Simon Bennett, Partner and Head of Intellectual Property, Fox Williams LLP, Solicitors
George Lucas defeat over Stormtrooper helmet design replicas creates ability to enforce U.S. copyrights in the UK.
The Supreme Court of the United Kingdom has ruled against George Lucas’ company Lucasfilm in the latest episode in a copyright and designs battle against a prop designer based in London who was selling replicas of the Star Wars Stormtroopers helmet. This decision has far-reaching implications for U.S. and other foreign copyright owners where the infringer is UK-based.
Lucasfilm began their battle against the former prop designer, Mr Ainsworth, for copyright infringement of their famous Imperial Stormtrooper Helmet five years ago. Mr Ainsworth, who was originally involved in the creation of the helmet, had already suffered defeat in the United States District Court, Central District of California and was subject to a damages award of $20M for infringement of Lucasfilm’s U.S. Copyrights. However, Mr Ainsworth had no assets in the U.S. so Lucasfilm sought to enforce the Californian court’s award in the UK and also sued for copyright infringement in the UK.
The long running saga, itself resembling the first Star Wars trilogy, went first to the High Court (where Mr Ainsworth won), the Court of Appeal (where again Mr Ainsworth won), finally concluded on 27 July 2011 at the UK Supreme Court, however Return of the Jedi it was not.
The Court first considered Lucasfilm’s claim that the helmet was a sculpture and therefore protected by UK copyright as opposed to a 3D design that is protected by UK design right. The significance of the distinction is that the Stormtrooper helmet was created 35 years ago and if it is a copyright work it under English law it is entitled to 70 years protection plus life. If it is a work protected by UK design right law it only lasts 15 years. The judges concluded that the helmet, even though it had consumed a lot of creative work, could not be regarded as an artistic work because it was a mass production item (remember how many Stormtroopers there were?) and has a utilitarian role. (Mr Ainsworth therefore won again).
However, the final, and most important, issue from a U.S. perspective is that the judges looked at the justiciability in England of foreign copyright claims. The court reversed the judgment of the Court of Appeal and held that following developments in European law such actions should be allowed to proceed. This ruling is significant as claims for infringement of foreign copyright can now be brought in the UK. This would therefore entitle a U.S. company to enforce a U.S. copyright infringement claim in the UK if the infringer is domiciled in the UK, an avenue not previously available to U.S. plaintiffs wishing to take action for copyright infringements against defendants in the UK.