Clear Your Mind: Episode III - Intellectual Property: Artistic Works

Continuing the countdown to Episode IX, this week sports and media lawyer and lifelong Star Wars fan, John Devine, looks at what the saga can teach us about understanding and managing our intellectual property rights.

“Only Imperial Stormtroopers are so precise.”  Ben ‘Obi-Wan’ Kenobi, Episode IV: A New Hope

While Obi-Wan’s assessment of their aim throughout the original trilogy may be questionable, Imperial Stormtroopers were actually the target of a dispute between Lucasfilm and one of the original film’s contractors.

Back story

The first movie, now Episode IV: A New Hope, was filmed at Elstree Studios, England. Costume Designer John Mollo recalled George Lucas had conceived the imposing look of the Imperials as “efficient, totalitarian, fascist”[1] hence the Stormtroopers’ striking white armour, which was first imagined and brought to the canvas by legendary Star Wars concept artist, Ralph McQuarrie. Lucas said: “For the stormtrooper and Darth Vader, Ralph had a very strong influence. Essentially, they are his designs.”[2]

From McQuarrie’s concept, the 3-D sculpt of the now iconic helmet was realised by artist Liz Moore, who sadly passed away before the original film was released and was therefore unable to see how popular her creation ultimately became[3].

The body armour was subsequently sculpted by Brian Muir, who had to design the back of the costume completely from scratch since this was not shown in McQuarrie’s original painting. Muir also sculpted perhaps the most iconic Star Wars facemask and helmet, Darth Vader.

The origins of a dispute

Due to a temperamental vacuum-forming machine combined with a growing workload[4], Lucasfilm outsourced some of the production of the hard armour costume parts to a local propmaker, Andrew Ainsworth. He was commissioned in 1976 to fabricate the Stormtrooper helmets from two drawings, a clay model of Moore’s helmet and some moulds for the body armour, from which he made his own, producing approximately 50 sets.

The allocated cost of the Stormtroopers was £40,000[5] (which converted to US$93,000 - remember those halcyon days of the GBP/US Dollar exchange rate!), representing the most expensive element of the costume budget.

The armour was vacuum-formed in white ABS plastic, but the helmet was a complex design with undercuts and required a more malleable material, so was pulled from khaki HDPE plastic and then painted in latex white.

Only a few ABS Stormtrooper helmets were produced for close ups, such as those worn by Harrison Ford (Han Solo) and Mark Hamill (Luke Skywalker) on the Death Star. After the original Star Wars was released, Ainsworth kept his moulds.

The battle begins

Much later, Ainsworth began producing and selling the helmets and armour online in 2004. Some of the helmets and costumes were sold to the US, where Lucasfilm successfully brought an action against him. A Californian court held that this infringed Lucasfilm’s copyright and awarded damages of $20 Million.

Lucasfilm sought to enforce this judgment in the UK in Lucasfilm Limited and other v Andrew Ainsworth and another [2008] EWHC 1878 (Ch). When considering whether or not the helmet was a sculpture, Mann J had noted, amongst other things, when the case was heard by the English Court at first instance, that:

• not every 3-D representation of a concept can be regarded as a sculpture;
• the object must have been created with the purpose of ‘visual appeal’, whether or not it may have another purpose as well;
• the helmets had not been created with ‘artistic intent’, they were primarily intended for use as a prop in a movie so did not meet the required criteria to be regarded as sculptures under the applicable legislation, The Copyright, Designs and Patents Act 1988 (as amended) (CDPA).

The propmaker strikes back

The case went to the Court of Appeal and then all the way to the UK Supreme Court which ultimately held:

1. the Stormtrooper helmets were not entitled to copyright protection, because:

• they were ‘utilitarian’ (i.e. the helmet was an element in the process of production of the film); and
• they were not sculptures that could qualify for protection as ‘artistic works’ - rather the Court considered the artistic work to be the original Star Wars movie itself, in which the costumes only featured.

2. US copyright claims were capable of being heard in England by the English Courts, who were able to consider the claims for breach of US copyright against Mr Ainsworth - however the US Court judgment obtained in respect of the US infringement was unenforceable in England.

What is the meaning of this?

Ultimately, all this meant Mr Ainsworth was still free to sell his helmets and armour in the UK but not in the US.

He could not, of course, make any express reference in his promotional materials or website to any Star Wars character names related to any products he fabricated, which were and remain the exclusive property of Lucasfilm, protected separately by trademark law.

The distinction made in relation to the helmet design is interesting, since the subjective nature of a work will determine whether or not copyright laws will assist to protect the rights of its creator.

There are also different periods of protection afforded to different classes of work, whether artistic, aesthetic or purely functional. Whatever item you are developing for use in a business context, take early advice to ensure you know exactly what your IP rights will eventually be in the finished article and how long they will last for.

These are, most commonly, copyright and/or design right, but you may wish to apply for patent protection if the applicable qualifying criteria can be met (briefly, a patentable item has to be new, involve an inventive step and be capable of industrial application).

Copyright ownership explained

As to copyright more broadly, does it make a difference if an employee or an outsourced contractor creates the work?

Generally, copyright in an artistic work vests automatically in the creator (known as the ‘author’) (s11(1) CDPA), but if the author is an employee, s11(2) CDPA provides statutory protection to employers who are able to show that the work was created "in the course of [the employee's] employment". The key questions here are:

• Is the author genuinely an employee or an independent contractor?
• If an employee, was the work created ‘in the course of employment’?

Firstly, regardless of the parties’ choice of words (e.g. employee or consultant), the Court will always look at the nature of the relationship between them to determine status, including (amongst other things) the degree of control exercised, provision and/or ownership of equipment used and the tax arrangements of payments between them.

Know your rights

If the author is a consultant, bear in mind that copyright ownership will, by default, vest in the consultant, even if they have been commissioned specifically to produce the work for you.

If that outcome is neither intended nor desired, your engagement terms will need to deal expressly with that issue and, ideally, contain an assignment of the right (which can relate to future works) or a licence, the terms and scope of which are set out clearly in the contract.

If the author is an employee, in practice, the express wording of the employment contract and job description will be relevant to define the scope of the employment. It will also be pivotal to any assertion of the employer’s ownership in reliance on the statutory basis under s11(2).

As ever, addressing the issue in writing is always the most prudent way to proceed.

In Ainsworth’s case, he was commissioned to provide a fabrication service only, but the UK Supreme Court ruling shows that knowing (i) whether copyright protection subsists in the first place and (ii) if so, in whom it vests, is absolutely crucial to any business dealing with third party suppliers.

Move along.

For more information or advice, please contact Alex Craig using 0191 211 7829 or [email protected] to read more episodes click here.

Note: Star Wars®™ and all related character names are copyright © and the exclusive property and trademarks of Lucasfilm Entertainment Company Ltd. LLC, which are referenced here only for the purposes of the illustration of legal concepts in general terms only. Muckle LLP is no way affiliated to nor associated or connected with Lucasfilm Entertainment Company Ltd. LLC, Lucasfilm Ltd.™ or LFL Ltd.™ or any of their respective film(s) or franchise(s). This document and its contents are not endorsed by Lucasfilm Ltd.™ or any of its affiliates.

[1] The Making of Star Wars, J.W. Rinzler, p130, Del Rey Press[2] The Making of Star Wars, J.W. Rinzler, p112, Del Rey Press[3] Star Wars Costumes; The Original Trilogy, Brandon Alinger, p31, Titan Books[4] Star Wars Costumes; The Original Trilogy, Brandon Alinger, p29, Titan Books[5] The Making of Star Wars, J.W. Rinzler, p138, Del Rey Press