What Is a "Sculpture" for Copyright Purposes? Can an Action Be Brought for the Infringement of a Foreign Copyright?
In an article published in March 2010, we commented on a decision of the English Court of Appeal which considered the meaning of the term "sculpture" in a copyright context as well as a conflict of law issue.
During the course of making the first Star Wars film, Lucas Film Limited ("Lucas Film") had created for it paintings and drawings showing scenes that included storm troopers and their helmets and armour. Lucas Film asked a designer who was a UK national to develop a final version of the storm trooper helmet and armour in plastic.
After the film was made, the designer kept the moulds that he used to make the helmets and the armour. In 2004, the designer set up a website from which he sold copies of the helmet and the armour he had created for the film. It was emphasized that the replicas were made from the original moulds. Some of the replicas were sold to customers located in the United States. The server was located in the United Kingdom but the price for the products was quoted in US dollars.
When Lucas Film became aware of the designer’s activities, it initiated an action in California for infringement of copyright and other related relief. The designer unsuccessfully challenged the Court’s jurisdiction. Eventually, a US default judgment was obtained for $10 million dollars. Subsequently, proceedings were brought in the UK to enforce the US copyright and the default judgment.
Under US law, the designer’s actions were an infringement of the US copyrights owned by Lucas Film. However, under UK law, the helmet and armour would only be protected if they were "sculptures" within the meaning of the UK Copyright Act.
The Canadian Copyright Act contains a similar concept relating to "sculptures", but the exemption from infringement applies to useful articles which are defined to mean articles, including models, which have a utilitarian function, that is, a function other than merely serving as a substrate or carrier for artistic matter. Most sculptures will not likely be considered to be a "useful article."
Meaning of "Sculpture"
The Court said that a precise definition of the term was not possible but agreed with the Trial Judge’s list of considerations, which were described as signposts to the right answer. It is not possible or wise to attempt to devise a comprehensive or exclusive definition of "sculpture" sufficient to determine the issue in any given case.
The list of considerations developed by the Trial Judge was as follows:
1. Some regard should be made to the normal use of the word "sculpture."
2. The concept can be applicable to things beyond what one would normally expect to find in an art gallery.
3. It is inappropriate to stray too far from what would normally be regarded as sculpture.
4. No judgment should be made about artistic worth.
5. Not every three dimensional representation of a concept can be regarded as a sculpture.
6. It is of the essence of a sculpture that it should have, as part of its purpose, a visual appeal in the sense that it may be enjoyed for that purpose
alone, whether or not it might have another purpose. The purpose is that of the creator. An artist (in the realm of the visual arts) creates something because it has visual appeal which he wishes to be enjoyed.
7. The fact that the object has some other use does not necessarily disqualify it from being a sculpture, but it still has to have the intrinsic quality of being intended to be enjoyed as a visual thing. For example, a pile of bricks, temporarily on display at the Tate Modern for 2 weeks, is plainly capable of being a sculpture. The identical pile of bricks dumped at the end of a homeowner’s driveway for 2 weeks preparatory to a building project is equally plainly not. The difference is determined in having regard to purpose. One is created by the hand of an artist, for artistic purposes, and the other is created by a builder, for building purposes.
8. The process of fabrication is relevant but not determinative. There is no reason why a purely functional item, not intended to be decorative, should be treated as a sculpture simply because it is, for example, carved out of wood or stone.
After applying these considerations, it was decided that the helmet and armour were primarily utilitarian and lacked artistic purpose and therefore, not protected.
On appeal to the UK Supreme Court on this issue, the judgements of the Trial Judge and the Court of Appeal were upheld very largely for the reasons that they gave as noted above. It was said that the film was the work of art that had been created. The helmet was utilitarian in the sense that it was an element in the process of the production of the film.
The Enforcement of Foreign Intellectual Property Law
The Court of Appeal said that foreign intellectual property rights should be treated in the same fashion as claims concerning foreign property. Rights concerning foreign intellectual property are strictly territorial in nature and courts following the common law tradition should decline to entertain actions concerning their enforcement. As a result, the Court refused to enforce US copyrights owned by Lucas Films. The Court also refused to enforce the US judgment.
On appeal, the UK Supreme Court did not agree and allowed Lucas Film to continue the proceedings it had brought in the UK to enforce the US copyrights. One of the primary issues was applicability of the first limb of the rule in Phillips v Eyre. Under this rule, an act done abroad was only actionable in England if it was actionable as a tort according to English law; that is, was an act, which if done in England, would be a tort. Also in issue was application of the Moçambique rule and the act of state doctrine. The rule and doctrine relate to the concept that the Courts of one country will not sit in judgment on the acts of the government of another done within its own territory.
After a detailed review of the application of these principles it was said that the rule in Phillips v Eyre had been abolished by statute in the U.K. In addition, while the Moçambique rule and the act of state doctrine could apply to trade-marks and patents that depend on state grant, they did not apply to copyright since it subsists automatically and there was no need to consider the validity of the acts of foreign government officials.
As a result of this decision, the law of the UK on the enforcement of foreign copyright is now similar to the law of the US concerning claims based on foreign copyright.
The decision has confirmed the restatement of the law concerning sculptures and may have a significant impact concerning claims in Canada based on the infringement of foreign intellectual property. While the legislative background in Canada is different, the impact of this judgement as well as what it says about US law will be persuasive.