The claimant had produced the Star War films which made use of props, in particular a ‘Stormtrooper’ helmet designed by the defendant. The defendant had then himself distributed models of the designs he had created. The appellant obtained judgment against the respondent in the US for punitive damages, but these had not been collected, and the courts below had declared then unenforceable here.
Held: The judgment as to the applicability of English copyright below was upheld insofar as the helmets were not sculptures. It would be inappropriate to stray too far from what would normally be regarded as a sculpture. Not every three dimensional representation of a concept qualifies. The helmet remained a utilitarian item, even though it had a clear role in an artistic work, the film.
However the US judgment was justiciable here. English courts have jurisdiction to entertain claims in relation to infringement of foreign copyrights where there is a basis for in personam jurisdiction for those courts over a defendant: ‘in the case of a claim for infringement of copyright of the present kind, the claim is one over which the English court has jurisdiction, provided that there is a basis for in personam jurisdiction over the defendant, or, to put it differently, the claim is justiciable. It is clear that much of the underpinning of the Mocambique rule and the decision in Potter v Broken Hill Pty Co Ltd has been eroded. All that is left of the Mocambique rule (except to the extent that it is modified by the Brussels I Regulation) is that there is no jurisdiction in proceedings for infringement of rights in foreign land where the proceedings are ‘principally concerned with a question of the title, or the right to possession, of that property.’ So also article 22(1) of the Brussels I Regulation does not apply to actions for damages for infringement of rights in land.’
Judges:
Lord Phillips, President, Lord Walker, Lady Hale, Lord Mance, Lord Collins
Citations:
[2011] 3 WLR 487, [2011] FSR 41, [2011] Bus LR 1211, [2011] UKSC 39, UKSC 2010/0015, [2011] 4 All ER 817, [2011] FSR 41, [2012] 1 All ER (Comm) 1011, [2012] 1 AC 208, [2012] EMLR 3,, [2011] ECDR 21
Links:
Bailii, Bailii Summary, SC, SC Summary
Statutes:
Copyright Designs and Patents Act 1988 4 51 52, Copyright (Industrial Process and Excluded Articles) (No 2) Order 1989 (SI 1989/1070)
Jurisdiction:
England and Wales
Citing:
At ChD – Lucasfilm Ltd and others v Ainsworth and Another ChD 31-Jul-2008
The parties disputed ownership of the designs for various props used in the Star Wars films. The defendant had developed designs from ideas originating within the claimant’s companies.
Held: The judgment from the US in a similar claim was . .
Appeal from – Lucasfilm Ltd and Others v Ainsworth and Another CA 16-Dec-2009
The claimants had made several Star Wars films for which the defendants had designed various props items. The parties disputed ownership of the rights in the designs, and in articular of a stormtrooper helmet. The issues came down to whether the . .
Cited – Gahagan v Cooper 4-Dec-1811
Lord Ellenborough discussed the 1798 Act, saying: ‘The statute seems to have been framed with a view to defeat its own object’ . .
Cited – Britain v Hanks Bros and Co 1902
The plaintiff claimed copyright in a model soldier cast in metal as a statue. The defendant argued that the statute was intended to apply only to substantial works of art, such as busts, large sculptures and casts of copies of works recognised as . .
Cited – Pytram v Models (Leicester) Ltd ChD 1930
A model of a wolf-cub’s head was produced from a papier-mache mould in order to be used as a totem by the Boy Scouts Association. They had failed to register it as a design under the 1907 Act and sued for infringement of their copyright under the . .
Cited – British Leyland Motor Corporation Ltd v Armstrong Patents Co Ltd HL 1986
The claimant’s product was made from drawings. The drawings were protected as copyright artistic works. They were reproduced in a three dimensional form by the claimant’s own products. Someone who copied the claimant’s products indirectly copied the . .
Cited – Swarbrick v Burge 26-Apr-2007
Austlii (High Court of Australia) Copyright – Artistic works – Works of artistic craftsmanship – The respondent obtained an injunction against infringement by the appellants of the respondent’s ownership of . .
Cited – King Features Syndicate Inc v O and M Kleeman Ltd ChD 1940
The plaintiff alleging copyright infringement, had relied on fifty five drawings of the Popeye character out of the many thousands of such drawings in the cartoon series. The defendant might have copied from any one of those thousands.
Held: . .
Cited – King Features Syndicate Inc v O and M Kleeman Ltd HL 1941
The owners of copyright in drawings of ‘Popeye, the Sailor’ sued importers of ‘Popeye’ dolls and other toys. The defendants contended that the copyright in the original work had been lost by the operation of section 22 of the 1911 Act because the . .
Cited – George Hensher Ltd v Restawile Upholstery (Lancs) Ltd HL 1975
The parties dispute the existence of copyright in a prototype of a piece of furniture.
Held: The term ‘craftsmanship’ in the Act suggests a durable useful handmade object.
Lord Reid explained the significance of the intention of the maker . .
Cited – Wham-O Manufacturing Co v Lincoln Industries Ltd 1984
(Court of Appeal New Zealand) The wooden models made from preliminary drawings, which was used to produce a mould from which moulded discs known as Frisbees were made, fell ‘within the definition of sculptures and are thus properly the subject of . .
Cited – Wildash v Klein 2004
(Supreme Court of the Northern Territory – Australia) The parties, two women, each of whom made craftwork depicting local wildlife for sale at markets. Initially they co-operated but later each accused the other of copyright infringement. The . .
Cited – Metix (UK) Ltd v G H Maughan (Plastics) Ltd ChD 1997
The plaintiff sought protect its products by claiming copyright protection in the moulds made for making industrial products (twin cartridges like a double-barrelled syringe, which held products prior to their being mixed) The plaintiff claimed that . .
Cited – Breville Europe v Thorn EMI Domestic Appliances Ltd ChD 1995
Copyright was asserted in plastic shapes used as moulds for the heated plates in a sandwich toaster.
Held: The defendants had not appropriated the plaintiff’s designs contained in their drawings in producing their own machine. Falconer J . .
Cited – Davis (J and S) Holdings v Wright Health Group ChD 1988
The parties disputed the status in intellectual property law of a model of a dental impression tray. A cast was prepared from the model, and a final form prepared from the cast. The author, a professor, made a mock-up of materials but then drew from . .
Mentioned – Pro Sieben Media AG v Carlton Television Ltd and Another CA 7-Jan-1999
The defendant was accused of infringing copyright in a TV programme relating to the pregnancy of a woman with eight foetuses. The defendant claimed fair dealing, but that defence was rejected by the trial judge.
Held: The decision was . .
Approved – Mehdi Norowzian v Arks Ltd and Guinness Brewing Worldwide Limited (No 2) CA 11-Nov-1999
The claimant film artist showed a film to an advertising agency, who did not make use of it, but later appeared to use techniques and styles displayed in the film in subsequent material sold to third parties.
Held: A film was protected as a . .
Cited – Biogen Plc v Medeva Plc HL 31-Oct-1996
The claim patented sought to protect a genetic molecule rather than a whole mouse namely that the molecule would, if inserted into a suitable host cell, cause the cell to make antigens of the Hepatitis B virus. A recombinant method of making the . .
Overruled – Tyburn Productions Ltd v Conan Doyle ChD 1990
The rule in ‘British South Africa’ extends also to intellectual property. The court was asked whether, many years after the death of Sir Arthur Conan Doyle, there still existed copyrights or other intellectual property rights under the laws of the . .
Cited – AMP Inc v Utilux Pty Ltd HL 1971
The 1949 Act denied protection to the features of a design that were solely dictated by a product’s technical function.
Held: A product’s configuration was solely dictated by its technical function if every feature of the design was determined . .
Cited – Hosokawa Micron International Inc v Fortune 1990
(Federal Court of Australia) A design which is dictated solely by function is not a ‘design’ within the meaning of section 4 of the Designs Act 1906. Lockhart J said that: ‘The essence of the registrability of a design is that it has an element of . .
Cited – Duke of Brunswick v The King of Hanover HL 31-Jul-1948
The Duke claimed that the King of Hanover had been involved in the removal of the Duke from his position as reigning Duke and in the maladministration of his estates.
Held: ‘A foreign Sovereign, coming into this country cannot be made . .
Cited – Underhill v Hernandez 29-Nov-1897
(US Supreme Court) Underhill, a US citizen, had constructed a waterworks in Bolivar for the government which was eventually overthrown by revolutionary forces, one of whose generals was Hernandez. After Hernandez had captured Bolivar, Underhill . .
Cited – Potter v Broken Hill Pty Co Ltd 21-Aug-1905
VLR (Supreme Court – Victoria) International law – Conflict of laws – Tort committed abroad – Jurisdiction – Patent in New South Wales – Infringement by Victorian company in New South Wales of New South Wales . .
Mentioned – Potter v Broken Hill Pty Co Ltd 20-Mar-1906
(High Court of Australia) (affirmed) . .
Cited – British South Africa Company v Companhia de Mocambique HL 8-Sep-1893
Two companies, one Portuguese, the other British and controlled by Cecil Rhodes, were in dispute about a large territory called Manica. The Portuguese company complained that they owned lands and mineral rights in Manica yet the British company had . .
Cited – Land Oberosterreich v CEZ (Judgments Convention/Enforcement Of Judgments) ECJ 11-Jan-2006
ECJ Interpretation of Article 16(1)(a) of the Brussels Convention – Exclusive jurisdiction for ‘proceedings which have as their object rights in rem in immovable property’ – Action for the abatement of a nuisance . .
Cited – Def Lepp Music v Stuart-Brown 1986
A claim to infringement of copyright by acts performed in the Netherlands and Luxembourg was not justiciable in England, because such a claim cannot satisfy the double-actionability rule, namely, that the relevant acts must be actionable in the . .
Cited – Owusu v Jackson ECJ 1-Mar-2005
ECJ Brussels Convention – Territorial scope of the Brussels Convention – Article 2 – Jurisdiction – Accident which occurred in a non – Contracting State – Personal injury – Action brought in a Contracting State . .
Cited – Hesperides Hotels Ltd and Another v Aegean Turkish Holidays Ltd and Another CA 1978
An action was brought by the displaced owner of a hotel in Northern Cyprus taken over by the Turkish administration.
Held: The court declined to exercise an original jurisdiction in the northern part of Cyprus.
Lord Denning MR said that . .
Cited – Aksionairnoye Obschestvo A M Luther v James Sagor and Co CA 1921
A claim was made as to property seized by a decree of Russian revolutionaries later recognised as the government.
Held: A court is required to recognise a foreign state’s dealings with private proprietary rights within its jurisdiction. An . .
Cited – Buttes Gas and Oil Co v Hammer (No 3) HL 1981
In a defamation action, issues arose as to two conflicting oil concessions which neighbouring states in the Arabian Gulf had granted over their territorial and offshore waters. The foreign relations of the United Kingdom and Iran were also involved . .
Cited by:
Cited – Human Genome Sciences Inc v Eli Lilly and Company SC 2-Nov-2011
The court considered an appeal against the declaration of invalidity of a biomedical patent for a new human protein on the grounds that it was not susceptible of industrial application.
Held: The patentee’s appeal succeeded. The court had to . .
Cited – Seven Arts Entertainment Ltd v Content Media Corporation Plc and Others ChD 18-Mar-2013
The claimant sought summary judgment on its claim for copyright infringement based upon judgements on the same materials in Canada. . .
Cited – PMS International Group Plc v Magmatic Ltd SC 9-Mar-2016
Overall Impression of Design is a Judgment
The respondent had alleged infringement of its registered design in the ‘Trunki’, a ride-on children’s suitcase. At first instance, the judge had held that the surface decorations were to be ignored. On appeal it had been held that the judge had . .
Cited – Belhaj and Another v Straw and Others SC 17-Jan-2017
The claimant alleged complicity by the defendant, (now former) Foreign Secretary, in his mistreatment by the US while held in Libya. He also alleged involvement in his unlawful abduction and removal to Libya, from which had had fled for political . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, Jurisdiction
Leading Case
Updated: 11 November 2022; Ref: scu.442226
