Storm Troopers, Copyright Infringement and a Bit of Clever Luck

Some months ago I wrote about a case I was handling involving an Italian company accused of infringing a U.S. copyright. The infringement alleged against my client occurred in Italy. According, my defense was that the U.S. courts had no jurisdiction over the claim because -- well, see earlier post ("An Italian Fling") for that analysis. The bottom line is they don't, and as a result, the plaintiff's million dollar claim became the parties' several thousand dollar, nuisance-value settlement.

This post deals with the flip side of that issue. Here, Lucasfilm Ltd. prevailed in a U.S. court against British national, Andrew Ainsworth, ruling that Mr. Ainsworth (one of the costume makers who made the storm trooper helmets used in its Star Wars films -- can you say "cool!"), replicated those helmets and sold them over the Internet to customers in the U.S. Mr. Ainsworth is nothing if not industrious -- and creative, and apparently rather clever.

Lucasfilm sued for the U.S. Based copyright infringement, and Mr. Ainsworth largely ignored them. The court entered a default judgment entered against him, and Mr. Ainsworth (ok, I'm imagining here) yawned. After all, Mr. Ainsworth lives in England and the judgment against him was way over here on the other side of the pond.

So back to my "flip side" comment. If a U.S. court does not have jurisdiction over foreign infringement (and again, remember the court here tagged Ainsworth for U.S. based infringement), does its domestic rulings have an international reach? As Lucasfilm discovered, apparently not.

Lucasfilm tried to enforce its U.S. judgment against Ainsworth in England, and the court there said "I should say not!" (or upper crust words to that effect). Now, a second British court has sided with the first, ruling that Mr. Ainsworth is safe from a U.S. default judgment entered against him. (Lucasfilm Ltd. & Ors v. Ainsworth & Anor, case number [2009] EWCA Civ 1328, in London's High Court of Justice, Court of Appeal (Civil Division).)

Hence my comment that Mr. Ainsworth is industrious, creative, and cleaver. Now, if this result was based on dumb luck rather than a calculated risk, I suppose we could substitute the adjective lucky.

In fairness, while Ainsworth's sales ran afoul of U.S. copyright law, they are legal under British laws. Under U.K. law, the storm trooper helmets are not entitled to the protections afforded works of art, because their purpose was primarily utilitarian. Moreover, the British court ruled that Ainsworth's online sales to U.S. customers do not place him under U.S. jurisdiction.

So for now, the Force is with Mr. Ainsworth. Lucasfilm may appeal to the U.K. Supreme Court, but doing so may carry as much probability of success as trying to destroy the the Deathstar with a bunch of X-Wing Fighters.



Jonathan Pink is a business litigation attorney with a specialty in intellectual property. He handles high stakes copyright, trademark and patent litigation for clients world wide. He is resident in Bryan Cave's Irvine (Orange County) and Los Angeles offices. He can be reached at 949-223-7173 or at jonathan.pink@bryancave.com.