Brandon Evenson is a JD candidate at Osgoode Hall Law School.
A long time ago in a galaxy far, far away, an epic copyright war was being waged across the world….
This, perhaps, might have been a better introduction for the UK High Court of Justice Court of Appeal (Civil Division) in one of their most recent copyright decisions Lucasfilm v. Ainsworth. The central question on appeal was whether copyright protection subsists in Star Wars stormtrooper armour and helmets.
In the course of making the first Star Wars film, Lucasfilm hired an expert in vacuum moulding plastics, Mr. Ainsworth, to create life-size plastic stormtrooper armour and helmets. A number of years later, after the films’ success, Ainsworth began producing and selling copies of the stormtrooper helmet and armour as well as producing plastic stormtrooper action figures. Lucasfilm brought an action against Ainsworth for copyright infringement in the US and obtained a default judgment for trade-mark and copyright infringement in the sum of $20 million (USD). Lucasfilm then proceeded to bring an action against Ainsworth in the UK to enforce their US judgment.
Justice Mann heard the UK Trial Court case (England and Wales High Court Chancery Division) in 2008 . Mann J held that the stormtrooper helmet did not have independent copyright as a sculpture or work of artistic craftsmanship. Mann J did, however, uphold Lucasfilm’s claim to equitable ownership and required Ainsworth to assign all copyright resulting from the creation of the original works to Lucasfilm.
On appeal, the Court confirmed Mann’s J decision that there was no copyright in Ainsworth’s Star Wars sculptures under UK law. In arriving at this decision the Court of Appeal conducted an interesting review of the legislative history of the term “sculpture” tracing its definition through the Copyright Act, Sculpture Copyright Act, Designs Act 1850, and the Patents, Designs and Trade Mark Act. The Court then went on to analyze Mann’s J guiding factors for determining whether an object falls under the definition of a sculpture in the Copyright Act.
Mann J confined the term “sculpture” to the normal use of the word but cautioned that no judgment regarding the artistic worth of the object can be made. While not every three-dimensional representation can be regarded as a sculpture, what matters is the purpose of the creation – the “intrinsic quality of being intended to be enjoyed as a visual thing”. The fact that the object has some other use does not necessarily disqualify it from being a sculpture either. Furthermore, the process of fabrication is relevant but not determinative. A purely functional item should not be treated as a sculpture simply because it is carved (sculpted) out of wood or stone.
The Court of Appeal accepted Mann’s J multi-factorial approach despite recognizing that the guidelines suffer from borderline cases. The Court of Appeal also felt Mann J correctly applied the guidelines. The Appeal Court was particularly persuaded by the Trial Court’s test which examined the purpose for which the object was made.
“Although invented, the helmet and armour are still recognisable as such and have a function within the confines of the film as the equipment of the stormtrooper. They are, to that extent, no different from and serve the same purpose as any real helmet or armour used in a film. The judge made this point by referring to the primary function of the helmet and armour as being utilitarian and lacking in artistic purpose. This is simply a shorthand for the application of the various considerations set out in his [118]. He was, in our view, entitled to come to that conclusion on the facts of this case. We also think that he was right to do so. Neither the armour nor the helmet are sculpture.” [para 80]
The Court of Appeal also addressed whether the action figures were subject to copyright protection:
“[I]n most modern cases toy soldiers, whether real or fictional, will not be works of art.…. They will be playthings registrable for their design qualities but nothing else. This distinction may be difficult to draw in some cases but we suspect that the cases which will qualify for protection under the Copyright Act will be relatively rare. …We are not dealing here with highly crafted models designed to appeal to the collector but which might be played with by his children. These are mass produced plastic toys. They are no more works of sculpture than the helmet and armour which they reproduce.” [para 82]
This distinction was important for the Court of Appeal to make. The Trial Court’s decision had previously been criticized for failing to appreciate that action figures could indeed be more than just play-things. Action figures (especially for iconic science fiction movies like Star Wars) can be collectors’ items and have a strong purely visual appeal thus warranting copyright protection as a sculpture (based on Mann’s J criteria). Though the Court of Appeal confronted this issue head-on in its decision, it is difficult to believe that collectors only collect and appreciate models which are highly crafted. Furthermore, by commenting on the amount of crafting that went into the models, the Court of Appeal also contradicted itself. It was passing judgment on the artistic worth of the action figures despite explicitly agreeing with Mann J that this was not permissible.
Though the Court of Appeal made it clear that Ainsworth could not seek any further selling in the US as he would be in breach of its copyright laws, the Court also held that Lucasfilm could not recover or enforce its $20 million US judgment. Given the large sum of money at stake and the potential ramifications of the decision for moviemakers in the UK, one would suspect this decision will be appealed. Indeed a trilogy of court cases would be fitting for the sequel studded Star Wars franchise.