Star Wars Stormtrooper Helmets Not Copyrightable under British Law, but Infringement of U.S. Copyright is Justiciable


On July 27, 2011, the Supreme Court of the United Kingdom (which last October took over the judicial functions of the House of Lords) delivered a judgment and defeated a bid by George Lucas’ company (“Lucasfilm”) to stop a designer from manufacturing and selling the iconic Imperial Stormtrooper helmets used in the 1977 Star Wars film later renamed “Star Wars Episode IV – A New Hope”. However, the Court did hold that Lucasfilm had the right to enforce its U.S. copyright in the English courts.

British law on intellectual property protection for three dimensional objects is complex, but for the most part governed by the Copyright, Designs and Patents Act 1988 (“the 1988 Act”). Under section 1(1) copyright covers original literary, dramatic, musical, artistic works, and films, etc. Under section 4(1), for copyright purposes, “artistic works means”:

“(a) a graphic work, photograph, sculpture or collage, irrespective of artistic quality,

(b) a work of architecture being a building or a model for a building, or

(c) a work of artistic craftsmanship.”

By section 4(2) “sculpture” includes a cast or model made for purposes of sculpture.

However, under Section 52 of the 1988 Act, copyright which exists in an artistic work which is used as a model for copies made by an industrial process is limited so that, once a 25 year period from the end of the calendar year in which such articles are first marketed, the work may be copied by making articles of any description without infringing copyright in the work.

Furthermore, under Section 51 of the 1988 Act, it is not an infringement of copyright in a design document 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.
Finally, design rights exist independently of copyright, and focus more on the shape, configuration and construction of a product. UK’s unregistered design right protection, provided for by Part III of the 1988 Act, gives protection to certain designs that are used in the production of both functional and artistic articles for a period of up to 15 years (See sections 213 and 216).

Since more than 15 years had elapsed since the designs in question were first created and used (therefore the design right has expired), the question of whether the helmets were copyright- protected “artistic works” under section 4(1) of the 1988 Act became the major issue under British law and gave impetus to the alternative approach of seeking to enforce U.S copyright law in England if the plaintiffs failed in their attempts under the British statute.

The nature of Lucasfilm’s Actions against Ainsworth and Their Treatment in the Lower Courts

The copyright infringement suit was brought by Lucasfilm and others against Andrew Ainsworth. George Lucas conceived the film’s story-line and characters, including the Imperial Stormtroopers, whose “fascist white-armored suits” were given visual expression in drawings by Ralph McQuarrie, and Andrew Ainsworth, the defendant in this case, made them in 3-D form. Lucasfilm owns the copyrights in the artistic works created for the Star Wars films, which has produced successful licensing revenues over the years. Since 2004 Ainsworth has started making the Stormtrooper helmet and armor and sold them in the U.S. in the value between $8,000 and $30,000. At one point in the litigation, Ainsworth had claimed that he owned the copyright in the helmets, but this claim was dropped at first instance.

Lucasfilm obtained a default judgment against Ainsworth for breach of copyright in the U.S. District Court of Central District of California in 2006 for $10 million of compensatory damages and a further $10 million of punitive damages. The California judgment could not be enforced since Ainsworth, a resident of the U.K., held no assets in the U.S. Therefore Lucasfilm moved the battle to the U.K., and commenced proceedings in the Chancery Division of the English High Court, where the action was tried before Mann, J. The action included claims for infringement of English copyright, claims for payment of the California judgment and claims under U.S. copyright law. The High Court dismissed the claims for infringement of English copyright law, holding that helmet made by Ainsworth was not a work of “sculpture” under section 4(1) of the 1988 Act. The Court also dismissed claims that the helmet was a work of “artistic craftsmanship”. As to the question of artistic craftsmanship, he noted the confused state of the prior case law but concluded that even though the helmets might be works of ‘craftsmanship” they were not in themselves “artistic”. The judge extracted from the complex prior case law the principle that to meet the requirement of being “artistic”, the author had to have intended to produce something having aesthetic appeal.

Mann J. further rejected the claims for enforcement of the California judgment. Judgments of American courts are enforceable in England under common law, subject to a limitation imposed by the Protection of Trading Interests Act that precludes recovery awards for multiple damages. The basic common law rule is that

where a court of competent jurisdiction has adjudicated a certain sum to be due from one person to another, a legal obligation arises to pay that sum, on which an action for debt to enforce the judgment may be obtained.

However, the definition “court of competent jurisdiction” is to be determined by the rules of English private international law which makes its own determination of whether a court making an award is one of “competent jurisdiction”. These require a much greater degree of contact between the person against the whom a judgment is made with the country whose court makes the judgment in question than is required for exercise of personal jurisdiction under the long arm statutes of most states in the United States. In the present case, these requirements were found not to have been met. Consequently, the judgment of the California court was not enforceable in England.

However, Mann J. held that the U.S. copyright claims were justiciable and that U.S. copyright had been infringed by Ainsworth, even though the U.S. judgment was unenforceable for lack of personal jurisdiction over Ainsworth.

The Court of Appeal agreed that the helmet was not a work of “sculpture” but held that the U.S. copyright claims were not justiciable in England. Lucasfilm appealed to the Supreme Court. No appeal was taken on the question of enforcement of the California damages award or on the rejection of the claim that the helmets were works of artistic craftsmanship.

The Case Before the Supreme Court

Were the helmets “sculptures”?

The first issue was whether the helmet qualifies as “sculpture” under the 1988 Act. At the trial level, Mann J. had held that, among other things, the models for the helmets did not qualify as “sculptures” within the meaning of section 4(1) of the 1988 Act.

In its attempts to give meaning to the word “sculpture” under the 1988 Act the Court of Appeal delved into the long and complex interrelation of copyright law and the law on designs, which under the relevant statutes and rules excludes from registered design protection any sculpture that is not “used or intended to be used as [a] model or pattern to be multiplied by any industrial process”. The Supreme Court summarized the Court of Appeal’s conclusions as:

“[F]irst … there is little or no assistance as to the meaning of ‘sculpture’ in the 1988 Act to be derived from the relationship between copyright and registered design rights. The second is that … ‘design’ and ‘artistic work’ are different concepts. Apart from unregistered design right (introduced by Part III of the 1988 Act), design right statutes are concerned with features that have visual appeal. Copyright protection depends on a work falling within a particular category specified in the 1988 Act: ‘It does not depend upon a further analysis or identification of its design features.’”

The Supreme Court agreed. As a result, in the Supreme Court Lords Walker and Collins discussed the “sculpture” issue extensively. As noted above, the statute provides that if a work qualifies as “sculpture” its artistic quality is irrelevant.

Therefore, Lucasfilm contended before the Supreme Court that the helmets were “sculptures”, thus, protected under the 1988 Act, because it had no practical function at all. They argued:

“The Stormtroopers’ helmets and armour did not exist in order to keep their wearers warm or decent or to protect them from injury in an inter-planetary war. Their sole purpose was to make a visual impression on the filmgoer. They are therefore artistic works.”

To determine the meaning of “sculpture”, the Supreme Court looked at the case law, including that of other Commonwealth countries. In Wham-O the Court of Appeal of New Zealand held that the wooden model of a Frisbee made by hand, but not the moulds and final products that had been made industrially was a sculpture under the 1988 Act. In the English Breville case Falconer J. held that the plaster shapes made for the production of die-cast moulds of the sandwich toasters were protected by copyright. This view had not been shared by the Court of Appeal, which emphasized its lack of “artistic expression”. Similarly, a claim to artistic copyright in molds used for making cartridges used in conjunction with flow mixers was rejected by Laddie J. in Metix.

Both Mann J. of the trial court and the Court of Appeal took the view that since the helmet and the armor are still “recognizable as such” and used as helmet and armor in the film, therefore their “utilitarian” purposes qualify them as “costume and prop”. The Supreme Court agreed with the lower courts on this point, holding that the helmet is not a “sculpture” within the meaning of the 1988 Act, by stating that:

“[I]t was the Star Wars film that was the work of art that Mr Lucas and his companies created. The helmet was utilitarian in the sense that it was an element in the process of production of the film.”

The Supreme Court analogized the Stromtroopers’ helmet to a 20th century military helmet used in a film, finding that the latter would not qualify as sculpture, “however great its contribution to the artistic effect of the finished film”.

The decision also reflects the Supreme Court’s reluctance to interfere with the decision at the trial court level, where Judge Mann read and heard evidence from numerous witnesses and artifacts and has not “erred in principle” or reached an obviously untenable conclusion. Moreover, Supreme Court stressed the policy considerations to “protect the designers and makers of three-dimensional artifacts from unfair competition”.

The Supreme Court noted that the current British scheme of copyright protection accords fullest protection to artistic works of art (sculpture and works of artistic craftsmanship), followed by works with “eye appeal” (AMP Inc v. Utilux Pty), and the third level is under Part III of the 1988 Act that accords a modest level of protection (by design right protection) to purely functional objects, like the exhaust system of a car. Although the helmet could be arguably protected on the second or the third level, since Lucasfilm claimed only that the helmet qualified as “sculpture” under the 1988 Act, the Supreme Court’s denial of its “sculpture” status would give defendant Ainsworth a defense under section 51 to any infringement claim based on Ralph McQuarrie’s original drawings.

Justiciability in England of a Claim under U.S. Copyright Law

The second issue before the Supreme Court was whether an English court has jurisdiction in a claim against persons domiciled in England for copyright infringement outside E.U. (in this case the U.S.) in breach of that country’s copyright law.

Traditionally, there have been two major impediments to trying to enforce foreign intellectual property rights in England. The first is an extension of the view that only the courts of a country where real property is situated should decide ownership of that property (with an exception where the court has an equitable jurisdiction over the parties as in the case of Penn v. Lord Baltimore which led to the drawing of the Mason-Dixon Line). The real property rule has come to be known as the Rule in the British South Africa Co. v. Companhia de Moçambique (1893) AC602 (“the Moçambique case”). The second traditional rule was the so-called “double actionability rule”, which held that torts committed outside England were only justiciable in England if they were unlawful both in the country where perpetrated and in England. Since infringing a foreign IP right was not unlawful in England, it followed that an action could not be brought in the English courts with respect to that infringement.

The Court of Appeal held that the traditional common law rule in the Moçambique case 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, applies to claims for infringement of foreign copyright, and therefore, the U.S. copyright infringement is not justiciable in an English court.

In reversing the Court of Appeal on the justiciability issue, the Supreme Court concluded that, provided there is personal jurisdiction over the defendant (which there is, since Ainsworth lives in England), an English court does have jurisdiction to try a claim for infringement of copyright in a foreign country outside E.U. in breach of that country’s copyright law. The ruling means that Ainsworth can continue to make and sell the helmets in the U.K. (because they are not copyright protected in the U.K. as “sculptures” within the meaning of the 1988 Act), but not export them to the U.S. in violation of U.S. copyright law.

In effect, the Supreme Court distinguished the Moçambique rule relied upon by the Court of Appeal, explaining that the departure from the rule was accomplished by section 30(1) of the Civil Jurisdiction and Judgments Act 1982 (“the 1982 Act”), which provides that with respect to actions relating to property outside the EU (where other rules apply):

“The jurisdiction of any court in England … to entertain proceedings for trespass to, or any other tort affecting, immovable property [i.e., land] shall extend to cases in which the property in question is situated outside that part of the United Kingdom unless the proceedings are principally concerned with a question of the title to, or the right to possession of, that property.”

As a consequence, the Moçambique rule can only apply to land “where a question of title is involved.” Therefore, the Court of Appeal has erred in applying the Moçambique rule in claims for infringement of foreign copyrights:

“It is possible to see how the rationale of the Moçambique rule can be applied to patents, at any rate where questions of validity are involved. … But it is very difficult to see how it could apply to copyright.”

The Supreme Court has also pointed out that there is no European public policy against litigation of foreign intellectual property rights. For example, Regulation (EC) No 864/2007 of the European Parliament and of the Council on the law applicable to non-contractual obligations (Rome II) applies wherever in the world a tort was committed. Recital (26) states:

“Regarding infringements of intellectual property rights, the universally acknowledged principle of the lex loci [i.e., “the law of the place”] protections should be preserved. … [T]he term ‘intellectual property rights” should be interpreted as meaning, for instance, copyright …”

Article 8 further provides that in the case of infringement of intellectual property rights, the law applicable shall be the law of the country (i.e., member state) where the infringement was committed. Thus, had Ainsworth sold the helmets in an E.U. member state instead of the U.S., an English court would be obligated under the above law to enforce the judgment of infringement of copyright of that member state.

In terms of U.K. enforcement of U.S. law (i.e., non E.U. member state), the rule in Phillips v. Eyre has long held that infringement of a U.S. copyright was not a tort in English law, and it is impossible to bring such an action in an English court. However, this rule was abolished by the Private International Law (Miscellaneous Provisions) Act 1995, and under section 11(1) of the Act:

“The general rule is that the applicable law is the law of the country in which the events constituting the tort or delict in question occur.”

The Supreme Court affirmed the inappropriateness of the application of the “act of state” doctrine in the case of foreign copyright infringement:

“[I]n England the foreign act of state doctrine has not been applied to any acts other than foreign legislation or governmental acts of officials such as requisition, and it should not today be regarded as an impediment to an action for infringement of foreign intellectual property rights, even if validity of a grant is in issue, simply because the action calls into question the decision of a foreign official.”

In conclusion, the Supreme Court held that:

“There is no room for the application of the act of state doctrine in relation to copyright in this case, even if … actions of officials involved with registration and grant of intellectual property rights were acts of state.”

These rulings reflect the modern trend in favor of the enforcement of foreign intellectual property rights. The Supreme Court further held that although there is no international regime for the mutual recognition of copyright jurisdiction and copyright judgment, “this is no reason for the English court refusing to take jurisdiction over an English defendant in a claim for breach of foreign copyright”.

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