JUDGMENT
Lucasfilm Limited and others (Appellants) v
Ainsworth and another (Respondents)
before
Lord Phillips, President
Lord Walker
Lady Hale
Lord Mance
Lord Collins
JUDGMENT GIVEN ON
27 July 2011
Heard on 7, 8 and 9 March 2011
Appellant Respondent
Jonathan Sumption QC Alastair Wilson QC
Michael Bloch QC
Alan Bryson
George Hamer
(Instructed by Harbottle &
Lewis LLP)
(Instructed by S C Andrew
LLP)
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LORD WALKER AND LORD COLLINS (with whom Lord Phillips and
Lady Hale agree)
Introduction
1. The first Star Wars film (later renamed “Star Wars Episode IV – A New
Hope” in order to provide for “prequels” as well as sequels) was released in the
United States in 1977. It was an enormous commercial success. It won an Oscar
for best costume design. This appeal is concerned with intellectual property rights
in various artefacts made for use in the film. The most important of these was the
Imperial Stormtrooper helmet to which the trial judge (Mann J) referred in his
judgment ([2008] EWHC 1878 (Ch), [2009] FSR 103, paras [2] and [121]):
“One of the most abiding images in the film was that of the Imperial
Stormtroopers. These were soldiers clad in white armour, including a
white helmet which left no part of the face uncovered… The purpose
of the helmet was that it was to be worn as an item of costume in a
film, to identify a character, but in addition to portray something
about that character – its allegiance, force, menace, purpose and, to
some extent, probably its anonymity. It was a mixture of costume
and prop.”
The parties are agreed that for the purposes of this final appeal the helmet can be
taken as the paradigm case that will be decisive of the outcome.
2. The facts are set out in the judge’s clear and thorough judgment. For present
purposes a brief summary will suffice. 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 (a freelance scenic
artist and prop-maker) and Mr Andrew Ainsworth (who is skilled in vacuummoulding in plastic). 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 are based in
California he had come to live in England while the film was made at Elstree
(there was also filming on location in Tunisia).
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3. The first appellant is a Californian corporation owned by Mr Lucas. The
second appellant is an English company owned by Mr Lucas. The third appellant is
a Californian corporation responsible for the group’s licensing activities; it is
wholly owned by the first appellant. Between them these three companies own
copyrights in the artistic works created for the Star Wars films, and they can be
referred to generally as “Lucasfilm”. Apart from the huge commercial success of
the Star Wars films, Lucasfilm has built up a successful licensing business which
includes licensing models of Imperial Stormtroopers and their equipment. This
litigation has come about because in 2004 Mr Ainsworth, the principal respondent
in this appeal, used his original tools to make versions of the Imperial
Stormtrooper helmet and armour, and other artefacts that it is not necessary to
detail, for sale to the public. The second respondent is a private company owned
by Mr Ainsworth but for practical purposes Mr Ainsworth can be treated as the
only respondent.
4. Mr Ainsworth sold some of the goods that he produced (to the value of at
least $8,000 but not more than $30,000) 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 remains
unsatisfied. Lucasfilm also commenced proceedings in the Chancery Division of
the English High Court. The re-amended particulars of claim put forward a variety
of claims under English law, including infringement of copyright (paras (1) to (10)
of the prayer for relief); a claim for enforcement of the United States judgment to
the extent of $10m (para (11)); and claims under United States copyright law
(paras (12) to (17)).
5. The trial occupied 17 days during April and May 2008. In his judgment
delivered on 31 July 2008 Mann J dismissed all Lucasfilm’s claims based on
English copyright law (together with some other claims that are no longer
pursued). 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.
6. 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.
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7. The Court of Appeal ([2009] EWCA Civ 1328, [2010] Ch 503) agreed with
the judge that the United States judgment is unenforceable, and there is no further
appeal on that point. The Court of Appeal also agreed with the judge that any
intellectual property rights in the helmet belong to Lucasfilm, and this Court has
refused Mr Ainsworth permission to cross-appeal on that point. The issues that are
open in this Court are 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 arise only if the helmet was a sculpture (and so an artistic work) within the
meaning of the 1988 Act. In the Court of Appeal Lucasfilm abandoned its
alternative contention that the helmet qualified as an artistic work because it was a
work of artistic craftsmanship.
Part I: English copyright law issues
Current statutory provisions
8. 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. Under section 1(1)(a) copyright
is a property right which subsists in original literary, dramatic, musical or artistic
works. Other works, including films, come in under section 1(1)(b) and (c). By
section 4(1) “artistic work” means, for copyright purposes,
“(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.”
By section 4(2) “sculpture” includes a cast or model made for purposes of
sculpture.
9. Sections 51 and 52 are in Part I, Chapter III of the 1988 Act (acts permitted
in relation to copyright works). Chapter III contains a variety of exemptions from
liability on general grounds, including fair dealing (sections 29-31) and
educational, archival and other public purposes (sections 32-50). Section 62
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contains a general exemption for buildings, sculpture and works of artistic
craftsmanship on permanent public display.
10. Section 51 (design documents and models) as amended provides as follows:
“(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 –
‘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; and
‘design document’ means any record of a design, whether in
the form of a drawing, a written description, a photograph,
data stored in a computer or otherwise.”
11. Section 52 (effect of exploitation of design derived from artistic work)
provides as follows:
(1) This section applies where an artistic work has been exploited, by
or with the licence of the copyright owner, by –
(a) making by an industrial process articles falling to be
treated for the purposes of this Part as copies of the work, and
(b) marketing such articles, in the United Kingdom or
elsewhere.
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(2) After the end of the period of 25 years from the end of the
calendar year in which such articles are first marketed, the work may
be copied by making articles of any description, or doing anything
for the purpose of making articles of any description, and anything
may be done in relation to articles so made, without infringing
copyright in the work.
(3) Where only part of an artistic work is exploited as mentioned in
subsection (1), subsection (2) applies only in relation to that part.
(4) The Secretary of State may by order make provision –
(a) as to the circumstances in which an article, or any
description of article, is to be regarded for the purposes of this
section as made by an industrial process;
(b) excluding from the operation of this section such articles
of a primarily literary or artistic character as he thinks fit.
(5) An order shall be made by statutory instrument which shall be
subject to annulment in pursuance of a resolution of either House of
Parliament.
(6) In this section –
(a) references to articles do not include films; and
(b) references to the marketing of an article are to its
being sold or let for hire or offered or exposed for sale
or hire.”
12. These two sections operate so as to limit (in different ways) the influence of
literary or artistic copyright on other persons’ freedom to make and market threedimensional objects. Section 51 applies where the end-product of a design
document or model is not an artistic work. It provides a more principled answer to
the problem to which the House of Lords gave a radical and controversial solution
in British Leyland Motor Corporation Ltd v Armstrong Patents Co Ltd [1986] AC
577 while the Bill which became the 1988 Act was before Parliament. Section 52
applies (subject to exceptions specified by the Secretary of State) where there is an
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artistic work, but that work has been exploited (with the consent of the copyright
owner) by industrial production of copies to be marketed.
13. The Copyright (Industrial Process and Excluded Articles) (No 2) Order
1989 (SI 1989/1070) (“the 1989 Order”), made under section 52(4) of the 1988
Act, provides (para 2) for an article to be regarded as made by an industrial process
if it is one of more than 50 articles which are to be treated as copies of a particular
artistic work (and are not together a set). The Order also provides (para 3(1)(a)) for
the exclusion from section 52 of “works of sculpture, other than casts or models
used or intended to be used as models or patterns to be multiplied by any industrial
process.”
Legislative history: before the 1911 Act
14. These provisions (and especially sections 51 and 52) are difficult to
understand without reference to their legislative history. Unfortunately the history
is itself quite complicated. The Copyright Act 1911 (“the 1911 Act”) was (as Lord
Bridge observed in British Leyland [1986] AC 577, 619) “the first attempt to
provide a comprehensive code of copyright protection”. Section 1(1) of the 1911
Act was in terms similar to those of section 1(1)(a) of the 1988 Act, (except that
the words “irrespective of artistic quality” did not appear in the 1911 Act), and it
may give the impression of embodying a well-proportioned symmetrical principle
providing equal protection to every form of human creativity. Any such impression
would be misleading. When the 1911 Act was passed there had already been two
centuries of legislative history, starting with the Copyright Act 1709 (“the 1709
Act”), and for most of that time it was the protection of printed words – published
literary works – that was the law’s principal concern. Moreover the original
legislative purpose of laws on literary copyright was the protection of the
commercial interests of stationers (the early publishers) and booksellers, and the
control of unlicensed (and possibly subversive) publications, rather than the
vindication of the legal and moral rights of authors. There are useful summaries of
the history of English copyright law in Copinger and Skone James on Copyright,
16th ed (2010), paras 2-08 to 2-42, and Cornish, Llewelyn and Aplin, Intellectual
Property: Patents, Copyright, Trade Marks and Allied Rights, 7th ed (2010), paras
10-01 to 10-41.
15. The 1709 Act protected literary works, books and other writings. During the
18th century protection was extended (by statute) to engravings and (by a liberal
interpretation of the 1709 Act) to musical and dramatic compositions. Threedimensional works of art were brought within the scope of copyright by a statute
enacted in 1798, 38 Geo III c 71, but it was very badly drafted and offered little
practical protection (Lord Ellenborough said in Gahagan v Cooper (1811) 3 Camp
111, 113 that “The statute seems to have been framed with a view to defeat its own
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object”). This Act was replaced by the Sculpture Copyright Act 1814 (“the 1814
Act”). The class of protected works was described in discursive terms, starting
with
“any new and original sculpture, or model, or copy, or cast of the
human figure or human figures, or of any bust or busts, or of any part
or parts of the human figure, clothed in drapery or otherwise,”
and continuing in broader terms, referring to “any matter being subject of
invention in sculpture.” The sculpture was required to bear the maker’s name and
the date when it was made. Paintings, drawings and photographs were not
protected until the Fine Arts Copyright Act 1862 (“the 1862 Act”). The 1862 Act
required registration as a condition of protection. Architectural works were not
protected until the 1911 Act (which also introduced works of “artistic
craftsmanship” into the definition of “artistic work” in section 35 of that Act).
16. The 1814 Act remained in force until the coming into force of the 1911 Act,
and was until then the only statute that gave long-term copyright protection to any
three-dimensional works. During the 19th century the rapid expansion of
mechanical mass-production produced an obvious need for industrial designers
and manufacturers to be protected against unfair competition by copying of their
designs. Parliament decided that protection should be provided by a new right
which was (rather confusingly, as the Court of Appeal said in para [24] of its
judgment) called copyright, but which differed in two respects from literary and
artistic copyright. First, the proprietor was required to register his design. Second,
the period of protection was much shorter. Those were the essential features of the
scheme introduced by the Copyright of Designs Act 1839, repealed and replaced
by the Designs Act 1842. Earlier legislation granting copyright to the design of a
range of printed textiles was repealed and replaced by the new system of
registration, but copyright in sculpture under the 1814 Act was preserved.
17. The law as to registered designs was amended by the Copyright of Designs
Act 1850, was further amended and consolidated by Part III of the Patents,
Designs and Trade Marks Act 1883 (“the 1883 Act”) and finally (as regards
legislation before the 1911 Act) was further amended by the Patents and Designs
Act 1907 (“the 1907 Act”). Most of the detail of this history is irrelevant for
present purposes. But it is to be noted that although the periods of protection for
registered designs were progressively extended, they were always much shorter
than the period for literary or artistic copyright. It is also to be noted that after an
uncertain start in the early statutes, a design for a work of sculpture was excluded
from the statutory definition of “design” (section 60 of the 1883 Act and section 93
of the 1907 Act).
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18. Only one judicial decision on the 1814 Act calls for mention, that is Britain
v Hanks Bros & Co (1902) 86 LT 765. Wright J held that copyright protection as
sculpture was available to what the report refers to as “toy metal models of soldiers
on horseback, or mounted yeomen.” The models were designed and made by
William Britain, a partner in the plaintiff firm. The report does not say how large
the models were, but they were evidently large enough for each to have stamped
on it the maker’s name and the date of its manufacture. There was expert evidence,
which the judge accepted, that the models were “artistic productions, in that the
anatomy is good, and that the modelling shows both technical knowledge and
skill.” The judge seems to have regarded the case as near the borderline, but was
prepared to hold that the models were entitled to protection.
19. The Court of Appeal observed (para [59]) that it is “difficult . . . to take too
much from this case.” A minor point in the appellants’ case is that that is just what
the Court did (para [82]) in describing the Britain models as “highly crafted
models designed to appeal to the collector but which might be played with by his
children.”
Legislative history: the 1911 Act and afterwards
20. The introduction by the 1911 Act of full copyright protection for “a work of
artistic craftsmanship” was ascribed by Lord Simon, in George Hensher Ltd v
Restawile Upholstery (Lancs) Ltd [1976] AC 64, 89-91, to the influence of the
Arts and Crafts movement inspired by William Morris and John Ruskin. Lord
Simon’s view (at p 91) was that the expression is a composite phrase which must
be construed as a whole, and that view has had recent support from the High Court
of Australia (Swarbrick v Burge (2007) 232 CLR 336).
21. Section 22 of the 1911 Act provided as follows:
“(1) This Act shall not apply to designs capable of being registered
under the Patents and Designs Act 1907, except designs which,
though capable of being so registered, are not used or intended to be
used as models or patterns to be multiplied by any industrial process.
(2) General rules under section 86 of the Patents and Designs Act
1907 may be made for determining the conditions under which a
design shall be deemed to be used for such purposes as aforesaid.”
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The test for production by an industrial process was (by rule 89 of the Designs
Rules 1920, and so far as now material) the same as that in the 1989 Order
(mentioned in para [13] above).
22. The effect of the double negative in section 22(1) can be more easily
understood, as Viscount Maugham observed in King Features Syndicate Inc v O &
M Kleeman Ltd [1941] AC 417, 427, if it is rewritten:
“This Act shall apply to designs capable of being registered under
[the 1907 Act], which are not used or intended to be used as models
or patterns to be multiplied by any industrial process. With that
exception this Act shall not apply to designs capable of being
registered under [the 1907 Act].”
The main issue in that case (which was concerned with “Popeye” dolls derived
from published comic strips enjoying artistic copyright) was the time at which the
intention of use for industrial production had to be formed. The Lords decided that
the intention must have been there from the start.
23. The Patents and Designs Act 1919 amended the 1907 Act by substituting
for the definition in section 93 of the 1907 Act a new definition of “design” which
referred to features applied “by any industrial process” and did not make an
express exception for a design for a sculpture. Because of the way that section 22
of the 1911 Act was framed, this had the effect of withdrawing from works of
sculpture their specially privileged position in relation to mass-production of
copies. Its effect was illustrated by Pytram Ltd v Models (Leicester) Ltd [1930] 1
Ch 639. The Boy Scouts Association commissioned a model of a wolf-cub’s head
which was to be used to produce a permanent mould for the production of large
numbers of papier-maché models to be attached to the top of wooden poles.
Clauson J dismissed the plaintiff’s claim to copyright in the original model. He
accepted that the model was a work of sculpture, but it was not automatically
exempt from registration under the 1907 Act as amended, and it did not come
within the exception in section 22(1) because (p 647) “The whole point in the
preparation of this model was to enable the plaintiffs to supply totem poles in large
quantities.”
24. After the second world war there was a legislative shift back again. In 1947
the Swan Committee recommended that works of sculpture should again be
excluded from registrable designs. The Registered Designs Act 1949 provided
(section 1(3) and (4)) for exclusions from registration of articles which were
primarily literary or artistic in character. Rule 26(1) of the Designs Rules 1949 (SI
1949/2368) excluded “works of sculpture other than casts or models used or
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intended to be used as models or patterns to be multiplied by any industrial
process.” This wording (now reproduced in the 1989 Order) followed section 22(1)
of the 1911 Act and must be construed in line with the House of Lords’ decision
on that section in King Features.
25. The 1911 Act was repealed by the Copyright Act 1956 (“the 1956 Act”).
Section 10 of the 1956 Act (special exception in respect of industrial designs)
restated the boundaries between copyright and design right. As amended by the
Design Copyright Act 1968, section 10(3) set a 15-year limit on copyright
protection for any work in respect of which a corresponding design could have
been registered under the 1949 Act. But section 10(4) made an exception for
designs excluded from registration by rules made under the 1949 Act; and rule 26
of the Designs Rules 1949 has now been replicated by rule 26 of the Registered
Designs Rules 1989.
26. The 1956 Act introduced the words “irrespective of artistic quality” into
para (a) of its definition of “artistic work” in section 3(1). This was, it seems, as a
result of maps, charts and plans being reclassified by the 1956 Act as artistic rather
than literary works. The new wording sits rather uneasily with “works of artistic
craftsmanship” in para (c) of the same definition. In Hensher [1976] AC 64, 94,
Lord Simon suggested an explanation which some may not find wholly
convincing. But it is common ground that in copyright cases the court is not
concerned with passing judgment on the merits of either literary or artistic works.
27. The Court of Appeal drew two general conclusions from its own survey of
the legislative history (which occupies paras [21] to [39] of the judgment). The
first ([40] and [41]) was that there is little or no assistance as to the meaning of
“sculpture” in the 1988 Act to be derived from the relationship between copyright
and registered design rights. The second ([42] and [43]) is that “design” and
“artistic work” are different concepts. Apart from unregistered design right
(introduced by Part III of the 1988 Act), design right statutes are concerned with
features that have visual appeal. Copyright protection depends on a work falling
within a particular category specified in the 1988 Act: “It does not depend upon a
further analysis or identification of its design features.”
The meaning of “sculpture”
28. Both the judge and the Court of Appeal undertook a full review of English
and Commonwealth authority as to the meaning of “sculpture”. They rightly
concluded that some first-instance decisions gave them no real assistance, and it is
unnecessary to go into them again. The judgments that call for discussion are (in
chronological order) those of the Court of Appeal of New Zealand in Wham-O
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Manufacturing Co v Lincoln Industries Ltd [1985] RPC 127, [1984] 1 NZLR 641;
of Falconer J in Breville Europe Plc v Thorn EMI Domestic Appliances Ltd [1995]
FSR 77; of Laddie J in Metix (UK) Ltd v G H Maughan (Plastics) Ltd [1997] FSR
718; and of Angel J (sitting in the Supreme Court of the Northern Territory) in
Wildash v Klein (2004) 61 IPR 324.
29. Before discussing these four cases it is appropriate to make a further brief
reference to the decision of the House of Lords in Hensher [1976] AC 64. Since
Lucasfilm is no longer contending that the helmet is a work of artistic
craftsmanship it is unnecessary to make much further reference to Hensher, which
Mann J discussed at some length, drawing attention to the difficulty of identifying
the true principle of the decision. The reason why that contention has been
abandoned is stated (para 22(2) of the appellants’ printed case) to be that section
4(1)(c) of the 1988 Act is intended to comprise articles whose purpose is primarily
functional, and which cannot therefore qualify as sculpture. The relative
significance of the functional and the artistic is central to this appeal. The speeches
in Hensher, difficult though they are, show a general inclination to start with the
ordinary meaning of the words of the statute (see Lord Reid at p 78, Lord Morris at
p 81, Viscount Dilhorne at pp 86-87, Lord Simon at p 91 and Lord Kilbrandon at p
97), however much they differed as to the application of that principle. The same
approach is called for in relation to the meaning of “sculpture”.
30. In Wham-O the Court of Appeal of New Zealand was concerned with
frisbees (light plastic discs used in outdoor games because of their aerodynamic
qualities). Lincoln made and marketed in New Zealand frisbees which were
alleged to infringe Wham-O’s copyright in design drawings, wooden models,
moulds and the final plastic moulded products. The relevant parts of the Copyright
Act 1962 of New Zealand were similar but not identical to those of the 1988 Act.
At first instance Moller J held that the wooden models were copyright as
sculptures and that the moulds and final products were engravings. The Court of
Appeal upheld this result, while holding that the final products were not sculptures
(a point left open by the judge). Much of the judgment is taken up with reasoning
leading to the rather surprising conclusion that the moulds and final products were
engravings. The finding that the wooden model of a frisbee – and that alone – was
a sculpture seems to have been based mainly on the fact that only the model had
been made by hand, and the moulds and final products had been made industrially.
Davison CJ stated ([1985] RPC 127, 157):
“It seems to us inappropriate to regard utilitarian objects such as
plastic flying discs, manufactured as toys, by an injection moulding
process, as items of sculpture for the purposes of the Copyright Act.”
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31. The Breville case was concerned with sandwich toasters. Copyright was
claimed for plaster shapes made for the production of die-cast moulds of the
heating plates (which were required to have the same scalloped shape as was to be
impressed on the toasted sandwiches). Falconer J held that there had been no
infringement, but went on to express the view that the plaster shapes were
protected by copyright. He stated (at p 94):
“I do not see why the word ‘sculpture’ in section 3 of the Copyright
Act 1956 should not receive its ordinary dictionary meaning except
in so far as the scope of the word is extended by section 48(1) which
provides that ‘sculpture’ includes any cast or model made for
purposes of sculpture.”
In reaching this conclusion he relied on the part of the Wham-O decision which
recognised copyright in the wooden model of a frisbee. He also relied on the
Concise Oxford Dictionary’s definition of “sculpture”:
“Art of forming representations of objects etc or abstract designs in
the round or in relief by chiselling stone, carving wood, modelling
clay, casting metal, or similar processes; a work of sculpture.”
32. Falconer J was a very experienced intellectual property judge but in Breville
he seems to have overlooked the significance of the words “for purposes of
sculpture” in the statute and the significance of the first word, “Art”, in the
dictionary definition. That was the view of the Court of Appeal (para [66]):
“The same [‘far removed from the creation of expressive form’] goes
for the plastic shapes considered by Falconer J in the Breville case
[1995] FSR 77. No ordinary citizen – indeed no ordinary lawyer –
would regard a sandwich toaster or any part of it as a work of
sculpture – even if it did produce ‘scalloped’ sandwiches. So why
should a copyright lawyer take a different view? A total or almost
total emphasis on the manner of creation, as in the Breville case and
Wham-O case [1985] RPC 127 produces a result which offends
common sense and in our view is wrong. There must, as Mann J
said, be some element of artistic expression however unsuccessful.”
33. The point about “for purposes of sculpture” is underlined by some
observations earlier in the judgment of the Court of Appeal (paras [49] and [50],
and again at para [70]) as to the word “sculpture” being applicable both to a
process and to a product (terms familiar to intellectual property lawyers). Over the
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centuries statues and other works of art cast in metal have been produced by what
is basically a three-stage process: first by making a model in clay or some other
malleable material; then by taking a mould from the model; and then by casting,
that is, pouring molten metal into the mould to produce the work of art (followed
no doubt by appropriate finishing). Copyright protection is therefore extended
(currently by section 4(2) of the 1988 Act) to a cast or model made for purposes of
sculpture. But not every product of industrial casting or moulding is sculpture. As
the Court of Appeal observed (para [50]):
“Casting or moulding is an industrial process commonly used where
the end product is made of plastic or metal of some kind. It is used in
the production of millions of ordinary household objects, none of
which would usually be described as sculptures. A motor car is but
one obvious example. Some would have qualified for protection as
registered designs so as to be excluded under section 22(1) of the
1911 Act. But would they have qualified as ‘sculpture’?”.
34. Metix can be taken more shortly. It was a case in which Laddie J rightly
rejected a claim to artistic copyright in moulds used for making cartridges used in
conjunction with flow mixers (the judge described them as looking like doublebarrelled hyperdermic syringes). Laddie J, another very experienced intellectual
property judge made some general observations (at pp 721-722):
“The law has been bedevilled by attempts to widen out the field
covered by the Copyright Acts. It is not possible to say with
precision what is and what is not sculpture, but I think Mr Meade
was close to the heart of the issue. He suggested that a sculpture is 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.”
Mr Meade’s formulation as recorded by Laddie J seems to be the only suggested
definition or near-definition that has not attracted adverse comment from any
quarter.
35. Wildash v Klein (2004) 61 IPR 324, like Metix, is of interest not so much
for what it decides as for its discussion of general issues (including the notion of
copying of part, which is not an issue here). The case was an unfortunate dispute
between two women, each of whom made craftwork depicting local wildlife for
sale at markets. Initially they cooperated but later each accused the other of
copyright infringement. The craftworks were made of wire but also (and here the
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summaries in the judgments below are rather sparse) glass rods, glass nuggets,
copper foil and other materials. The judge held that they were sculptures or,
alternatively, works of artistic craftsmanship. The judge cited the Court of Appeal
of New Zealand in Wham-O (“sculpture should in some way express in threedimensional form an idea of the sculptor”) and also Laddie J in Metix. In
connection with copying the judge also cited Lord Hoffmann’s cryptic observation
about foxes and hedgehogs in Designers Guild Ltd v Russell Williams (Textiles)
Ltd [2000] 1 WLR 2416, 2423, describing it as an allusion to an essay written in
1953 by Sir Isaiah Berlin; in fact Sir Isaiah was alluding, as has Professor Ronald
Dworkin in his latest book, Justice for Hedgehogs (2011), to a saying attributed to
Archilochus in the 7th century BC
“πολλ’ οιδ’αλωπηξ, αλλ’εχινος έν μεγα
(the fox knows many things, but the hedgehog one big thing.)”
The judgments of Mann J and the Court of Appeal
36. It was primarily from these authorities that Mann J derived what he called
“guidelines, not rigid requirements” as to the meaning of sculpture in the 1988
Act. These are set out in nine numbered sub-paragraphs in para 118 of his
judgment. The Court of Appeal quoted this paragraph in full, [2010] Ch 503, para
[54], and was generally in agreement with it. As the guidelines are readily
accessible we will not quote them again.
37. The first three note (as did the House of Lords in Henscher [1976] AC 64)
that normal English usage is important, though not determinative. The fourth
guideline (“no judgment is to be made about artistic worth”) is in the text of
section 4(1)(a) of the 1988 Act, and is common ground. The Court is not to set
itself up as an arbiter of artistic merit. But it is concerned with artistic purpose
(“the artist’s hand”). The fifth guideline (“not every three-dimensional
representation of a concept can be regarded as a sculpture”) is also
uncontroversial, at any rate if “concept” is understood as covering any idea,
functional as well as artistic (Mr Bloch QC challenged it in the Court of Appeal,
but it is consistent with the appellants’ printed case in this Court, especially paras 7
and 14).
38. In the courts below as in the parties’ written and oral submissions in this
Court, the argument has centred on the right approach to three-dimensional objects
that have both an artistic purpose (of some sort) and a utilitarian function (of some
sort). These issues are addressed in the rest of the judge’s guidelines. The
Page 16
appellants’ printed case gives some world-famous examples: the caryatids which
form part of the Erectheion at Athens; the Medici tombs in the sacristy of San
Lorenzo in Florence; the Trevi fountain in Rome. These seem to be rather special
cases, not because of their outstanding merit but because they all have a strong
architectural element, and the fact that a work of architecture is functional does not
disqualify it from copyright protection. Other artefacts mentioned in the case, such
as the Ribchester helmet in the British Museum or a decorated medieval suit of
armour, would come more naturally under the head of works of artistic
craftsmanship, together with fine furniture, musical instruments, silverware and
ceramics. But the appellants have made clear that it is no longer part of their case
that the Imperial Stormtrooper helmet was a work of artistic craftsmanship.
39. Instead, the appellants contend that the helmet had no practical function at
all. Their case is that it is sculpture because its purpose is wholly artistic. Para 7 of
their printed case puts it in these terms:
“In the present case, the question of functionality does not arise,
because the articles in question have no functional purpose whatever.
The Stormtroopers’ helmets and armour did not exist in order to
keep their wearers warm or decent or to protect them from injury in
an inter-planetary war. Their sole purpose was to make a visual
impression on the filmgoer. They are therefore artistic works.”
40. Mann J saw it differently. He stated (para [121], and here we are picking up
the quotation in the first paragraph in this judgment):
“It was a mixture of costume and prop. But its primary function is
utilitarian. While it was intended to express something, that was for
utilitarian purposes. While it has an interest as an object, and while it
was intended to express an idea, it was not conceived, or created,
with the intention that it should do so other than as part of character
portrayal in the film. That, in my view, does not give it the necessary
quality of artistic creation inherent in the test suggested by Laddie J.”
41. The Court of Appeal took the same view (paras [79] and [80]):
“Mr Bloch seeks to avoid our example of a real soldier’s helmet
being used as a prop in a film by stressing the fictional and
imaginary nature of the stormtroopers and what they were . . .
Page 17
But that argument confuses the fictional nature of the stormtrooper
with his physical depiction in the film. Although invented, the
helmet and armour are still recognisable as such and have a function
within the confines of the film as the equipment of the
stormtrooper.”
Discussion
42. In this Court the appellants have challenged the reasoning of the judge and
the Court of Appeal. Mr Sumption QC said that it was eccentric of the judge to
describe the helmet’s purpose as utilitarian, and that the Court of Appeal could
find it to have a functional purpose only by treating it as having the same
functional purpose as a real helmet “within the confines of a film”.
43. This is quite a puzzling point. The Star Wars films are set in an imaginary,
science-fiction world of the future. War films set in the past (Paths of Glory, for
instance, depicting the French army in the first world war, or Atonement depicting
the British Expeditionary Force at Dunkirk) are at least based on historical
realities. The actors and extras in the trenches or on the beaches may be wearing
real steel helmets, or (because real steel helmets of the correct style are
unobtainable in sufficient numbers) they may be wearing plastic helmets painted
khaki. In either case the helmets are there as (in the judge’s words) “a mixture of
costume and prop” in order to contribute to the artistic effect of the film as a film.
They are part of a production process, as Laddie J said in Metix at p 721, citing
Whitford J in Davis (J & S)(Holdings) Ltd v Wright Health Group Ltd [1988] RPC
403, 410-412. In this case the production process was the making of a full-length
feature film.
44. It would not accord with the normal use of language to apply the term
“sculpture” to a 20th century military helmet used in the making of a film, whether
it was the real thing or a replica made in different material, however great its
contribution to the artistic effect of the finished film. The argument for applying
the term to an Imperial Stormtrooper helmet is stronger, because of the
imagination that went into the concept of the sinister cloned soldiers dressed in
uniform white armour. But it was the Star Wars film that was the work of art that
Mr Lucas and his companies created. The helmet was utilitarian in the sense that it
was an element in the process of production of the film.
45. Those were the concurrent findings of both the judge and the Court of
Appeal, in paras [121] and [80] of their respective judgments. The type of
judgmental conclusion that often has to be reached in intellectual property cases –
on issues such as obviousness, inventiveness, and copying – are matters on which
Page 18
appellate courts should be slow to interfere with the judgment of the trial judge. In
Designers Guild [2000] 1 WLR 2416, 2423-2424, Lord Hoffmann observed that
there were two reasons for this. The first is that the judge has, and the appellate
court has not, seen and heard the witnesses. Lord Hoffmann continued,
“Secondly, because the decision involves the application of a not
altogether precise legal standard to a combination of features of
varying importance, I think that this falls within the class of case in
which an appellate court should not reverse a judge’s decision unless
he has erred in principle: see Pro Sieben Media AG v Carlton UK
Television Ltd [1991] 1 WLR 605, 612-613. I agree with Buxton LJ
in Norowzian v Arks Ltd (No 2) [2000] FSR 363, 370 when he said:
‘where it is not suggested that the judge has made any error of
principle a party should not come to the Court of Appeal simply in
the hope that the impression formed by the judges in this court, or at
least two of them, will be different from that of the trial judge.’”
That applies with extra force in the case of a second appeal. To the same effect are
Lord Hoffmann’s observations in Biogen Inc v Medeva plc [1997] RPC 1, 45,
which are too well known to need repetition.
46. The Court of Appeal (para [78]) relied on Lord Hoffmann’s observations in
Designers Guild, and in our view it was right to do so. During the 17 days of the
trial Mann J heard evidence about the helmet and the other artefacts from
numerous different witnesses. Long and thorough as his judgment is, he may not
have recorded every nuance that contributed to his conclusion. He did not err in
law or reach an obviously untenable conclusion, and the Court of Appeal was right
to uphold his decision on this point.
47. We would uphold the judgments below very largely for the reasons that
they give. But (at the risk of appearing humourless) we are not enthusiastic about
the “elephant test” in para [77] of the Court of Appeal’s judgment (“knowing one
when you see it”). Any zoologist has no difficulty in recognising an elephant on
sight, and most could no doubt also give a clear and accurate description of its
essential identifying features. By contrast a judge, even one very experienced in
intellectual property matters, does not have some special power of divination
which leads instantly to an infallible conclusion, and no judge would claim to have
such a power. The judge reads and hears the evidence (often including expert
evidence), reads and listens to the advocates’ submissions, and takes what the
Court of Appeal rightly called a multi-factorial approach. Moreover the judge has
to give reasons to explain his or her conclusions.
Page 19
48. There is one other matter to which the Court of Appeal attached no weight,
but which seems to us to support the judge’s conclusion. It is a general point as to
the policy considerations underlying Parliament’s development of the law in order
to protect the designers and makers of three-dimensional artefacts from unfair
competition. After reviewing the legislative history the Court of Appeal took the
view (para [40]) that there was no assistance to be obtained from the relationship
between copyright and registered design right. We respectfully disagree, especially
if the relatively new unregistered design right is also taken into account. It is
possible to recognise an emerging legislative purpose (though the process has been
slow and laborious) of protecting three-dimensional objects in a graduated way,
quite unlike the protection afforded by the indiscriminate protection of literary
copyright. Different periods of protection are accorded to different classes of work.
Artistic works of art (sculpture and works of artistic craftsmanship) have the fullest
protection; then come works with “eye appeal” (AMP Inc v Utilux Pty Ltd [1971]
FSR 572); and under Part III of the 1988 Act a modest level of protection has been
extended to purely functional objects (the exhaust system of a motor car being the
familiar example). Although the periods of protection accorded to the less
privileged types have been progressively extended, copyright protection has
always been much more generous. There are good policy reasons for the
differences in the periods of protection, and the Court should not, in our view,
encourage the boundaries of full copyright protection to creep outwards.
Sections 51 and 52
49. The appellants accept that if the helmet did not qualify as a sculpture within
the meaning of the 1988 Act, then Mr Ainsworth had a defence under section 51 to
any infringement claim based on Mr McQuarrie’s graphics, and section 52 does
not arise. The Court of Appeal dealt with these sections, for completeness, in paras
83 to 98 of its judgment. It is unnecessary to cover the same ground again. We
would dismiss the appeal so far as it is based on the English law of copyright.
Part II: Whether a claim against a defendant domiciled in England for
infringement of a foreign copyright is justiciable
The decision of the Court of Appeal and the issue on the appeal
50. The issue on this aspect of the appeal is a narrow one, whether the 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. That issue has raised two questions. The first
question is whether a claim for infringement of a foreign copyright is nonjusticiable. The second question only arises if the answer to the first question is in
Page 20
the affirmative: the question would then arise whether the English court is in any
event required to accept jurisdiction by virtue of Council Regulation (EC) No
44/2001 on jurisdiction and the enforcement of judgments in civil and commercial
matters (the Brussels I Regulation), article 2, which provides that, subject to the
terms of the Regulation, persons domiciled in a Member State shall be sued in the
courts of that Member State.
51. The Court of Appeal decided that the claim for breach of the United States
copyright was non-justiciable. It held that the rule in British South Africa Co v
Companhia de Moçambique [1893] AC 602 that the English court has no
jurisdiction to entertain an action for the determination of the title to, or the right to
possession of, foreign land, or the recovery of damages for trespass to such land,
was an example of a general principle which applied not only to foreign land, but
also to claims for infringement of foreign intellectual property rights, including
copyright, irrespective of whether issues of title or validity were involved; and
irrespective of whether the rights required registration (such as trade marks or
registered designs) or not. It also held that article 2 of the Brussels I Regulation did
not require the English court to exercise jurisdiction.
52. The substantial question on this aspect of the appeal is whether, as
Lucasfilm contends, the Court of Appeal was wrong, as a matter of law and policy,
to extend to foreign copyrights the common law rule in the Moçambique case that
actions for damages for infringement or invasion of property rights in foreign land
are not justiciable.
The foreign land rule and its application to intellectual property: British South
Africa Co v Companhia de Moçambique and Potter v Broken Hill Pty Co Ltd
53. Some legal archaeology is necessary for an understanding of how the law
developed to the point where the English courts, at first instance and in the Court
of Appeal, decided that claims for infringement of foreign copyright were not
justiciable in England.
British South Africa Co v Companhia de Moçambique
54. The decision in the Moçambique case is the authoritative foundation for the
rule that the English court “has no jurisdiction to entertain an action for (1) the
determination of the title to, or the right to the possession of, any immovable
situate out of England … or (2) the recovery of damages for trespass to such
immovable” (Dicey, Conflict of Laws, 1st ed (1896), pp 214-215, Rule 39). The
rule has for long been subject to an exception where there is a contract, or an
Page 21
equity, between the parties, which the courts of equity will enforce: ibid, p 216;
Penn v Lord Baltimore (1750) 1 Ves Sen 444.
55. As the House of Lords noted, in the United States there is a similar local
action rule (based on Livingston v Jefferson, 15 Fed Cas 660 (CCD Va, 1811),
Marshall CJ on circuit) for actions to determine title: see Hay, Borchers &
Symeonides, Conflict of Laws, 5th ed (2010), para 7.7. But the current prevailing
view in the United States is that the local action rule does not apply to actions for
trespass to foreign land: Restatement Second, Conflict of Laws, section 87 (1971).
It seems also that that part of the rule which denies jurisdiction for trespass to
foreign land had no counterpart outside common law countries (Rabel, Conflict of
Laws: A Comparative Study, 2nd ed, (1960) vol 2, p 47; Wolff, Private
International Law, 2nd ed (1950), p 92; and for the position in France see Audit,
Droit International Privé, 6th ed (2010), para 346), and, as will be seen, although
the House of Lords refused to reconsider the trespass rule, it no longer applies at
least as regards land in other Member States of the European Union.
56. The speeches of Lord Herschell LC and Lord Halsbury (and, in the Court of
Appeal, of Lord Esher MR, whose dissenting judgment was upheld in the House of
Lords) are substantially based on Story’s Conflict of Laws. The essence of the
decision is that jurisdiction in relation to land is local (that is, the claim has a
necessary connection with a particular locality) as opposed to transitory (where
such a connection is not necessary) and that it is contrary to international law, or
comity, for one state to exercise jurisdiction in relation to land in another state.
Lord Esher MR said ([1892] 2 QB 358, 398):
“…an action quare clausum fregit cannot be entertained by an
English Court in respect of an alleged wrongful entry on land
situated abroad; and … the ground of the inability is … no consent
of other nations by way of comity to the exercise of such jurisdiction
can be inferred.”
57. Lord Herschell LC and Lord Halsbury relied in particular on Story’s
quotation (Story, Conflict of Laws, section 553, from the 1st edition in 1834 to the
8th edition in 1883) of a translation of a passage in Vattel’s Droit des Gens, which
concluded that, in the case of an action relating to an estate in land, or to a right
annexed to such an estate: [1893] AC at 622, 631:
“in such a case, inasmuch as property of the kind is to be held
according to the laws of the country where it is situated, and as the
right of granting it is vested in the ruler of the country, controversies
Page 22
relating to such property can only be decided in the state in which it
depends.”
58. In Hesperides Hotels Ltd v Aegean Turkish Holidays Ltd [1979] AC 508
Lord Wilberforce said (at p 537) that the foreign land rule involved “possible
conflict with foreign jurisdictions, and the possible entry into and involvement
with political questions of some delicacy;” and Viscount Dilhorne said (at p 541)
that: “Questions of comity of nations may well be involved”.
59. The leading cases all involved unusual factual situations in which the claim
had major political ramifications, and in which, therefore, issues of international
law and comity were engaged. The Moçambique company was a Portuguese
company (with substantial British ownership) effectively in control of
Mozambique and Cecil Rhodes’ British South Africa Co was effectively in control
of Southern Rhodesia. The Moçambique case was a battle between them over
mines in territories which were claimed by Portugal. In Hesperides Hotels the
plaintiffs were Greek Cypriot hotel owners who were seeking to establish that their
hotels in Northern Cyprus had been illegally requisitioned by the authorities of the
unrecognised Turkish Federated State of North Cyprus. Similarly, in the leading
case on the related, and more general, principle that the courts will not adjudicate
upon the transactions of foreign sovereign states, Buttes Gas and Oil Co v Hammer
(No 3) [1982] AC 888, Occidental Petroleum was endeavouring to establish that
Buttes and the Ruler of Sharjah had fraudulently deprived Occidental of the benefit
of its oil concession in the neighbouring emirate of Umm al Qaywayn.
Potter v Broken Hill Pty Co Ltd
60. It is inevitable that any discussion of the justiciability of claims for
infringement of foreign intellectual property rights must begin with the influential
decision in Potter v Broken Hill Pty Co Ltd [1905] VLR 612, affd (1906) 3 CLR
479, which is generally (but not entirely accurately) regarded as based on an
extension of the Moçambique rule to actions for infringement of patents. At a time
when patents were granted by the several States in Australia, Potter obtained a
patent in Victoria for the separation of metals from sulphide ores and a patent for
the same process in New South Wales. Potter claimed that (as well as a threatened
infringement of the Victorian patent in Victoria) the defendant company (now
BHP Billiton) had infringed the New South Wales patent at its mine in New South
Wales. Broken Hill denied novelty and utility, but also said that an action for the
infringement in New South Wales of a New South Wales patent was not justiciable
in the Victorian courts. The question of justiciability was argued as a preliminary
matter before the Full Court of the Supreme Court of Victoria, which decided by a
majority that the claim was not justiciable, and an appeal to the High Court of
Australia was dismissed.
Page 23
61. As already mentioned, the decision is generally regarded as based on the
Moçambique rule. Although the Moçambique rule is one of the elements in the
conclusion of the High Court, an examination of the way in which the case was
argued, and of the reasoning of the High Court, shows that it is a decision
extending the act of state doctrine to foreign patents. There are four strands to the
conclusions reached by the Full Court and the High Court of Australia. The first
strand is in the judgment of Hodges J (with whom Hood J concurred) in the Full
Court. That strand is based on that aspect of the Moçambique rule which turns on
the distinction between local and transitory actions. He considered that the patent
had a definite locality: Potter claimed in effect that in no building and on no land
in New South Wales could the company use his invention. It was a claim made in
respect of a defined area, the whole of which was outside the jurisdiction of the
court in Victoria.
62. The second strand is found only in the judgment of Hood J in the Full
Court, but it finds an echo in later English decisions, and that is that the action was
precluded by what became known as the first branch of the rule in Phillips v Eyre
(1870) LR 6 QB 1, namely that an act done abroad was only actionable in England
if it was actionable as a tort according to English law, that is, was an act, which if
done in England, would be a tort. The rule as then understood showed what
became the first limb of the rule as the second limb in these terms: “An act done in
a foreign country is a tort if it is both (1) wrongful according to the law of the
country where it was done, and, (2) wrongful according to English law, ie, is an
act which, if done in England, would be a tort” (Dicey, Conflict of Laws, 1st ed
(1896), Rule 175, p 659). Hood J considered that the rule was not satisfied because
Potter could not show that, if the act had been committed in Victoria, it would
have been actionable there, because infringement of a New South Wales patent in
Victoria was not actionable in Victoria: the act of Broken Hill, “ ‘using and
working’ certain alleged inventions in New South Wales – even though it be
wrong by the law of that State, would not be actionable if committed here” (at p
631).
63. The third strand is found in the reliance on the Moçambique case by the
High Court of Australia. Both Griffiths CJ and Barton J said that the question did
not depend on the distinction between local and transitory actions. They (and the
third member of the court, O’Connor J) took their inspiration from those parts of
the speeches in the House of Lords, and of the dissenting judgment of Lord Esher
MR in the Court of Appeal, which emphasised that rights in immovables were
created by the exercise of the sovereign power of the State, and that controversies
relating to such property could only be decided in that State. So also, they
reasoned, the comity of nations required a similar rule for patents: especially
(1906) 3 CLR 479, 495, 502.
Page 24
64. The appeal was first argued in November 1905, but the report shows (at p
486) that on 27 February 1906:
“The matter was, at the desire of the Court, further argued on the
point whether the Courts of one State can enquire into the propriety
or validity of an attempted exercise of the sovereign power of
another State.”
65. As a result there is a fourth, and decisive, strand in the decision, namely the
act of state doctrine. The classic statement of the act of state doctrine was
enunciated by Fuller CJ in the United States Supreme Court in Underhill v
Hernandez, 168 US 250, 252 (1897):
“Every sovereign State is bound to respect the independence of every
other sovereign State, and the Courts of one country will not sit in
judgment on the acts of the government of another done within its
own territory. Redress of grievances by reason of such acts must be
obtained through the means open to be availed of by sovereign
powers as between themselves.”
66. This principle had its origin, as appears clearly from the decision of the
lower court in that case, in the decision of the House of Lords in Duke of
Brunswick v Duke of Hanover (1848) 2 HLC I, 17, in which it was said: “the
courts of this country cannot sit in judgment upon an act of a sovereign, effected
by virtue of his sovereign authority abroad …”: see Underhill v Hernandez, 65 F
577 (2d Cir 1895). As re-stated by the United States Supreme Court, the act of
state doctrine was re-imported into English law in Luther v Sagor [1921] 3 KB 532
(CA).
67. All three members of the High Court of Australia quoted and applied
Underhill v Hernandez and it is the act of state doctrine, rather than the
Moçambique rule, which is the essential foundation of the judgments in the High
Court. Thus Griffith CJ said that if a government had granted a monopoly in
respect of an alleged invention which was not new, the government must have
been misled: at pp 498-499. Barton J thought that the whole subject matter of the
action was excluded from the cognizance or competence of Victoria, and its courts
could not sit in judgment to determine whether such rights were validly granted: at
p 503. O’Connor J said that a court could not enquire into the validity of a patent,
any more than it could enquire into the validity of a concession granted by the
Czar: at p 513.
Page 25
68. Consequently the effect of the decision in Potter v Broken Hill Pty Co Ltd
was to apply the Moçambique rule and, especially, the act of state doctrine to
actions for patent infringement. It received no attention in the English case-law
until it was mentioned by Lord Wilberforce in Hesperides Hotels Ltd v Aegean
Turkish Holidays Ltd [1979] AC 508, 536 as authority for the proposition that the
Moçambique rule applied in Australia. It was only from the 1980s that it came to
be regarded as a significant authority in the field of transnational intellectual
property litigation: Def Lepp Music v Stuart-Brown [1986] RPC 273; Tyburn
Productions Ltd v Conan Doyle [1991] Ch 75 (both copyright cases).
Subsequent developments
69. There have been major developments since the decisions in the
Moçambique case and Potter v Broken Hill Pty Co Ltd, which have to a significant
extent undermined them, and to which it is now necessary to turn.
70. The questions to which these developments are relevant are these: (1)
whether there is a distinction between actions to determine title and/or validity and
actions for infringement of rights; (2) whether there is a distinction between
actions for infringement which raise issues of title and/or validity and actions for
infringement which do not; (3) whether there is a distinction between intellectual
property rights which require registration or prior examination and those which do
not, and in particular whether there is a relevant distinction between copyright and
other intellectual property rights, especially patents; (4) whether the conflict of
laws rules relating to tortious conduct abroad have undermined the older decisions;
and (5) whether the act of state doctrine has any relevance to actions for
infringement of intellectual property rights.
The Moçambique rule
71. To the extent that the principles in Potter v Broken Hill Pty Co Ltd were
based on that part of the rule in the Moçambique case which precluded actions for
damages for infringement of property rights (in that case damages for trespass),
they have been fatally undermined so far as English law is concerned. That part of
the rule was confirmed by the House of Lords in Hesperides Hotels Ltd v Aegean
Turkish Holidays Ltd [1979] AC 508. The House of Lords not only refused an
invitation to depart from that part of the rule, but also extended it by holding that it
applied when no question of title was involved. Lord Wilberforce said (at p 541)
that questions of comity might well be involved, and it had to be for Parliament to
change the law.
Page 26
72. That invitation was taken up, and that part of the Moçambique rule was
abolished by section 30(1) of the Civil Jurisdiction and Judgments Act 1982,
which came into force in 1982, and provides:
“The jurisdiction of any court in England . . . to entertain
proceedings for trespass to, or any other tort affecting, immovable
property shall extend to cases in which the property in question is
situated outside that part of the United Kingdom unless the
proceedings are principally concerned with a question of the title to,
or the right to possession of, that property.”
73. There was a parallel development in European law which also confirms,
broadly, that the foreign land principle in the European Union is concerned only
with actions to establish title. That development began with the Brussels
Convention on jurisdiction and the enforcement of judgments in civil and
commercial matters, which was signed in 1968 and came into force for the six
original EEC Member States in 1973. The Brussels Convention was enacted into
United Kingdom law by the 1982 Act and the relevant provisions came into force
in 1987, and are now contained in the Brussels I Regulation (Council Regulation
(EC) No 44/2001). The effect is that the Moçambique rule has been superseded, as
regards land in other Member States, by what is now Article 22(1) of the Brussels I
Regulation.
74. Article 22(1) (formerly article 16(1)(a) of the Brussels Convention)
provides that the courts of the Member State in which the property is situated have
exclusive jurisdiction, regardless of domicile,
“in proceedings which have as their object rights in rem in
immovable property or tenancies of immovable property.”
75. The European Court has confirmed that what is now article 22(1) must not
be given an interpretation broader than is required by its objective: and that actions
for damages based on infringement of rights in rem or on damage to property in
which rights in rem exist do not fall within its scope: Case C-343/04 Land
Oberösterreich v ČEZ as [2006] ECR I-4557, para [26] et seq.
76. The consequence is that in the United Kingdom the trespass aspect of the
Moçambique rule has no application as regards land in other Member States, and
(subject to the controversial question of the applicability of article 2) can only
apply to land outside the Member States where a question of title is involved: see
Page 27
Dicey, Morris & Collins, Conflict of Laws, 14th ed (2006), vol 2 paras 23-025─23-
027.
The rule in Phillips v Eyre
77. As has been seen, in Potter v Broken Hill Pty Co Ltd, in the Full Court of
the Supreme Court of Victoria, Hood J considered that the action was precluded by
the first branch of the rule in Phillips v Eyre, ie that Potter could not show that, if
the act had been committed in Victoria, it would have been actionable there,
because infringement of a New South Wales patent in Victoria was not actionable
in Victoria. The effect of the first limb of the rule in intellectual property cases was
expressed in Dicey & Morris, Conflict of Laws, 12th ed (1993) (the last edition
before the law was changed), vol 2, at p 1516:
“Nor can the holder of a French patent, trade mark or copyright sue
in England for its infringement in France. Since the French patent,
trade mark or copyright is territorial in its operation and the act
complained of would not be a tort if committed in England, it cannot
be brought within [the first limb of the rule in Phillips v Eyre].”
78. In consequence it was held in Tyburn Productions Ltd v Conan Doyle
[1991] Ch 75 that it was not possible to bring an action in England for
infringement (or, as in that case, an action for a declaration of non-infringement)
of United States copyright. The first limb of the rule in Phillips v Eyre was also
employed by Sir Nicolas Browne-Wilkinson V-C in Def Lepp Music v StuartBrown [1986] RPC 273 to deny a claim in England for breach of a United
Kingdom copyright in the Netherlands, but a shorter answer to the claim would
have been that United Kingdom copyrights are purely territorial and do not, by
United Kingdom law, confer any rights abroad: see, eg Norbert Steinhardt & Son
Ltd v Meth (1960) 105 CLR 440.
79. But the rule in Phillips v Eyre was first eroded by case-law and then
abolished by statute. Following the lead of Lord Wilberforce and Lord Hodson in
Boys v Chaplin [1971] AC 356, in Red Sea Insurance Co Ltd v Bouygues SA
[1995] 1 AC 190 the Privy Council decided that the first limb of the rule in
Phillips v Eyre could be displaced so that an issue might be governed by the law of
the country which with respect to that issue had the most significant relationship
with the occurrence and with the parties. That exception was applied in Pearce v
Ove Arup Partnership Ltd [2000] Ch 403, in which the Court of Appeal held that a
claim in England for infringement of a Dutch copyright was not defeated by the
first limb of the rule in Phillips v Eyre, because the issues had the most significant
relationship with the Netherlands. Accordingly, the court held that Dutch law was
Page 28
the applicable law and not the combination of English law and Dutch law required
by Phillips v Eyre. In KK Sony Computer Entertainment v Van Veen (2006) 71 IPR
179 (High Court of New Zealand), MacKenzie J held (in reasoning which is not
entirely clear) that, in a claim for infringement of United Kingdom and Hong Kong
copyrights, the first limb of the rule in Phillips v Eyre was satisfied.
80. The rule in Phillips v Eyre was abolished by the Private International Law
(Miscellaneous Provisions) Act 1995. In principle the law of the place of
infringement applies: 1995 Act, section 11(1). Consequently, so far as English
proceedings are concerned, that basis for the decisions in Potter v Broken Hill Pty
Co Ltd and Tyburn Productions Ltd v Conan Doyle has disappeared, and the rule
in Phillips v Eyre is no impediment to actions in England for infringement of
foreign intellectual property rights.
The act of state doctrine
81. In the United States the act of state doctrine has been used as a basis for
non-justiciability of foreign trade mark and patent rights. The Court of Appeals for
the Second Circuit held in Vanity Fair Mills Inc v T Eaton Co Ltd, 234 F 2d 633,
646 (2d Cir 1956), cert den, 352 US 871 (1956) that a United States federal court
should not rule on the validity of a Canadian trade mark because (among other
reasons) the act of state doctrine precluded determination of the acts of a foreign
sovereign done within its own territory, and to rule on validity would create
conflicts with Canadian administrative and judicial officers.
82. The act of state doctrine was also invoked more recently in the United
States as a ground for refusing to allow the addition of claims for infringement of
parallel foreign patents to claims for infringement of United States patents, in
litigation in which validity was in issue: Voda v Cordis Corp, 476 F 3d 887 (Fed
Cir 2007). The majority of the court (Gajarsa CJ, Prost CJ concurring) said (at p
904):
“the act of state doctrine may make the exercise of supplemental
jurisdiction over foreign patent infringement claims fundamentally
unfair. As “a ‘principle of decision binding on federal and state
courts alike,’ ” the act of state doctrine “requires that, in the process
of deciding, the acts of foreign sovereigns taken within their own
jurisdictions shall be deemed valid.” W S Kirkpatrick & Co, Inc v
Envtl Tectonics Corp, Int’l, 493 U.S. 400, 406, 409 … (1990) … In
this case, none of the parties or amicus curiae have persuaded us that
the grant of a patent by a sovereign is not an act of state. …
Therefore, assuming arguendo that the act of state doctrine applies,
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the doctrine would prevent our courts from inquiring into the validity
of a foreign patent grant and require our courts to adjudicate patent
claims regardless of validity or enforceability.”
83. The act of state doctrine was held not to apply where, in a dispute arising
out of a patent licence, the issue was one of interpretation of the patent, and not of
validity: Fairchild Semiconductor Corpn v Third Dimension (3D) Semiconductor
Inc, 589 F Supp 2d 84, 98 (D Me 2008).
84. So also, in the case of copyright infringement, it has been held that the act
of state doctrine has no application because there is no need to pass on the validity
of acts of foreign government officials. In London Film Productions, Ltd v
Intercontinental Communications, Inc, 580 F Supp 47, 49 (SDNY 1984) the
District Court held that the plaintiff could sue for infringement of its foreign
copyright in films. The court accepted Professor Nimmer’s view that the act of
state doctrine was not engaged: in adjudicating an infringement action under a
foreign copyright law there was no need to pass upon the validity of acts of foreign
governmental officials, since foreign copyright laws did not generally incorporate
administrative formalities which had to be satisfied to create or perfect a copyright.
In Frink America, Inc v Champion Road Machinery Ltd, 961 F Supp 398 (NDNY
1997) it was held that dismissal of a claim for infringement of Canadian copyright
was not warranted because US and Canada were signatories to the Berne
Convention, which bars administrative formalities, and therefore there was no
question of passing on acts of foreign government. Contrast ITSI TV Productions,
Inc v California Authority of Racing Fairs, Inc, 785 F Supp 854, 866 (ED Cal
1992).
85. But in the Commonwealth Potter v Broken Hill Pty Co Ltd appears to stand
alone in using the act of state doctrine as an impediment to actions for
infringement of foreign intellectual property rights. In Voda v Cordis Corpn,
above, Circuit Judge Newman, dissenting, rightly pointed out (at p 914) that not
every governmental action and not every ministerial activity is an act of state. In
Mannington Mills, Inc v Congoleum Corpn, 595 F 2d 1287, 1293–94 (3d Cir
1979) the Court of Appeals for the Third Circuit was “unable to accept the
proposition that the mere issuance of patents by a foreign power constitutes … an
act of state.”
86. It has been said that the grant of a national patent is “an exercise of national
sovereignty” (Jenard Report on the Brussels Convention (OJ 1979 C59 pp 1, 36),
and the European Court has emphasised that the issue of patents necessitates the
involvement of the national administrative authorities (Case C-4/03 Gesellschaft
für Antriebstechnik mbH & Co KG (GAT) v Lamellen und Kupplungsbau
Beteiligungs KG (LuK) [2006] ECR I-6509, para [23]). But in England the foreign
Page 30
act of state doctrine has not been applied to any acts other than foreign legislation
or governmental acts of officials such as requisition, and it should not today be
regarded as an impediment to an action for infringement of foreign intellectual
property rights, even if validity of a grant is in issue, simply because the action
calls into question the decision of a foreign official.
European law and intellectual property rights
87. Two important developments in European law have undermined any
argument that there is a substantial policy reason for the view that actions for
infringement of intellectual property rights cannot be brought outside the State in
which they are granted or subsist.
88. First, article 22(4) of the Brussels I Regulation (formerly article 16(4) of the
Brussels Convention) provides that, in proceedings concerned with the registration
or validity of patents, trade marks, designs, or other similar rights required to be
deposited or registered, the courts of the Member State in which the deposit or
registration has been applied for, has taken place or is deemed to have taken place,
have exclusive jurisdiction irrespective of the domicile of the defendant. This is an
exception to the general domicile rule of jurisdiction, and has to be construed
strictly. It applies only to intellectual property 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.
89. The European Court has emphasised that article 22(4) is only concerned
with cases in which a question of validity arises. It has made the following points:
the basis for article 22(4) is that the courts of the Contracting State in which the
deposit or registration has been applied for or made are best placed to adjudicate
upon cases in which the dispute itself concerns the validity of the patent or the
existence of the deposit or registration; but it does not apply in proceedings which
do not concern the validity of the intellectual property right or the existence of the
deposit or registration and these matters are not disputed by the parties, for
example, a patent infringement action, in which the question of the validity of the
patent allegedly infringed is not called into question; it would apply if the question
of validity were raised by way of defence in infringement proceedings; the concern
for the sound administration of justice is all the more important in the field of
patents since, given the specialised nature of this area, a number of Contracting
States have set up a system of specific judicial protection, to ensure that these
types of cases are dealt with by specialised courts; the exclusive jurisdiction is also
justified by the fact that the issue of patents necessitates the involvement of the
national administrative authorities: Case C-4/03 Gesellschaft für Antriebstechnik
mbH & Co KG (GAT) v Lamellen und Kupplungsbau Beteiligungs KG (LuK)
[2006] ECR I-6509, para [16] et seq.
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90. Article 22(4) does not in terms apply to intellectual property rights outside
the Member States. It is not necessary for present purposes to delve into the
question whether it may be applied by analogy (or “reflexively”) to non-Member
States. What it shows is that there is a fundamental distinction between intellectual
property claims which involve the registration or validity of intellectual property
rights which are required to be deposited or registered, and those which are not.
91. The second relevant piece of European legislation does not apply to the
present proceedings because it came into force only on 11 January 2009, but it also
shows clearly that there is no European public policy against the litigation of
foreign intellectual property rights. Regulation (EC) No 864/2007 of the European
Parliament and of the Council on the law applicable to non-contractual obligations
(Rome II) applies wherever in the world a tort was committed. It plainly envisages
that actions may be brought in Member States for infringement of foreign
intellectual property rights, including copyright. Recital (26) states:
“Regarding infringements of intellectual property rights, the
universally acknowledged principle of the lex loci protectionis
should be preserved. For the purposes of this Regulation, the term
‘intellectual property rights’ should be interpreted as meaning, for
instance, copyright, related rights, the sui generis right for the
protection of databases and industrial property rights.”
92. As regards choice of law, article 8 provides:
“Infringement of intellectual property rights
1. The law applicable to a non-contractual obligation arising from an
infringement of an intellectual property right shall be the law of the
country for which protection is claimed.
2. In the case of a non-contractual obligation arising from an
infringement of a unitary Community intellectual property right, the
law applicable shall, for any question that is not governed by the
relevant Community instrument, be the law of the country in which
the act of infringement was committed.
…”
Other proposals
Page 32
93. These developments in European law are mirrored in proposals within the
American Law Institute, which favour adjudication of foreign intellectual property
rights, at least where issues of validity are not in issue. The American Law
Institute’s Intellectual Property: Principles Governing Jurisdiction, Choice of
Law, and Judgments in Transnational Disputes (2008) apply to transnational civil
disputes which involve (inter alia) copyrights, patents, trademarks, and other
intellectual property rights (section 102) and note the controversy over the
question of the justiciability of intellectual property rights (Reporters’ Notes 4 and
5). Section 211 provides that the court must have subject-matter and personal
jurisdiction. Comment b states:
“There is substantial sentiment that issues regarding the validity of a
registered right, particularly a patent right, should be adjudicated in
the courts of the State in which the right is registered. Only this
State is competent to cancel the registration. … Nonetheless, the
Principles do not include a blanket prohibition on the adjudication of
matters involving a foreign State’s registered rights, because
separating adjudication of validity from infringement can have
substantive ramifications. Separate resolutions can prevent a court
from hearing all of the evidence relevant to the action and from using
its understanding of how a technology is utilized to inform its
decision on the scope of the right. Bifurcating validity and
infringement can also increase the parties’ costs.”
94. The draft Principles for Conflict of Laws in Intellectual Property, 2011,
prepared by the European Union Max Planck Group on Conflict of Laws in
Intellectual Property contain no specific provision for actions for infringement of
foreign rights abroad, but it is implicit in the Principles that they envisage such
actions: (a) the primary rule of jurisdiction in the Principles is habitual residence
(Part 2, section 1), and (b) the primary law applicable to infringement is the law of
the State for which protection is sought (Part 3, section 6).
The English and foreign authorities on justiciability of intellectual property
claims
95. A number of distinguished judges have expressed the view that the English
court cannot, or should not, exercise jurisdiction in claims for infringement of
foreign intellectual property rights, such as patents (Mölnlycke AB v Procter &
Gamble Ltd [1992] 1 WLR 1112, 1118, per Dillon LJ; Plastus Kreativ AB v
Minnesota Mining and Manufacturing Co [1995] RPC 438, 447, per Aldous J) or
trade marks (LA Gear Inc Ltd v Gerald Whelan & Sons Ltd [1991] FSR 670, 674,
per Mummery J). But prior to the decision of the Court of Appeal in the present
proceedings the only directly relevant decisions were the decisions of Vinelott J in
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Tyburn Productions Ltd v Conan Doyle [1991] Ch 75, of Laddie J in Coin
Controls Ltd v Suzo International (UK) Ltd [1999] Ch 33, and of the Court of
Appeal in Pearce v Ove Arup Partnership Ltd [2000] Ch 403.
96. In Tyburn Productions Ltd v Conan Doyle [1991] Ch 75 Vinelott J applied
the Moçambique rule in the light of Potter v Broken Hill Pty Co Ltd to what was in
effect a prospective negative declaration relating to potential copyright
infringement in the United States. The action was by a television company for a
declaration that the daughter of Sir Arthur Conan Doyle had no rights under the
copyright, unfair competition, or trademark laws of the United States to prevent
the company from distributing a Sherlock Holmes television film. It was conceded
on behalf of the television company that no distinction could be drawn for the
purpose of the case law between patents and other intellectual property rights
including copyright. Vinelott J also supported his conclusion by reliance on the
first limb of the rule in Philips v Eyre: infringement of an American copyright was
not a tort in English law and the first limb could not be satisfied. In R Griggs
Group Ltd v Evans [2004] EWHC 1088 (Ch), [2005] Ch 153, Vinelott J’s decision
was criticised by Mr Peter Prescott QC, sitting as a Deputy High Court judge, who
distinguished it by applying the exception to the Moçambique rule whereby
jurisdiction could be exercised if there were a contract or an equity between the
parties: the judge allowed an amendment to a pleading on the basis that the court
in the exercise of its equitable in personam jurisdiction could order a person who
had acquired property situate abroad with sufficient notice of an earlier obligation
to transfer the property to another to assign that property to its equitable owner,
and that it would not be a breach of comity to adjudicate in personam on rights to
foreign intellectual property (copyright) arising out of a contract.
97. Patents were the subject of the decision of Laddie J in Coin Controls Ltd v
Suzo International (UK) Ltd [1999] Ch 33, in which he held that the court had no
jurisdiction to try claims for infringement of German and Spanish patents for two
reasons: the first was that the claims were not justiciable under the
Moçambique/Potter v Broken Hill Pty Co Ltd principles. The second was that the
claims were concerned with validity and within what is now article 22(4) of the
Brussels I Regulation.
98. In Pearce v Ove Arup Partnership Ltd [2000] Ch 403 Mr Pearce claimed
that the defendants had infringed his English and Dutch copyrights in his drawings
and plans for a town hall by copying them in designing the Kunsthal in Rotterdam.
There was no issue about existence or validity of the copyrights. The sole factual
question was whether his drawings and plans had been copied. On the question of
the justiciability of the claim for infringement of the Dutch copyright, the court
had personal jurisdiction over the defendants by virtue of their domicile in England
(because they were additional parties for the purposes of what is now article 6(1)
of the Brussels I Regulation). It was not suggested that what is now article 22(4)
Page 34
applied, since the proceedings were for infringement of copyright and no question
of deposit or registration arose. The effect of what is now article 22(1)) was that
the Moçambique rule no longer applied within the Member States, and that where
proceedings in relation to intellectual property fell outside what is now article
22(1), the general rules of jurisdiction applied, and there was no room for an
objection of non-justiciability. The common law rule of choice of law applied
because the relevant events occurred before section 11 of the Private International
law (Miscellaneous Provisions) Act 1995 came into force in 1996, but (as
mentioned above) the court disapplied the first limb of the rule in Phillips v Eyre
in favour of the law of the country which with respect to that issue had the most
significant relationship with the occurrence and with the parties, which was Dutch
law.
Foreign authorities
99. In the United States the local action rule has been used as a ground for
refusal to add claims for infringement of foreign patents to a United States patent
infringement action: Voda v Cordis Corp, 476 F 3d 887 (Fed Cir 2007), discussed
above in connection with the act of state doctrine. The majority said (at pp 901-
902):
“the local action doctrine informs us that exercising supplemental
jurisdiction in this case appears to violate our own norms of what
sovereigns ordinarily expect. Courts derived the local action doctrine
from the distinction between local and transitory actions beginning
with Livingston v Jefferson, written by Justice John Marshall riding
Circuit. 15 F. Cas. 660 (C.C.D.Va. 1811). … [T]he local action
doctrine served to prevent courts from adjudicating claims for
trespass or title to real property.
The territorial limits of the rights granted by patents are similar to
those conferred by land grants. A patent right is limited by the metes
and bounds of the jurisdictional territory that granted the right to
exclude. …
Therefore, a patent right to exclude only arises from the legal right
granted and recognized by the sovereign within whose territory the
right is located. It would be incongruent to allow the sovereign
power of one to be infringed or limited by another sovereign’s
extension of its jurisdiction. …”
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100. Claims for infringement of foreign copyright have been held in New
Zealand and South Africa to be non-justiciable. In Atkinson Footwear Ltd v
Hodgskin International Services Ltd, (1994) 31 IPR 186 (High Court of New
Zealand) Tipping J followed the Tyburn Productions Ltd decision and in Gallo
Africa Ltd v Sting Music (Pty) Ltd [2010] ZASCA 96, 2010 (6) SA 329 the
Supreme Court of Appeal of South Africa applied the decision of the Court of
Appeal in the present case. But in KK Sony Computer Entertainment v Van Veen
(2006) 71 IPR 179 MacKenzie J in the High Court of New Zealand declined to
follow Atkinson Footwear and held that a claim for infringement of foreign
intellectual property rights (in that case breach of United Kingdom and Hong Kong
copyright in PlayStation 2) was justiciable if no question of the existence or
validity of those rights was in issue.
Conclusions on the justiciability question
101. The issue on this appeal is a very narrow one because the appellants do not
take issue with the application of the Moçambique rule to intellectual property so
far as it is limited to patents and other intellectual property rights dependent on the
grant or authority of a foreign State, and to cases where what is in issue is the
validity of the patent, as opposed to its infringement.
102. As recorded by Mann J, the trial judge ([2008] EWHC 1878 (Ch), [2009]
FSR 103, at [272]), the dispute relating to the United States copyright was as
follows. 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. According to the judge, at one stage it had
also been suggested that if there was copyright it was vested in Mr Ainsworth and
not in Lucasfilm, but this point was not ultimately persisted in.
103. Although at trial the infringement arguments sometimes merged into a
subsistence argument, the substantial dispute has always been about the ownership
of the relevant copyrights and their infringement rather than about their
subsistence.
104. Were these claims justiciable? Mr Ainsworth argued that the principle
behind the Moçambique rule (as extended in Hesperides to include actions in
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which no issue of title arises) still subsists and applies 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.
105. We have come to the firm conclusion that, 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 Moçambique rule and the decision in
Potter v Broken Hill Pty Co Ltd has been eroded. All that is left of the
Moçambique 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.
106. The basis for what remains of the rule was said by the House of Lords in the
Moçambique case to be that controversies should be decided in the country of the
situs of the property because the right of granting it was vested in “the ruler of the
country” and in the Hesperides case to be the maintenance of comity and the
avoidance of conflict with foreign jurisdictions. It is possible to see how the
rationale of the Moçambique rule can be applied to patents, at any rate where
questions of validity are involved. For example the claims might touch on the
validity of patents in sensitive areas, such as armaments, and that no doubt is part
of the rationale for article 22(4) of the Brussels I Regulation. But it is very difficult
to see how it could apply to copyright. It is true that copyright can involve delicate
political issues. Thus in a very different context Brightman J had to deal with the
international consequences for copyright protection of the samizdat circulation in
the Soviet Union of Solzhenitsyn’s August 1914 without having been passed by the
Soviet censor: Bodley Head Ltd v Flegon [1972] 1 WLR 680. But such cases can
be dealt with by an application of the principles of public policy in appropriate
cases.
107. Nor do the additional matters relied on in Potter v Broken Hill Pty Co Ltd
lead to any different conclusion. The rule in Phillips v Eyre has gone. There is no
room for the application of the act of state doctrine in relation to copyright in this
case, even if (contrary to the view expressed above) actions of officials involved
with registration and grant of intellectual property rights were acts of state. The
requirement to apply for copyright registration in the United States is limited to the
“copyright in any United States work” which in practice means that published
Page 37
works first published outside the United States are exempted from compliance
with US registration provisions. In the present case the copyrights were treated as
United States works and were registered. Registration is a pre-requisite to
proceedings in the United States: United States Copyright Act, section 411. But the
unchallenged evidence before the judge in this case was that registration was not a
prerequisite to subsistence but only to suit, and it was possible to register at the
time of suit. Consequently the provision is purely procedural. That has been
confirmed recently by the United States Supreme Court, which has held that
federal courts have subject matter jurisdiction to approve a class action settlement
where some of the authors are not registered, because section 411 is not a
jurisdictional rule: Reed Elsevier Inc v Muchnick, 130 S Ct 1237 (2010).
108. There is no doubt that the modern trend is in favour of the enforcement of
foreign intellectual property rights. First, article 22(4) of the Brussels I Regulation
only assigns exclusive jurisdiction to the country where the right originates 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. This can rarely, if ever, apply to copyright.
Second, the Rome II Regulation also plainly envisages the litigation of foreign
intellectual property rights and, third, the professional and academic bodies which
have considered the issue, the American Law Institute and the Max Planck
Institute, clearly favour them, at any rate where issues of validity are not engaged.
109. There are no issues of policy which militate against the enforcement of
foreign copyright. States have 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 shows. Many of the points
relied on by the Court of Appeal to justify the application of the Moçambique rule
in this case as a matter of policy would apply to many international cases over
which the English court would have jurisdiction and would in principle exercise it,
especially the suggestion that questions of foreign law would have to be decided. It
was also said by the Court of Appeal that enforcement of foreign intellectual
property law might involve a clash of policies such that a defendant may be
restrained by injunction from doing acts in this country which are lawful in this
country. But such an injunction will be granted only if the acts are anticipated to
achieve fruition in another country, and there is no objection in principle to such
an injunction. Nor is there any objection in principle, as the Court of Appeal
thought, to a restraint on acts in another country. Extra-territorial injunctions are
commonly granted here against defendants subject to the in personam jurisdiction.
The Court of Appeal also thought that it was relevant that there was no
international regime for the mutual recognition of copyright jurisdiction and of
copyright judgments, but this is no reason for the English court refusing to take
jurisdiction over an English defendant in a claim for breach of foreign copyright.
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110. It follows that Tyburn Productions Ltd v Conan Doyle was wrongly decided
and that on this aspect the decision of the Court of Appeal in these proceedings
cannot stand.
The Owusu v Jackson point
111. If the Court of Appeal was right to hold that the claim was in principle nonjusticiable, a further question would arise whether nevertheless, in the light of the
decision of the European Court in Case C-281/02 Owusu v Jackson [2005] ECR I1383, the English court must grant a remedy against Mr Ainsworth, who is
domiciled in England for the purposes of what is now Article 2 of the Brussels I
Regulation. In Owusu v Jackson the European Court decided that an action in
England arising out of events in Jamaica could not be stayed as against an English
defendant in favour the Jamaican courts on the ground of forum non conveniens.
That was because the English defendant was domiciled in a Member State for the
purposes of article 2, and the assignment of jurisdiction to that State applied also
as between Contracting and non-Contracting States (now Member and nonMember States). In this case the Court of Appeal distinguished Owusu v Jackson
on the basis that it did not apply to cases where the English court held that it had
no subject-matter jurisdiction.
112. Lucasfilm argues that it would be inconsistent with the Owusu principle for
the English court to decline to decide a particular issue on the ground that it is not
justiciable under English law, because (in particular) the Brussels I Regulation is
concerned with subject-matter jurisdiction as well as personal jurisdiction; it is
concerned with achieving the uniform application of common principles regarding
jurisdiction across the European Community, and it would not be consistent with
that object if national courts were able to decline jurisdiction on principles of nonjusticiability. Although in argument it was stressed that the argument was one of
lack of jurisdiction rather than non-justiciability, in substance the real point of the
argument is that if Lucasfilm were right, then the Brussels I Regulation would
require the English court to adjudicate on other matters which have hitherto been
regarded as non-justiciable, such as “the transactions of foreign sovereign states”
which were held to be non-justiciable in Buttes Gas and Oil Co v Hammer (No 3)
[1982] AC 888, 931; and that to require the English court to so adjudicate would
be contrary to international law (or, perhaps more accurately, put the United
Kingdom in breach of international law).
113. In view of the conclusion on the main point, this issue (on which a
reference to the European Court might be required) does not arise and there is no
need to express a view on it.
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114. We would therefore allow the appeal on the justiciability issue.
LORD MANCE
115. For the reasons given by Lord Walker and Lord Collins in their combined
judgment, I agree that the appeal fails on the first issue (sculpture) and succeeds on
the second (justiciability of a claim for infringement of a foreign copyright). I
express no view about the application or scope of the doctrine of act of state in
relation to issues of validity of foreign intellectual property rights which (unlike
copyright) may be said to depend upon state grant.
