Foreign Intellectual Property: Narrowing the effect of Tyburn’s case

A previous post discussed the issue of whether (as a matter of private international law) a domestic Court could hear matters connected to the protection of foreign intellectual property rights. A recent decision of Mann J. in the High Court (Chancery Division) – Lucasfilm v. Ainsworth, [2009] F.S.R. 2 – appears to have held that it can.

I had mentioned that the decision in Tyburn’s case held that domestic Courts do not have jurisdiction over claims related to foreign intellectual property. Tyburn was based on the extension of the so-called “Mocambique” principle of private international law, which states that domestic Courts have no jurisdiction over suits pertaining to foreign land. The previous post described Tyburn in the following words:

“A case which highlights the problems posed in this area is Tyburn Productions v. Conan Doyle [1991] Ch 75. The plaintiff was a British company which wished to distribute a Sherlock Holmes movie in the United States. The defendant was the only surviving child of Sir Arthur Conan Doyle. The plaintiff was concerned that the defendant would make allegations that he was the sole copyright-holder in relation to Sherlock Holmes. Therefore, a declaration was sought from the British Courts that the defendant had no such copyright. It was held that the British Courts had no jurisdiction in the matter, as questions relating to the validity of intellectual property rights were local actions which could only be adjudicated in the place in respect of which the relief was sought.”

In Lucasfilm, the Court distinguished Tyburn on the ground that there was a distinction between actions going to the validity of a foreign right and actions which assume validity and are merely for appropriate relief. The rule in Tyburn was confined to the former category. The following principles were said to emerge from the cases after Tyburn:

• There is a tendency to move away from a strict and absolute application of the Moçambique rule to all intellectual property cases, and in particular copyright cases.

• There is a distinction between title and validity on the one hand and trespass/infringement on the other, which would justify the conclusion that infringement of foreign copyright should be justiciable in domestic Courts.

• The private international law rule (if any) which underpins the extent to which a domestic Court should not embark on a consideration of aspects of intellectual property rights is a policy rule which depends on the specific facts of each case, and is not a rule which takes away jurisdiction as such.

The Court therefore concluded:

I am therefore prepared to conclude that an English court can, and in an appropriate case should, determine at least questions of infringement of foreign copyright cases. Those cases will include cases where subsistence is not in issue. I would not, however, hold that questions of subsistence can never be decided here. In land cases incidental questions of title can apparently now be considered. I can see no reason why the same should not apply to copyright.

It would therefore seem that the rule of Tyburn is confined to its specific facts and is not being extended to other areas.