It is well recognised that the Internet has made the world a smaller place. Not just by the easier methods of communication and the exchange of information, but also to commerce and the availability of new, larger markets to buy and sell to. These changes have provided opportunities for small businesses to reach a potential global audience, but beware, when a small business competes on the world stage, they can find themselves unprepared for the infringement of copyright or passing off in any number of jurisdictions.
The sale of $14,500 worth of goods has recently generated one of the most high-profile copyright fights, which still continues with an appeal pending to the supreme court. As such, manufacturers of toys, models, merchandise and other commercial items have cause for concern where their designs could be seen to have a utilitarian rather than artistic purpose. This has clear ramifications for brand protection issues and ultimately for maintaining a strong corporate reputation through loss of management of quality control, brand value and cheaper copies. It could be easier for someone to sell replicas of your products without actually breaking any copyright or passing off laws.
A recent Court of Appeal decision in Lucasfilm Ltd & ors v Ainsworth & anor  has far-reaching consequences for the media and entertainment industry, and, in particular, film and television merchandisers. Where props are utilitarian in purpose (and not artistic per se) they are not protected by copyright, and counterfeiters are free to make and sell copies.
The English Court of Appeal rejected the claims of Lucasfilm Ltd, Star Wars Productions Ltd and Lucasfilm Entertainment Company Ltd (Lucasfilm) to copyright over the costumes worn by stormtroopers in Star Wars. This related to the unique and instantly recognisable white armour and helmets, which are the template for stormtrooper toys and merchandise around the world.
In the mid-1970s, pre-production work began for the Star Wars films. The producer and director, George Lucas, worked with Ralph McQuarrie to make early drawings and paintings as to the look for the film, including the characters known as stormtroopers. A freelance scenic artist and prop maker, Nick Pemberton, was commissioned to make the stormtrooper helmet and armour. He made a preliminary clay model of the helmet that was still relatively lacking in detail. When asked to produce 50 sets of helmets and armour, Pemberton turned to Andrew Ainsworth, with whom he had some prior dealings.
Ainsworth was an engineer with a great interest in vacuum moulding plastics and he began working on the helmets thinking they were for a dramatic production. Ainsworth refined the facial details of the helmets and made practical changes to enable production. However, Ainsworth later conceded that the final version of the helmets was a substantial reproduction of the original paintings by McQuarrie. Ainsworth also made 50 sets of stormtrooper armour, as well as helmets and costume pieces for other kinds of troops that appeared in the film, which were again based on the McQuarrie paintings.
Star Wars was released in 1977. Twenty years’ later Ainsworth found the original moulds in a cupboard in his home and he set up Shepperton Design Studios Ltd, where he began producing full-scale stormtrooper helmets and armour for sale to the public. It was the sales to customers in the US, totalling $14,500, that attracted the attention of Lucasfilm.
US Proceedings: A New Hope
Lucasfilm’s best hope was under US copyright law. Ainsworth initially challenged the Court’s jurisdiction, but when that application failed, he took no further steps to defend the claim. The Court entered judgment in default for compensatory damages of $5m for copyright infringement, and $5m for trade mark infringement and unfair competition, as well as punitive damages of a further $10m.
This was a win for Lucasfilm. Ainsworth was forced to stop selling products to US customers. With a $20m judgment against him, Ainsworth could not even visit the US without fear of sequestration of his assets and possible arrest.
English High Court decision: The Empire Strikes Back
Lucasfilm then sought to enforce the judgment on Ainsworth in England and also sued for copyright infringement in England. At the hearing, Lucasfilm illustrated its case by presenting in the courtroom a life-sized stormtrooper and an Imperial fighter pilot in full costume, to which a bemused Mann J responded: ‘Will they be there for the entire case?’
The English High Court struck back at Lucasfilm, dismissing its claim that any copyright had been infringed based on defences under ss51-52 of the Copyright, Designs and Patents Act (CDPA) 1988. The Court also refused to enforce the US damages award.
Court of Appeal decision:
Return of the Jedi
Lucasfilm appealed the decision. The Court of Appeal acknowledged that two-dimensional works, such as scene paintings, are copyright works. However, the stormtrooper helmet and armour in question were three-dimensional works, and the court considered whether they were sculptures (and therefore artistic works) within the meaning of s4 of CDPA 1988.
In applying the guidance factors as set out in the box on p64, Mann J determined that the stormtrooper helmet and armour were not sculptures, and relied on their utilitarian purpose. Lucasfilm argued that these works were ‘no more part of reality than the horn of a unicorn would be’ but Mann J was not persuaded and considered the functional purpose to be a deciding factor. This was ineffective plastic armour for fictitious soldiers in an imaginary intergalactic war. However, its purpose was still functional rather than artistic.
Mann J’s approach was later endorsed by the Court of Appeal, saying:
‘The result of this analysis is that it is not possible or wise to attempt to devise a comprehensive or exclusive definition of “sculpture” sufficient to determine the issue in any given case. Although this may be close to adopting the elephant test of knowing one when you see one, it is almost inevitable in this field. We therefore consider that the judge was right to adopt the multi-factorial approach which he did.’
Defence under s51
Section 51 of CPDA 1988 relates to designs that are not artistic works and provides that:
‘It is not an infringement of any copyright in a design document or model, recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design.’
Accordingly, as long as a design is for anything other than an artistic work, copies can be made without infringing copyright.
Mann J held (and the Court of Appeal confirmed) that since McQuarrie’s paintings were design documents, and as the stormtrooper helmet and armour were not sculpture or works of artistic craftsmanship, s51 provided Ainsworth with a defence to a claim of copyright infringement.
Defence under s52
Section 52 of CDPA 1988 relates to designs for artistic works. It applies where an artistic work has been exploited by the copyright owner by making 50 or more copies by an industrial process and marketing those copies. In those circumstances, the designs lose their protection after 25 years and copies can then be made without infringing copyright.
That section came into effect on 1 August 1989. In Lucasfilm the items were first marketed in the 1970s and, accordingly, the earlier Copyright Act 1956 applied, which imposed a shorter time period of 15 years.
Mann J and the Court of Appeal found that while McQuarrie’s paintings were artistic works, they were exploited by more than 50 copies made in the form of the stormtrooper toys (and also, potentially, by the 50 costumes made by Ainsworth at the behest of Lucas for production of the film). This established a defence for Ainsworth under s52 once the relevant time period expired.
International law issues
There were other significant issues of international law raised by the Court of Appeal’s decision. In particular, whether an English court is bound to hear claims for infringement of copyright in countries outside the EU, based on Article 2 of Council Regulation (EC) 44/2001 on jurisdiction and the recognition of enforcement of judgments in civil and commercial matters (Brussels I) or alternatively based on Lloyd J’s dicta in Pearce v Ove ARUP Partnership Ltd & ors .
After the Court of Appeal decision was handed down, Lucasfilm issued a statement saying:
‘The judges in the case dismissed the creative efforts of film designers and prop makers in general, saying that props are the work of people who “did not make it as artists” and not fine art that should be valued under the law.’
Lucasfilm sought permission to appeal the decision to Britain’s new Supreme Court in January 2010. That appeal remains pending at the time of publication of this article.
Film and television merchandisers, as well as the makers of toys, models and other commercial items, have cause for concern where their designs could be seen to have a utilitarian rather than artistic purpose. Lucasfilm had hoped that the UK courts would find it held copyright in the works that would provide protection for the life of the author, plus 70 years. However, the courts determined that in the absence of an artistic work, the copyright claim could not stand.
The result is that iconic props, such as the Daleks in Doctor Who, the USS Enterprise in Star Trek and even Harry Potter’s flying broomstick, may be considered so functional in nature that there is a section 51 defence available for anyone wishing to make copies.
For other works that are artistic in nature, if they are exploited by making 50 copies or more, their protection will expire after 25 years under s52.
There may still be some protection afforded by the law of passing off, if the copies are being marketed in a way that may lead the public to believe that the copies are in fact being offered by the originator, or by trade mark law if the originator’s trade mark is being used in connection with the copies.
The Court of Appeal commented that ‘the internet and its uses take us into a new world’. This is particularly true in Lucasfilm, where one man and a website has caused a tornado of litigation that began in the US, travelled to London, and is now headed for the Supreme Court.
Perhaps the lesson to learn from Lucasfilm is that when in comes to brand and reputation protection on an international scale, it is important to carefully consider where to pick your battles. It is no longer a local fight on your doorstep, it will now go worldwide. Which jurisdiction is best for you? Perhaps you don’t need to fight in every jurisdiction. Suing in the key ones may send the right message and having a network of lawyers available to you through a single point of contact will make for an easier journey and greater efficiency.
definition of sculpture as an artistic work under s4
In his decision, Mann J identified several guidance factors for determining whether an object is a ‘sculpture’:
- ‘1) Some regard has to be had to the normal use of the word.
- 2) Nevertheless, the concept can be applicable to things going beyond what one would normally expect to be art in the sense of the sort of things that one would expect to find in art galleries.
- 3) It is inappropriate to stray too far from what would normally be regarded as sculpture.
- 4) No judgment is to be made about artistic worth.
- 5) Not every three-dimensional representation of a concept can be regarded as a sculpture. Otherwise every three dimensional construction or fabrication would be a sculpture and that cannot be right.
- 6) It is of the essence of a sculpture that it should have, as part of its purpose, a visual appeal in the sense that it might be enjoyed for that purpose alone, whether or not it might have another purpose as well. The purpose is that of the creator. This reflects the reference to “artist’s hand” in the judgment of Laddie J in Metix (UK) Ltd v G H Maughan (Plastics) Ltd  FSR 718, with which I respectfully agree.
- 7) The fact that the object has some other use does not necessarily disqualify it from being a sculpture, but it still has to have the intrinsic quality of being intended to be enjoyed as a visual thing.
- 8) I support this analysis with an example. A pile of bricks, temporarily on display at the Tate Modern for two weeks, is plainly capable of being a sculpture. The identical pile of bricks dumped at the end of my driveway for two weeks, preparatory to a building project, is equally plainly not. One asks why there is that difference and the answer lies, in my view, in having regard to its purpose. One is created by the hand of an artist, for artistic purposes, and the other is created by a builder, for building purposes.
- 9) The process of fabrication is relevant but not determinative. I do not see why a purely functional item, not intended to be at all decorative, should be treated as a sculpture simply because it is (for example) carved out of wood or stone.’