Friday, July 29, 2011

Oh, to be in England - More Copyright Tourism on the Way?

 England has long been well known (some might rather say “notorious”) for its welcoming attitude towards defamation actions that would have less chance of success in other fora and where the defendant may have assets.. For example, because the USA has its famous “absence of malice” defence based upon the landmark New York Times v. Sullivan decision, which often makes libel actions by public figures much less likely to succeed in the USA than the UK, there has been a great increase of “libel tourism” in the UK courts - much to the delight of the UK defamation bar, one can assume.

George Lucas may have just brought about a similar result, even if for rather different reasons, for UK copyright lawyers. The UK Supreme Court (which was formerly known by that most illustrious of legal trademarks as the “House of Lords”) has just rendered an extraordinarily important judgment in Lucas v. Ainsworth [2011] UKSC 39

There are two parts to this decision. The first - which is getting all the attention - is the bad news for Lucas that the famous Star Wars Imperial Stormtrooper helmet is not protected by copyright in England because it is not a work of “sculpture.”  We would likely come to a similar conclusion in Canada, but through a very different reasoning process. S. 64 of Canada’s Copyright Act would appear to deal neatly with the issue.

The UK Supreme Court made some interesting observations on this issue, i.e.
    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.
And, in speaking of different periods of protection afforded to “different classes of work”:
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.
    (Emphasis added)

The emphasized statement may be of interest in Canada.

However, the good news for Lucas and the UK copyright bar is that Lucas can bring an action in the UK against a UK resident for infringement of US and not UK copyright law.

Thus, it would appear that a UK resident could be enjoined and found liable  in the UK by a UK court for activity in the UK that may be legal in the UK but which would result in copyright infringement in another country “ if the acts are anticipated to achieve fruition in another country”. The essential conclusion on the case is worth quoting in full:
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.
This part of the decision goes through a lot of UK common law, statute law, and EU law. Whether this decision might ultimately be followed in Canada is an interesting and potentially very important question - which I will leave for another day.

However, a couple of things are very clear. The long arm of US law just got a lot longer - with the considerable help of the UK Supreme Court. And UK copyright lawyers can expect a lot of new business.

I am delighted for my fellow feline followers at the IPKat, who as often is the case, brought this to my attention.


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