Lucasfilm Limited & Ors v Andrew Ainsworth and Shepperton Design Studios Limited [2008] EWHC 1878 (Ch)

On 31 July, Mann J handed down an extensive judgment concerning claims to copyright in costumes created for the original Star Wars film. The Claimants, who were the original Star Wars production companies (hereafter the “Lucas Companies”), sued Andrew Ainsworth and his company in relation to Ainsworth’s on-line sale of replica Star Wars costumes. The Lucas Companies failed to enforce a previous US judgment in the UK but succeeded in a claim for infringement of US copyright.

Ainsworth had been a sub-contractor involved in the creation of the Stormtrooper and other costumes used in the film, during which time he had created moulds for the Stormtrooper helmet which he was now utilising to produce replicas. On one occasion he advertised in the US and some of his products were sold and delivered to US customers. This activity attracted the attention of the Lucas Companies.

The Lucas Companies commenced an action for copyright infringement, unfair competition and trade mark infringement against Mr Ainsworth in California. Mr Ainsworth challenged the California court’s jurisdiction but then took no further part in the proceedings. On 26 September 2006, default judgment was ordered against Mr Ainsworth for $20m USD. In the present action, the Lucas Companies sought to enforce that judgment in the UK to the tune of $10m USD in damages or alternatively, hoped for success in a claim for US copyright infringement.

The Lucas Companies claimed that Mr Ainsworth was infringing their copyright, was passing off or alternatively that he had misused confidential information which belonged to them. The Lucas Companies also claimed that any new copyright in the replicas should be assigned to them. Mr Ainsworth counterclaimed, claiming that the replicas that he had made were copyright works and that he was not obliged to transfer copyright in them to the Lucas Companies.

In order to create the original Stormtrooper helmet, Mr Ainsworth copied two drawings containing a depiction of a Stormtrooper and a clay model. He did not dispute that he had used the drawings to copy the helmet but he claimed that the final version contained detail added by him. In order to create the Stormtrooper armour, he was provided with tools or casts from which he made his own tools to produce copies of the armour. Mr Ainsworth also copied other types of helmet from drawings and sketches which had been provided to him. Copyright in the original drawings and sketches was found to be owned by the Lucas Companies. However, Mr Ainsworth had two defences to copyright infringement which operated in his favour. Section 51 of the Copyright, Designs and Patents Act 1988 (which states that it is not an infringement of copyright to make an article from a design document) provided a defence, as did the predecessor to Section 52 of the same Act (which limits the term of copyright protection to 25 years (previously 15 years) where an artistic work has been industrially exploited).

The Stormtrooper helmet that Mr Ainsworth made was not a sculpture as it was not made with an artistic purpose. The same reasoning applied to the Stormtrooper armour and to the other helmets which Mr Ainsworth made. Neither were the Stormtrooper helmets, armour or other helmets works of artistic craftsmanship as they were not made to appeal as pieces of art. The Lucas Companies claimed that if Mr Ainsworth had acquired copyright in any of the items that he made, he was contractually obliged to assign those copyrights to them. The Judge held that none of the items in question were copyright works but if they had been, copyright in them would have been equitably owned by the Lucas Companies. Mr Ainsworth was working to a commission, producing articles for which the Lucas Companies had provided clear specifications; it was implicit in the relationship that Mr Ainsworth would not retain copyright. Mr Ainsworth’s counterclaim that, due to additions made by him during the creative process, he was the owner of new copyright works, failed.

In terms of passing off, the Lucas Companies claimed that Mr Ainsworth was misrepresenting his work to be licensed by them. The Judge stated that such a misrepresentation was not in fact made.

All confidentiality in any drawings and information provided to Mr Ainsworth disappeared when the material was put in the public domain, which it was when the film was publicised and then shown. As such, Mr Ainsworth had not misused any confidential information.

The Lucas Companies asked the English Court to enforce the US copyright claim. The application of Adams v Cape Industries plc [1990] Ch 43 meant that neither Mr Ainsworth nor his company was sufficiently present in the US at the date of service or commencement of the US proceedings, or at any time, to allow the US judgment to be enforced in the UK. Internet trading into the US from the UK did not establish a sufficient presence for this purpose. The Judge said: “The Cape principles were established at a time when trade between countries could take place by telephone, letter and telex. It was not sufficient to establish the enforceability of a foreign judgment that there be trading into that foreign country by those means, no matter how extensive the trading. Internet trading is not materially different for these purposes. It just makes the establishing of contracts easier – advertising is easier, placing an order is easier and quicker and payment is more easily (and usually more quickly) achieved. It does not make the seller more present in the buyer’s country. If Mr Ainsworth were present in the US by means of his internet trading, why is he not present in every country into which he sells goods by means of an internet deal? That would be a very far-reaching conclusion, and one which would not be justified by any underlying principle, or at least not by any principle underpinning Cape.”

After considering the authorities on the enforcement of foreign intellectual property rights in England, the Judge considered that it was appropriate to decide the issues from a US copyright perspective. The most compelling point in favour of the Court determining the US copyright claim was that Mr Ainsworth did not accept the jurisdiction of the US courts, but at the same time submitted that the claim should not be brought in the UK because the US was the only appropriate place to bring it. As such, if the Judge was not to allow the Lucas Companies to bring their claim for US copyright infringement in the English courts, Mr Ainsworth would escape the consequences of his wrong.

In the US, copyright cannot subsist in functional or utilitarian devices, nor can copyright be infringed in drawings by the production of a functional or utilitarian device. On the evidence, the articles were not functional or utilitarian for the purposes of the relevant infringement test and the Lucas Companies’ claim based on infringement of US copyright succeeded.