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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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Lucasfilms, the US claimant, sued a British modelmaker who had produced some of the helmets and armour used by Imperial Troopers and Rebel Forces in the first Star Wars film, for his sales of replica items and toys in the UK and the US (Lucasfilm v Ainsworth [2008] EWHC 1878 (Ch)). They already had a default judgment against him in the US; he had contested jurisdiction there. He counterclaimed on the basis that he had been the designer of some of the helmets which had been merchandised by the film company themselves.

In a mammoth recent judgment, the UK High Court concluded that there was now no copyright protection for the items concerned in the UK. The effect of Section 51 of the Copyright, Designs and Patents Act 1988 was to remove protection for designs of all products that are not themselves artistic works (i.e. works of sculpture, works of "artistic craftsmanship" or engravings). In this case, although the helmets were visually appealing rather than functional, and craftsmen had been involved in making them, they were not works of "artistic craftsmanship" (in fact we are unaware of any case in which something has been so described by the UK Court) as they had no "arts and crafts" feel to them. Further, although the helmets and armour were produced from original sculptures they were not works of sculpture in the statutory sense as they were not intended as works of art. Section 51 therefore extinguished any UK copyright claim on either side.
Although it was not necessary, the judge went on to consider whether any UK copyright had ceased to be enforceable under Section 52. This limits the term of enforcement to 25 years where a copyright work is industrially multiplied (i.e. more than 50 are made, and some are sold - anywhere in the world, according to the judge). A transitional provision applies a shorter term of 15 years where the work was exploited before the 1988 Act came into force in August 1989, as the evidence showed in this case, so the copyright had ceased to be enforceable in 2004. Not all articles count: the term limitation does not bite where the exploitation is merely for works of a primarily literary or artistic nature. This includes works of sculpture. The claimants argued that the helmets and armour were sculptures and hence excused; the judge once more disagreed. Thus, any copyright that might have survived could not be enforced by virtue of Section 52.

As to Ainsworth's counterclaim, the judge found that he was indeed the author of one helmet design, but that under the circumstances there was an implied assignment of copyright to the claimants.

Finally, the judge considered the US copyright claim. In the past, UK courts have been reluctant to entertain infringement actions for foreign IP, and this will no doubt remain so for registered rights. However, the judge held that he could consider the US copyright claim, and it would be appropriate and expedient to do so here since the factual issues had already been determined and he had expert evidence as to the law, and although the advocates were ill-placed to argue the case in detail, he found infringement. Part of his reasoning was based on the unusual circumstance that the defendant had previously disputed the jurisdiction of the US Courts, leaving him ill-placed to object to resolution by the UK Courts. One should not expect a rush to hear US copyright claims here, but the door to a wider choice of forum has clearly been inched open. So, honours were even at first instance; the appeal court may take a different view.