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May the Force be with the Supreme Court

62 StarWarsInternational variations in copyright time limits have led the Supreme Court Finding Against George Lucas in the UK

Mr Andrew Ainsworth made 50 helmets for the first Star Wars film, and subsequently using his original tools made the helmets and armour for sale to the public. The United Kingdom's relatively new top court, The Supreme Court, issued judgment in the case of Lucas Films, makers of the Star War films, and others against Andrew Ainsworth and others on the 27 July 2011, with the wisdom and might of Obi Wan Kenobi.

The Supreme Court has taken over from the anachronistically styled House of Lords as the Court of last resort within the England as well as acting as place of appeal from the other constituents of the United Kingdom such as Scotland and Northern Ireland.

The case concerned Stars Wars and more importantly who has Intellectual Property rights and control over the reproduction and manufacture of the Imperial Stormtroopers helmets and armour.


After years of entrenched court work both in England and the USA, the Supreme Court decided the following:- First, courts in the United Kingdom could determine Intellectual Property cases or disputes arising from abroad provided the Defendant resided within the English jurisdiction.

Secondly, the steely George Lucas who vigourously pursued this action against Mr Ainsworth whereby the US judgment was upheld against Mr Ainsworth. The US court had determined Mr Ainsworth had breached Mr Lucas's Intellectual Property rights and as such had been ordered to pay Mr Lucas's damages of $10million.

Thirdly, Mr Ainsworth was entitled to manufacture and sale the distinctive helmets in England, but not elsewhere. Lucas Films argued in the Supreme Court at least that the helmet designs qualified as a work of art namely sculptures, whereas Mr Ainsworth's legal team contended that they were props or works of artistic craftsmanship.

Lucas Fims contended that the helmets added to the artistic quality of the film and were sculptures with no other purpose. Mr Ainsworth said they were tools, props and had a utilitarian purpose.

The designs of the helmets and armour were based upon the artwork of artist Mr Ralph McQuarrie and created into three dimensional models by Mr Aisnworth.

The Supreme Court decided that pursuant to section 51 of the Copyrights Designs and Patents Act 1988 Mr Ainsworth constituted copying of designs, but the designs were not of an artistic work.

Why was it important to make the differentiation? The copyright time limits in English law vary depending on whether it is a work of art or a design which is not a work of art. If not a work of art or sculpture then the time limit would be 15 years from date of marketing. The first Star Wars film was in 1977 and so the copyright had expired and Mr Ainsworth was entitled to exploit the design in the United Kingdom.

The case raises some interesting issues. Filmmakers, designers and prop manufacturers will be looking very closely to see the extent of their Intellectual Property claims or rights. Will designers and prop manufacturers be encouraged to exploit design features of tv programmes and films from bygone years?


Lucas Films contends that the decision of the Supreme Court is anomalous with other jurisdictions where their rights have been virtually upheld. Will this deter Claimants using the English Courts to pursue Intellectual Property issues cases? This has to be countered that each case has its own facts and applications of the law.

The UK courts willingness to consider intellectual infringements from abroad brings the UK into line with the European Union, so should make the United Kingdom jurisdiction a more attractive venue to resolve disputes.

A spokesman for Lucas Films said they remained '...committed to aggressively protecting its intellectual property rights relating to Star Wars in the UK and around the globe.'

Whilst it is appropriate that copyright and Intellectual Property right holders protect these rights as hard as possible, this case is a salutary reminder that litigious parties should consider alternatives to slogging it out in court which is time consuming, and expensive. In this case there was economic disparity between Lucas Films and Mr Ainsworth who described it as a David and Goliath scenario. Arguably, this case could have been resolved through suitably licensing with Mr Ainsworth being limited to where he could operate and possibly some royalty payment to Lucas Films.

However, the case has cast light on the differentiation between artistic work and utilitarian design and will be a useful benchmark within the film and TV industries and possibly in other applications.

Does anyone want a genuine reproduction bowler hat as worn by John Steed in The Avengers?

Julian Wilkins

Julian Wilkins is Editorial Director for Blue Pencil Media Limited. Julian has a LLB (Hons) in law and M.Phil in law as well as a Diploma in European law and was admitted as a solicitor in 1988; he practices in the area of media, entertainment, and intellectual property law as a consultant for Devereaux Solicitors in London. Julian is also a Notary Public and CEDR accredited commercial mediator. Julian has written for academic publications and contributed to an Exhibition Catalogue about 1960s photographer Philip Townsend. Julian is a member of the International Association of Entertainment Lawyers and also the British Institute of International and Comparative law. Julian is a finalist in The Media Lunch Club “Short Circuit” script competition to be held in November 2011. Julian’s comments “The rapidly changing world economy and technology is presenting incredible opportunities for the Creative Industries and Blue Pencil hopes to reflect and contribute to these changes.”

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