Will the Force be with Star Wars creator? George Lucas strikes back

A long time ago in a galaxy far, far away...Andrew Ainsworth and his business Shepperton Design Studios produced storm trooper helmets, armour and Luke Skywalker’s X-Wing helmet for Star Wars.

Ainsworth decided to sell imitation helmets and other related products into the US and Lucasfilm, mirroring the plot of Star Wars, has been trying to quell his rebellion by taking legal action.

Unfortunately for Lucasfilm, its design rights in the helmets and armour have expired so it cannot rely on that right, which would have protected its rights and been easier to prove than a claim for infringement of copyright, which it is currently pursuing in the Supreme Court.

If Lucasfilm is successful, it can exploit the helmets and armour for the lifetime of the author plus 70 years while stopping any competitors from doing likewise. That means a lot more Star Wars merchandise and profits for the Lucas empire!

The Star Wars case highlights the complexity of the design rights system in the UK and Europe.

Design rights protect three dimensional objects. A designer has the choice of registering or not registering their designs in the UK or Europe if their designs meet certain criteria. It is important that professional advice is taken as early as possible to decide which route is most suited to that design. The choice may depend on the nature of the designs, budgets and business strategy.

The registered system in the UK and Europe allows designers to take positive action against infringers rather than having to wait for an infringement before taking action. Registered designs are also protected for a longer period (25 years) than if they were unregistered (3 years for Europe and 15 years for the UK) giving owners longer to exploit them for financial gain.

The remaining right, as seen in the Star Wars case, is protection under copyright law. This is harder to obtain as here dimensional objects can only be protected directly as artistic works (sculptures) or indirectly through the copyright protection in the document which set out the three dimensional design . The benefits of copyright protection are that it is automatic, there are no costs and it lasts for the life of the author plus 70 years.

Lucasfilm’s last-ditch legal appeal is backed by major Hollywood figures such as Steven Spielberg and James Cameron with the finest legal team money can buy. It will be interesting to see if the Supreme Court reverses both previous decisions and finds that Lucasfilm’s copyright was infringed.

The case shows the value of designs to a business, some 30 years later. The design rights system can appear muddled, but with sound advice these problems can be overcome to identify the appropriate protection.

Written by Sean O'Riordan, a Solicitor in the Nelsons Commerce and Technology group. To find out more about our Commerce & Technology group, click here.