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Make Your Own Star Wars Figures – Bad Copyright News For George Lucas and Lucasfilm

August 1, 2011

A recent English Supreme Court decision on copyright in Star Wars merchandise spells bad news for George Lucas and his Lucasfilm companies: Lucasfilm Ltd & Ors v Ainsworth & Anor [2011] UKSC 39 (27 July 2011)

British based Andrew Ainsworth was making and selling copies of the distinctive body armour costumes of the Imperial Stormtroopers used in the highly successful Star Wars films.  Between 1974 and 1976 Ainsworth was one of the original creators, responsible for the injection mouldings for the costumes when Mr Lucas had come to live in England while the first Star Wars film was made [at Elstree Studios, Elstree on the outskirts of London (there was also filming on location in Tunisia)].

Lucasfilm however own the intellectual property rights in the designs.

Mr Ainsworth later sold to some customers in the United States costumes that he made in England. In 2005 Lucasfilm sued Mr Ainsworth in the United States District Court, Central District of California, and in 2006 it obtained a default judgment for $20m, $10m of which represented triple damages under the Lanham Act. A “default judgement” is one where the defendant takes no part in the proceedings. The whole judgment remains unsatisfied. Ainsworth is unlikely to be visiting the USA in the near future no doubt.  It is also difficult if not impossible to enforce a US judgement in an English Court and vice versa.  So Lucasfilm also commenced proceedings in the Chancery Division of the English High Court.

The case was appealed to the English Supreme Court.  The only way Lucasfilm could squeeze a copyright infringement claim into an English Court was to claim the costumes were copies of an artistic work and the only artistic work in English copyright law they could try to rely on was a “sculpture”.

The Supreme Court rejected the contention that the original designs for the costumes were sculptures.

George Lucas’ concept of the Imperial Stormtroopers as threatening characters in “fascist white-armoured suits” was given visual expression in drawings and paintings by an artist, Mr Ralph McQuarrie, and three-dimensional form by Mr Nick Pemberton (a freelance scenic artist and prop-maker) and Mr Andrew Ainsworth (who is skilled in vacuum-moulding in plastic). Mr Pemberton made a clay model of the helmet, which was adapted several times until Mr Lucas was happy with it. Mr Ainsworth produced several prototype vacuum-moulded helmets. Once Mr Lucas had approved the final version Mr Ainsworth made 50 helmets for use in the film. These events all took place in England between 1974 and 1976.

The Supreme Court upheld Lucasfilm’s contention that they could sue in England for copyright infringement under US copyright law for sales in the USA. 

So it looks like Ainsworth can carry on making and selling the Stormtrooper body armour costumes as long as he does not sell into the USA or any country with copyright law which might prevent such sales.  As the US judgement was a default judgement, it is not established between these parties in a contested case that making and selling the costumes in the USA is infringement either.  [So if a US lawyer would like to comment here they are more than welcome].

That part of the judgement is of little use to Lucasfilm in any event and is a Pyrrhic victory.

Ainsworth sold goods to the value of US $8,000 but not more than US $30,000 which is hardly worth bothering with in comparison to the publicity generated for Lucasfilm’s lack of ability to prevent copying of the Star Wars Stormtrooper white body armour in the UK and some other countries.

So it looks like the floodgates might be opened up to cheap copies for some kinds of merchandise from blockbuster Hollywood films [as long as no patent or design protection laws apply instead of copyright].  Be warned though.  This does not mean registered trademarks can be used – like “Star Wars” to describe the copy products.  And be careful.  Just in case any other Star Wars merchandise did start out life as something which does qualify as a “sculpture”.

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