"Stupid know-it-all officer. How about you get into this armour and try to see out of this damn helmet?” (Alpha-956 at the Cairn Installation in the Lucasarts computer game Jedi Knight: Jedi Outcast) A recent series of cases involves the helmets worn by the Stormtroopers in George Lucas’s Starwars films and games. The vacuum-moulded plastic prototypes for these had been made by Mr Andrew Ainsworth for the first Star Wars film, based on drawings by an artist and a clay prototype by a props-maker. Once George Lucas was happy with the plastic prototype, Ainsworth made 50 copies to be used in the first film

Subsequently – and without Lucasfilms’ permission – Ainsworth made and sold versions of the helmets to the public, including in the United States

Lucasfilms objected to this and, in 2005, sued Ainsworth in the United States. It obtained a default judgement in a District Court, with damages of $20m ($10m of which represented triple damages under the Lanham Act). Lucasfilms has not, however, been able to recover any of that sum from Ainsworth or his company

Lucasfilm also commenced proceedings in England, where Ainsworth and his company are based

The UK case centred on a number of issues – including whether the US judgment was enforceable or justiciable in England and whether or not Lucasfilms’ copyright had been infringed under UK law

The part of the decisions we focus on is whether or not Ainsworth had infringed Lucasfilms’ copyright

Both at first instance and on appeal, the UK courts held there had been no infringement of copyright under English law: [2008] EWHC 1878 (Ch); [2009] EWCA Civ 1328. The United Kingdom Supreme Court has now upheld this aspect of the decisions: Lucasfilm Limited v Ainsworth [2011] UKSC 39

The central issue here relates to the application of what is often referred to as the “design/copyright overlap”. In broad terms, under copyright law in both the United Kingdom and Australia, something that is essentially functional or utilitarian only gets limited copyright protection, and people wanting to protect functional or utilitarian items usually need to register them under designs law. Designs for functional and utilitarian items also usually get a shorter period of protection than under copyright law

Something that is a “work or artistic craftsmanship” or a “sculpture”, however, escapes this overlap, and is able to be fully protected under copyright

The UK court decisions confirmed that the helmets fall within the overlap: in particular, the Supreme Court held that they were not created as “sculptures” in their own right, but were functional and utilitarian, created only as part of the process of making a film. Ainsworth was therefore able to rely on the overlap provisions and make them without infringing copyright

If you’re a producer, a film or TV company or a designer, the take-away from the case is that, where props and costumes are likely to have an afterlife as merchandise, you should get early advice as to how the copyright/overlap provisions might apply. Failure to do so may see other people benefitting from merchandising opportunities, and you not being able to do anything about it

If you want to talk to a copyright lawyer about this or similar issues, contact Ian McDonald.