Star Wars Episode VII: Return of the Imperial Stormtroopers
“A long time ago in a galaxy far, far away”, the Imperial Stormtroopers— menacing soldiers of the Galactic Empire clad in all-white helmet and armour—were no longer servants of the evil Palpatine and Darth Vader; instead, they had become the potential trophy of an epic quest initiated by George Lucas, the creator of the Star Wars Empire. After crossing the Atlantic Ocean from the United States and fighting for half a decade, the UK Supreme Court finally ended this copyright infringement battle, Lucasfilm Ltd. v. Ainsworth  UKSC 39, once and for all.
The film “Star Wars Episode IV – A New Hope” was released in the US in 1977, which was where the Imperial Stormtroopers made their debut. George Lucas and his three companies (“Lucasfilm”) conceived the idea of Stormtroopers; Ralph McQuarrie drew the character; Nick Pemberton made the clay model of the helmet; and Andrew Ainsworth, the respondent in this appeal, was hired to produce the prototype vacuum-moulded helmet which was later used in the film. Mr. Ainsworth made 50 such helmets in England at that time.
In 2004, Mr. Ainsworth used the original moulds to create replicas of the helmet and armour, and sold them to Star War fans around the world. In 2005, Lucasfilm sued Mr. Ainsworth for copyright infringement in the US District Court, Central District of California, could based on the ground that Lucasfilm owned the copyright in the original design of the helmet. Although Ainsworth only sold about US$14,500 worth of helmets, Lucasfilm obtained a default judgment for US$20M, which the English Court of Appeal later commented as “strange to English ears”.
Unfortunately for Lucasfilm, this US judgment not be enforced because Mr. Ainsworth did not own any assets in the US. Lucasfilm subsequently brought this copyright infringement action to England and asked the courts to apply US copyright law to the case.
All three levels of the English court covered two narrowly framed issues:
- Whether the helmets and armours were “sculptures” within the meaning of the Copyright Designs and Patents Act 1988 (“1988 Act”); and
- Whether the English court could exercise jurisdiction in a claim against persons living in England for infringement of US copyright law.
What is a Sculpture? What is Art?
UK copyright law defines copyright as “a property right which subsists in original literary, dramatic, music or artistic works”. Under section 4(1) of the 1988 Act, sculpture is within the realm of “artistic work”. “Sculpture” is defined as “a cast or model made for purposes of sculpture.”
The 1988 Act also includes various liability exemptions to balance the freedom of others to make and market products or artistic works. For the purpose of this case, sections 51 and 52 were relevant: Section 51 provides that making copies of a three-dimensional object that is not an “artistic work is not copyright infringement. Section 52 applies to artistic work that has been exploited by an industrial process and marketing, and effectively shortens the protection to a term of 25 years from the date when the product was first marketed.
If the Stormtrooper helmets and armours were found to be “sculptures” within the meaning of “artistic works”, they would be protected for the life of the author plus 70 years (section 12 of the 1988 Act). If the helmets and armours were not found to be “sculptures” and thus could not be protected as “artistic works”, the term of the copyright protection would be reduced to 25 years from the date when the helmets were first marketed, as per s. 52 of the 1988 Act. This would mean that such copyright protection would have expired, as the movie came out in 1977.
During the 17-day trial at the England and Wales High Court, both Mr. Pemberton and Mr. McQuarrie testified that Mr. Ainsworth substantially copied George Lucas’s idea, Mr. McQuarrie’s drawings, and the clay model produced by Mr. Pemberton. After a long and comprehensive analysis, Mr. Justice Mann ruled that helmets and armours were not sculptures and Mr. Ainsworth had a defence under section 51 of the 1988 Act. This was affirmed by the Court of Appeal and, unsurprisingly, the UK Supreme Court also agreed.
The thorny questions of “what is sculpture?” and “what is Art?” were raised to determine whether the helmets were artistic sculptures. Although Justice Mann provided a list of guidelines (para 118 of his judgment) as to what three-dimensional objects could amount to a “sculpture”, no precise requirement was used. Instead, he narrowly focused on the “purpose” for which the helmet was created. He held that, because the helmet lacked artistic purpose and was created with utilitarian purpose, the helmet was not a sculpture. The Court of Appeal also read in to section 4(1) of the 1988 Act and stated that toy soldiers would not be qualified as sculptures and would be “relatively rare” (at para 82) to gain copyright protection because their primary purpose was for play rather than visual appeal.
The UK Supreme Court reviewed the legislative history of the copyright law, the judgements of Mann J. and the Court of Appeal, and affirmed both decisions. Cautiously, the UK Supreme Court disagreed with the “elephant test” in the Court of Appeal’s judgement (“knowing one when you see it”), and emphasized that the Court should not “encourage the boundaries of full copyright protection to creep outwards”.
Should the UK Court Apply US Copyright Law?
The more contentious issue was whether the English court could exercise jurisdiction in a claim against persons living in England for infringement of US copyright. While Justice Mann held that there was no absolute bar to prevent an English court from accepting jurisdiction, the Court of Appeal did not agree.
The UK Supreme Court held that, where an English court has personal jurisdiction over a defendant, that person can be sued in England for infringement of foreign copyright. Adopting Justice Mann’s approach, the UK Supreme Court drew a distinction between infringement cases that concerned the validity of registered rights (e.g. patents) and those without issues related to the validity or registered rights. While the Supreme Court agreed that “every sovereign State is bound to respect the independence of every other sovereign State” (known as the Act of State doctrine, at para 65), the Court held that this applies to, for example, patent litigation because patent rights require registration or prior examination in accordance with the rules of that foreign country. The policy reason behind this was to prevent conflicts with foreign administrative and judicial officers.
Here, although the helmet was copyright registered in the US, the registration was purely procedural as it was a pre-requisite to initiate proceedings in the US (under section 411 of the US Copyright Law). Therefore, the Act of State doctrine would not apply here because the registration was not to obtain copyright protection, but to sue. Furthermore, article 22(4) of the Brussels I Regulation (rules set by the European Union to govern jurisdiction of courts in civil and commercial matters between different member states) assigns exclusive jurisdiction only to cases which concern the registration or validity of IP rights which are “required to be deposited or registered”, and does not apply to infringement actions without issues on validity. Therefore, Lucasfilm succeeded on this justiciability issue.
As the first IP case to come before the re-branded UK Supreme Court (formerly known as the House of Lords), this decision surely tells us a few things. Two main conclusions are: 1) helmets and armours that were created as costumes and props for a film are not copyright protected; and 2) a legally abiding UK citizen (under UK law) could be found liable in the UK for copyright infringement of a non-European Union country.
The Court applied a narrowly focused test to define whether the helmets were artistic works. However, it is undisputed that the Stormtrooper helmet contains artistic elements with a certain visual appeal. The helmets in question here are not ordinary helmets that humans use in their everyday lives. And even during the special occasions (e.g. Comic-Con) where humans do sport such helmets, they wear them with the purpose to create a visual impact on the observer. The artistic features of the helmet could also be separated from the function of the helmet and exist independently as “art”. However, even if the Court ruled that such an object is an artistic work, the section 52 defence would have applied here. Perhaps the best way to deal with such an iconic figure is to claim trade-mark protection, as it allows for perpetual protection given that the mark is used and properly maintained at the registry.
Adjudicating foreign IP rights is inevitably controversial. The Supreme Court is to be commended for pointing out that this decision is specific to copyright infringement and should not apply to cases involving foreign patents and other registered IP rights. However, the Court did not seem concerned with the effects of copyright protection in different countries. Copyright protection, after all, is a monopoly granted by the state. This monopoly will invariably coerce the public to pay higher prices for the product and affect commerce and international trade. With such wide-ranging implications, the legislature should decide this issue and not leave the question over to judges. For example, international treaties should be drafted to govern this agreement between the countries.