The long-running dispute over copyright in Star Wars Stormtrooper costumes has recently concluded before the Supreme Court of England and Wales, resulting in success for British propmaker Ainsworth.
It is common knowledge that the Star Wars storyline and characters are the brainchild of George Lucas, who created the concept of Imperial Stormtroopers dressed in “fascist white-armoured suits”. This concept was given visual expression in drawings and paintings by artist Ralph McQuarrie and subsequently 3D form by Mr Pemberton, who made a clay model of the helmet. Mr Ainsworth was given two drawings and a clay model and asked to make several moulds for prototype helmets. Once Mr Lucas had approved the prototype, Mr Ainsworth went on to use the approved mould to make 50 helmets for the film.
In 2004 Mr Ainsworth used his original moulds to reproduce helmets and armour which he sold on his website. Lucasfilm considered that this constituted an infringement of their copyright and, in 2006, duly obtained default judgment for $20m in the United States against Mr Ainsworth for copyright infringement (which to date remains unsatisfied). Lucasfilm also brought proceedings against Mr Ainsworth for copyright infringement in the English High Court. At first instance and in the Court of Appeal, the action was dismissed. Lucasfilm appealed to the Supreme Court.
Outcome of the Appeal
The Supreme Court was asked to consider two main issues:
Whether the helmet was a “sculpture”, which would constitute an “artistic work” within the meaning of section 4 of Copyright Designs and Patents Act 1988; and
- Whether the English Court could exercise jurisdiction in relation to United States copyright claims.
If the helmet was held to be a “sculpture” then Mr Ainsworth’s copying of the helmet would constitute a breach of Lucasfilm’s copyright. In addition, this issue was relevant to any defences that may be available to Mr Ainsworth for breach of Mr Quarrie’s copyright in his drawings (the production of the helmet from Mr Quarrie’s drawing being an infringement of copyright unless Mr Ainsworth was simply creating an article, which was not an artistic work, to Mr Quarrie’s design).
The Lucasfilm contended that the helmet was wholly artistic and had no practical purpose, arguing that “The Stormtroopers’ helmets and armour did not exist in order to… protect them from injury in an inter-planetary war”! However the Supreme Court upheld the decision of the lower courts that the helmet is not a “sculpture” and noted that the appellate courts should be slow to interfere with the trial judge’s reasoning on such matters. The Supreme Court stated that the work of art was the film produced by Mr Lucas and his companies. The helmet was a “mixture of a costume and a prop” and was “utilitarian” in that it was a part of the production process of making a full-length feature film. The Supreme Court also considered to the dictionary definition and normal use of the word of the word “sculpture” in reaching its decision.
Lucasfilm’s appeal in this regard was therefore dismissed and Mr Ainsworth was not liable for copyright infringement.
In relation to the issue of jurisdiction, the Supreme Court held that US copyright claims are justicable in English Court. The English Courts are able to try a claim for infringement of foreign copyright - providing that the defendant is resident in (and subject to) the jurisdiction of England and Wales.
Comment
Whilst this decision is undoubtedly a triumph for Mr Ainsworth over Lucasfilm, it is worth nothing that the US judgment remains outstanding. In addition, due to the Supreme Court’s decision in respect of jurisdiction, Mr Ainsworth may still be found liable in respect of US copyright infringement.
This is a key decision by the Supreme Court and this case is likely to be considered in future IP litigation. Commentators have voiced concerns that the Supreme Court’s decision in respect of jurisdiction may lead to a flood of litigation in relation to foreign copyright infringements by UK residents.
In addition many are concerned that, as a consequence of this decision, the UK film industry will suffer if Hollywood decides that using British propmakers is not worth the risk because any props produced may not be protected by UK copyright laws.
For more information on this or any other similar IP law issue, please contact Clive Lee or Liane Bylett by emailing Clive or Liane or by calling them on 08450 990045, or speak to your usual contact in the Commercial Disputes Team.
This document is provided for information purposes only and does not constitute legal advice. Professional legal advice should be obtained before taking or refraining from taking any action as a result of the contents of this document.
