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Date: 29 July 2011

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IP: Supreme Court rules on two key copyright cases

In a bumper week for important IP decisions, the Supreme Court has made two significant rulings in the Lucasfilm case:  (i) it has reduced the extent to which designers of three-dimensional (3-D) products can rely on copyright to protect their designs and (ii) it has confirmed that you can sue for infringement of a foreign copyright in the UK.

3-D Works

Most 3-D designs which are both functional and aesthetically pleasing are only protected by design rights, which usually only last for between three and ten years, or for a maxiumum of 25 years if a registered design is obtained.  For older designs, IP lawyers have tried, sometimes successfully, to claim that the articles were protected by copyright as sculptures, engravings or works of artistic craftsmanship.  This is because copyright can last for up to 70 years after the designer's death. 

However, the Supreme Court rejected the possibility of the Stormtrooper helmets, as they appeared in the first Star Wars film, from being protected by copyright as works of sculpture.  The Court said that the helmets were "utilitarian", being part of the process of production of the film, and it would not accord with the normal use of language to call them "sculptures". This means that the man who made the helmets for use in the film can continue to sell them to the UK public. 

The decision makes it even more important for businesses to register their designs as Community Registered Designs.

Foreign IP infringements in the UK

On a separate issue, the Court also ruled that a UK Court could decide issues of infringement of foreign copyright (in this case, US copyright).  In fact, it should now be possible to sue for most foreign IP infringements in the UK (assuming that the Defendant is based in the UK), unless: (a)  the IP right in question is a registered trade mark, registered design or patent and (b) the validity of that right is in issue.

This will make it possible for IP disputes covering more than one country to all be decided in one case in the UK, which will save the considerable expense of taking concurrent proceedings in several countries.

For further information on either issue please contact Simon Clark.

 

Contact us

Simon Clark

Partner, Intellectual Property  simon.clark@blplaw.com