Supreme Court, Decision of 27 July 2011, [2011] UKSC 39, Lucasfilm Ltd v. Ainsworth

The UK's highest court of appeal, the Supreme Court, decided that Lucasfilm's UK copyright was not infringed by the manufacture and sale of replica Star Wars Stormtrooper helmets in the UK. However, the court did accept jurisdiction to hear claims of infringement of U.S. copyright.

Background: The U.S. Action

The case began in the U.S. when Lucasfilm took action against Ainsworth for sales of replica Stormtrooper helmets into the U.S. via his website.

Ainsworth had been engaged to produce props for the first Star Wars film back in 1976, including the Stormtrooper helmets, and still owned the original moulds. Ainsworth made 3D prototypes of the helmets based on sketches of the characters and input from George Lucas.

In 2005, Lucasfilm was awarded summary judgment before the U.S. District Court of California in respect of claims for copyright infringement, unfair competition and trademark infringement, after Ainsworth unsuccessfully challenged the court's jurisdiction and then took no further part in the proceedings. An award of U.S.$20 million was granted to Lucasfilm.

After failing to enforce the judgment against Ainsworth in the U.S. (since he was not present there and had no assets in the U.S.), Lucasfilm brought their claim before the English courts where they claimed for (amongst other things) infringements of UK and U.S. copyright.

UK Copyright Infringement

Owing to defences available to Ainsworth under the Copyright, Designs and Patents Act 1988, Lucasfilm had to establish that the Stormtrooper helmets qualified as "sculptures" (so that these defences would not apply).

At first instance, the High Court set out a number of factors which may be considered when determining whether a work is a "sculpture". The court held that the helmets did not qualify as sculptures since their function was utilitarian: they did not have the necessary quality of artistic creation and lacked artistic purpose. The Court of Appeal upheld this decision.

The Supreme Court agreed with the decisions of the courts below: "it would not accord with the normal use of language to apply the term "sculpture" to a 20th century military helmet used in the making of a film....however great its contribution to the artistic effect of the finished film. The argument for applying the term to an Imperial Stormtrooper helmet is stronger, because of the imagination that went into the concept of the sinister cloned soldiers dressed in uniform white armour. But it was the Star Wars film that was the work of art that Mr Lucas and his companies created. The helmet was utilitarian in the sense that it was an element in the process of production of the film."[1]

U.S. Copyright Infringement – Jurisdiction

On the question of jurisdiction, the High Court and Court of Appeal had previously reached different conclusions.

The issue on which the Supreme Court was asked to decide was a fairly narrow one, namely "whether the English court may exercise jurisdiction in a claim against persons domiciled in England for infringement of copyright committed outside the European Union in breach of the copyright law of that country."[2]

The Supreme Court came to "the firm conclusion that, in the case of a claim for infringement of copyright of the present kind, the claim is one over which the English court has jurisdiction, provided that there is a basis for in personam jurisdiction over the defendant" (for example, if the defendant is resident in the jurisdiction or has otherwise submitted to the jurisdiction of the court).

The court ruled that there are no issues of policy which require English courts to refuse to enforce foreign copyright and on the contrary, "states have an interest in the international recognition and enforcement of their copyrights, as the Berne Convention [...] shows."[3]