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Enforcing foreign copyrights in England: Lucasfilm Limited v Ainsworth, Supreme Court judgment on 27 July 2011

    • Intellectual property
    • Technology - Articles
    • Technology, Media and Telecoms - Technology


    What? The Supreme Court has recently been asked to decide whether judgments on infringements of foreign copyrights can be enforced by courts in England.

    So what? This case may have paved the way for claims for infringement of foreign copyrights to be enforced in England where the defendant has a ‘real personal link’ to England.

    Lucasfilm Ltd is the owner of a lucrative licensing business for models of the iconic Stormtroopers used in the Star Wars films and related memorabilia. Lucasfilm Ltd brought a claim in the United States District Court in California against Mr Ainsworth (a member of the team responsible for creating the Stormtrooper helmet) for infringement of its copyright in these items through creating replica Stormtrooper helmets for sale.

    Mr Ainsworth lost the case, making him liable to pay $20,000,000 to Lucasfilms Ltd. Lucasfilm Ltd turned to the English courts to enforce the judgment as Mr Ainsworth, being domiciled in the UK, held no assets in the United States.

    Intellectual property interests held in European member states already hold a privileged position. The courts in every member state must provide effective remedies and penalties to ensure the enforcement of intellectual property rights even when they originate from a different European country.

    Lucasfilm Ltd, despite losing its claim in the Supreme Court for different reasons, has potentially broadened the scope for enforcement of non-EU copyrights to cover cases where the defendant has a ‘real personal link’ to England. What English courts are expected to accept as being a ‘real personal link’ are those requirements already established under European law in the Brussels I Regulation (where the defendant is domiciled or, if different, where the infringement took place, or where the defendants holds their principal place of business).

    Although holders of non-EU copyrights may now be able to bring new infringement proceedings in an English court (and so be more likely to recover damages awarded to them if the defendant holds assets in this country against which the judgment can be enforced), the Lucasfilm judgment provides that the infringement claim will still be judged according to English law. This falls a long way short of the current European standard where the courts will simply enforce a judgment given in another European member state. However, it may mean that claimants are able to extend the scope of copyright infringement proceedings brought in England to encompass acts of infringement committed in other countries.

    According to the Supreme Court, claimants may also be able to bring proceedings for infringement of other intellectual property rights with the exception of rights granted by a foreign state (for example, foreign patents). This judgment will therefore be of interest to holders of intellectual property rights as it may increase the litigation options open to them and potentially make it easier to recover damages from a person infringing their rights who has a real personal link to England.