restriction in definition where none is needed.
In deciding whether a work is one of artistic craftsmanship, I consider that the work must be viewed and judged in an attached and objective way. The aim and purpose of its author may provide a pointer, but the thing produced must itself be assessed without giving decisive weight to the author's scheme of things…..
So I would say that the object under consideration must be judged as a thing in itself. Does it have the character or virtue of being artistic?"
"A work of craftsmanship is, in my opinion, something made by hand and not something mass produced."
He went on to differ from the trial judge as to whether the work, which was conceded to be one of craftsmanship, was artistic. At page 84 he said:
"I do not think that the presence of distinctive features of shape, form and finish suffices to make a work artistic."
differing in that respect from the trial judge who had found to the contrary. He then went on to consider what did make a work artistic, and he rejected the suggestion that that depended on whether or not the primary inducement for its creation was its functional character (if any). He also rejected the notion that it was determinative whether or not the object was intended to have eye appeal. Further, he rejected other alternative tests put forward by counsel. He said that at the end of the day point was a question of fact on which evidence, including expert evidence, might be given.
"The words can bear their natural and ordinary meaning." [page 89]
He pointed out the origin of the words in the legislation, which was to give copyright protection to the product of the Arts and Crafts movement with emphasis on the applied or decorative arts. At page 91 he drew attention to the fact that the relevant phrase "works of artistic craftsmanship" was a composite phrase to be construed as a whole.
"A work of craftsmanship, even though it cannot be confined to handicraft, at least presupposes special training, skill and knowledge for its production…."craftsmanship", particularly when considered in its historical context, implies a manifestation of pride in sound workmanship – a rejection of the shoddy, the meretricious, the facile. But the craftsmanship – not the work itself – must in addition be artistic."
He then gave examples of craftsmanship which was not artistic – a cobbler, a dental mechanic, a pattern-maker, a boilermaker, a plumber, a wheelwright and a thatcher. He contrasted that with the maker of hand-painted tiles. At page 94 he proposed a test. In that context he said:
"I start by re-emphasising that the statutory phrase is not 'artistic work of craftsmanship' but 'work of artistic craftsmanship' and that this distinction accords with the social situation in which Parliament was providing a remedy. It is therefore misleading to ask, first, is this a work produced by a craftsman, and secondly, is it a work of art? It is more pertinent to ask is this the work of one who was in this respect an artistic-craftsman. It follows that the artistic merit of the work is irrelevant….not only is artistic merit irrelevant as a matter of statutory construction, a valuation of artistic merit is not a task for which judges have any training or general aptitude….since the Tribunal will not attempt a personal aesthetic judgment….it follows, again, that whether the subject matter is or is not a work of artistic craftsmanship is a matter of evidence; and the most cogent evidence is likely to be from those who are either themselves acknowledged artists-craftsmen or concerned with the training of artists-craftsmen – in other words, expert evidence. In evaluating the evidence, the court will endeavour not to be tied to a particular metaphysics of art, partly because the courts are not naturally fitted to weigh such matters, partly because Parliament can hardly have intended the construction of its statutory phrase should turn on some recondite theory of aesthetics….it is probably enough the common experience tells us that artists have vocationally an aim and impact which differ from those of the ordinary run of humankind."
"The conscious intention of the craftsman will be the primary test of whether his product is artistic or not; the fact that many of us like looking at a piece of honest work, especially in the traditional trades, is not enough to make it a work of art."
He disclaimed the possibility of arriving at a comprehensive definition of the word "artistic". He thought that expert evidence would not help:
"Since the word [artistic] is a word of common speech, it requires, and permits of, no interpretation by experts. It is for the judge to determine whether the object falls within the scope of the common meaning of the word." [page 97]
In the next paragraph of his judgment Lord Kilbrandon referred to the evidence given by the makers of the subject item as to what they thought they were doing. He observes that:
"No-one thought he was assisting at the delivery of a work of art."
He said they threw a light on the process which was taking place. It seems to follow that he gave great weight to the purpose of the creation. Other than that, his judgment sheds no further light on what meaning should be given to the word "artistic".
(i) In Merlet v Mothercare plc  RPC 115, as recorded by Tipping J in Bonz (referred to below), Walton J carried out a headcount and came to the reluctant conclusion that the majority concluded that the work in question had to be a work of art. That interpretation was not urged on me by either party and I do not adopt it.
(ii) The intention of the creator has some real relevance.
(iii) The composite phrase is important and has to be borne in mind.
(iv) At least some of their lordships clearly contemplated that expert evidence would be necessary. Others did not. I do not find that it is in fact necessary, and indeed, so far as one can tell, in subsequent cases the question was determined without it.
"for a work to be to be regarded as one of artistic craftsmanship it must be possible fairly to say that the author was both a craftsman and an artist. A craftsman is a person who makes something in a skilful way and takes justified pride in their workmanship. An artist is a person with creative ability who produces something which has aesthetic appeal."
I find that helpful. Having said that, he was prepared to combine the artistry of the designer and the craftsmanship of the knitters and conclude that the sweaters fell within the description, rejecting authorities which tended to suggest that they had to be the same person. That seems to me to be a sensible approach, at least where there is a proper nexus between the two people. If William Morris conceived a design, but it was actually given form by others working (as he intended) from those designs, I do not see why it should be disqualified from being a work of artistic craftsmanship when, if he had made it himself, it would have qualified. Mr Wilson was disposed to accept that, but said it did not apply where there was no connection between the two. I do not need to investigate whether his limitation is right, because it is plain enough in the present case that wherever Mr Ainsworth was working to a design, he was intended to do so, and there was a clear nexus if the works would otherwise qualify.
"51 Design documents and models
(1) It is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design.
(3) In this section-
'design' means the design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article, other than surface decoration
'design document' means any record of a design, whether in the form of a drawing, a written description, a photograph, data stored in a computer or otherwise."
(i) Whether the preceding drawings were "design documents". If they were not design documents the section cannot apply.
(ii) Whether the items for which the documents in question are design works are themselves artistic works. If they were artistic works then the section does not apply and the copyright in the design drawings can be enforced. This comes down to the question of whether those of the helmets and other items which were made from drawings were sculptures or works of artistic craftsmanship.
"52. Effect of exploitation of design derived from artistic work
(1) This section applies where an artistic work has been exploited, by or with the licence of the copyright owner, by –
(a) making by an industrial process articles falling to be treated for the purposes of this part as copies of the work, and
(b) marketing such articles, in the United Kingdom or elsewhere.
(2) After the end of the period of 25 years from the end of the calendar year in which such articles are first marketed, the work may be copied by making articles of any description, or doing anything for the purpose of making articles of any description, and anything may be done in relation to articles so made, without infringing copyright in the work.
(4) The Secretary of State may by order make provision –
(a) as to the circumstances in which an article, or any description of article, is to be regarded for the purpose of this section as made by an industrial process;
(b) excluding from the operation of this section such articles of a primarily literary or artistic character as he thinks fit.
(6) In this section –
(b) References to the making of an article are to its being sold or let for hire or offered or exposed for sale or hire.
"2. An article is to be regarded for the purposes of s.52 of the Act (limitation of copyright protection for design derived from artistic work) as made by an industrial process if –
(a) it is one of more than 50 articles which –
(i) all fall to be treated for the purposes of Part I of the Act as copies of a particular artistic work, but
(ii) do not all together constitute a single set of articles as defined in s.44(1) of the Registered Designs Act 1949; or
(b) it consists of goods manufactured in lengths or pieces, not being hand made goods.
3. (1) There are excluded from the operation of s.52 of the Act –
(a) works of sculpture, other than costs or models used or intended to be used as models or patterns to be multiplied by any industrial process;
(b) wall plaques, medals and medallions; and
(c) printed matter primarily of a literary or artistic character, including book jackets, calendars, certificates, coupons, dress-making patterns, greetings cards, labels, leaflets, maps, plans, playing cards, postcards, stamps, trade advertisements, trade forms and cards, transfers and similar articles.
(2) Nothing in article 2 of this Order shall be taken to limit the meaning of "industrial process" in paragraph (1)(a) of this article."
"'set of articles' means a number of articles of the same general character ordinarily on sale or intended to be used together, to each of which the same design, or the same design with modifications or variations not sufficient to alter the character or substantially to affect the identity thereof, is applied."
"20(1) Where section 10 of the 1956 Act … applied in relation an artistic work at any time before commencement, section 52(2) of this Act applies with the substitution for the period of 25 years mentioned there of the relevant period of 15 years as defined in section 10(3) of the 1956 Act.
(2) Except as provided in sub-paragraph (1), section 52 applies only where articles are marketed as mentioned in subsection (1)(b) after commencement."
"10. Special exception in respect of industrial designs
(2) Where copyright subsists in an artistic work, and –
(a) a corresponding design is applied industrially by or with the licence of the owner of the copyright in the work, and
(b) articles to which the design has been so applied are sold, let for hire, or offered for sale or hire [whether in the United Kingdom or elsewhere]
The following provisions of this section shall apply.
(3) Subject to the next following subsection, after the end of the relevant period of 15 years it shall not be an infringement of the copyright in the work to do anything which at the time when it was done would, if a corresponding design had been registered under the Registered Design Act 1949 … immediately before that time have been within the scope of the copyright in the design as extended to all associated designs and articles.
In this subsection 'the relevant period of 15 years' means the period of 15 years beginning with the date on which the articles … were first sold, let for hire or offered for sale or hire, whether in the United Kingdom or elsewhere.
(4) For the purposes of subsections (2) and (3) of this section, no account shall be taken of any articles in respect of which, at the time when they were sold, let for hire, or offered for sale or hire, the design in question was excluded from registration under the Act of 1949 by rules made under subsection (4) of section 1 of that Act (which relates to the exclusion of designs for articles which are primarily literary or artistic in character) and for the purposes of any proceedings under this Act a design shall be conclusively presumed to have been so excluded."
"designs to be applied to … works of sculpture other than casts or models used or intended to be used as models or patterns to be multiplied by any industrial process".
Thus if the manufactured things are sculptures, their sale does not start the clock running under section 10.
"It should be noted that when section 10(2) was amended by the Design Copyright Act 1968, the words "whether in the United Kingdom or elsewhere" were added to section 10(2)(b) but not to section 10(2)(a). This suggests that, whilst the marketing of articles may take place anywhere, the actual process of industrially applying the design to articles must have taken place within the United Kingdom."
"It is to be noted that these three conditions were cumulative. If, therefore, one condition was not satisfied it would seem that section 10(2) would not have applied. This could have occurred, it is submitted, if, for instance, the industrial application took place in America and the relevant articles were sold in America and this country. That is to say, neither condition relating to the industrial application, nor the condition relating to sale specified where that activity had to take place for the condition to be satisfied. It is submitted that, in the circumstances, both were confined to this country since it would seem surprising if, by reason of industrial application and sale in, for instance, America alone, there should be a limitation on the English artistic copyright. Some support for this submission is to be found in the Design Copyright Act 1968 which, in amending s.10, inserts the words 'whether in the United Kingdom or elsewhere' at the end of a condition relating to sale, but makes no similar provision in relation to the conditions relating to industrial application."
"Andrew Ainsworth and Shepperton Design Studios created the original helmets and armour for the greatest sci-fi fantasy film of all time.
Now, almost 30 years on and for the FIRST time ever, YOU can own an exclusive 1:1 collectible replica of the original movie helmets.
Made by the original prop-maker from the original moulds. [The emboldening is in the original.]
Produced and endorsed by Andrew Ainsworth at Shepperton Design Studios, these unique props offer collectors a rare opportunity of owning some of the most iconic designs of modern cinema.
These unique collectibles are the ONLY helmets ever produced from the original moulds used to create the screen-used helmets…."
(1) The material is calculated to lead and likely to lead members of the public to believe, contrary to the fact, that Lucas Licensing has licensed and/or endorsed and/or approved the manufacture and sale of the Ainsworth helmets and armour, or has otherwise been involved in some commercial arrangement with the defendants concerning such products.
(2) Alternatively, the acts of the defendants were calculated to lead and likely to lead members of the public to believe, contrary to the fact, that Mr Ainsworth was the creator or designer, alternatively the principal creator or designer, of the helmets and body armour.
"It is quite sufficient, in my opinion, to constitute passing off in fact, if a person being minded to obtain goods which are identified in his mind with a definite commercial source is led by false statements to accept goods coming from a different commercial source."
Contractual claims relating to copyright
"Where the outside draftsman was merely commissioned to produce engineering or production drawings from rough sketches supplied by the manufacturer the case for saying that the manufacturer is the owner in equity is very strong indeed. The principle in operation in all these cases is that both parties intended that the manufacturer or commissioner should have the rights necessary for him to protect the property he has purchased and the enterprise for which the drawings were intended to be used."
Where that is the case, the law will consider the commissioner to be entitled to the copyright in equity, and the author to be under an obligation to assign it.
"(5) Where (as in the present case) it is necessary to imply the grant of some right to fill a lacuna in the contract and the question arises how this lacuna is to be filled, guidance is again to be found in Liverpool. The principle is clearly stated that in deciding which of the various alternatives should constitute the contents of the term to be implied, the choice must be that which does not exceed what is necessary in the circumstances (see Lord Wilberforce at p.245 F-G). In short a minimalist approach is called for. An implication may only be made if this is necessary, and then only of what is necessary and no more;
(6) Accordingly if it is necessary to imply some grant of rights in respect of a copyright work, and the need could be satisfied by the grant of a licence or an assignment of the copyright, the implication will be of the grant of a licence only;
(7) Circumstances may exist when the necessity for an assignment of copyright may be established. As Mr Howe has submitted, these circumstances are, however, only likely to arise if the client needs in addition to the right to use the copyright works the right to exclude the contractor from using the work and the ability to enforce the copyright against third parties. Examples of when this situation may arise include: (a) where the purpose in commissioning the work is for the client to multiply and sell copies on the market for which the work was created free from the sale of copies in competition with the client by the contractor or third parties; (b) where the contractor creates a work which is derivative from a pre-existing work of the client, e.g. when a draughtsman is engaged to turn designs of an article in sketch form by the client into formal manufacturing drawings, and the draughtsman could not use the drawings himself without infringing the underlying rights of the client; (c) where the contractor is engaged as part of a team with employees of the client to produce a composite or joint work and he is unable or cannot have been intended to be able to exploit for his own benefit the joint work or indeed any distinct contribution of his own created in the course of his engagement: see Nichols Advanced Vehicle Systems Inc v Rees  RPC 127 at 139 and consider Sofia Bogrich v Shape Machines unreported, 4th November 1994 and in particular page 15 of the transcript of the judgment of Aldous J. In each case it is necessary to consider the price paid, the impact on the contractor of assignment of copyright and whether it can sensibly have been intended that the contractor should retain any copyright as a separate item of property."
Paragraph (7) is the significant one. Lucas says that the circumstances of the present case fall within the sort of conditions that require the assignment of copyright.
Contractual claims relating to tools
"is the fact that the maker of the document has used his brain and thus produced a result which can only be produced by somebody who goes through the same process."
"The plaintiffs' tool was entrusted to the defendants for the manufacture of swizzle sticks for the plaintiffs for reward and for no other purpose. In those circumstances, it seems to me that in equity there was an obligation on the defendants to use the tool solely for the purposes of the plaintiffs, and not to use it for the purposes of the defendants or for any other purpose. Similarly, all information directly or indirectly obtained by the defendants from the plaintiffs from the operation of the tool, or from the swizzle sticks themselves, or, in my view, obtained by the defendants in circumstances which made that information confidential."
"No doubt a time may come when information is generally available for the public. But the mere publication of an article by manufacturing it and placing it upon the market, whether by means of work done in it or calculation or measurement which would enable information to be gained, is not necessarily sufficient to make such information available to the public. The question in each case is: Is such information available to the public? It is not, in my view, if work would have to be done upon it to make it available."
The claim on the US judgment
(a) That Mr Ainsworth did not submit to the jurisdiction of the US courts, and did not have a sufficient presence in the US, so as to enable Lucas to rely on the judgment in an English action.
(b) If he is liable to be sued on that judgment, the Lanham Act element ($5m of the $10m sued for) cannot be relied on because of the Protection of Trading Interests Act 1980 ("PTIA").
(i) He advertised his goods on his website, which was obviously available to US customers. Lucas said that it was particularly targeted or directed at US customers. The only reason for supposing that that is the case is that the price of the helmets advertised there was expressed in US dollars immediately before it was expressed in pounds sterling, no other currency is referred to and shipping charges for the US and Canada are specified before shipping charges to the UK and the rest of the world. If it matters (and I doubt if it does) then it seems to me that the conclusion is not justified by the material relied on. Mr Ainsworth was doubtless acknowledging that the US would be a material market, but to say that this website was directed to it is to give the matter an emphasis that is not warranted.
(ii) He advertised in the United States. One advertisement of his appeared in three issues of a magazine called Star Log magazine, which is distributed primarily in the United States. E-mail advertisements were sent to existing customers there (as well as elsewhere in the world).
(iii) He sold a significant number of items to customers in the United States, and had them delivered there. They were, so far as I know, all or mainly internet sales; that is to say, they were effected by customers in the US sitting in front of their computers and going through the ordering routine on screen which is familiar in the modern world. The goods were despatched from the UK. There is a dispute as to the amount actually sold – at the hearing Mr Ainsworth admitted to £8,000; his pleadings admitted to approximately £25-30,000. That dispute does not matter – the sales were material though not great.
(i) "Where a court of competent jurisdiction has adjudicated a certain sum to be due from one person to another, a legal obligation arises to pay that sum, on which an action for debt to enforce the judgment may be obtained." (Parke B in Williams v Jones (1845) 13 M & W 633.
(ii) The point which arises for the English courts is its view of "competent jurisdiction" in this context. This is a question for the English court, deciding it on English rules of private international law.
(iii) So far as an individual is concerned, a foreign judgment against that individual will be enforced if:(a) He was voluntarily present in that country when the action began, or perhaps when the process was served (a distinction of no relevance to the present case).
(b) Where he has selected a forum as plaintiff in which he is subsequently sued.
(c) Where he has voluntarily appeared.
(d) Where he has contracted to submit himself to the forum.
(iv) The basis of the territorial judgment of the foreign court over an individual, which gives rise to (a), is:"[the defendant's] obligation for the time being to abide by [the foreign country's laws] and accept the jurisdiction of its courts while present in its territory. So long as he remains physically present in that country, he has the benefit of its laws, and must take the rough with the smooth, by accepting his amenability to the process of its courts. … we would conclude that the voluntary presence of an individual in a foreign country, whether permanent or temporary and whether or not accompanied by residence, is sufficient to give the courts of that country territorial jurisdiction over him under rules of private international law." (p 519 B-C)
(v) In the case of a corporation, it is necessary to apply the same concepts (residence or presence) but appropriately adjusted to reflect the fact that corporations cannot reside and can only do things via agents. The question is: "Was the corporation present in the relevant jurisdiction at the relevant time?" (p528D)
(vi) A corporation can be present if it has a fixed place of business, or if it conducts business through an agent with a fixed place of business See the principles extracted at p 530C-F.
"Thus if a trader from state X is trying the sell goods or services into state Y, most people would regard that as having a sufficient link with state Y to be 'in the course of trade' there." (Paragraph 19; Jacob J's emphasis)
He also relied on what Jacob J said about websites in paragraph 21:
"[Amazon.com, which is] based in the US … has actively gone out to seek world-wide trade, not just by use of the name on the Internet but by advertising its business here, and offering and operating a real service of supply of books to this country."
Mr Bloch suggests that that means that a person could be taken to be using a mark in the course of business carried on in another country by targeting sales in that other country via a website. That is what Mr Ainsworth is said to have done. At the end of the day, Mr Bloch accepted that he was arguing for a far-reaching finding or conclusion in relation to this aspect of the case, but said that developments in modern trading methods justified it.
"1. On the First Claim for Relief for copyright infringement, actual damages and profits in the amount of $5,000,000.
2. On the Second, Third and Fourth Claims for unfair competition under the Lanham Act, trademark infringement and unfair competition under State law, $5,000,000 in compensatory damages.
3. On the Second and Third Claims for unfair competition and trademark infringement under the Lanham Act, an additional $10,000,000 to treble the compensatory damages awarded on those claims."
Reading the issue into the US judgment in the present case, it is this: Does the multiplication in paragraph 3 mean that not only is the paragraph 3 sum irrecoverable, but also the paragraph 2 sum? There is no dispute under this head about the copyright sum in paragraph 1. Mr Wilson did not dispute the severability of the copyright damages for these purposes, but claimed that the bar on recovery of multiple damages contained in the PTIA meant that not only the trebling element of the judgment (the $10m in paragraph 3) was barred, but also the amount expressed as being compensatory was barred too.
"5 Restriction on enforcement of certain overseas judgments
(1) A judgment to which this section applies shall not be registered under Part II of the Administration of Justice Act 1920 or Part I of the Foreign Judgments (Reciprocal Enforcement) Act 1933 and no court in the United Kingdom shall entertain proceedings at common law for the recovery of any sum payable under such a judgment.
(2) This section applies to any judgment given by a court of an overseas country, being:
(a) a judgment for multiple damages within the meaning of subsection (3) below;
(3) In subsection (2)(a) above a judgment for multiple damages means a judgment for an amount arrived at by doubling, trebling or otherwise multiplying a sum assessed as compensation for the loss or damage sustained by the person in whose favour the judgment is given."
"… I accept, and indeed it is not in issue between the parties, that the 1980 Act makes clear its hostility to awards of damages by barring enforcement in the United Kingdom of any part of such award including the basic compensatory award to which a multiple element has been applied and superadded. The wording of the definition in section 5(3) makes that clear."
"In my view it is both desirable and appropriate that enforcement of [the untainted compensatory elements] should be open to the claimant unless plainly precluded by the terms of the 1980 Act, and the approach to the construction of the Act should be based upon that premise." (paragraph 51)
"purely compensatory awards can be enforced, multiplied awards not. … It is true that it involves reading in the words "to the extent" but … one must read something in and the only sensible choice is [that the words refer only to the extent to which the overall sum includes a multiplied amount]".
I think, with respect, that one cannot quite read precisely those words into the Act anywhere and achieve the result he reaches; one is really reading in the concept. But if one does that then one arrives, without difficulty, at the result that I favour. If it be said that that is contrary to the words from paragraph 41 of Potter LJ's judgment set out above, then I would say that I am not convinced that Potter LJ really intended to rule against the arguments set out above, and they are plainly not a finding in any event – they were not necessary for his decision.
The US copyright claims — general
US copyrights – justiciability
"….the same rule must be applied to foreign patents that is applied to foreign lands. The reasons upon which the rule in the one case are founded are, I think, equally applicable to the other."
"…is authority for the proposition that a claim that acts done outside the United Kingdom constitute an infringement of the copyright law of a foreign country is not justiciable in English courts." (page 87B)
And at page 88D he seems to have come close to that conclusion himself:
"In my judgment therefore the question whether the defendant is entitled to copyright under the law of the United States of America or of any of the states of the United States of America is not justiciable in the English court."
"The principles which applied to land in the Moçambique case apply equally well to attempts to litigate foreign intellectual property rights in English courts. Those rights give rise to monopolies or quasi monopolies which are strictly territorial in nature."
"Also a conclusion that a patent is infringed or not infringed involves in this country a decision on validity as in this country no man can infringe an invalid patent. In the present case the plaintiffs admit the validity of the patent and therefore there is no dispute upon the matter. However, it will be implicit in the judgment of this court that there has been infringement and that, between the parties, the patent is valid. Thus, I believe it is at least convenient that infringement, like validity, is decided in the state in which it arises."
"Nothing to do with actionability. It is a principle of public policy based on the undesirability of our courts adjudicating on issues which are essentially foreign and local." [page 43H]
Having rejected an argument that intellectual property rights fall within the concept of "immovable" in s.30 of the 1982 Act, he held that, subject to the Brussels Convention, the proceedings in respect of infringements of foreign patents ought to be struck out.
"Direct support for the proposition that a claim for breach, outside England, of a foreign intellectual property right cannot be entertained by an English court…."
"The English courts should not claim jurisdiction to adjudicate upon matters which, under generally accepted principles of private international law, were within the particular province and competence of another state." [page 431F)
"Where the action is not concerned with the registration or validity, the Convention gives jurisdiction to the courts of the defendant's domicile…." [my emphasis]
On the footing of that, he held that there was nothing in Potter which required an English court to refuse jurisdiction in those cases in the light of what the Convention said.
"We do not find it necessary to decide whether Vinelott J was correct to take the view (if he did) that an action for alleged infringement of a foreign copyright by acts done outside the United Kingdom in a state not a party to the Brussels Convention, in a case where no question as to the validity or registration of the right was in issue, was not justiciable in an English court."
The Court of Appeal could:
"derive little or no assistance from the decision in the Tyburn Productions case….on the question whether an action for alleged infringement of a foreign copyright by acts done outside the United Kingdom in a case where the existence and validity of the of the right is not in issue is justiciable in an English court; and no assistance from that case where the question arises in the context of acts done in a contracting state." [page 440B my emphasis]
"In my judgment, the only rational which survives today (apart from the court's possible incapacity to execute its order abroad, which is not applicable in our case) is that it would be a breach of international comity to try questions of title to foreign rights in rem, save incidentally: see, for example, the judgment of the Court of Appeal of Pearce v Ove Arup Partnership Limited…. But we still have to consider precisely why it would be considered a breach of comity."
"I doubt that the sovereign could be assumed to be asserting a prerogative right to have claims of that sort decided exclusively in its own court."
Nevertheless he considered that the claim was a "pure matter in rem". I am not sure that I agree with that; whether or not that is right will probably depend how technical one is going to be about that concept. However, I do not think that that matters for present purposes.
"not purporting to tell the American public say that one of their patents is invalid or that the scope of its claims is not what it might appear to be. They are merely settling the rights of two private litigants who have chosen to submit their dispute to the adjudication of our courts. Once again, rights in personam, not rights in rem."
He then went on to dissect various principles out of Vinelott J's decision and to make observations on them. So far as Vinelott J's reliance on Potter is concerned, he observes that in the Potter case the defendant:
"…was contending that the authorities of [New South Wales] had been wrong to grant the patent, or had been wrong to grant it in that form. This could not be allowed. But that, of itself, in no way establishes that an action for infringement could not have been entertained if the validity of the patent had not been in question. See the analysis of the case by the Court of Appeal in the Ove Arup case….."
He also commented on the concession by counsel in Tyburn Productions v Conan Doyle to the effect that the Moçambique rule applies to copyrights so far as it applies to patents. On that, Mr Prescott observed:
"It does not follow. Unlike patents, copyrights are not registered. Compare Art. 16(4) of the Brussels and Lugano conventions. Hence the Court of Appeal in the Ove Arup case held that an action lay in England for infringement of Dutch copyright."
"94. As to the application of the common law rule to claims in respect of foreign intellectual property, I have considerable doubts whether the rule in its wider form developed in the Hesperides Hotels case ever applied to intellectual property and I agree with Mr Boswood that a now abrogated rule at common law is a somewhat shaky basis for such a wide proposition of law as that advanced by Upaid"
The wide proposition advanced by Upaid was the proposition that English law does not have subject matter jurisdiction over foreign intellectual property rights.
"the English courts should not make inquiry into the validity of a foreign patent or similar foreign intellectual property rights". (para 95)
"Although the Court of Appeal fell short of saying Tyburn Productions was wrongly decided, they clearly thought its application should be limited to cases where the existence or validity of the foreign patent was in issue. They did not consider it to be authority for the proposition that a claim for infringement of a foreign patent was not justiciable in England if the validity of the patent was not in issue."
In fact the Court of Appeal in Ove Arup was not considering a patent at all; it was considering copyright, but with that amendment it is clear what Flaux J was saying.
"101. I would be reluctant to go [as far as saying that the rule did not apply at all to foreign intellectual property rights], not least because the Court of Appeal did not do so in Ove Arup despite the opportunity to do so. However, in my judgment, the Mocambique rule as it applies to foreign intellectual property rights should be limited to those cases where the existence or validity of such rights are in issue and it is only in such cases that a claim for infringement of the rights should be justiciable in England if English jurisdiction can otherwise be established. I believe that is the clear thrust (even if not spelt out directly) of the passage in the decision of the Court of Appeal in Ove Arup which I quoted above.
102. It is only where the English court is being asked to adjudicate on the existence or validity of the foreign patent that, as I see it, the rationale of the Mocambique rule comes into play, namely the public policy that it is undesirable that English courts should adjudicate on issues which are essentially foreign and local … Where all that is in issue is the infringement of the relevant intellectual property right and the damage suffered by the claimant as a consequence, why should the English courts not assume jurisdiction which they otherwise have in respect of the relevant foreign tort? Why impose some self-denying ordinance merely because foreign intellectual property rights are involved? There is no sense in doing so, a fortiori, where there is no longer any such restriction in relation to torts involving foreign land where no issue of title arises."
(i) The discussion reveals a tendency to move away from a strict and absolute application of the Mocambique rule to all intellectual property cases, and in particular copyright cases.
(ii) The statutory modification of the Mocambique rule itself, and the principles of the Brussels and Lugano conventions that between them draw a distinction between title (for land) and validity and registration aspects (for registrable intellectual property rights) on the one hand and trespass/infringement on the other, justify the conclusion that at least infringement of foreign copyright should be justiciable here, whether or not subsistence is also justiciable.
(iii) There is nothing in the cases which binds me to a contrary conclusion.
(iv) The rule (if any) which underpins the extent to which an English court should not embark on a consideration of aspects of intellectual property rights is a public policy rule, not an actionability rule – see Coin Controls.
US copyright – the claims made and the issues arising
(i) The subsistence of copyright and ownership (by one or more of the claimants) of all drawings (so far as they are found to exist) was accepted by Mr Ainsworth. The existence of some drawings was disputed (see the factual narrative above). So far as factual issues arise, they are no different from those that I have had to decide for English copyright purposes.
(ii) Infringement is denied so far as some drawings are concerned, on the footing that they were not copied, or not copied closely enough. By the end of the trial it was not suggested that any different factual or assessment issues arise in relation to these points over and above those that I have already decided for English copyright purposes.
(iii) Because 3D items were produced, it was argued that there was no infringement because copyright in the drawings would not be infringed by the production of a utilitarian or functional device. That is said to be a principle of US copyright law. The helmets and armour were said to be functional or utilitarian for these purposes. Mr Wilson accepted that this was an infringement point (not a subsistence point).
(iv) The claimants claimed copyright in physical helmets and armour. The existence of copyright in these was disputed by Mr Ainsworth because they were said to be functional or utilitarian. This was said to be a subsistence point, though clearly related to the same point arising in relation to infringement. At one stage it was also suggested that if there was copyright it was vested in Mr Ainsworth and not in the claimants, but this was point was not pursued into final speeches.
"an arguable defence to infringement (on the basis of the US rule denying copyright protection to functional objects, including clothing, and even including wedding dresses). But the Claimants' witness was able to refer to principles and recent cases which he said would ensure success for the Claimants in this case. One is left with an uneasy feeling that if advocates well-versed in US law had been in a position to argue the case, the position could have been different."
His oral submissions effectively took the same stance, that (given the facts were against him) the only defence he would have in the US was the utilitarian defence. In relation to articles made from drawings he expressly conceded "that on the basis of the evidence given we would be likely to lose those issues in the United States on the basis that those matters are to be regarded as functional objects or utilitarian objects within the American jurisprudence". Having heard the evidence, and in the light of those concessions, it seems to me, and I find, that so far as these English courts are concerned the position is clear enough and it is possible to make a clear finding against Mr Ainsworth on the utilitarianism point; that is to say, that Mr Ainsworth cannot successfully raise a utilitarianism point against the copyright asserted in this claim (for the items where the issue is still live). The claimants "having the best of the evidence", with no attempt at analysis or arguing why the defendant might still be right, is a euphemistic concession that the defendant does not have a winning case on the point. Accordingly, on the evidence, I find that the relevant 3D articles were not utilitarian or functional for the purposes of the relevant infringement or subsistence tests, and that therefore copyright exists, or is infringed, as the case may be.
Mr Ainsworth's own copyright claims
(i) The claim of the claimants based on an infringement of US copyright succeeds.Appendices
(ii) All other claims of the claimants fail.
(iii) The counterclaim of Mr Ainsworth fails.