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Attack of the Clones

A long time ago in a film studio far, far away movie history was made as the phenomenally successful Star Wars saga began. The Lucasfilm empire has made billions of pounds from the films themselves and associated merchandise. Over 30 years since the first chapter began, Lucasfilm found themselves fighting for their intellectual property rights in the Supreme Court. In a significant ruling, the Court have changed the face of UK copyright law with far-reaching consequences.

In 2004 Lucasfilm launched into battle against a UK prop designer who had made the original Stormtrooper helmets used in the Star Wars films from designs provided to him. Andrew Ainsworth had kept the original moulds and used them to produce replicas that he had sold online for a number of years, charging up to £1,800 for the plastic  composite armour and helmets highly sought after by collectors and devotees. Star Wars creator George Lucas claimed that this was a breach of copyright.

Lucasfilm successfully secured a multi million pound Judgment in the US Courts on the basis that Mr Ainsworth did not hold the intellectual property rights to the helmets and had no right to sell them.  However, the Judgment could not be enforced because the designer held no assets in the US.

A case was then brought in the UK High Court in 2008, followed by an appeal to the Court of Appeal and this year a further appeal to the Supreme Court alleging copyright infringement. The Court found that as the costumes were functional and not artistic works, there was no breach of copyright law.  Mr Ainsworth was therefore allowed to continue selling the replicas.

The Court held that the helmets could not be regarded as an artistic work because it was a mass produced item and had a utilitarian role. The film itself was the work of art and the helmet simply an element in the process of  production of the film. It was not correct to say that the helmet’s purpose was wholly artistic and had no functional purpose at all; it was essentially a prop. The helmets could not therefore be classed as artistic works under the Copyright, Designs and Patents Act 1988.

Whilst the decision was seen as a David and Goliath style victory for the 62 year old prop designer, it is the Court’s ruling on foreign copyright claims that is of particular interest. The Court held that Lucasfilm could rely on its US copyright in the English Courts, which had been violated by Mr Ainsworth and so he has been forbidden from selling costumes in the US. This means that in future cases, an English Court can exercise jurisdiction in a claim against persons domiciled in England for copyright infringements committed outside the European Union.
Lucasfilm considered that the Court’s ruling represented “an important step in modernising UK law and bringing it into line with the EU”.  The decision certainly offers A New Hope to claimants who have suffered infringements of foreign copyrights which can now be dealt with in the UK Courts.

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Luke Patel

Partner and Head of Dispute Resolution
Commercial Dispute Resolution
0113 227 9316
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Luke Patel Blacks Solicitors LLP