In the recent case of Lucasfilm v Ainsworth, the Supreme Court held that the defendant, Andrew Ainsworth, did not infringe the copyright of the claimant, Lucasfilm, by making and selling versions of the infamous Stormtrooper helmets which appeared in the Star Wars films. However, the court did hold that Lucasfilm could enforce its US copyright in the UK which is of importance for future claimants.
Facts
The Star Wars films were conceived by George Lucas and the first film was released in 1977. Mr Ainsworth worked on the film producing a prototype helmet for the Stormtrooper character. Copyright in the artistic works created for the films is owned by Lucasfilm.
In 2004 Mr Ainsworth used his original tools to make versions of the Stormtrooper helmet and armour and sold some of these goods in the USA. Lucasfilm successfully sued Mr Ainsworth in the USA for copyright infringement but as Mr Ainsworth had no assets in the USA against which to enforce the judgment, Lucasfilm commenced proceedings in the UK for various claims including copyright infringement.
The Parties’ Positions
Lucasfilm’s claim for copyright infringement was based on the grounds that it owned the copyright in the design drawings for the Stormtrooper helmet and that by making and selling products to that design, Mr Ainsworth had infringed its copyright.
Mr Ainsworth relied in his defence on sections 51 and 52 of the Copyright, Designs and Patents Act 1988 (“the Act”) which permit the making of three dimensional objects from design documents in certain circumstances.
Lucasfilm argued that the helmet was a sculpture as it had no utilitarian function and its only use was as an artistic appearance in the films. Had the helmet been found to be a sculpture, it would have been removed from the exemption contained in sections 51 and 52.
The First Instance Decision
At the first instance trial in 2008, all of Lucasfilm’s claims were dismissed. The judge held that the helmet was not a work of sculpture under the Act and therefore Mr Ainsworth had a defence pursuant to sections 51 and 52.
The Court of Appeal agreed and Lucasfilm then appealed to the Supreme Court.
The Supreme Court Decision
The Supreme Court once again agreed that the helmet was not a sculpture. The court stated that “It would not accord with the normal use of language to apply the term “sculpture” to a 20th century military helmet used in the making of a film, whether it was the real thing or a replica made in different material, however great its contribution to the artistic effect of the finished helmet. …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.”
Mr Ainsworth had not, therefore, infringed copyright in the helmet.
The Jurisdiction Issue
The Supreme Court considered whether the English courts may exercise jurisdiction in a claim against persons domiciled in England for infringement of copyright committed outside the European Union in breach of the copyright law of that country.
The court held that where an English court has personal jurisdiction over a defendant, that is they are domiciled in England, they can be sued in England for foreign copyright infringement. The court commented that “the modern trend is in favour of the enforcement of foreign intellectual property rights”, although this may be more difficult with intellectual property rights such as patents. The court also considered that there were “no issues of policy which militate against the enforcement of foreign copyright.”