Part of the legal battle between George Lucas and Andrew Ainsworth over the sale of Stormtrooper helmets, made famous in the first Star Wars film, came to an end on 27 July 2011 with the judgment of the Supreme Court of the United Kingdom[1].
In 1976, Mr Ainsworth had been involved in the production of the original Stormtrooper helmets. The helmets had been designed and put into drawing by an artist following the instructions given by George Lucas himself. Mr Ainsworth’s role was to produce a mould prototype for the helmet on the basis of these drawings. Mr Ainsworth went on to make 50 helmets for the film 1977 Star Wars film, using one of these moulds.
In 2004, with Ainsworth started producing and selling helmets made on the basis of these original moulds.
The legal battle commenced in the US when Lucasfilm, a company owned by George Lucas, took action against Mr Ainsworth in relation to sales of these helmets available on Ainsworth’s website. In 2005, Lucasfilm obtained a default judgment together with a significant award of damages before the US courts, in particular, for copyright infringement. However, Lucasfilm did not seek to enforce the judgment in the US, Ainsworth having no assets in the US, and the judgment remained unsatisfied. Lucasfilm decided therefore to bring their claim before the English Courts, on the basis of the infringement of the copyright subsisting in the helmet both under English and US law.
Both before the High Court and on appeal before the Court of Appeal[2], it was held that any intellectual property rights existing in the helmet belonged to Lucasfilm, and not to Mr Ainsworth.
The question of whether Mr Ainsworth could be prevented under English law from making the helmets on the basis of the original designs and moulds, in relation to which he held no IP rights, depended on whether the helmets qualified as an artistic work and, in particular, a “sculpture” in which copyright subsisted. If the helmets were protected by copyright, the manufacture and sale of the helmets by Ainsworth would constitute an infringement of these rights. In this respect, under section 4 of the Copyright Designs and Patent Act 1988 (the “CDPA”), three-dimensional artifacts are protected under the copyright law only if the work can be qualified as a sculpture or work of artistic craftsmanship. Furthermore, although the drawings themselves made by the artist would be protected by copyright, pursuant to section 51 of the CDPA, there is no infringement of such designs, unless the resulting work constitutes an “artistic work” and in the present case a sculpture.
Both the High Court and the Court of Appeal held that the helmets were not sculptures on the grounds that their purpose was primarily utilitarian, and not artistic.
Furthermore, the Court of Appeal also held that the English courts did not have jurisdiction to rule on an action for infringement of a US copyright.
Lucasfilm appealed this decision before the UK Supreme Court. The Supreme Court concurring with the lower courts held that the helmet did not qualify as a “sculpture”, and as such was not protected by copyright. In support of this finding, the Supreme Court held that the helmet was utilitarian in the sense it was an element in the process of production of the film and the Star Wars film itself was the work of art.
However, in relation to the question on jurisdiction, the Supreme Court held, overturning the Court of Appeal’s ruling on this point, that an English court would have jurisdiction, in circumstances such as those at hand, to try a claim for infringement of US copyright. This ruling accordingly opens the way for Lucasfilm to bring proceedings in relation to the infringement of its US copyright before the English courts.
This approach to determining whether a creation is protected by copyright is in stark contrast to the rules applicable in France. Indeed, in France, the author is simply required to establish that the work is original, i.e. is an expression of the author, to benefit from protection available under copyright law.
[1] Lucasfilm Limited and others v. Ainsworth and another [2011] UKSC 39
[2] [2009] EWCA Civ 1328
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