Return of the Judgement - May the Law be with you

On July 27 2011, judgement was handed down by the Supreme Court in the case of Lucasfilm Limited (and others) v Andrew Ainsworth (and another). That judgement marked a further stage in a lengthy legal battle which had spanned two continents and six years of argument. The full judgement can be found at http://www.supremecourt.gov.uk/decided-cases/docs/UKSC_2010_0015_Judgment.pdf  

The dispute arose out of intellectual property rights in various items that had been created for and used within the first Star Wars film, focusing on the protection that the law would afford from unauthorised copying of the 'Imperial Stormtrooper' helmet.

To understand the dispute, first of all we must go back to the 1970s. Between 1974 and 1976 George Lucas' vision of the Stormtroopers was given visual and then physical manifestation through drawings, clay models and finally plastic vacuum moulded helmets. Whilst the drawings and clay models were created by a Mr McQuarrie and Mr Pemberton respectively, it was Mr Ainsworth who made first the prototype vacuum moulded helmets and then the 50 helmets that were used in the Star Wars film.

In 2004, using the moulds that he had retained from that time, Mr Ainsworth made versions of the Stormtrooper helmet and armour which he sold to the public in both the UK and the United States. In 2005, Lucasfilm sued Mr Ainsworth for copyright infringement in the US and obtained a default judgement of $20million against him in 2006.

Following that action, Lucasfilm issued proceedings within the UK against Mr Ainsworth claiming breach of copyright, enforcement of the judgement obtained within the US (which had not been paid) and also, claims under US copyright law.

The action was heard first of all in the High Court of Justice, then the Court of Appeal and most recently in the Supreme Court. By the time the case came to be heard by the Supreme Court, the case proceeded on the basis that any intellectual property rights in the Stormtrooper helmets vested in Lucasfilm (Mr Ainsworth's appeal in that respect having previously been dismissed by the Court of Appeal who refused to allow him to argue this before the Supreme Court).

One of the core questions to be decided within the litigation was whether or not the Stormtrooper helmet was protected by UK copyright law. It was argued on behalf of Lucasfilm that the Stormtrooper Helmet was a sculpture and therefore an artistic work for the purposes of section 4(1) of the Copyright Design and Patent Act 1988. If the Stormtrooper helmet was a sculpture then Lucasfilm could prevent its unauthorised reproduction under section 17 CDPA.

At all three judicial levels it was held that the Stormtrooper helmet was not a sculpture and so was not afforded copyright protection. Emphasis was placed on the fact that the Stormtrooper helmet was part of the physical depiction of the character of the Stormtroopers and so part of the character portrayal. The Stormtrooper helmets were not viewed as standalone items but as part of the film as a whole, to contribute to 'the artistic effect of the film as a film.' The Stormtrooper helmets were therefore utilitarian and copyright protection as an artistic work was not available to prevent their reproduction.

The Imperial Stormtrooper is an instantly recognisable image within popular culture, a fact that has been exploited by the grant of licenses by Lucasfilm to permit third parties to make models of them. The case might therefore be seen to have implications as to the extent to which a successful film can be exploited by way of film related merchandise, within the UK at least.

However........ the lesser reported part of the judgement of the Supreme Court related to whether courts within the UK could decide whether there had been an infringement of US Copyright law by an individual domiciled within the UK. Overturning the Court of Appeal's decision in this regard, the Supreme Court held that it could.

As regards copyright claims at least therefore, the judgement paves the way for the UK courts to decide whether there has been an infringement of intellectual property rights that accrue as a result of foreign law. Where the scope of these rights are wider than within the UK, they will afford greater protection to rights holders.

In view of this, the victory for Mr Ainsworth was tainted. When before the High Court, it had been held that Mr Ainsworth had infringed US copyright. This element of the decision was not appealed and so Mr Ainsworth will remain liable in respect of infringement of US copyright. 

Written by Emma Ward, a solicitor specialising in Intellectual Property matters.

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