Lucasfilm Limited v Ainsworth [2011] UKSC 39.
The facts: Andrew Ainsworth was a prop-designer engaged to produce the iconic Imperial Stormtrooper costumes for the first Star Wars movie in 1977. More recently in 2004, Mr Ainsworth (domiciled in the UK) started making replicas of the Stormtrooper helmet (using his original tools) which he proceeded to sell worldwide over the internet.
To cut a long story short – Lucasfilm sued Ainsworth and the battle ultimately ended up before the English Supreme Court.
It was accepted that Ainsworth had violated Lucasfilm’s US copyright by selling the helmets there.
The question: can an English court entertain and enforce a claim for infringement of an American copyright?
The answer: Yes. Relying on the rule in British South Africa Co v Companhia de Moçambique [1893] AC 602 (namely, that English courts have no jurisdiction to entertain actions for damages for infringement of property rights in foreign land), the Court of Appeal below had come to the conclusion that claims for infringement of foreign copyright were not justiciable in England.
The Supreme Court however adopted the view that much of the underpinning of theMoçambique rule (and the decision in Potter v Broken Hill Pty Co Ltd [1905] VLR 612, (1906) 3 CLR 479 which had extended the rule to patents) had been eroded and held that all that remained of the Moçambique rule (except to the extent 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. The Supreme Court came 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.”
The bottom line: provided that the defendant is domiciled in the UK, a rights owner can sue in the UK for infringement of copyright (and potentially other unregistered intellectual property rights) which occurred in foreign countries. May the ‘force’ be with all UK-domiciled defendants!
On the plus side, it makes it easier to sue where you have infringements in multiple jurisdictions. The down side – ‘forum-shopping’ becomes a temptation.
This case highlights the potential for conflict of intellectual property policies of different countries.
A short time ago in a jurisdiction not so far away….
Last year the South African Supreme Court of Appeal (SCA) confirmed the territoriality of jurisdiction in Gallo Africa Ltd v Sting Music (Pty) Ltd 2010 (6) SA 329 (SCA).
The facts: Gallo sued Sting for copyright infringement in respect of a musical known as ‘Umoja’, which Sting allegedly performed, made recordings and cinematograph films of, and broadcasted, in South Africa and nineteen other countries.
In relation to the alleged infringement in the other jurisdictions, Gallo did not rely on our Copyright Act but on the respective copyright laws for each of those jurisdictions.
Sting filed an exception to the summons stating that proceedings for copyright infringement instituted in a South African court may only be founded on the provisions of the South African Copyright Act.
The question: can a South African court entertain and enforce a claim for infringement of a foreign copyright?
The answer: No.
The SCA confirmed that registered IP rights (such as patents and trade marks) and unregistered rights (such as copyright) are territorial in nature.
The Court looked at the general principles relating to jurisdiction in respect of movable and immovable incorporeals and concluded that:
(1) IP rights, including copyright, are immovable incorporeals; and
(2) in terms of the principle accepted in Eilon v Eilon 1965 (1) SA 703 (A) (namely that South African courts do not have jurisdiction to decide claims in respect of property located outside of South Africa), local courts do not have jurisdiction in respect of foreign copyright issues.
The SCA referred to the judgment of the Court of Appeal in Lucasfilm and noted with approval that the Court of Appeal also took into account practical considerations as to why a local court should not exercise jurisdiction over foreign copyright, which considerations include the fact that (1) enforcement may result in a clash of IP policies of different countries; (2) extraterritorial jurisdiction involves a restraint on actions in another country, which interference a foreign judge should avoid; (3) it will create too much room for forum-shopping; and (4) international agreements on copyright had refrained from creating a regime for the international litigation of copyright by a national court, a system which could have been created if so desired, but was not.
The bottom line: South African courts do not have jurisdiction in respect of foreign copyright issues (even if the defendant is domiciled in South Africa).
The SCA judgment in Gallo preceded the decision of the UK Supreme Court in Lucasfilm. Does it matter? Was our SCA wrong in saying that South African courts can hand down judgments only on local infringements? We think the SCA was and still is correct. Gallo should pursue its claims in the foreign jurisdictions where the infringements took place. Has the English court gone on a R 2 Detour?
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