Author: Eddie Powell
In 1976 a struggling art school graduate called Andrew Ainsworth was asked to give a visual dimension to the drawings and paintings of an artist, Ralph McQuarrie, which had been drawn to give effect to George Lucas’s Imperial Stormtroopers, one of the most memorable images of the Star Wars films. Ainsworth produced several prototype vacuum moulded helmets and, once approved by George Lucas, Ainsworth went on to make 50 copies of the helmets for use in the film.
Time travelling forward to 2002 which unfortunately saw Ainsworth struggling to pay his children’s school fees, Ainsworth decided to sell one of the original helmets and some additional accessories. The helmet fetched £60,000 at Christies. Realising that the helmet still attracted a significant amount of marketing potential, Ainsworth used his original tools to make replicas of the Imperial Stormtrooper helmet and armour for sale to the public. He sold between $8,000 to $30,000 of goods in the United States. Sales were principally made through an internet website through advertisers, but were also sold directly to customers in the US. In other instances, he also e‑mailed the existing customers directly.
Lucasfilm Limited (and two other companies owned by George Lucas) owns the copyrights in the artistic works created for the Star Wars films. As we all know, the Star Wars films continue to be a huge commercial success and Lucasfilm has created a lucrative merchandising empire, which has included licensing models of the Imperial Stormtroopers. Upon hearing about Ainsworth’s little side business, Lucas filed an action for copyright infringement in California.
Lucasfilm obtained a judgment for trademark and copyright infringement against Ainsworth for the sum of US$20,000,000 from the US court. Lucasfilm then commenced proceedings in the English High Court, which included a claim for infringement of English copyright and claims under US copyright law. Lucasfilm claimed that:
In order to be successful, Lucasfilm had to prove that the models used by Ainsworth to create the helmet were classed as either a “sculpture” or a “work of artistic craftsmanship” under CDPA (the relevance of which is explained below).
The importance of determining whether or not the helmet was in fact a sculpture under the CDPA was that it would have enabled Lucasfilm to obtain the full term of protection for an artistic work, being 70 years from the year of death of the creator. If the helmet was not a sculpture, the copyright protection would be limited to McQuarrie’s original graphic works. The period of protection would therefore be 15 years from the first marketing of the reproduction, a period which had long expired by the time of the action.
The First Rounds
The High Court in 2008 held that the helmets could not be considered as a sculpture or work of artistic craftsmanship. The court also held that the US judgment could not be enforced in the UK, as Ainsworth had no presence in the US so as to give the US courts jurisdiction over him, However, the court accepted that the English courts had jurisdiction to consider Lucasfilm’s US copyright claim.
In the Court of Appeal, Lucasfilm appealed the High Court’s findings that the helmet was not a sculpture and Ainsworth cross appealed the decision to enforce Lucasfilm’s US copyright. The Court of Appeal agreed that the helmets were no different to any real helmets used in films and likened the helmet to a prop of a soldier’s helmet. As regards the US judgment, the Court of Appeal agreed with the High Court. Ainsworth did not have a sufficient presence in the US, and the simple sale of goods from one country to another by internet trading did not mean Ainsworth had a presence in the US.
The Court of Appeal also had to determine whether the English courts could determine Lucasfilm’s US copyright claim. Did the English court have jurisdiction over a person living in England for a copyright infringement committed outside the EU in breach of the relevant copyright laws of that country? The court held that it did not have jurisdiction.
The Supreme Court’s decision
Lucasfilm appealed to the Supreme Court (its first IP case since its rebrand from the House of Lords). By this point Lucasfilm had abandoned its attempts to enforce the US judgment in the UK and instead concentrated on arguing that the helmet constituted a sculpture under UK copyright law and that the UK courts could enforce its US copyright.
Lucasfilm argued that the helmet was a sculpture as it had no practical function at all and that its purpose was wholly artistic and that “the helmet did not exist in order to keep their wearers warm or decent or to protect them from injury in an inter-planetary war“. The court rejected this argument and held that “it was the Star Wars film that was the work of art that Mr Lucas and his companies created. The helmet was utilitarian in the sense that it was an element in the process of production of the film“. The helmet was a prop just as much as a replica of a World War II helmet for a historical film would be considered a prop, and so did not qualify for extended copyright protection as a sculpture.
Lucasfilm’s appeal was therefore dismissed insofar as it was based on the English copyright law.
As to the second issue, the enforcement of US copyright in the UK, the general position was that the English courts should not exercise jurisdiction in claims for infringement of foreign intellectual property rights. The Supreme Court held, however, that foreign copyright infringement claims could be entertained by the English courts if there was no dispute as to whether or not the defendant was personally in the jurisdiction. Whilst Ainsworth was not within the jurisdiction of the US courts, there was no argument as to his presence in the UK.
The Supreme Court also noted that there was a fundamental distinction between intellectual property claims which involved the registration or validity of intellectual property rights which are required to be deposited or registered (and where the courts will have exclusive jurisdiction, irrespective of the defendant’s domicile) such as patents or registered trade marks, and those which are not, such as copyright. The court, therefore, reasserted the modern trend which is in favour of the enforcement of foreign intellectual property rights.
Ainsworth could therefore be sued for breach of a US copyright in the UK courts.
The debate about sculptures is of pretty limited application outside this case, but the decision that the UK courts could enforce US copyright is a big step. It will be of limited scope for cases involving registered rights, such as patents and registered trade marks, but for industries which rely on copyright, such as computer software and the entertainment sector, this could be important.
For further advice on this topic, please contact Eddie Powell on 020 3036 7362.