A long time ago in a galaxy far, far away… well, in 1976 California, Lucasfilm began developing Star Wars. The iconic Imperial stormtrooper helmets and uniforms were made by Andrew Ainsworth and his company Shepperton Design Studios Limited in England. He kept the moulds for the vacuum-forming of the plastic parts. In 2004 he began selling stormtrooper helmets, including helmets to a value of approximately $14,500 to some US customers.
As a result, a copyright infringement, unfair competition and trade mark infringement action was brought by Lucasfilm Limited and the associated rights holders (together, “Lucasfilm”) against Ainsworth in a District Court in California. That action succeeded, with Lucasfilm awarded $5m damages for copyright infringement, $5m for trade mark infringement and unfair competition, together with an additional $10m compensatory damages.
Lucasfilm sought to have the US judgement enforced in the UK, as well as bringing a UK copyright infringement action. In a High Court judgement given on 31 July 2008, Lucasfilm largely failed. They appealed. Lord Justice Jacob gave the Court of Appeal judgement yesterday. It should not be a surprise to Star Wars fans that the lone crusader overcame the might of the Lucasfilm “Empire”, but how did the Court of Appeal save the “plucky Brit” from certain bankruptcy and ruin?
Part of the Lucasfilm claim was that the helmets were a sculpture. A sculpture is an “artistic work” within the meaning of s.4(1)(a) of the Copyright, Designs and Patents Act 1988, which, by s.4(2)(b), includes a cast or model made for purposes of sculpture. If Lucasfilm were able to show that the prototype helmet was a sculpture, then copyright in it would have been protected for 70 years from the death of the author/sculptor (s.12(2)). If the helmet was not a sculpture, then protection of the drawings of the helmet in which Lucasfilm held the copyright would only be for a period of 15 years from the first marketing of reproductions, a period that has expired. How the period of protection ends up being 15 years is set out in the High Court judgement; it is largely the result of transitional provisions in the 1988 Act, so that the 15 years protection in s.10 of the Copyright Act 1956 applies. If the helmets had been reproduced after the effective date of the relevant provision in the 1988 Act, s.52 (1 August 1989), then the protection period would have been 25 years.
The Court of Appeal upheld the High Court judgement that the prototype helmet was not a sculpture.
The Court of Appeal upheld the application of the s.51 defence by the High Court, which permits the making or copying of an article to a copyright design document for anything other than an artistic work or typeface. It also upheld the application of the s.52 defence, which allows anyone to copy an article after a set period from when the article has been subject to mass production under an industrial process and marketed by a copyright owner (or licensee). In applying the defence of s.52, it was noted that Lucasfilm had licensed the reproduction of the helmet design in toy stormtroopers, so that the defence applied.
Lucasfilm’s UK copyright actions therefore failed.
It was clear that the Court of Appeal was not minded to allow Lucasfilm to enforce US copyright in the UK. Having determined that it was not bound by any binding authority, the Court of Appeal decided that foreign, non-EU (or Lugano Convention) copyrights are non-justiciable in England and that the application of forum non conveniens did not apply to international copyright cases. This part of the judgement was well argued, as it is one of the points in the judgement that is more likely to be appealed to the Supreme Court by Lucasfilm.
It was also clear that the UK courts were not sympathetic to the plea by Lucasfilm to enforce the US copyright judgement, particularly as the damages awarded under the US system were massively out of step with what a UK court would award. This came down to the fact that Andrew Ainsworth had no physical presence in the US, and his website offering the sale of the helmets, although priced in £ and US$ with shipping charges for the US (and Canada), was not determined to be directed at the US, even though there was some advertising of it in the US. This is an interesting finding for all internet and web-related cases. The Court of Appeal was not persuaded that owning and operating a website meant that the website owner has a presence in another jurisdiction.
As has been noted in other blogs, Star Wars features have tended to come in threes. Given that we’ve had a High Court Star Wars I and Court of Appeal Star Wars II, we only need the Supreme Court appeal to make the set. Given the importance of the legal principles raised in the judgements, and the willingness of Lucasfilm to defend its rights in all aspects of the Star Wars films by whatever means, it is to be expected that there will be a Star Wars III.