Lucasfilm Ltd. (“Lucasfilm”) sued artist Andrew Ainsworth alleging that defendant infringed upon its copyright in the Star Wars Imperial Stormtrooper helmets by selling replicas of the famous helmets used in the film Star Wars Episode IV – A New Hope. The British Supreme Court unanimously upheld the ruling of the Court of Appeals in favor of Ainsworth under UK law.
The facts were as follows: Between 1974 and 1976, George Lucas worked with artists, including Ainsworth, to develop the visual concept of the Imperial Stormtrooper characters in the film, including their intimidating “fascist white armored suits” and helmets. Ainsworth produced several prototype vacuum-molded helmets for the Stormtrooper characters and, after Lucas’s approval, created 50 helmets for use in the film. Following the enormous success of the films around the world, Lucasfilm continued to earn income stemming from licensing agreements relating to Star Wars, including from licensing models of the Stormtroopers. In 2004, Ainsworth began recreating the helmets and armors from his original tools selling them to the public. Ainsworth sold between $8,000 and $30,000 of goods in the United States. Lucas sued in the U.S. and obtained a $20M judgment. Lucasfilm then commenced proceedings in the English Courts alleging claims under English and U.S. law.
Even though English law also follows a common law system of copyright, it is interesting that that the reasoning of the English court was quite different from the analysis we are familiar with under U.S. copyright law. The issue turned on whether the helmets were “sculptures” or “works of artistic craftsmanship.” Indeed, under English law, only “artistic works” (which include sculptures) are protectable under the Copyright Designs and Patents Act of 1988 regardless of artistic quality. Should the Court determine that the helmet was a “sculpture,” Ainsworth would have infringed upon Lucasfilm’s drawings by the mere fact of producing the helmets.
The High Court concluded, and the Supreme Court agreed, that the helmet was not a sculpture and that Ainsworth did not infringe upon the English copyright. The Supreme Court reviewed the legislative history of the definition of “sculpture” and found that, as opined in prior cases by the Court, not every three-dimensional representation of a concept qualified as “sculpture.” Lucasfilm argued that the helmet had no practical function and served as an artistic piece to make an impression on the filmgoer. The Court disagreed, viewing the helmet as a blend of costume and movie prop expressing the design of a character, which was a purely utilitarian expression. Rather, Court said, it is the film itself, and not the individual props, that is the work of art. Therefore, no copyright was found under English law in the iteration of the Imperial Stormtrooper helmet.
Furthermore, the Court ruled that claims under U.S. copyright laws were valid and Ainsworth infringed under U.S. copyright. The Supreme Court concluded that, should it have in personam jurisdiction over Ainsworth, then a UK court did maintain jurisdiction to try a claim for the U.S. copyright infringement.
Practice Note: This case reminds clients that international considerations are not to be neglected in protecting and enforcing copyright assets. Different strategies may work in different countries. Approaching a client’s IP portfolio with an international perspective is a prudent approach to avoid chattered expectations.