"The Death Star" isn't just a nickname for Cravath, Swaine & Moore

Posted by Charles Colman

As regular readers of Above The Law know [shameless plug for the site's recent profile of my firm], the "Death Star" is a not-so-affectionate nickname some have bestowed upon the New York/London legal powerhouse Cravath, Swaine & Moore.  But the term could also refer to the unstoppable (at least, for one day) intercontinental blogging duo of yours truly and UK Twitter phenom Emily Goodhand.  (Admittedly, no one has used the term "Death Star" to refer to us... yet.)  By day, Emily is the Copyright and Compliance Officer for the University of Reading; by night, she blogs at Copyright For Education and sends out witty and insightful tweets on copyright law to thousands of followers under the handle @copyrightgirl.

A handful of you might know that the term "Death Star" has also been used to refer to a big space station in an obscure movie franchise.  Which brings us to LAW OF FASHION's reason for requesting Emily's expertise on UK copyright law in today's post.  This week, the UK Supreme Court ruled that the iconic "Stormtrooper" helmet from the Star Wars movies is not a "sculpture," which means that for purposes of UK copyright law, the helmet's designer -- who does not own any IP rights in the work -- may nevertheless sell replicas of it



Since this writer is only licensed in the State of New York, and feels that he is only competent to write about U.S. copyright law, Emily graciously lent LOF a hand by walking us through the UK Supreme Court's ruling.  No, this may not be "fashion law" -- at least, not for most of us -- but LOF has blogged about costumes before... and hell, it's close enough.  So without further ado, let's hear what Emily had to say about the case:

When is a helmet fashionable?

You may not think that Stormtrooper helmets are currently in fashion, but a recent judgment from the Supreme Court in the UK has just opened up a market for them.  The background to the courtroom saga is as follows: an English man named Andrew Ainsworth created some helmets based on drawings done by another man.  These helmets were used in the highly successful "Star Wars" films, which came out in the late 1970s and early 80s.  In 2004, Mr. Ainsworth, who had kept the original moulds he had used to make the helmets, started making and selling Stormtrooper helmets through his website.  Thereafter,
Lucasfilm, which owns the rights to all of the "Star Wars" movies, sued Ainsworth in California for copyright infringement, receiving a damages award of up to $20 million.  However, because Mr Ainsworth was not “present” in California, Lucasfilm had to seek to have the US judgment enforced in the UK, and so took its case to the British High Court.

When it’s in the UK...

The High Court largely dismissed Lucasfilm’s claims, so LF made its case to the Court of Appeal.  But the Court of Appeal upheld the High Court’s judgment, dismissing the copyright claims because the helmet did not qualify as an artistic work and was therefore not protected under copyright law.  The Court of Appeal also stated that the US copyright could not be enforced in the UK, because Mr. Ainsworth had no physical presence in the US.  (The mere fact that Ainsworth had sold helmets to US citizens through his website did not suffice.)  Frustrated, Lucasfilm challenged the decision in the Supreme Court, the UK’s highest ruling court.

The Supreme Court ruling

Because this case was taking place in the UK, the Supreme Court found that the rules governing copyright protection under the UK’s Copyright, Designs and Patents Act applied.  As the Court explained, "actions for infringement of intellectual property rights cannot be brought outside the State in which they are granted or subsist."  [Ed. Remember... territoriality!]

On the scope of protection issue, the Supreme Court agreed with the reasoning of the lower courts: the helmets were not "sculptures" (i.e., artistic works) under the UK Act, so they were not entitled to the usual copyright protection of the life of the creator plus 70 years.  The Supreme Court judges instead found the helmets to be a mixture of costume and prop -- utilitarian items only -- noting that "[i]t 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[.]"  [Ed. Hyperlink LOF's.  It's noteworthy that the Court expresses reservations about "passing judgment on the merits of either literary or artistic works -- the same concern American courts have voiced on numerous occasions, following a landmark 1903 U.S. Supreme Court case on the subject.]  The UK Court noted that under UK law, "designs" and "artistic works" are different concepts, and that under the 1956 Copyright Act, there can be no more than 15 years of protection for "any work in respect of which a corresponding design could have been registered under the 1949 [Copyright] Act."  [Ed. As someone who turned 29 this year -- and last year -- I can attest that the original "Star Wars" trilogy is more than 15 years old.  FYI, Emily explained to me via e-mail that works of design made after 1989 are entitled to 25 years of protection, rather than 15.]

One interesting wrinkle in this case involves the drawings of the helmet.  If the helmet had been classified as an artistic work, Mr. Ainsworth would have infringed the copyright in the drawings by making the helmets that he sold on his website.  But because the helmet was not so classified, Mr. Ainsworth was able to raise a rarely invoked defense under Section 51 of the UK’s Copyright Act, which allows for the making of anything other than an artistic work or a typeface from a design document without infringing the copyright in that design document. 

Final thoughts

So, what can we take from this judgment?  Well, on its face, the opinion might be read to state that artists and creators making costumes and props for film and theatre are not entitled to copyright protection
for their creations in the UK (though this depends in large part on what they are.)  The Supreme Court's opinion, if read in this way, raises serious concerns about merchandising and protecting one's brand.  On the other hand, in situations like this, it would typically be preferable to go down the trademark or "registered design" route, and license the brand that way, instead of relying on an increasingly complicated copyright regime. 

The other significant outcome of the judgment is that foreign (i.e., non-European) companies and individuals will be permitted to sue in the UK for the infringement of their copyrights when the infringer resides in England.  This will likely result in an increase in the number of copyright cases brought in the UK, which could have a major impact in the e-commerce realm.  Did the Supreme Court throw Lucasfilm out of court, only to see it become more powerful than anyone could have imagined?  Perhaps.  Meanwhile, somewhere in England, the manufacture of large quantities of Stormtrooper helmets has begun...

[The attorney behind LAW OF FASHION thanks Emily for taking the time to share her insight with us.  Please note that any views expressed in this post are solely those of the person expressing such views.  This post is for entertainment and informational purposes only, and does not constitute legal advice or create an attorney-client relationship among any individuals or entities.]