Since 2007, the Original Prop Blog has been covering the legal battle between Lucasfilm Limited and Andrew Ainsworth of Shepperton Design Studios over the sale of unlicensed replica Star Wars props and costumes. The UK Supreme Court is today published their ruling on the two issues presented to them. Of the two, the most critical came down to whether the stormtrooper helmets themselves constituted “sculptures” in a way consistent with UK law. The court ruled that they do not, and thus delivered a victory to Ainsworth, which also leaves those following the case wondering about the ramifications to copyrights and copyright law and the consequences of the decision. The second question before them was decided in favor to Lucasfilm, which involves IP holders and their rights to pursue copyright claims in those cases where such laws are violated in other jurisdictions.
The two issues before the Court, as defined and quoting from an article published by TheLawyer.com:
1) “whether the helmets were in fact sculptures”
2) “whether a defendant domiciled in England can be sued here for his acts in the US that amount to infringement of copyright under US law”
Below is the conclusion from the judgment published today:
For the reasons given by Lord Walker and Lord Collins in their combined judgment, I agree that the appeal fails on the first issue (sculpture) and succeeds on the second (justiciability of a claim for infringement of a foreign copyright). I express no view about the application or scope of the doctrine of act of state in relation to issues of validity of foreign intellectual property rights which (unlike copyright) may be said to depend upon state grant.
As noted in prior articles, the outcome of this dispute will have “major implications for the UK film industry”, in that with Ainsworth prevailing and with the Court holding that copyright protection is limited to 15 years, it could consequently serve as a deterrent for film and television studios to utilize UK-based prop makers as they could later sell unlicensed replicas of props that they design and produce under the employ of the production companies.
The full details of the judgment can be found in the UK Supreme Court “Decided Cases” page:
Below are the “reasons for the judgment” on the two issues that were before the Court:
The court reviews the legislative history of the current statutory provisions and previous authorities as to the meaning of “sculpture”:  – . In the High Court, the judge had formulated various “guidelines” as to the meaning of sculpture. For example, some regard must be had to the normal use of the word “sculpture”. The concept can apply to things going beyond what one would normally expect to be art, but it is inappropriate to stray too far from what would normally be regarded as sculpture. Not every three dimensional representation of a concept qualifies:  – . Lucasfilm contended that the helmet was sculpture as it had no practical function at all. Its purpose was wholly artistic, to make a visual impression on the filmgoer. That was not, however, how the trial judge and the Court of Appeal had viewed matters. Mann J found the helmets to be a mixture of costume and prop and that their primary function was utilitarian, namely to express an idea as part of character portrayal in the film. He held that this lacked the necessary quality of artistic creation required of a sculpture. This type of judgmental conclusion was one with which appellate courts should be slow to interfere, as Lord Hoffmann observed in Designers Guild Ltd v Russell Williams (Textiles) Ltd  1 WLR 2416:  – . The judge did not err in law or reach an obviously untenable conclusion: .
It would not accord with the normal use of language to apply the term “sculpture” to, for example, a 20th century military helmet used in the making of a film, however great its contribution to the artistic effect of the finished film. The argument for applying the term to an Imperial Stormtrooper helmet was stronger, because of the imagination that went into the concept of the Stormtroopers. But it remained the Star Wars film itself that was the work of art. The helmet was utilitarian in the sense that it was an element in the process of production of the film: . The Court noted that the law did not apply an “elephant test”, but instead a multi-factoral approach: .
Justiciability of foreign copyright claim
The Court of Appeal had held that the common law rule in British South Africa Co v Companhia de Moçambique  AC 602 that an English court had no jurisdiction to entertain an action for the determination of title to, or the right of possession of, foreign land, or the recovery of damages for trespass to such land, was an example of a general principle which applied to claims for infringement of foreign intellectual property rights. The Supreme Court concludes that, provided there is a basis for in personam jurisdiction over the defendant, an English court does have jurisdiction to try a claim for infringement of copyright of the kind involved in the present action: .
Copied below is a press release by Lucasfilm issued following the ruling (Source: BusinessWire):
Lucasfilm Ltd. Responds to United Kingdom Supreme Court Ruling on Copyright Infringement
LONDON–(BUSINESS WIRE)–Today, the UK Supreme Court issued a split ruling in the copyright infringement lawsuit brought by Lucasfilm involving the Stormtrooper costumes from Star Wars. The Court agreed that Mr. Ainsworth’s replica costumes infringe Lucasfilm’s US copyrights, and ruled that those rights are enforceable in the UK with respect to activities outside of the UK. This is the first time the Supreme Court has ruled on an issue of great commercial and legal importance, namely the jurisdiction of the courts in the UK over infringements taking place abroad. The judgment is an important step in modernizing UK law and bringing it into line with the EU.
The decision unfortunately also maintains an anomaly of British copyright law under which the creative and highly artistic works made for use in films — which are protected by the copyright laws of virtually every other country in the world — may not be entitled to copyright protection in the UK . Lucasfilm remains committed to aggressively protecting its intellectual property rights relating to Star Wars in the UK and around the globe through any and all means available to it, including copyright, trademark, design patents and other protections afforded by law. We encourage the UK government’s recent efforts to modernize its copyright and design laws to afford full protection to three dimensional artistic works.
The Telegraph has published a video of the ruling by the UK Supreme Court:
Below are some interesting points from various mainstream media outlets…
Andrew Ainsworth will be allowed to continue selling replica Stormtrooper helmets after the court ruled that they were film props, not works of art.
After his victory, he said: ‘I am proud to report that in the English legal system David can prevail against Goliath if the cause is right.’
Mr Ainsworth, the original maker of most of the helmets in the first Star Wars film, said: ‘I am delighted to have won the right to continue to make these replicas from the original tools and moulds.’
He said that, after a long struggle, he can now ‘focus on producing authentic replicas for serious collectors of these items in the UK.
‘If there is a force, then it has been with me these past five years.’
For a man who has spent half a decade and almost £700,000 fighting the full force of a movie mogul’s legal team, Andrew Ainsworth has refused to be weighed down.
He has had bailiffs at his door demanding $20m (£12m) and has defended the onslaught in the High Court, Court of Appeal and Supreme Court – not to mention the US.
But like the iconic characters he helped create as a 27-year-old art school graduate – and which still surround him in the same modest workshop 35 years later – he has become battle hardened.
“You’ve got to decide right at the start, can you afford the downside?” he says.
“And you’ve got to be able to live with it and be under no disillusions that if it all goes wrong, you’re scuppered, you’re bankrupt… I think if you’re in a small business on your own you know the bottom line.”
He says it is hard to accept when something you create is taken off you, and adds it has been a struggle because he went to court on a principle, against accepted wisdom.
So what are the wider implications of the Supreme Court ruling?
For Mr Ainsworth, it means he is free to expand his business, but for George Lucas, according to Mr Ainsworth’s lawyer Seamus Andrew, it opens a “Pandora’s box” as anyone is now free to make the models.
He says other prop makers encouraged by the ruling may now come forward to take advantage of their own ingenuity.
The lawyer believes the director pursued his client so hard because his cage was rattled by the “authenticity of the product”.
For Mr Ainsworth, the push to the final episode in his story has a satisfying irony as he says he has only been able to fund the case through his Stormtrooper sales.
“The way we’ve funded it [the case] is to make the characters, which is the ironic thing about it, it’s really the empire striking back,” he explains.
“During the period of the court case I’ve made about 2,000 and sold them around the world.”
With his opposing legal army now destroyed like a fading death star, expect to see healthy sales targets projected years into the future.
The ruling will be disappointing for production companies that seek longer periods of protection for merchandising, said Huw Evans, a lawyer at Allen & Overy LLP in London.
“It follows that full copyright protection for 3-D articles in the U.K. will generally continue to be limited to the fine arts,” Evans said.
People interested in intellectual-property law may watch to see what Lucasfilm does next, said Thayne Forbes, a managing director at brand-valuation company Intangible Business Ltd.
“The Star Wars films are an upmarket, fantasy experience for the audience, and the merchandise must be reflective of this or it risks damaging the brand value,” Forbes said. “What Lucasfilm quite rightly wants to avoid is stormtrooper helmets and armor being found in cheap plastic-toy territory.”
The ruling today gave Lucasfilm a partial victory by granting it some rights to sue in the U.K. over infringement of foreign copyrights. That portion of the judgment is an “important step” in modernizing U.K. law and bringing it into line with the European Union, Lucasfilm said.
The decision is important for business because it clears up a long-running controversy over whether U.K. courts can decide if non-U.K. copyrights have been infringed, said Nigel Jones, a lawyer at Linklaters LLP in London.
“That uncertainty has now gone,” Jones said. “If you want to sue here, that is good news. If you want to avoid being sued here, it may be less welcome.”
The U.K. Court of Appeal in London said in 2009 that Lucasfilm couldn’t enforce the California judgment in the U.K. and warned Ainsworth about the risks of further sales in the U.S.
The “surprise” Supreme Court decision may lead to a flood of copyright lawsuits filed in the U.K., said David Allen, who leads the litigation practice at law firm Mayer Brown LLP’s London office.
“This will be particularly significant where infringement takes place in a country with less stable and internationally respected legal systems than the U.K., for example such as in the developing world,” Allen said.
Allen & Overy partner Huw Evans sums up the ruling by stating: “In essence the court held that it was the film which is the artistic work and not the helmet. It follows that full copyright protection for 3D articles in the UK will generally continue to be limited to the fine arts.”
However, Mayer Brown partner Mark Prinsley claims it was a “surprise decision” that will result in a tide of copyright litigation in English courts.
He says: “This judgment means that the English courts can now be used to sort out claims for infringement of copyright in foreign countries simply because the defendant is resident in the UK.”
Whatever it was, it wasn’t an outright win for the giants of Hollywood. Instead, a prop designer from Middlesex took a calculated risk in launching a strike back against Lucasfilms and, effectively, won.
Mr Ainsworth told the BBC: “This is a massive victory, a total victory, we’ve already got the champagne out.”
He said he went to court on a principle and he was not going to allow the director to “buy his soul.”
The ruling about violating U.S. copyright was a moot point, he added, as all it meant was that he could not sell his outfits there, which he had already stopped doing.
The ruling that infringements of foreign copyrights can be pursued through British courts, may, however, eventually prove far more significant for future commercial and intellectual property rights cases.
It will have little personal affect on Ainsworth since relatively few helmets had been sold to US customers.
His lawyer, Seamus Andrew, acknowledged that there “will now have to be an assessment of the damages arising from this” but did not anticipate they would be very much.
All related articles can be found below: