Lucasfilm Ltd & Ors v Ainsworth & Anor

Three-dimensional articles made for use as film props are not necessarily sculptures or works of artistic craftsmanship. The decisive question is the purpose of their creation. A utilitarian article may qualify only where it was also intended to possess visual or aesthetic appeal in its own right. Copyright in design drawings is not infringed by making articles to the design where the articles are not artistic works, so that Copyright, Designs and Patents Act 1988, section 51 applies. Industrial exploitation may also shorten the copyright period under section 52, including where manufacture occurred abroad. An English court may determine an appropriate claim for infringement of foreign copyright, particularly where the relevant factual issues are already before it and the foreign judgment cannot otherwise effectively be enforced.

The claimants, companies associated with the Star Wars films, sued the defendants over replicas of helmets, armour and other props made for the first film. The claims included infringement of English copyright, passing off, confidence, contract, enforcement of a Californian judgment, and infringement of United States copyright. The defendants counterclaimed copyright in the articles.

The court determined whether the articles were sculptures or works of artistic craftsmanship, whether sections 51 and 52 of the Copyright, Designs and Patents Act 1988 provided defences, whether copyright was impliedly assigned, whether the tools were subject to contractual or equitable restrictions, whether the United States judgment was enforceable, and whether the United States copyright claims were justiciable in England.

1. English copyright. The Stormtrooper helmet, armour and other helmets were not sculptures. Their purpose was to portray characters in a film, not to provide objects intended to be enjoyed visually for their own sake. They were also not works of artistic craftsmanship. Although the defendants’ manufacturing work involved craftsmanship, the articles lacked the necessary artistic purpose.
2. The relevant drawings and models were design documents or models within section 51 of the Copyright, Designs and Patents Act 1988. Since the articles were not artistic works, making articles to those designs, or copying articles made to them, was protected by section 51.
3. Section 52 provided an alternative defence. The admitted industrial manufacture and marketing satisfied the statutory conditions. Manufacture outside the United Kingdom was not excluded, and the relevant period had expired under the transitional operation of section 10 of the Copyright Act 1956.
4. Any copyright which the defendants might otherwise have acquired in the articles was, on the contractual facts, impliedly assigned to the claimants. The commissioner required the ability to control exploitation and exclude competing use. No equivalent term required delivery of, or restricted use of, the defendants’ tools.
5. The confidence claim failed. Confidentiality in the film concepts and designs had disappeared after public disclosure. The precise dimensions were not imparted confidential information, since they emerged through the defendants’ own prototyping and fabrication.
6. The passing-off claims failed. Statements claiming that the defendants had created the original articles were inaccurate, but did not represent that the products were licensed or supplied by the claimants, nor did they pass off the claimants’ goods as the defendants’.
7. The Californian judgment was not enforceable. Internet advertising and sales into the United States did not constitute the physical presence or equivalent connection required by Adams v Cape Industries plc [1990] Ch 433. The court nevertheless considered that genuinely compensatory damages would not be barred by section 5 of the Protection of Trading Interests Act 1980; only the multiplied element would be excluded.
8. An English court could determine the United States copyright claims. The factual issues substantially overlapped with those already decided, and the defendants had not submitted to the United States jurisdiction in a way that made the United States judgment enforceable in England. On the evidence and concessions, the articles were not functional or utilitarian for the relevant United States copyright tests.
9. The United States copyright claim succeeded. All other claims and the counterclaim failed. Questions of relief were adjourned for further determination.