Last week during a three-day hearing, the
UK’s Supreme Court turned its attention to copyright law – for the first time since its metamorphosis from House of Lords to Supreme Court. The issues in
Lucasfilm v Ainsworth are whether the
Star Wars stormtroopers’ helmets are ‘sculptures’, so attracting copyright protection, and whether English courts have the jurisdiction to hear claims about infringement of foreign copyrights.
SCULPTURE
In the first-instance decision, Mann J held that the stormtroopers’ helmets were not sculptures on the grounds that their purpose was primarily utilitarian, not artistic – nor were they works of artistic craftsmanship. In the Court of Appeal, Lucasfilm appealed the finding that they were not sculptures but did not challenge the finding that they were not works of artistic craftsmanship. The Court of Appeal affirmed Mann J’s decision.
The question of whether the helmets were utilitarian is central to the appeal. According to Lucasfilm, the Court of Appeal had misdirected itself by considering the pretend functions of the armour as real functionality.
Visual v practical function
Jonathan Sumption QC for Lucasfilm argued that the helmets attract copyright as ‘sculptures’ because (a) sculptures should be defined as three-dimensional works that are created for a predominantly artistic rather than functional purpose, (b) an artistic purpose means that of creating a visual impact and (c) the helmets fall within this definition because their purpose is entirely visual not utilitarian.
Alastair Wilson QC for Andrew Ainsworth said a sculpture would be something of overwhelmingly visual significance (but not, I think, that every object of overwhelmingly visual significance would be a sculpture).
Lucasfilm’s definition of sculpture got the five justices of the Supreme Court thinking. Lord Mance wanted to know if flower arrangements and ornamental gates were sculptures. Lord Phillips’s thoughts turned to birthday cakes.
Lord Mance asked if everything on a film set was therefore a sculpture – weren’t they all there for their visual impact? Sumption said everything on the set was a sculpture provided that it was original.
Wilson argued that the requirement of originality would not significantly limit the number of items on a film set that attracted copyright – originality in the context of copyright simply meant that works were not copies of other copyright works. Therefore a set lamppost could be a precise copy of a real lamppost (which is not a copyright work) and still be an original copyright work. Wilson made no mention of Infopaq – isn’t there a potential problem with saying that making a slavish reproduction of a non-copyright item constitutes the intellectual creation of the author?
In his reply Sumption appeared to change his story: a desk or lamppost made for a set would have a functional purpose – unlike the stormtroopers’ helmets. Some costumes, he said, do have a functional purpose: to clothe the actors. The stormtroopers’ uniforms, by contrast, are not to clothe the actors, rather the actors are there to display the armour.
Wilson’s arguments about the functionality of film sets were no less tortuous. To him the pretend functions of film props should count as utilitarian functions. Lord Mance thought that a ‘pretend function’ is a visual impact though different from other types of visual impact. He asked whether Wilson was drawing distinctions between different types of visual impact. Wilson answered by saying that the relevant visual impact for sculpture would be contemplative. This was one of the moments during the hearing when it seemed that the courtroom had been transported to the 19th century.
In the rather poor acoustics of the court I heard Wilson say that the Tin Man in the Wizard of Oz was probably a work of artistic craftsmanship and he could conceive of costumes so far removed from reality that they were sculpture. The distinctions were starting to become too subtle for some of the justices. ‘You can’t really distinguish between the Straw Man and the Tin Man?!’ Lady Hale exclaimed in disbelief.
How does the criterion of non-functionality to define sculpture fit in the context of other intellectual property rights?
In UK law, 3D objects can potentially attract a number of IP rights. Patents for inventions last 20 years. Design rights last up to 25 years. Copyright lasts for the lifetime of the author plus 70 years. Why is copyright’s term three to five times longer than the design right term?
One reason may be historical: perhaps in the 19th century industrial designs were considered to be less worthy of protection than fine art. Today we would have a problem with saying that a banal chocolate-box painting is more creative/worthy than an iconic design.
A modern defence of the difference between design and copyright terms is economic. The Green Paper for the Design Directive states:
‘The freedom of the designer may, if the product is to perform the function for which it has been conceived, be more limited than the freedom of an author of fiction. There may well be a limit to the number of ways in which a specific product can be designed if the constraints dictated by its intended function are to be respected. If and when this is the case a long lasting protection and the general exclusion by copyright law of reproduction of even small parts of a work may imply the creation of de facto monopolies in the market.’
This argument does not seem particularly strong. If Henry Ford’s Model T was protected by a design right today, would a budding young entrepreneur decide that he couldn’t risk entering the car industry? If this is the modern justification for the difference in design right and copyright terms, then the objective is to avoid creating de facto monopolies in the market for functional products.
The stormtroopers’ helmet design is not going to limit competition in the market for helmets (motorcycle helmets or workers’ helmets). So on that basis, functionality is not a reason why they should have a shorter term of protection.
But are they sculptures?
Even though there may be no policy reason to give the helmets a shorter term of protection, what if the law does not embody a sound policy? It is not the job of the Supreme Court to rewrite acts of Parliament on the basis that they are not underpinned by sound policy.
The Copyright Designs and Patents Act only grants copyright protection to three-dimensional objects if they are sculptures, works of artistic craftsmanship or works of architecture. Non-functional three-dimensional works of the highest artistic quality will not have copyright if they do not fall into one of these three categories.
So what is a ‘sculpture’? Wilson argued that a sculptor must have the intention to make a work of art.
Laddie J in Metix v G. H. Maugham said that the following was close to the right definition: ‘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.’
This approach mirrors a basic rule of statutory interpretation: to give the words of an act of Parliament their plain, ordinary and literal meaning.
What is normally meant by ‘sculpture’? The Oxford English Dictionary has ‘that branch of fine art which is concerned with the production of figures in the round or in relief’. A former Keeper of the Tate Gallery Modern Collection tells me that: ‘in the professional art community (and in what I suspect is a growing percentage of the population at large) a sculpture is generally thought to be any three-dimensional entity that is intended by the artist to be a work of art.’
Although the helmets contribute to the aesthetic of the film and communicate a sense of menace, it would seem unlikely that they were intended as works of art in their own right.
Are they ‘works of artistic craftsmanship’? It is harder to determine the ordinary meaning of this phrase as it is not an ordinary phrase. Case law has left it as a fuzzy concept and one into which the helmets could plausibly fall.
JURISDICTION
In British South Africa v Companhia de Moçambique [1893], which concerned a dispute about land in South Africa, the House of Lords held that English courts can have jurisdiction over ‘transitory’ matters overseas but not those that are ‘local in nature’. Lucasfilm say that if the defendant is domiciled in England the default rule is that an English court has jurisdiction over the defendant and can hear claims concerning any wrong done abroad, applying foreign laws. The Moçambique case creates a unique exception for immoveable property but it does not apply to IP.
In support of this they say that IP isn’t immoveable property, but personal or moveable property (s. 90 CDPA). It is true that IPRs have a situs but so do other movables such as debts. English courts are applying the laws of other jurisdictions every day. There would have to be a principled justification for not treating copyright like other rights. The reason given is that there is an international consensus that copyright should not be handled cross-jurisdictionally – but there is in fact no such consensus. Wilson tried to argue that English courts would have difficulty understanding US law, a point that appeared to go down like a lead balloon with private-international law expert Lord Collins. The difficulty of applying foreign laws is never an excuse, he said.
Lord Phillips asked what damages would be applied in a US copyright case. The answer given seemed to be the English damages (but doesn’t Rome II say US damages?).
Lucasfilm went on to argue that even if the Moçambique rule did apply to IP, it has in any case been displaced by the Brussels Convention. The justices seemed to be clear that if the case ends up hinging on the Brussels Regulation, a reference to the ECJ will be required, as the Regulation does not make it clear whether it applies to non-EU claims or not.
Lord Phillips noted the undesirability of leaving someone without a remedy. Unless the Supreme Court reverses some part of the Court of Appeal’s decision, Lucasfilm, whose US copyright has been held to be infringed, will be without a remedy. Apart from infringement of UK copyright and the English court hearing the claim of infringement of US copyright, there was a third alternative: enforcing the US judgment. Lucasfilm have not appealed this but from a pragmatic perspective it would have been the simplest way of providing them with a remedy. Why was it not available? Andrew Ainsworth never submitted to the jurisdiction of the US court. This reason for refusing to enforce a foreign judgment was explained in Rubin v Eurofinance:
‘It is, and has for centuries been, a fundamental principle of English private international law that the judgment of a foreign court is not enforceable unless the defendant was present within the jurisdiction, or in some way submitted himself to the jurisdiction, of the foreign court. This principle applies both at common law and under the Administration of Justice Act 1920 and Foreign Judgments (Reciprocal Enforcement) Act 1933: see Dicey paras. 14-49 and -50. Whilst other countries may regard this as unduly restrictive (and probably the United States would), it represents English law.’
Could it be that this arguably ‘unduly restrictive’ principle of common law needs revisiting?
When the justices deliver their judgment in a few months, it will be interesting to see how widely they cast their net. Sometimes the House of Lords went beyond answering the specific point on appeal, offering a revised textbook in the relevant area of law. Will they restrict their opinions to sculpture or include works of artistic craftsmanship? Will they stick to jurisdiction over copyright claims or cover other intellectual property rights too?
This week the recently retired Lord Justice Jacob referred an important question to the ECJ in Football Dataco v Sportradar [2011] EWCA Civ 330. It’s about whether someone who uploads infringing content on the internet is liable in the country where he is – or where the content is viewed – or both. 
