Star Wars Spawns a UK Supreme Court Copyright Decision

In Lucasfilm v Ainsworth [2011] UKSC 39, the UK Supreme Court has dismissed Lucasfilm’s appeal in copyright proceedings against Andrew Ainsworth, an English prop maker who fabricated the stormtrooper helmet and other items used in the original 1976 Star Wars film. Lucasfilm asserted that Mr. Ainsworth’s unauthorized reproduction of stormtrooper helmets, starting in 2004, infringed copyright in artistic works originating from George Lucas and owned by Lucasfilm, a claim that was upheld by courts in the US. Fundamental to the UK decision was whether the stormtrooper helmet qualified as a ‘sculpture’ under the Copyright, Designs and Patents Act 1988 (UK Act). The court also heard, and upheld, Lucasfilm’s appeal concerning the jurisdiction of UK courts over foreign copyright claims involving UK-domiciled defendants. While a US court had already ruled against Ainsworth, Lucasfilm has been unable to enforce the decision against a UK-domiciled defendant. The decision now enables Lucasfilm to commence proceedings for US copyright infringement in the UK courts, although new proceedings are problematic due to Mr. Ainsworth’s limited sales in the US. Ainsworth worked with George Lucas between 1974 and 1976 to produce costumes and props for the first Star Wars movie. Amongst the items that Ainsworth produced was a distinctive helmet worn in the film by the imperial stormtroopers, an army of fictional soldiers. The helmet was fabricated by vacuum-forming plastic around a specially created mould. Both the helmet and the associated mould were derived from drawings that expressed the concepts of George Lucas. In 2004, Ainsworth began selling replica helmets fabricated from the same mould as the helmets used in the original Star Wars film. (In 2005, Lucasfilm commenced US proceedings against Ainsworth for copyright infringement, and obtained a default judgement for $20m, despite limited sales totalling less than $30,000). Lucasfilm also commenced proceedings in the UK for copyright infringement, asserting that Ainsworth’s unauthorized reproduction infringed copyright in the drawings that were used to create the mould. For Lucasfilm to succeed, the stormtrooper helmet itself had to qualify for copyright protection, as the UK Act provides an exception to infringement for articles produced from design drawings embodying anything other than an artistic work (Section 51). Lucasfilm claimed that the helmet was a work of ‘sculpture’. The trial judge held, and both the Court of Appeal and Supreme Court affirmed, that the helmet was not a ‘sculpture’. The two primary considerations addressed by the courts in reaching this conclusion were the ordinary use of the term ‘sculpture’ and the intention of the creator when the work was produced. While the court accepted that the helmet “was intended to express an idea”, it held that “it was not conceived, or created, with the intention that it should do so other than as part of character portrayal in the film”. It was the film itself that could be considered to be the work of art. “The helmet was utilitarian in the sense that it was an element in the process of production of the film”. Summary by: Richard Murphy