Authored By: Simran Kaur
Goldsmiths University of London
Case Identification:
Case name: Lucasfilm v Ainsworth [2011] UKSC 39
Court: Supreme Court
Judgement Date: 11th October, 2006
Parties involved: Lucasfilm Limited and others (Appellants) & v Ainsworth and another (Respondents)
Nature of the case: Copyright Infringement / Intellectual Property Dispute
Procedural History
The initial proceedings were held in the US District Court by the Lucasfilm company on the 11th October, 2006. The appellants were concerned with the infringement of copyright with the Star Wars costumes, specifically the Stormtrooper helmet.[1] Andrew Ainsworth designed and modelled the character designs which were used in the film’s production. After the film’s release, he sold replicas of the items.
The Lucasfilm company sued Shepperton Design Studios, owned by Ainsworth, for copyright infringement as they owned the images and artistic rights for the helmets.[2] The US District Court ruled that Ainsworth was marketing unlicensed replicas of the Stormtrooper helmet and other costumes, misleading buyers about the authenticity of the item.
The Lucasfilm company wanted to extend the ban within the UK. They applied for copyright infringement but were rejected. The High Court was in favour of Ainsworth, initially ruling that the Stormtrooper Helmet did not qualify as a sculpture[3], arguing that the purpose of the helmets was functional rather than artistic.[4] The appeal was initiated by Lucasfilm, having disagreed with the High Court. Lucasfilm argued that the helmet qualified as a sculpture due to the artistic choices made for its production. The Court of Appeal maintained the High Court’s decision, stating that the helmets served a utilitarian function; for stage production5 rather than “works of artistic craftsmanship”.6 Lucasfilm was unsatisfied with the decision and issued a copyright complaint to the Supreme Court, claiming damages. Here, the Supreme Court outlined the differences between functional works and artworks. It maintained the Court of Appeal’s ruling, reinforcing the decision that the Stormtrooper helmets were functional items and therefore, could not be protected by copyright laws.
Facts of the Case
The Star Wars film franchise was conceived by George Lucas[5], including the characters and story from 1974 to 1976. During this period, there were designs made for the characters by various individuals. The most notable being Ralph McQuarrie, Liz Moore and Brian Muir.[6] These designs were influenced by artist Andrew Ainsworth, who modelled and created the final version of the Stormtrooper helmet. Following the film’s release, Ainsworth sold multiple items; between $8000 and $30,000 of sculptures and artefacts from the film.[7] At the US district Court case, Judge R. Gary awarded Lucasfilm $20 million for damages for copyright infringement and unfair competition.[8] This award coincided with a ban towards Shepperton Design Studios, prohibiting any further reproduction and selling of Star Wars products within the US.[9] However, Ainsworth was able to reproduce the items and continue selling the helmets and full armour within the UK as the copyright was registered in the US. Lucasfilm sought to establish artistic license over the
- “The Helmets were costume pieces ‘to identify a character.’” Kristen Elisabeth Bollinger, ‘A New Hope for
Copyright: The UK Supreme Court Ruling in Lucasfilm Ltd v Ainsworth and Why Congress Should Follow Suit’ (20 edn, J Intell Prop L 2012) 87
- Supreme Court, ‘Lucasfilm Limited and others (Appellants) v Ainsworth and another (Respondents) [2011] UKSC 39 ‘ (Press Summary, 27 July 2011)
<https://supremecourt.uk/uploads/uksc_2010_0015_press_summary_74e6b17777.pdf> accessed 17 January 2025
helmets in the UK. The claim was taken to the High Court, to utilise English copyright laws, which enables owners to prevent any unauthorised use of the work.[10]However, Ainsworth relied on the now repealed s51-52 CDPA 1988.[11] The legislation “contained an exception which limited the term of copyright protection for certain artistic works when they had been industrially manufactured.”[12]
The Lucasfilm company continued to pursue damages against Ainsworth, being unsatisfied with with the results of the case. They appealed for copyright infringement claims over the Star Wars costumes sold by Ainsworth, specifically the Stormtrooper helmet.
Legal Issues and Arguments
The case highlights several legal issues, one of the main ones being the issue of copyright infringement. The case focused on whether the Stormtrooper helmets designed and produced by Andrew Ainsworth for the film Star Wars – New Hope was subject to any copyright protection. However, Lucasfilm argued that Ainsworth’s reproduction of the helmets undermined the company’s artistic ownership. The case discussed the difference between functional and artistic works. It highlighted a significant flaw within the English copyright laws, revealing its restrictive nature and narrow definitions surrounding craftsmanship. The ruling from the Lucasfilm v Ainsworth case prevented the helmet from receiving copyright protection; which lasts 70 years after the death of the author.[13]
Another issue was the question of design rights and whether UK design law could be extended to protect visual designs such as drawing and templates of the objects. It is evident that UK laws follow a utilitarian approach to copyright laws, if the object serves a functional purpose, it should not be withheld from public usage. This differs from the US rationale and creates another issue, whether the US decision can be upheld in the UK and the reach of copyright laws across various jurisdiction? To deal with foreign infringement claims in English Courts for damages ‘sustained in England’[14] the Supreme Court incorporated Article 5 of the Brussels Convention.[15] This article allows individuals to be sued in States other than their own. Thus, Lucasfilm were able to sue Ainsworth in the UK as he was still able to replicate and sell the costume parts despite the US ban.
Court Analysis
The court analysis for the Lucasfilm v Ainsworth [2011] UKSC 39 case involved several key considerations. The first was the nature of the helmets, the courts had to determine the purpose of the helmet, was it an artistic piece or a functional prop? As mentioned before, the Lucasfilm company argued that their product was artistic due to the design choices made and visualisation of the helmet on paper. Ainsworth countered this by arguing that he created these objects as costumes for the film, to be used by actors as functional props. It is not enough to say that an object is a sculpture due to the fact that it was the result of artistic expression and imagination, especially if it was made for functionality.
The copyright infringement was examined at court, it raised the question of what can be considered a ‘sculpture’ under CDPA 1988 s2. The Supreme Court maintained the two previous ruling in the English courts, outlining that the helmets were not artistic works as they were created for the sole purpose of film production. This decision by the Supreme Court set a precedent for the interpretation of copyright and design rights within the UK.
Significance
The case is significant within intellectual property laws for several reasons. Firstly, it reflects the UK’s standing on what can be protected as artistic objects, providing interpretation on what objects may be protected under the Copyright, Design and Patents Act 1988.[16] Here, the Supreme Court ruled that the Stormtrooper helmets were not eligible for protection under UK copyright laws. Under the CDPA definition, a sculpture “includes a cast or model made for the sculpture.”[17] The UK’s stance towards artistic objects is evident through Marcel Duchamp’s argument. He suggests that “an everyday object can be raised to the dignity of a work of art by the artist’s act of choice.”[18] However, it cannot be deemed a work of art if the object itself has a function or used for a particular service.
The helmets were not viewed as sculptures yet, despite the importance of the case and the precedents it sets for future cases, it did not provide any clarity over what a ‘sculpture’ is or definitions for ambiguous artistic pieces. This also poses a great issue for enforcing intellectual property rights, English copyright laws must provide a clear understanding of what objects can be protected under its legislation. Artists would lose the incentive to create and display their creative works if they believe their art does not qualify for protection. The copyright laws must be reformed, and updated to reflect modern artforms. The Stormtrooper helmet is a prop used in film production however, its iconic structure and design would also warrant it as an artistic piece in its own right.
The case also addressed the issue of jurisdiction, with the UK courts ruling that they did not have the authority to enforce a U.S. judgment for copyright infringement. The inclusion of Article 5 of the Brussels Convention allowed Ainsworth and many others to recreate the costumes and sell counterfeit items globally due to being props and bearing no artistic value.
[1] Lucasfilm Ltd Wins Major Copyright Infringement Lawsuit Against Star Wars Stormtrooper Pirate’ (Press Room , October 11, 2006)
<https://web.archive.org/web/20110910135838/http://www.lucasfilm.com/press/news/news20061011.h tml> accessed 17 January 2025
[2] ibid
[3] Copyright, Designs and Patents Act 1988 s4(1)
[4] ibid
[5] Supreme Court, ‘Lucasfilm Limited and others (Appellants) v Ainsworth and another (Respondents) [2011] UKSC 39 ‘ (Press Summary, 27 July 2011)
<https://supremecourt.uk/uploads/uksc_2010_0015_press_summary_74e6b17777.pdf> accessed 17 January
2025
[6] Jason Debord, ‘Star Wars “Prototype” Stormtrooper Helmets’ (Original Prop Blog, 24 June 2008)
<https://www.originalprop.com/blog/2008/06/24/star-wars-prototype-stormtrooper-helmets/> accessed 17 January 2025
[7] Supreme Court, ‘Lucasfilm Limited and others (Appellants) v Ainsworth and another (Respondents) [2011] UKSC 39 ‘ (Press Summary, 27 July 2011)
<https://supremecourt.uk/uploads/uksc_2010_0015_press_summary_74e6b17777.pdf> accessed 17 January
2025
[8] Lucasfilm Ltd Wins Major Copyright Infringement Lawsuit Against Star Wars Stormtrooper Pirate’ (Press Room , October 11, 2006)
<https://web.archive.org/web/20110910135838/http://www.lucasfilm.com/press/news/news20061011.h tml> accessed 17 January 2025
[9] ibid
[10] Justine Pila, An Intentional View of the Copyright Work (University of Oxford July 1, 2007) 535
[11] ‘Repeal of section 52 of the Copyright, Designs and Patents Act 1988’ (The Intellectual Property Office, March 2017)
<https://assets.publishing.service.gov.uk/media/5a821456ed915d74e34019ce/160408_guidance_s52_final_ web_accessible.pdf> accessed 17 January 2025
[12] ibid
[13] Copyright, Design and Patent Act 1988, s12(2)
[14] Kristen Elisabeth Bollinger, ‘A New Hope for Copyright: The UK Supreme Court Ruling in Lucasfilm Ltd v Ainsworth and Why Congress Should Follow Suit’ (20 edn, J Intell Prop L 2012) 87
[15] Alan reed, ‘Article 5(1) of the Brussels Convention, Restitutionary Claims and the Need for a New Approach’ (N Ir Legal Q 1997) 243
[16] Copyright, Designs and Patents Act 1988 s4(1)
[17] Copyright, Designs and Patents Act 1988 s4(2)(b)
[18] SJ Evnine, Ready-Mades: Ontology and Aesthetics (Oxford Academic 2013) 407–423
