Newsflash: Star Wars IV: A New Hope for Intellectual Property Infringements

Infringements of foreign intellectual property may now be determined by the courts in England and Wales accordingly to a UK Supreme Court decision on 27 July 2011.   This is the most significant conclusion of the long-running litigation between Lucasfilm Inc. and Mr Andrew Ainsworth, the Star Wars litigation.  The case related to the manufacture, in 2004, of a number of replica Storm Trooper helmets.  The helmets were made and sold by one of the team originally involved in creating the helmets for the 1977 film, Star Wars.   The Supreme Court’s Decision   The Supreme Court made some interest observations as to whether a helmet could be a sculpture for the purposes of UK copyright legislation. (In this case it wasn’t!)   However, the part of the decision with the greatest impact for businesses will be the decision as to whether the court of England and Wales could consider if US copyright had been infringed.   Justiciability of Foreign Intellectual Property Rights in the UK   English courts have traditionally shied away from considering issues of foreign intellectual property infringements.  This reticence was partly driven by policy concerns relating to the independence and sovereignty of states because the award of the intellectual property right, such as a patent, was an act of a foreign government and this could not be reviewed by another government.   However, as a result of European legislation it has for many years been clear that in certain cases the courts of EU member states have been able to consider infringement of other EU member state intellectual property rights.  So for example in Pearce v. Ove Arup Partnership Ltd & Ors [2001] EWHC Ch 455, the English courts held that they had jurisidiction to consider claims of infringement by a UK individual of Dutch copyright.   This decision has taken the EU position and extended it such that a claim for infringement of US copyright can be heard in the UK courts.   There are limits to the court’s position.  The court must have personal jurisdiction over the defendant, for example, because the defendant’s home or where a company, its registered office, is in England and Wales.  Secondly, in the European case, the court will not consider issues of validity of the intellectual property.  It is possible that similar limitations will apply when the validity of foreign (non-EU) intellectual property is challenged.   Nevertheless the Supreme Court’s pronouncements are radical and far reaching and give the Claimants the option of choosing the English courts as the forum for their disputes in cases where they couldn’t previousl