UKSC 39
On appeal from:  EWCA Civ 1328
Lucasfilm Limited and others (Appellants) v Ainsworth and another (Respondents)
Lord Phillips, President
JUDGMENT GIVEN ON
27 July 2011
Heard on 7, 8 and 9 March 2011
Jonathan Sumption QC
Michael Bloch QC
(Instructed by Harbottle & Lewis LLP)
Alastair Wilson QC
(Instructed by S C Andrew LLP)
LORD WALKER AND LORD COLLINS (with whom Lord Phillips and Lady Hale agree)
"One of the most abiding images in the film was that of the Imperial Stormtroopers. These were soldiers clad in white armour, including a white helmet which left no part of the face uncovered... The purpose of the helmet was that it was to be worn as an item of costume in a film, to identify a character, but in addition to portray something about that character – its allegiance, force, menace, purpose and, to some extent, probably its anonymity. It was a mixture of costume and prop."
The parties are agreed that for the purposes of this final appeal the helmet can be taken as the paradigm case that will be decisive of the outcome.
Part I: English copyright law issues
Current statutory provisions
"(a) a graphic work, photograph, sculpture or collage, irrespective of artistic quality,
(b) a work of architecture being a building or a model for a building, or
(c) a work of artistic craftsmanship."
By section 4(2) "sculpture" includes a cast or model made for purposes of sculpture.
"(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.
(2) Nor is it an infringement of the copyright to issue to the public, or include in a film or communicate to the public, anything the making of which was, by virtue of subsection (1), not an infringement of that copyright.
(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; and
'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."
(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.
(3) Where only part of an artistic work is exploited as mentioned in subsection (1), subsection (2) applies only in relation to that part.
(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 purposes 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.
(5) An order shall be made by statutory instrument which shall be subject to annulment in pursuance of a resolution of either House of Parliament.
(6) In this section –
(a) references to articles do not include films; and
(b) references to the marketing of an article are to its being sold or let for hire or offered or exposed for sale or hire."
Legislative history: before the 1911 Act
"any new and original sculpture, or model, or copy, or cast of the human figure or human figures, or of any bust or busts, or of any part or parts of the human figure, clothed in drapery or otherwise,"
and continuing in broader terms, referring to "any matter being subject of invention in sculpture." The sculpture was required to bear the maker's name and the date when it was made. Paintings, drawings and photographs were not protected until the Fine Arts Copyright Act 1862 ("the 1862 Act"). The 1862 Act required registration as a condition of protection. Architectural works were not protected until the 1911 Act (which also introduced works of "artistic craftsmanship" into the definition of "artistic work" in section 35 of that Act).
Legislative history: the 1911 Act and afterwards
"(1) This Act shall not apply to designs capable of being registered under the Patents and Designs Act 1907, except designs which, though capable of being so registered, are not used or intended to be used as models or patterns to be multiplied by any industrial process.
(2) General rules under section 86 of the Patents and Designs Act 1907 may be made for determining the conditions under which a design shall be deemed to be used for such purposes as aforesaid."
The test for production by an industrial process was (by rule 89 of the Designs Rules 1920, and so far as now material) the same as that in the 1989 Order (mentioned in para  above).
"This Act shall apply to designs capable of being registered under [the 1907 Act], which are not used or intended to be used as models or patterns to be multiplied by any industrial process. With that exception this Act shall not apply to designs capable of being registered under [the 1907 Act]."
The main issue in that case (which was concerned with "Popeye" dolls derived from published comic strips enjoying artistic copyright) was the time at which the intention of use for industrial production had to be formed. The Lords decided that the intention must have been there from the start.
The meaning of "sculpture"
"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."
"I do not see why the word 'sculpture' in section 3 of the Copyright Act 1956 should not receive its ordinary dictionary meaning except in so far as the scope of the word is extended by section 48(1) which provides that 'sculpture' includes any cast or model made for purposes of sculpture."
In reaching this conclusion he relied on the part of the Wham-O decision which recognised copyright in the wooden model of a frisbee. He also relied on the Concise Oxford Dictionary's definition of "sculpture":
"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."
"The same ['far removed from the creation of expressive form'] goes for the plastic shapes considered by Falconer J in the Breville case  FSR 77. No ordinary citizen – indeed no ordinary lawyer – would regard a sandwich toaster or any part of it as a work of sculpture – even if it did produce 'scalloped' sandwiches. So why should a copyright lawyer take a different view? A total or almost total emphasis on the manner of creation, as in the Breville case and Wham-O case  RPC 127 produces a result which offends common sense and in our view is wrong. There must, as Mann J said, be some element of artistic expression however unsuccessful."
"Casting or moulding is an industrial process commonly used where the end product is made of plastic or metal of some kind. It is used in the production of millions of ordinary household objects, none of which would usually be described as sculptures. A motor car is but one obvious example. Some would have qualified for protection as registered designs so as to be excluded under section 22(1) of the 1911 Act. But would they have qualified as 'sculpture'?".
"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."
Mr Meade's formulation as recorded by Laddie J seems to be the only suggested definition or near-definition that has not attracted adverse comment from any quarter.
"p???' ??d'a??p??, a??'e????? ?? µe?a
(the fox knows many things, but the hedgehog one big thing.)"
The judgments of Mann J and the Court of Appeal
"In the present case, the question of functionality does not arise, because the articles in question have no functional purpose whatever. The Stormtroopers' helmets and armour did not exist in order to keep their wearers warm or decent or to protect them from injury in an inter-planetary war. Their sole purpose was to make a visual impression on the filmgoer. They are therefore artistic works."
"It was a mixture of costume and prop. But its primary function is utilitarian. While it was intended to express something, that was for utilitarian purposes. While it has an interest as an object, and while it was intended to express an idea, it was not conceived, or created, with the intention that it should do so other than as part of character portrayal in the film. That, in my view, does not give it the necessary quality of artistic creation inherent in the test suggested by Laddie J."
"Mr Bloch seeks to avoid our example of a real soldier's helmet being used as a prop in a film by stressing the fictional and imaginary nature of the stormtroopers and what they were . . .
But that argument confuses the fictional nature of the stormtrooper with his physical depiction in the film. Although invented, the helmet and armour are still recognisable as such and have a function within the confines of the film as the equipment of the stormtrooper."
"Secondly, because the decision involves the application of a not altogether precise legal standard to a combination of features of varying importance, I think that this falls within the class of case in which an appellate court should not reverse a judge's decision unless he has erred in principle: see Pro Sieben Media AG v Carlton UK Television Ltd  1 WLR 605, 612-613. I agree with Buxton LJ in Norowzian v Arks Ltd (No 2)  FSR 363, 370 when he said: 'where it is not suggested that the judge has made any error of principle a party should not come to the Court of Appeal simply in the hope that the impression formed by the judges in this court, or at least two of them, will be different from that of the trial judge.'"
That applies with extra force in the case of a second appeal. To the same effect are Lord Hoffmann's observations in Biogen Inc v Medeva plc  RPC 1, 45, which are too well known to need repetition.
Sections 51 and 52
Part II: Whether a claim against a defendant domiciled in England for infringement of a foreign copyright is justiciable
The decision of the Court of Appeal and the issue on the appeal
The foreign land rule and its application to intellectual property: British South Africa Co v Companhia de Moçambique and Potter v Broken Hill Pty Co Ltd
British South Africa Co v Companhia de Moçambique
"…an action quare clausum fregit cannot be entertained by an English Court in respect of an alleged wrongful entry on land situated abroad; and … the ground of the inability is … no consent of other nations by way of comity to the exercise of such jurisdiction can be inferred."
"in such a case, inasmuch as property of the kind is to be held according to the laws of the country where it is situated, and as the right of granting it is vested in the ruler of the country, controversies relating to such property can only be decided in the state in which it depends."
Potter v Broken Hill Pty Co Ltd
"The matter was, at the desire of the Court, further argued on the point whether the Courts of one State can enquire into the propriety or validity of an attempted exercise of the sovereign power of another State."
"Every sovereign State is bound to respect the independence of every other sovereign State, and the Courts of one country will not sit in judgment on the acts of the government of another done within its own territory. Redress of grievances by reason of such acts must be obtained through the means open to be availed of by sovereign powers as between themselves."
The Moçambique rule
"The jurisdiction of any court in England . . . to entertain proceedings for trespass to, or any other tort affecting, immovable property shall extend to cases in which the property in question is situated outside that part of the United Kingdom unless the proceedings are principally concerned with a question of the title to, or the right to possession of, that property."
"in proceedings which have as their object rights in rem in immovable property or tenancies of immovable property."
The rule in Phillips v Eyre
"Nor can the holder of a French patent, trade mark or copyright sue in England for its infringement in France. Since the French patent, trade mark or copyright is territorial in its operation and the act complained of would not be a tort if committed in England, it cannot be brought within [the first limb of the rule in Phillips v Eyre]."
The act of state doctrine
"the act of state doctrine may make the exercise of supplemental jurisdiction over foreign patent infringement claims fundamentally unfair. As "a 'principle of decision binding on federal and state courts alike,' " the act of state doctrine "requires that, in the process of deciding, the acts of foreign sovereigns taken within their own jurisdictions shall be deemed valid." W S Kirkpatrick & Co, Inc v Envtl Tectonics Corp, Int'l, 493 U.S. 400, 406, 409 … (1990) … In this case, none of the parties or amicus curiae have persuaded us that the grant of a patent by a sovereign is not an act of state. ... Therefore, assuming arguendo that the act of state doctrine applies, the doctrine would prevent our courts from inquiring into the validity of a foreign patent grant and require our courts to adjudicate patent claims regardless of validity or enforceability."
European law and intellectual property rights
"Regarding infringements of intellectual property rights, the universally acknowledged principle of the lex loci protectionis should be preserved. For the purposes of this Regulation, the term 'intellectual property rights' should be interpreted as meaning, for instance, copyright, related rights, the sui generis right for the protection of databases and industrial property rights."
"Infringement of intellectual property rights
1. The law applicable to a non-contractual obligation arising from an infringement of an intellectual property right shall be the law of the country for which protection is claimed.
2. In the case of a non-contractual obligation arising from an infringement of a unitary Community intellectual property right, the law applicable shall, for any question that is not governed by the relevant Community instrument, be the law of the country in which the act of infringement was committed.
"There is substantial sentiment that issues regarding the validity of a registered right, particularly a patent right, should be adjudicated in the courts of the State in which the right is registered. Only this State is competent to cancel the registration. … Nonetheless, the Principles do not include a blanket prohibition on the adjudication of matters involving a foreign State's registered rights, because separating adjudication of validity from infringement can have substantive ramifications. Separate resolutions can prevent a court from hearing all of the evidence relevant to the action and from using its understanding of how a technology is utilized to inform its decision on the scope of the right. Bifurcating validity and infringement can also increase the parties' costs."
The English and foreign authorities on justiciability of intellectual property claims
"the local action doctrine informs us that exercising supplemental jurisdiction in this case appears to violate our own norms of what sovereigns ordinarily expect. Courts derived the local action doctrine from the distinction between local and transitory actions beginning with Livingston v Jefferson, written by Justice John Marshall riding Circuit. 15 F. Cas. 660 (C.C.D.Va. 1811). … [T]he local action doctrine served to prevent courts from adjudicating claims for trespass or title to real property.
The territorial limits of the rights granted by patents are similar to those conferred by land grants. A patent right is limited by the metes and bounds of the jurisdictional territory that granted the right to exclude. …
Therefore, a patent right to exclude only arises from the legal right granted and recognized by the sovereign within whose territory the right is located. It would be incongruent to allow the sovereign power of one to be infringed or limited by another sovereign's extension of its jurisdiction. …"
Conclusions on the justiciability question
The Owusu v Jackson point