Lucasfilm Limited and others (Appellants) v Ainsworth and another (Respondents).


The appeal was concerned with intellectual property rights in various artefacts made for use in the film “Star Wars Episode IV  A New Hope”. The most important of these was the Imperial Stormtrooper helmet. The parties agreed that for the purposes of the appeal the helmet could be taken as the paradigm case that would be decisive of the outcome. The film’s story-line and characters were conceived by Mr George Lucas.

Between 1974 and 1976 Mr Lucas’s concept of the Imperial Stormtroopers as threatening characters in “fascist white-armoured suits” was given visual expression in drawings and paintings by an artist, Mr Ralph McQuarrie, and three-dimensional form by Mr Nick Pemberton and Mr Andrew Ainsworth. Mr Pemberton made a clay model of the helmet, which was adapted several times until Mr Lucas was happy with it. Mr Ainsworth produced several prototype vacuum-moulded helmets. Once Mr Lucas had approved the final version Mr Ainsworth made 50 helmets for use in the film. These events all took place in England. Although Mr Lucas and his companies were based in California he had come to live in England while the film was made at Elstree.


In 2004 Mr Ainsworth, the principal respondent used his original tools to make versions of the Imperial Stormtrooper helmet and armour, and other artefacts for sale to the public. Mr Ainsworth sold some of the goods that he produced in the United States. In 2005 Lucasfilm sued Mr Ainsworth in the United States District Court, Central District of California, and in 2006 it obtained a default judgment for $20m, $10m of which represented triple damages under the Lanham Act. The whole judgment remained unsatisfied. Lucasfilm also commenced proceedings in the Chancery Division of the English High Court. The reamended particulars of claim put forward a variety of claims under English law, including infringement of copyright; a claim for enforcement of the United States judgment to the extent of $10m; and claims under United States copyright law.

 The trial judge dismissed all Lucasfilm’s claims based on English copyright law. He held that the helmet made by Mr Ainsworth was a substantial reproduction of original work carried out by Mr McQuarrie and other persons working for Lucasfilm. But the English copyright claims failed because the helmet was not a work of sculpture and Mr Ainsworth had defences (to a claim that he was reproducing Mr McQuarrie’s work) under sections 51 and 52 of the Copyright Designs and Patents Act 1988 (“the 1988 Act”). The judge also dismissed Mr Ainsworth’s counterclaim based on his own claim to copyright in the helmet. The judge held that the United States judgment was unenforceable for want of personal jurisdiction over Mr Ainsworth and his company. But he held that Lucasfilm’s United States copyright claims were justiciable in England and that Mr Ainsworth and his company had infringed those rights.

The Court of Appeal held that the United States judgment unenforceable. The Court of Appeal also agreed with the judge that any intellectual property rights in the helmet belong to Lucasfilm. The issues that were before the Supreme Court were whether the helmet was a sculpture and the defences under sections 51 and 52 of the 1988 Act (on all of which the Court of Appeal agreed with the judge) and justiciability in England of the United States copyright claims (on which the Court of Appeal disagreed with the judge). The issues on sections 51 and 52 arose only if the helmet was a sculpture (and so an artistic work) within the meaning of the 1988 Act.

The Supreme Court dismissed the appeal so far as it was based on the English law of copyright.

The next issue in the present matter was whether a claim against a defendant domiciled in England for infringement of a foreign copyright is justiciable.

The subsistence of copyright and ownership of all drawings was accepted by Mr Ainsworth, although the existence of some drawings was disputed. Infringement was denied so far as some drawings are concerned, on the footing that they were not copied, or not copied closely enough. Because three dimensional items were produced, it was argued that under United States law there was no infringement because copyright in the drawings would not be infringed by the production of a utilitarian or functional device. Lucasfilm claimed copyright in physical helmets and armour, which was disputed by Mr Ainsworth because they were said to be functional or utilitarian.

Were the claims justiciable? Mr Ainsworth argued that the principle behind the British South Africa Co v Companhia de Moçambique [1893] AC 602 rule (as extended in Hesperides Hotels Ltd v Aegean Turkish Holidays Ltd [1979] AC 508 to include actions in which no issue of title arise) still subsist and apply to claims for infringement of all foreign intellectual property rights, including copyright, because such claims are essentially “local” and must be brought in the place where the rights have been created, irrespective as to whether there is any claim to title. But to describe the claims as “local” is simply to beg the question whether as a matter of law they must be brought in the place where the rights originate and are effective. But the Supreme Court held that in the case of a claim for infringement of copyright of the present kind, the claim is one over which the English court had jurisdiction, provided that there was a basis for in personam jurisdiction over the defendant, or, to put it differently, the claim was justiciable. Distinguishing Moçambique it was observed that all that is left of the Moçambique rule (except to the extent that it is modified by the Brussels I Regulation) was 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.”

The Court also observed that the modern trend was in favour of the enforcement of foreign intellectual property rights. First, article 22(4) of the Brussels I Regulation only assign exclusive jurisdiction to the country where the right originate in cases which are concerned with registration or validity of rights which are “required to be deposited or registered” and does not apply to infringement actions in which there is no issue as to validity. Second, the Rome II Regulation also plainly envisage the litigation of foreign intellectual property rights and, third, the professional and academic bodies which had considered the issue, the American Law Institute and the Max Planck Institute, clearly favoured them, at any rate where issues of validity are not engaged. It also observed that were no issues of policy which militate against the enforcement of foreign copyright. States had an interest in the international recognition and enforcement of their copyrights, as the Berne Convention on the International Union for the Protection of Literary and Artistic Works show. The Supreme Court thus allowed the appeal on the justiciability issue.