Forget The Stormtrooper Costumes, Get Worried About UK Courts Saying They Can Judge US Copyright Law
from the the-dark-side dept
We’ve covered the legal battle between Andrew Ainsworth and George Lucas for a few years now. If you don’t recall, Ainsworth apparently designed the original stormtrooper costumes for Star Wars. He then tried to sell replicas that he made, but Lucas claimed copyright over the outfits. Ainsworth had been consistently winning, and that continued right up to the Supreme Court. The court has ruled in favor of Ainsworth, but the reasoning is a bit convoluted. First, the court still says that he violated US copyright laws — which we’ll discuss below. In this case, that really hasn’t been an issue, because earlier courts had ruled the same thing. However, it was deemed meaningless since he didn’t have sales in the US (and now refuses to sell to the US). As for the UK, the court said that as a costume, it gets a 15-year copyright (from the date it was marketed), meaning the copyright has now expired. I was unaware that the UK had special 15-year copyrights for certain items.
While most folks are focusing on the fact that Ainsworth “won,” the whole part about the UK Supreme Court feeling qualified to judge whether or not something is infringing in the US may turn out to be the bigger story:
The decision is important for business because it clears up a long-running controversy over whether U.K. courts can decide if non-U.K. copyrights have been infringed, said Nigel Jones, a lawyer at Linklaters LLP in London.
?That uncertainty has now gone,? Jones said. ?If you want to sue here, that is good news. If you want to avoid being sued here, it may be less welcome.?
Yes, get ready for copyright tourism lawsuits to go with libel tourism in the UK. In fact, others are now predicting “a flood of copyright lawsuits” are about to be filed in the UK. I’m still at a loss as to why the UK feels that it has any jurisdiction whatsoever concerning copyrights outside of its borders, but I fear that we’re going to see a lot of unfortunate lawsuits because of this.
Filed Under: copyright, jurisdiction, stormtroopers, uk
Comments on “Forget The Stormtrooper Costumes, Get Worried About UK Courts Saying They Can Judge US Copyright Law”
Only lawyers will win this game
?That uncertainty has now gone,? Jones said. ?If you want to sue here, that is good news. If you want to avoid being sued here, it may be less welcome.?
So win or lose, you have to pay Nigel Jones
In the NPR story this morning, I got the impression that the Judge was merely pointing out that although he lost his case in the US under US copyright laws, that has no bearing on the state of UK copyright and how the costume is fine under UK law.
At least that was the impression I got from the NPR report.
Re: Re:
Never mind. I must have misheard. From the AP article on NPR.org:
But the judges agreed with Lucasfilm’s lawyers ? and a lower court ? that Ainsworth had violated Lucas’s copyright in the United States by selling costumes there.
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Well, in the light of the US trying to apply US laws onto UK citizens, it would make sense that this works both ways.
O wait.. They are talking about an UK citizen and US laws. I’ve just reached a ‘wtf?’ moment.
There seems to be a lot of confusion over what, exactly, the court was saying here (even from the lawyers) – often strange things happen when cases in unusual areas make it to the Supreme Court. The idea seems to be that a UK court will not enforce a US patent, or even consider it, as patents are jurisdiction-specific due to being registered in that country. Similarly, a UK court will not like ruling on a matter concerning land or property in foreign countries.
However, the court seemed to feel that copyright is a natural thing, so isn’t bound to any one jurisdiction. The UK court is therefore happy to look into issues with copyright law – however the normal issues wrt jurisdiction apply, so the case must have a strong connection to the UK and the UK must be the most appropriate place for the case.
I think… over half the judgment was on this issue and it was rather complex. It may just be that they’re saying the US can apply their copyright law to a UK resident if they want to – but possibly only in the US.
Re: Re:
Having read and thought more…
I think they’re warning that if he continues to sell stuff in the US, thus breaking US copyright law, the UK court will be happy to make him stop (as he will be doing something in the UK that is having a direct, illegal effect in the US) but they will not stop him selling stuff here.
Of course, there’s nothing stopping Lucasfilm talking to the ICE, getting his .com domain name seized and trying to get him extradited… well, other than his legal team.
Re: Re: Re:
if you follow the links, you eventually get to:
http://www.wired.com/underwire/2008/04/star-wars-costu/
which states:
“While a California court found in favor of Lucasfilm in 2006, awarding $20 million in damages, the legal battle has spread overseas as the film company seeks enforcement of the ruling”
as long as he doesn’t sell in the US, they can’t touch him. I have a hard time seeing ICE seizing the domain if he doesn’t sell in the US. In fact, Lucas could do it on his own with the California ruling.
juridiction
I’m still at a loss as to why the UK feels that it has any jurisdiction whatsoever concerning copyrights outside of its borders
They are just following the US’s examples.
Re: juridiction
yep, we have been trying to say we can extend our laws to other countries, haven’t we.
Boy are the unintended consequences going to hit us really hard, really soon.
On an ironic note, what if this causes software patents to be invalidated since EU doesn’t recognize them? etc.
I hope not. Because in the United States, copyright is a limited statutory monopoly, and the “natural right” basis for copyright has been firmly rejected by our courts.
Curiously enough, I believe we got that idea from English courts.
I don’t think this is an issue of UK courts having jurisdiction in the US. I think it’s actually closer to being the other way around. My reading of this is that basically, if work A is copyrighted in the US and you go to the UK and copy it, UK law applies to the act of infringement, but whether the work is under copyright or not is determined by US law. (within certain bounds of course) So it would be some US laws having applicability in the UK. I don’t know if this is right, but that’s what it sounds like to me.
I’m still at a loss as to why the UK feels that it has any jurisdiction whatsoever concerning copyrights outside of its borders, but I fear that we’re going to see a lot of unfortunate lawsuits because of this.
I suspect if you read the actual judgement, there will be a long discussion where the courts points out exactly why they feel they have power to apply foreign laws, probably involving interpreting whatever laws govern what powers the UK courts have, with some clauses from international treaties.
Ultimately, it’s the UK courts and UK legislators who have to decide whether courts there can enforce foreign laws, not the country who’s laws are being enforced. Of course, their ability to ENFORCE the judgement against a defendant who isn’t based in the UK isn’t enhanced in any way. If a successful plaintiff wants to recover from a US-based defendant who has no assets in the UK, they’re still going to have to convince a US court to enforce the UK judgement.
Maybe someone better acquainted with how US courts decide whether to enforce foreign judgements can shed some light on whether or not this is likely to actually happen.
“I’m still at a loss as to why the UK feels that it has any jurisdiction whatsoever concerning copyrights outside of its borders, but I fear that we’re going to see a lot of unfortunate lawsuits because of this. “
Hey, if the US can do it, why couldn’t the UK?
The decision:
http://www.supremecourt.gov.uk/docs/UKSC_2010_0015_Judgment.pdf
Copyrights should only apply to creators
It shows just how wrong our copyrights laws are when the creator of something can get sued for copyright infringement. If we are really interested in protecting creators then copyrights should be non-transferable and only apply to creators. Creators then can choose to licence their works to others but the licencees would only have rights according to the contract and no special rights afforded to copyright owners.
No other “right” is transferable so why do we allow copyrights to be?
Re: Copyrights should only apply to creators
Interesting concept, much like the whole “who took the photo and gets the copyright for it” issue.
I can’t remember, did that “works for hire” issue get resolved one way or another?
Not overturning copyright, defining what the original copyright was for?
The way I read it, the reason Lucas was told (presumably by the original american court) to sue Mr Ainsworth through UK courts, is because Mr Ainsworth, or any of his business, is registered in the US, so they could rule copyright infringement but not enforce it.
The reason the copyright has been overturned is that the stormtrooper replica’s are considered marketing material (which only holds a 15 year copyright) and not a sculture or a piece of art (copyright for that being artist’s lifetime + 70 years I believe?).
Also, I believe I read there was nothing written and/or signed by either party regarding reproduction or copyrights, and that it was an “implied” copyright, which is where the type of copyright came under question.
So to sum up, I think it’s that the UK feels the copyright wasn’t made in the US, at no point was the firm that produced these pieces (of marketing – to cause further discussion) in or registered in the US. The deal to make these was made in the UK, I believe the artwork that inspired the ‘Stormtrooper’ design was also created in the UK by a UK national. Therefore, if it was art then the copyright stands for the original artist – but he’s not bringing the lawsuit – who’s from UK, therefore the copyright would be held in the UK. If it’s marketing material, as the court ruled, then the copyright has already expired (by a long shot).
Re: Not overturning copyright, defining what the original copyright was for?
Sorry – Mr Ainsworth business is *NOT* registered in the US, thinking quicker than I was typing – or possibly the other way around 🙂
Re: Not overturning copyright, defining what the original copyright was for?
Just to be clear, you do know that the guy who was sued was the original designer of the stormtrooper costume?
Re: Re: Not overturning copyright, defining what the original copyright was for?
From what I understood, there was a designer and a person who brought these designs to life. I was under the impression that the designer wanted nothing to do with this and it was the ‘builder’ who was being sued, though, as you will become aware, I’m VERY often mistaken and am quite happy to be corrected (preferably without abuse, though it can be tollerated)
Re: Re: Re: Not overturning copyright, defining what the original copyright was for?
See my comment at #47 about who conceived and executed the original idea. McQuarrie and Pemberton were not involved in the dispute.
I am at a loss why you would think that a potential lawsuit over a monkey picture that you published in the US would be decided based on UK law.
It’s amazing to watch you tapdance Mike.
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I am at a loss why you would think this story is about monkey pictures.
It’s amazing watching you make shit up, coward.
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I don’t think this story is about monkey pictures. What I think it is about is jurisdiction, and where a copyright is issued. Mike was more than willing to play the game when it’s to his benefit (monkey picture, example) but seems to find it sort of troubling when it gets used by the other side.
That’s all. No made up shit. That would be your job.
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Isn’t this article a continuance of the jurisdictional issue, rather than a refutation?
Also: Please illustrate where I have made anything up.
I’ll wait.
Re: Re: Re:2 Re:
You said: “Please illustrate where I have made anything up.”
Me: “I am at a loss why you would think this story is about monkey pictures”
Thanks for playing.
Re: Re: Re:3 Re:
‘Making things up’ does not mean what you think it means.
Thanks for making things up.
Re: Re: Re:4 Re:
What? You made shit up. I didn’t say this post was about Monkey pictures, and you know it. You just lied.
Caught you. Admit it and move on.
Re: Re: Re:5 Re:
“I am at a loss why you would think that a potential lawsuit over a monkey picture that you published in the US would be decided based on UK law.”
Your words, and your IP address, given that the symbol next to you Anonymous Coward is the same. So yes, you did say (incorrectly) that this post was about monkey pictures.
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You’re adorable!
Re: Re: Re:5 Re:
“Anonymous Coward, Jul 28th, 2011 @ 7:05am
I am at a loss why you would think that a potential lawsuit over a monkey picture that you published in the US would be decided based on UK law.
It’s amazing to watch you tapdance Mike.”
why, look at that, it’s got the same AC color, even
i love when people say stupid shit and then later on come along and deny it
Re: Re: Re:5 Re:
“Caught you. Admit it and move on.”
No, U
Re: Re:
Well, if you’d actually read the decision, you’d understand that the issue is much more complex than that. The ruling clearly states that therew was a violation of a copyright at the time of making, but NOT at the time of selling.
Lucasfilm sued Ainsworth’s company for $20m, when actual damages were more akin to the sub-$50,000 area. The original UK court explained that no, the US decision was not enforcable under UK law.
The Court of Appeal agreed with that decision, explaining the above and citing relevant caselaw (which is over 200 years old, as there is only one known similar case).
The Supreme Court of the United Kingdom gave the same reason; that Ainsworth may have violated US copyright law, but NOT UK copyright law, therefore the damage award is unenforcable over in the UK.
Also, I find it interesting that Linklaters are celebrating this, considering they deal in multi-jurisdictional cases as their speciality.
I thought it was just the court saying “you broke a US law, we are making note of that” But the act of braking US law in the UK was meaningless. He may have even agreed that he broke US law (he stopped doing business in the US) Thus solving the situation.
He may plead no contest to the US charges and argued that even if he broke US law that law did not apply.
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Ianal, but I think this is the clearest summation of the issue.
As for the US charges – his company was first sued in 2004 in California, hence the $20k damages award; but as he’s UK-based, it didn’t change anything, so Lucasfilm sued him here (and lost due to the props not being copyrightable).
I think the court is also suggesting that if he keeps selling stuff in the US (breaking US copyright law) the UK court can step in and stop him, but they won’t stop him doing stuff here.
Jurisdiction
I’m still at a loss as to why the UK feels that it has any jurisdiction whatsoever concerning copyrights outside of its borders,
I don’t think it does – in fact I think the judge was simply expressing an opionion about the status under US law – much like the US judge expressing an opinion about UK law in the Corel case.
There is no new enforcement here as far as I can see.
Personally think this case is a lesson in drawing proper contracts and making sure all the i’s are dotted and all the t’s are crossed.
I’d be surprised if this is the first time a court has taken the laws of another country into account when it comes to dealing with cross border business disputes. But given that we’re all part of the American economic empire anyway what’s all the fuss about?
Enforcement
They can decide a copyright case based on US law, but a UK court’s verdict isn’t enforceable in the US. A UK judge can’t seize property in the US, compel payment, or attach liens on US citizens.
So if a plaintiff sues in the UK, wins and gets a judgement, that’s great for him, but the defendant back in America doesn’t have to obey the orders of a British judge and pay the plaintiff money.
Reading the judgement itself seems to indicate that there is no jurisdictional precedent being set here. The judge states that this would be copyright infringement in the USA (and that it has been ruled as such in a USA court), but then says that the US ruling can’t be enforced in the UK, and separately that it wouldn’t be considered infringement anyway.
Not worried
I read the decision.
U.S. Corporations go overseas and obtain judgment from foreign courts.
It’s not a violation of the Neutrality Act–they didn’t drop bombs on anyone.
Overblown
To me, it just seems to be an acknowledgment of the fact that a decision was made by the US court. It does not seem to be a directive to lower UK courts that they have the ability to judge US law.
It may also be an effort to spell out why he cannot be extradited if ICE got cute and decided to try even after losing in UK court.
Re: Overblown
Overblown? On techdirt? Never!
May the Farce be with you.
The Berne Convention
I though that under the Berne Convention all copyrights were “international”.
Re: The Berne Convention
The term “international” is very imprecise.
But, under U.S. law, the Berne Convention is not a “self-executing treaty”
17 U.S.C. ? 104:
right, see here in the US, lucasfail got the props declared “works of art” he owns copyright for the life of the universe
but in the UK, since this guy did create them originally, the UK RIGHTLY declared them props, ie… costumes, not artwork and used “OMG” UK law to decide that copyright was expired and he had the RIGHT to sell them,
they recognized the fact in the US they had said he was guilty of violating copyright, as proof of the court case, but it had no bearing on UK law and no bearing on him, as long as he doesn’t sell any costumes to the US, which he now will not do
but it is fun to see mike dance around copyright when he doesn’t read and understand the court ruling just grabs his soapbox and starts getting “offended” by a another country ruling on US things they have no authority over, wheres your anger for the US pushing its laws on other countries??
lucasfail was trying to make the UK court enforce his US ruling
We have had Judges here in the USA cite laws from outside the USA in the making of their decisions not surprisingly UK Judges are now citing US law in decisions they make.
Remember in the USA a treaty is the law of the land, as per the US Constitution.
"special 15-year copyrights"
The industrial design right is not a “special 15-year copyright”, but an alternative exclusivity right for items which don’t qualify for copyright protection. It is almost identical to the US concept of a design patent, covering the ornamental aspects of a generally, but not purely, utilitarian item. In neither country are utilitarian objects covered by copyright. The only difference between jurisdictions is in what is judged to be utilitarian: It’s perfectly arguable either that a prop is mainly utilitarian, in that it is a tool for making movies, or that it has no utility at all (i.e. is not an effective helmet). Nobody is arguing that the helmet has no ornamental features. If that was true, it wouldn’t qualify for the design right either.
Clarification of the issues
Several points need straightening out here:
1. Andrew Ainsworth is not and never claimed to be the owner of any copyright in the design of the helmet. The original idea came from George Lucas and this was worked up into a painting by an artist named Ralph McQuarrie, and this in turn was made into a three-dimensional clay model by Mr Nick Pemberton (a freelance scenic artist and prop-maker). This clay model in turn was used with some slight modification by Andrew Ainsworth to vacuum-form the plastic helmets. At no stage was it disputed that, if copyright in the helmet itself did exist, then Mr Lucas would have been the beneficial owner of that copyright.
2. The copyright issue turned on the difference between US and UK law over what was copyrightable. If the helmet was found to be a ‘work of sculpture’ then it could be protected under UK copyright law. If not then it was probably protected under the UK concept of Design Right which is roughly similar to the US Design Patent. Design Right has the shorter term of protection and as this term had expired by the time Lucasfilm brought the action, there could be no claim under Design Right legislation. The British court found that the helmet was not a work of sculpture; this decision was confirmed by UK Court of Appeal and finally by the UK Supreme Court.
3. The argument about the jurisdiction of the UK courts went differently. As has been said, George Lucas obtained a default judgment in a Californian Court for infringement under US law and was awarded $20M damages. Andrew Ainsworth had no assets in the US so Lucas was unable to get his damages. Lucas therefore came to the UK courts to seek a new judgment for damages. While the court felt it was able decide about copyright under UK law, it considered that it had no power to hear a claim of infringement under US law. The Court of Appeal agreed with the trial judge. The Supreme Court disagreed on this point and said that as the court had in personam jurisdiction over Mr Ainsworth, it could hear a claim based on US law. This decision does not mean that the UK courts claim any jurisdiction over American citizens, but rather that US citizens may bring a claim against a UK citizen in the UK courts over copyright infringement. This latter concept should not be too hard to grasp if you live in the USA because it is not dissimilar to the Diversity Jurisdiction concept where although each state may have slightly differing statutes, an individual resident in New Jersey (for example) can bring a civil suit against a resident of California in a Californian court.
Comment: It remains to be seen what, if anything, Lucasfilm will do now to try a recover damages from Ainsworth for earlier sales of the helmet in the US. It seems unlikely that a UK court would award damages approaching the $20M awarded by the Californian court.
No such thing as "UK court"
Please stop saying UK courts. There is mo such thing, despite the English thinking they run the whole of the British Isles.
This was an English court decision. Scotland has always had a completely separate legal system (based on very different principles). Northern Ireland has a distinct legal system, too.
@MetalSamurai.
While I agree that Scotland does have a separate legal system, the Copyright, Designs and Patents Act 1988 applies throughout the UK and therefore decisions in higher courts are binding on the Scottish courts. The UK Supreme Court is just that: the topmost court in the entire judiciary for the UK, just as SCOTUS is the USA.