The High Court has delivered a judgment covering a multitude of issues relating to alleged intellectual property rights in the Stormtrooper costumes used in the original Star Wars movie. The judgement also deals with the question of when infringements of foreign copyright which occur overseas will be justiciable in the courts of England and Wales.
With reference to copyright, the court provided particularly useful guidance on the nature of "sculptures" and "works of artistic craftsmanship".
The claimant was responsible for the production of the Star Wars films. The first film was Star Wars IV – A New Hope in 1976. During production of the film, the defendant had been involved in the production of the iconic white Stormtrooper uniforms and helmets. In 2004 the defendant started selling replica Stormtrooper helmets from his website.
In 2006 the claimant successfully sued the defendant for copyright infringement in the US, in respect of helmets made in the UK but delivered to customers in the US. Later the claimant sued the defendant in the UK. It sought to alternatively: (i) have the US judgment enforced in the UK; (ii) sue the defendant for UK copyright infringement, on the basis that the helmets were either sculptures or works of artistic craftsmanship; or (iii) have the English High Court determine whether the defendant infringed US copyright under US copyright law in respect of the alleged infringements in the US.
The court was also asked to consider several other intellectual property claims and other copyright-related issues including what constitutes a design document under section 51 of the Copyright, Designs and Patents Act 1988 and the conditions required for copyright to be curtailed due to industrial exploitation under article 52 of the Act. This analysis deals only with the definition of "sculpture" and "artistic craftsmanship" and the jurisdiction issues.
Mann J set out the following points, which, while not a rule, should be considered in determining whether an object is a sculpture: (i) some regard has to be had to the normal use of the word "sculpture" and although the concept can go beyond what one would expect to find in art galleries it would be inappropriate to stray too far from what would normally be regarded by members of the public as sculpture; (ii) no judgment is to be made about artistic worth; (iii) not every three-dimensional representation of a concept can be regarded as a sculpture; (iv) the process of fabrication is relevant, but not determinative; (v) a sculpture should have as part of its purpose a visual appeal in the sense that it might be enjoyed for that purpose alone, whether or not it might have another purpose as well. The purpose is that of the creator – in other words, the fact that the object has some other use does not necessarily disqualify it from being a sculpture, but it still has to have the intrinsic quality of being intended to be enjoyed as a visual item; and (vi) in principle, and as a result of factor (v) above, two identical objects can be either a sculpture or not a sculpture – the difference between them lies in their purpose. One may be created for artistic purposes, the other may not. Only the one which is will be a sculpture.
As the helmets had not been created with artistic intent, Mann J held that they were not sculpture.
Works of artistic craftsmanship
To qualify as a work of artistic craftsmanship, an item must be produced through an act of craftsmanship and must be "artistic" – it must be a part of its purpose "to appeal to the aesthetic" or "appeal as a piece of art". Mann J considered that this class of copyright work related to things similar to the works produced by William Morris and the arts and crafts movement. He did not consider that the helmets fell within that group of things, nor that they had been created to appeal to the aesthetic. Therefore, they were not works of artistic craftsmanship.
Mann J held that Lucasfilm had failed to prove any of the English law causes of action it had alleged against Ainsworth. He then went on to hold that as a matter of private international law Ainsworth had not submitted to the jurisdiction of the US courts. Therefore, the US judgment could not be enforced in England. However, Mann J felt able to distinguish the present case from numerous previous decisions of the English courts refusing jurisdiction to deal with foreign property rights, to hold that English courts can determine "at least questions of infringement of foreign copyright cases". He also stated that it would be wrong for UK courts to take the view "that questions of subsistence [of foreign copyright] can never be decided here". On considering the expert evidence as to US copyright law, he held that the defendant had infringed US copyright by exporting products to the US, thus entitling the claimant to a remedy which could be enforced in the UK.
Mann J's list of criteria is useful. In recent years it has often been noted that the courts have adopted an overly wide definition of "sculpture", going so far as to hold plaster casts of toasted sandwiches to be protected as a sculpture (Breville v Thorn EMI). Hopefully Mann J's criteria, especially his focus on the normal use of the word and the intent of the creator, will lead to a line of decisions more consistent with everyday thinking. After all, the previous line of decisions ended up in the rather perverse situation that original but commonplace articles which could not be protected by design right, as being commonplace, could still be protected by copyright. Conversely, any rational view of the relationship between the two rights would suggest that copyright should be the harder right to obtain.
Whether or not Mann J was right on the facts of the case, some may question whether his reasoning stands up to close scrutiny. He states that the masks' purpose "was not to appeal to the aesthetic". Is this true? As Kant noted "Everyone has his own (sense of) taste". He then went on to note that their purpose was only "to give a particular impression in a film". Why should this purpose prevent a mask from being a work of artistic craftsmanship? Braque, Dali, Matisse, Miro and Picasso all designed costumes and sets for the Ballet Russes in the 1910s. Does the fact that they were designed to give a particular impression in a ballet mean that they were not works of artistic craftsmanship? Finally, he states that "it was no part of [the creators'] purpose that [the helmets] should in any way appeal as a piece of art". African tribal masks are designed to form part of rites of worship – yet are they not works of artistic craftsmanship (or indeed, of art)? Earlier he quotes with approval a New Zealand case to the effect that a "craftsman is a person who makes something in a skilful way and takes justified pride in their workmanship. An artist is a person with creative ability who produces something which has aesthetic appeal". By these criteria, Lucasfilm is an artist and Ainsworth a craftsman, so why is their joint work not one of artistic craftsmanship?
Mann J's decision to rule on infringement in the US of US copyright law may also prove to be controversial. Mann J accepted that the general question of whether infringement abroad of foreign copyright was justiciable by English courts had not been previously decided. However, Mann J considered that the cases showed a tendency to move away from Victorian ideas that issues of the infringement of foreign property rights were only justiciable in the country of the alleged infringement. He even went on to say that questions of the subsistence of copyright in foreign countries might be justiciable in the English Courts, though that part of his judgement is obiter.
This seems likely to be considered again if the case goes to the Court of Appeal. Unless the Court of Appeal were to reverse the decision of Mann J on the subsistence of UK copyright, the Court of Appeal would be bound to have to decide this issue.