An explosive denoument to a long-running battle has just rippled through the IP galaxy. The struggle in question was played out between celebrated US filmmaker George Lucas and UK designer Andrew Ainsworth, and concerned the rights to the helmet worn by the Imperial Stormtroopers in Lucas’s Star Wars films. The outcome could take designers’ rights to a new dimension.
In the mid-1970s, when pre-production work began on the Star Wars films, Ainsworth was contracted to produce 50 sets of helmets and armour. Two decades later, Ainsworth found the original moulds in his cupboard and started producing replica helmets for sale to the public. When total sales in the US hit $14,500, Lucas’s production company, Lucasfilm, decided to strike back and sued for copyright infringement on American soil. With Ainsworth offering no defence, a judgment of $20m was entered against him.
Lucasfilm then sought to enforce the judgment on Ainsworth in England – and to sue for copyright infringement in that territory. However, the High Court in England dismissed the claim that copyright had been infringed, and refused to enforce the US damages.
The Court of Appeal recognised that 2D drawings were copyright works. However, the Stormtrooper helmet was a 3D work, leaving the court to consider whether it was a sculpture, and therefore an artistic work that would attract copyright protection. Justice Mann stated that that the helmet was utilitarian in nature, serving a functional rather than artistic purpose and was therefore not a sculpture – no matter, as one commentator wrote, that this functional purpose was ineffective plastic armour for fictitious soldiers in an imaginary intergalactic war. The UK Court of Appeal agreed with Justice Mann’s findings on this point, and dismissed the claim.
Lucasfilm, however, took the case to the UK’s Supreme Court, which handed down its judgment on 27 July. It has reaffirmed the earlier decisions and agreed that the helmet was not a sculpture.
‘The real question that the case answers is whether the helmet falls within copyright or what would now be protectable as a design,’ said Iain Colville, associate at Wright Hassall solicitors, in an interview with NewLegal Review. ‘In that sense, the judgment was right. As the Supreme Court said, the artistic work is the film that is being made, not the making of the helmet worn by the actor. What Ainsworth did is towards the artistic end of the line – but it does not cross that line.’
One major effect of the case has been to put a spotlight on designers and their rights. Could Ainsworth have protected himself better from the start?
As the Supreme Court held, design law more naturally protects non-artistic 3D products, explained Colville. The UK benefits from registered and unregistered design rights for what are commonly known as industrial designs. There also are similar forms of protection at the European level. Registered designs cover designs that are new and of individual character, which don’t need to fit with or match another component and which are not purely functional. ‘Individual’ designs are those that do not create the same overall impression to an informed user such as a trade buyer of the goods in question. Registering a design provides the owner with a monopoly right for up to 25 years. ‘It’s easy to do, just as long as you meet the basic requirements, and pay fees of around £1,000,’ said Colville. ‘It could be challenged by someone after the event who has prior art – but it is a good “keep off the grass” protection. Most people won’t look beyond it once you have it,’ he continued.
Meanwhile, the UK unregistered design right offers a more basic (and shorter lasting) level of protection that arises automatically – just as copyright does – and which even extends to functional designs. This is available for designs that are original and not commonplace, and which pass the must-fit and must-match exceptions. Protection lasts for 10 years from the first marketing of the design, and is given against copying, rather than a complete monopoly.
None of these design rights were applicable in the Stormtrooper case, as the helmets were first created back in the seventies, and any protection that would have been available will have long since passed – hence the requirement for the case to explore the more tortuous ‘artistic work’ route.
Some modern-day designers may still not feel the benefits of the outcome. ‘If the designer is an employee,’ said Colville, ‘and the design is created in the ordinary course of employment, the unregistered protection rests with the employer. If they are self employed and commissioned to create the design, the unregistered right belongs to the person giving the commission unless there is a contract to the contrary.’
Designers wishing to retain any rights will therefore have to be forceful from the outset. Similarly, registered rights rest with the person who registers them, so designers would need to be pro-active in seeking registration. However, Colville added, ‘if a designer comes up with a design and then looks for someone to develop it commercially, the designer will own the unregistered rights, again, unless agreed otherwise.
‘Design law is fit for purpose,’ Colville concluded. ‘It does protect the person who owns the design.’ The question for designers is how hard they fight at the beginning of their stints of employment to be recognised for their works.
Jo Russell is a freelance journalist specialising in legal matters