Highest UK Court Rules Replica "Star Wars" Stormtrooper Helmets Did Not Infringe on Plaintiffs' Copyright But Allows Plaintiff to Sue in the UK Over Infringement of Foreign Copyrights
Manyee Chow | Bloomberg Law
The UK Supreme Court ruled that Lucasfilm Limited, the production company responsible for all the “Star Wars” films, failed to provide sufficient proof that its Imperial Stormtrooper helmets were sculptures protectable under copyright law and that their copyright was infringed by defendant’s replicas which were made from the original molds. However, the Court ruled that Lucasfilm may bring proceedings in UK courts to sue for infringement of its U.S. copyrights.
Summary of Facts
Lucasfilm and two subsidiaries own the copyright in the artistic works created for the “Star War” movies, and have built an empire selling and licensing characters from the franchise. George Lucas conceived the characters and storyline for “Star Wars” between 1974 and 1976. During pre-production in the UK, his vision of the Imperial Stormtroopers in “fascist white-armoured suits” was conveyed to artist Ralph McQuarrie, freelance prop-maker Nick Pemberton, and defendant Andrew Ainsworth, who produced vacuum-moldings in plastic, to give “visual expression” to the character. Lucasfilm at ¶ 2. After submitting various prototypes, Lucas approved the final version and Ainsworth proceeded to create 50 helmets for the movie.
In 2004, Ainsworth used his original molds to make versions of the Imperial Stormtrooper helmet and armor for sale to the public. Ainsworth sold some of the goods in the United States, which resulted in a lawsuit in the U.S. District Court for the Central District of California in 2005. Summary judgment was obtained in 2006 and Lucasfilm was awarded $20 million in damages. See Lucasfilm Ltd. v. Shepperton Design Studios Limited, 05-cv-03434, Judgment (Sept. 26, 2006). Lucasfilm also commenced litigation in the Chancery Division of the English High Court (“EHC”) but the claims were dismissed in 2008. See Lucasfilm Limited v. Ainsworth,  EWHC 1878 (Ch). In its judgment, the EHC held that Lucasfilm’s copyright claims failed because the helmet was not a sculpture and therefore not copyright-protected, and although it was a substantial reproduction of the original work carried out by McQuarrie, Ainsworth was exempted from liability under the defenses set out in Sections 51 and 52 of the Copyright Designs and Patents Act 1988. The EHC also held that the U.S. judgment obtained in 2006 was unenforceable due to lack of personal jurisdiction. The Court of Appeals upheld the decision and allowed Ainsworth to continue selling the helmets in the UK, although selling them in the United States would amount to an infringement.
Helmets Were Not Sculptures
Lucasfilm contended that the Imperial Stormtrooper helmet was a sculpture intended to be wholly artistic with no practical function, and therefore subject to copyright protection. Its sole intention, according to Lucasfilm, was to “make a visual impression on the filmgoer.” Lucasfilm at 40. Both lower courts disagreed with Lucasfilm and found that the helmets “[were] a mixture of costume and prop. But its primary function [was] utilitarian.” Id. at ¶ 41.
To determine whether the Imperial Stormtrooper helmet infringed Lucasfilm’s copyright, the Court had to assess whether the helmet qualified as a sculpture. After discussing previous case law, the Court opined that the word “sculpture” should be afforded its ordinary meaning and described it as being “applicable to a process and to a product.” Id. at ¶ 34. The process usually involves three steps: creating a model in clay or other similar product, making a mold of the model, and then lastly, pouring plastic or metal into the mold to create the final product. A cast or model made for the purposes of a sculpture may be considered an original artistic work which enjoys copyright protection under Section 4(2) of the Copyright Designs and Patents Act 1988. One key element was whether the sculpture was created “by an artist’s hand.” Id. at ¶ 38.
Although the argument for applying the term “sculpture” to an Imperial Stormtrooper helmet was stronger than applying it to a helmet used in combat in historic war movies, the Court could not justify the use of “sculpture” to describe the Imperial Stormtrooper helmets because the work of art at issue was the Star Wars movie. “The helmet was utilitarian in the sense that it was an element in the process of the production of the film.” Id. at ¶ 45. Accordingly, the Court found that the helmet was not an original artistic work and upheld the court of appeal’s decision and dismissed the copyright infringement claims against Ainsworth.
Justiciability of a Claim for Infringement of a Foreign Copyright
Next, the Court considered whether UK courts had jurisdiction to adjudicate claims brought by foreign parties against persons domiciled in the United Kingdom for infringement of copyright committed outside of the European Union in breach of the copyright law of that country.
Ainsworth argued that the principle set out in British South Africa Co v. Companhia de Moçambique  AC 602 (where an English court having no jurisdiction to judge an action for the determination of the title to foreign land was held to be a general principle which applied not only to foreign land, but also to claims for foreign intellectual property rights infringement) was still applicable to present law. Ainsworth also contended that claims for infringement of foreign copyright are a “local” issue that should be adjudicated in the “local” courts where the copyright originated, in this case, the United States. Id. at ¶ 105. The court of appeal in the instant case agreed with Ainsworth and held that a claim for infringement of a foreign copyright was non-justiciable.
The Court disagreed and overturned the decision after finding that the rule in Moçambique has been significantly eroded. Of particular note is the development in European law of article 22(4) of the Brussels I Regulation, which states:
in proceedings concerned with the registration or validity of patents, trade marks, designs, or other similar rights required to be deposited or registered, the courts of the Member State in which the deposit or registration has been applied for, has taken place or is deemed to have taken place, have exclusive jurisdiction irrespective of the domicile of the defendant. This is an exception to the general domicile rule of jurisdiction, and has to be construed strictly. It applies only to intellectual property rights which are required to be deposited or registered, and does not apply to infringement actions in which there is no issue as to validity.
Id. at 89. Accordingly, the court allowed Lucasfilm to proceed with its claim against Ainsworth for the infringement of its U.S. copyrights.
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