group assignment intellectual property rights ipr102 lucasfilm ltd v ainsworth 2011 uksc 39

Section 1 Copyright, Designs and Patents Act 1988: 1a copyright is a property right which subsists in original literary, dramatic, musical or artistic works.. Section 4 Copyright, Design

_

Group Assignment

Intellectual Property Rights IPR102–

Lucasfilm Ltd v Ainsworth [2011] UKSC 39

Vu Viet Cuong - HS140684 Vu Minh Hoang - HS140251 Bui Bao Duy - HS140103 Nguyen Xuan Minh - HS140653 Nguyen Minh Giang - HS140323 Le Quynh Trang - HS160007 Hoang Khanh Van - HS160015

Hanoi, October 14th, 2021

P a g e 2 | 14

Table of Contents

I LITERATURE REVIEW (RULES OF LAW APPLIED IN THE CASE) 3

II BACKGROUND OF THE CASE 6

1 Court 6

2 Plaintiff’s info 7

3 Defendant’s info 8

4 Short overview of the case 9

III ISSUE/ FACT 11

IV OWN ANALYSIS/ OPINION 12

References Lists 13

P a g e 3 | 14

I LITERATURE REVIEW (RULES OF LAW APPLIED IN THE CASE)

The Court has been taken to the full legislative history but it is better to start with the current legislation, that is the 1988 Act

Section 1 Copyright, Designs and Patents Act 1988:

(1)(a) copyright is a property right which subsists in original literary, dramatic, musical or artistic works (LucasFilm/We put forward that the helmet did not have any utilitarian function, but they were only used to “make a visual impression on the filmgoer”.)

Section 4 Copyright, Designs and Patents Act 1988:

(1)In this Part “artistic work” means—

(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

(2)In this Part—

“building” includes any fixed structure, and a part of a building or fixed structure; “graphic work” includes—(a)any painting, drawing, diagram, map, chart or plan, and

(b)any engraving, etching, lithograph, woodcut or similar work;

“photograph” means a recording of light or other radiation on any medium on which an image is produced or from which an image may by any means be produced, and which is not part of a film; “sculpture”

includes a cast or model made for purposes of sculpture

P a g e 4 | 14

Sections 51 in Part I, Chapter III of the 1988 Act

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

(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

P a g e 5 | 14

"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

Originality In order for an artistic work to be protected by copyright, it must be original

Originality in the context of copyright is considered to be something that is the ‘author’s own intellectual creation’ Works of artistic craftsmanship

For a design to be protected by copyright in the UK as an original “artistic work” (as opposed to a literary, dramatic or musical work), it must fall into a category in section 4 CDPA:

• a graphic work, photograph, sculpture or collage, irrespective of artistic quality; • a work of architecture being a building or a model for a building; or • a work of artistic craftsmanship

The works most likely to be affected by the repeal of section 52 CDPA are “works of artistic craftsmanship” There is no statutory definition of a “work of artistic craftsmanship” Without a formal definition, it is ultimately up to the UK courts to decide what would be classified as a work of artistic craftsmanship (protected by copyright law) As a first

step in any infringement claim the onus would on the claimant to show that the work is one of artistic craftsmanship and therefore protected by copyright.

The United Kingdom has a doctrine of parliamentary sovereignty, so the Supreme Court is much more limited in its powers of judicial review than the constitutional or supreme courts of some other countries It cannot overturn any primary legislation made by Parliament However, as with any court in the UK, it can overturn secondary legislation if, for example, that legislation is found to be ultra vires to the powers in primary legislation allowing it to be made

Further, under section 4 of the Human Rights Act 1998, the Supreme Court, like some other courts in the United Kingdom, may make a declaration of incompatibility, indicating that it believes that the legislation subject to the declaration is incompatible with one of the rights in the European Convention on Human Rights Such a declaration can apply to primary or secondary legislation The legislation is not overturned by the declaration, and neither Parliament nor the government is required to agree with any such declaration However, if they do accept a declaration, ministers can exercise powers under section 10 of the Human Rights Act to amend the legislation by statutory instrument to remove the incompatibility or ask Parliament to amend the legislation

As authorized by the Constitutional Reform Act 2005, Part 3, Section ] the Supreme Court of the United Kingdom was formally established on 1 October 2009 and is a non-ministerial government department of the Government of the United Kingdom Section 23 of the Constitutional Reform Act limits the number of judges on the Court to 12, though it also allows for this rule to be amended, to further increase the number of judges, if a resolution is passed in both Houses of Parliament

It assumed the judicial functions of the House of Lords, which had been exercised by the Lords of Appeal in Ordinary (commonly called "Law Lords"), the 12 judges appointed as members of the House of Lords to carry out its judicial business as the Appellate Committee of the House of Lords Its jurisdiction over devolution matters had previously been exercised by the Judicial Committee of the Privy Council

P a g e 7 | 14

2 Plaintiff’s info: Lucasfilm

- Lucasfilm Ltd is an American film and television production company that was founded by filmmaker George Lucas on 10 December 1971 in San Rafael, California

- On July 8, 2005, Lucasfilm's marketing, online, and licensing units moved into the new Letterman Digital Arts Center located in the Presidio in San Francisco It shares the complex with Industrial Light & Magic, and LucasArts

- The company is best known for producing the Star Wars films, and has also produced other box office hits, including the Indiana Jones franchise and American Graffiti

- It has also been a leader in developing new film technology in special effects, sound, and computer animation for films Because of their expertise, its subsidiaries often help produce non-Lucasfilm pictures Lucasfilm is set to move away from films and more into TV, due to rising budgets

- Lucasfilm has collaborated with the Walt Disney Company and Walt Disney Imagineering numerous times to create rides and attractions centered on Star Wars and Indiana Jones for various Walt Disney Parks and Resort attractions worldwide

- Disney acquired Lucasfilm on October 30, 2012 for $4.05 billion in the form of cash and stock, with $1.855 billion in stock Lucasfilm is a subsidiary of Walt Disney Studios, which is a business segment of The Walt Disney Company

- Subsidiaries: LucasArts, Industrial Light & Magic và SKywalker Sound

- Industrial Light & Magic (ILM) is an American motion picture visual effects company that was founded in May 1975 by George Lucas It is a division of the film production company Lucasfilm, which Lucas founded, and was created when Lucas began production of the film Star Wars Founded by George Lucas in 1975 to create the special effects for Star Wars, Industrial Light & Magic quickly became internationally renowned for the quality and originality of its work

- Star Wars: Episode IV A New Hope, originally released as Star Wars, and currently marketed as simply Star Wars: A New Hope is a 1977 film written and directed by George Lucas It is the first part of the Star Wars original trilogy

P a g e 8 | 14

3 Defendant’s info: Andrew Ainsworth

- A British industrial prop designer, who worked on the film creating the prototype costume and various props

- Graduated Art School in London and qualified Industrial Designer from Ealing Art School

- 1972: Shepperton Design Studios, which is based in London and focused on manufacturing motor cars, was founded by Ainsworth Later on, it turns into a manufacturer of Star Wars replica props and memorabilia

- Specialized: vacuum moulding in plastic Ainsworth developed and constructed his own plastic molding apparatus to fit the size and type of items On a daily basis, his enormous 15-foot-long vacuum forming machine punched out plastic boats and fish ponds Andrew's plastic kayaks have a clever characteristic that allows them to form well in undercuts while still being strong enough to bounce off overcenter molds without splitting Nick Pemberton, a local scenic artist and Andrew Ainsworth's coworker, was taken aback by this

- 1976: In Twickenham, England, Ainsworth met George Lucas Andrew Ainsworth was tasked with designing the Imperial stormtrooper helmets and body armor for the classic Star Wars movie It was to create the molds for the famous white plastic helmets used by the Stormtroopers in ANH using his buddy Nick Pemberton's clay model and Ralph McQuarrie's concept sketches Although many changes were made to the helmet, it continued to be manufactured

- Following Nick's request, 50 helmets and 40 X-wing helmets were supplied to the Studios There was no contract signed and no detailed design drawings made between two sides

- The total of 56 full stormtrooper suits along with a number of other props and costumes were manufactured and invoiced for use in Star Wars: Episode IV A New Hope (1977) – 50 stunt helmets (made of HDPE painted white) and 6 hero helmets (made of white ABS)

- Ainsworth painstakingly stored all molds on racks in an organized way while at Shepperton Studios, with protective skins formed and left on them until further usage The Stormtrooper armour molds were discarded, but he saved the protective skins as a reference He also saved the helmet molds since they were well constructed, in good shape, and may be useful in the future

- 2004: From his initial stormtrooper molds, Ainsworth began creating and producing replicas He sold 19

- 2005: In the United States, Ainsworth was sued for copyright infringement Mr Ainsworth had no assets in the United States, so Lucasfilm filed a copyright infringement action in a UK court

P a g e 9 | 14

4 Short overview of the case

TWO LEGAL ISSUES IN THE CASE

1 The definition of “sculpture” in the Copyright, Designs and Patents Act 1988, and, in particular, the correct approach to three-dimensional objects that have both an artistic purpose and a utilitarian function;

2 Whether an English court may exercise jurisdiction in a claim against persons domiciled in England for infringement of copyright committed outside the European Union in breach of the copyright law of that country?

This appeal is concerned with intellectual property rights in various artefacts, especially the Imperial

Stormtrooper helmet, which were made for use in the first Star Wars film called “Star Wars Episode IV – A New Hope” It has been regarded as a pivotal part to the result of the case

The film’s story-line and characters were conceived by George Lucas Between 1974 and 1976, artist Mr Ralph McQuarrie gave visual expression of the concept of Imperial Stormtroopers as threatening characters in “fascist white armoured suits” Finally, three-dimensional was formed by Mr Andrew Ainsworth Then, he produced several prototype vacuum-moulded helmets Only when meeting the final approval of Mr Lucas, Mr Ainsworth made 50 helmets for use in the film

Since the Appellants (here referred to collectively as Lucasfilm) have built up a successful licensing business, including licensing models of Imperial Stormtroopers, they own copyrights in the artistic works created for the Star Wars films

In 2004 another version of the Imperial Stormtrooper helmet and armor was created by Mr Ainsworth using his original tools and sold to the public (The second respondent is a company owned by Mr Ainsworth; for practical purposes, he can be treated as the sole respondent) The helmets and armor were sold between $8,000 and $30,000 of the goods in the United States Lucasfilm obtained judgment against him in the United States It also embarked on proceedings in the English High Court, which include claims for infringement of English copyright and claims under US copyright law

By the time of the Supreme Court hearing, Lucasfilm claimed only that the helmets qualified for copyright

protection under English law as “sculptures” and not as “works of artistic craftsmanship” In terms of section 4 of the Copyright Designs and Patents Act 1988, copyright subsists in, amongst other things, original

“artistic works”, which includes a “sculpture”, irrespective of artistic quality

The issue of recognizing a helmet as a “sculpture” is of great importance for two reasons If it is, Mr Ainsworth would infringe Lucasfilm’s copyright with any copy of the helmets It is also relevant for the defences which are available To produce a helmet by working from a drawing of it infringes copyright in the

P a g e 10 | 14

drawing If the helmet did not qualify as sculpture, and was therefore not an artistic work, Mr Ainsworth had a defence to an English copyright action based on infringement of Mr McQuarrie’s graphics The High Court dismissed the claims for infringement of English copyright: the helmet was not a work of sculpture and therefore Mr Ainsworth had a defence under section 51 However, it held that the United States’ copyright claims were justiciable and that US copyright had been infringed The Court of Appeal allowed Mr Ainsworth’s appeal It agreed that the helmet was not a work of sculpture but held that the US copyright claims were not justiciable Lucasfilm appealed to the Supreme Court

Justiciability of foreign copyright claim The Court of Appeal had held that the common law rule in British South Africa Co v Companhia de Moçambique [1893] AC 602 that an English court had no jurisdiction to entertain an action for the determination of title to, or the right of possession of, foreign land, or the recovery of damages for trespass to such land, was an example of a general principle which applied to claims for infringement of foreign intellectual property rights The Supreme Court concludes that, provided there is a basis for in personam jurisdiction over the defendant, an English court does have jurisdiction to try a claim for infringement of copyright of the kind involved in the present action

P a g e 11 | 14

III ISSUE/ FACT

A prop designer who made the original Stormtrooper helmets for Star Wars has won his battle with director George Lucas over his right to sell replicas Andrew Ainsworth, 62, of south London, successfully argued the costumes were functional not artistic works, and so not subject to full copyright laws Judges at the Supreme Court upheld a 2009 Court of Appeal decision allowing Mr Ainsworth to continue selling them The ruling about violating U.S copyright was a moot point, he added, as all it meant was that he could not sell his outfits there, which he had already stopped doing

A Lucasfilm spokesman said the court’s decision maintained “an anomaly of British copyright law under which the creative and highly artistic works made for use in films… may not be entitled to copyright protection in the U.K.”

The company said that protection would have been given in “virtually every other country in the world.” On the issue of the jurisdiction of U.K courts over infringements abroad, the company said: “The judgment is an important step in modernizing U.K law and bringing it into line with the EU.