Contracts – Artistic works – Copyright – Film industry – Foreign copyright protection

(1) Lucasfilm Ltd (2) Star Wars Productions Ltd (3) Lucasfilm Entertainment Co Ltd v (1) Andrew Ainsworth (2) Shepperton Design Studios Ltd (2008): Ch D (Mr Justice Mann): 31 July 2008

The claimants (L), film producing and licensing companies, brought a number of claims against the defendants, a company and its sole director (X), in relation to certain props used in one of their films.

L had used props in a science fiction film that had been first shown in 1977. The film featured fictional soldiers, imperial stormtroopers, dressed in armour that included a helmet. The helmet and armour allegedly had their origins in certain drawings by an individual who had worked with the director of the film. X had made the originals for the film apparently with the help of the drawings and a clay model of a stormtrooper head and armour. X had sold versions of the armour and helmet and replicas of other helmets to the public.

L commenced the instant proceedings following a US judgment awarding L damages resulting from X’s activities. L brought claims for copyright infringement and passing off, and sought to establish a claim to copyrights that X might have acquired, a claim in confidence and a claim to enforce US copyright. L also sought to enforce the US judgment. X accepted the subsistence of copyright and ownership by L of all drawings that existed. X maintained that copyright in the drawings would not be infringed by the production of three dimensional utilitarian or functional helmets and armour. He disputed the existence of copyright in the props and counterclaimed to enforce his own alleged copyright in the helmets. The issues were whether: (i) the helmet works were within the Copyright, Designs and Patents Act 1988 so as to attract copyright in themselves; (ii) X had a defence under section 51 of the act; (iii) X had a defence under section 52 of the act; (iv) L could establish a passing off claim; (v) if X had acquired copyrights in any of the props that he had made, he was contractually obliged to assign those copyrights to L; (vi) L could establish contractual claims relating to the moulds or tools used by X and whether, if X was otherwise entitled to use his moulds, he was restricted from doing so by duties of confidentiality; (vii) X had sufficient presence in the US so as to enable L to rely on the US judgment in the English action; (viii) it was right for the instant court to consider the US copyright claims.

Held: (1) The first issue required consideration of whether the helmets were either sculptures or works of artistic craftsmanship. A sculpture was an artistic work under section 4 the 1988 act. The court gave guidance on what constituted a sculpture, Metix (UK) Ltd v GH Maughan (Plastics) Ltd [1997] FSR 718 Ch D (Patents Ct), Wildash v Klein [2004] 61 IPR 324 0, Britain v Hanks [1902[ 86 LT 765 0, Wham O Manufacturing Co v Lincoln Industries [1985] RPC 127 CA (NZ), J&S Davis (Holdings) Ltd v Wright Health Group Ltd [1988] RPC 403 Ch D and Breville Europe Plc v Thorn EMI Domestic Appliances Ltd [1995] FSR 77 Ch D (Patents Ct) considered. The stormtrooper helmet was not a sculpture. It was a mixture of costume and prop, but its primary function was utilitarian. It lacked artistic purpose. The same reasoning applied to the armour and to the other helmets. The toy stormtroopers and other characters were not sculptures. Further, the stormtrooper helmets and armour were not works of artistic craftsmanship, Bonz Group (Pty) Ltd v Cooke [1994] 3 NZLR 216 HC (Aus), George Hensher Ltd v Restawile Upholstery (Lancs) Ltd [1976] AC 64 HL and Merlet v Mothercare Plc [1986] RPC 115 CA (Civ Div) applied, and Vermaat (t/a Cotton Productions) v Boncrest Ltd (No1) [2001] FSR 5 Ch D considered. It was not part of the purpose of each item to appeal as a piece of art.

(2) For the purposes of section 51 of the act, the stormtrooper helmet and armour had their origins in certain drawings, which were design documents. The designs were for something other than artistic work and section 51 operated in X’s favour to prevent his copying of the work being an infringement of copyright, King Features Syndicate Inc v O&M Kleeman Ltd [1941] AC 417 HL considered. The clay stormtrooper head and the original clay armour were ‘models’ within section 51, so the same conclusion applied to a claim for infringement in relation to them.

(3) In the circumstances, X could rely on section 52 so that his activities in copying the drawings or the clay head or clay armour was not an infringement of L’s copyright. (4) On the evidence, the claim in passing off failed, Reckitt and Colman Products Ltd v Borden Inc (No3) [1990] 1 WLR 491 HL and Bristol Conservatories Ltd v Conservatories Custom Built Ltd (1989) RPC 455 CA (Civ Div) considered. (5) Assuming that the helmets and other props were sculptures or works of artistic craftsmanship, there was an implication that L would have the copyright in the helmet and other items created by X for L, Ray v Classic FM Plc [1998] ECC 488 Ch D considered.

(6) On the evidence, the contractual claim relating to the tools and the misuse of confidential information claim failed. (7) Neither X nor his company had been sufficiently present in the US at any time to allow the US judgment to be enforced in England, Adams v Cape Industries Plc [1990] Ch 433 CA (Civ Div) applied. (8) An English court could determine questions of infringement of foreign copyright cases, Satyam Computer Services Ltd v Upaid Systems Ltd [2008] EWHC 31 (Comm), [2008] 1 All ER (Comm) 737 considered. Those cases would include cases where subsistence of copyright was not in issue. That did not mean that questions of subsistence should not be decided by an English court. It was appropriate, in forum conveniens terms, to consider the US claims. The factual issues in relation to the US copyright could be taken to be decided by the findings on the English claim. Also, having regard to the US law, the relevant three dimensional items were not utilitarian or functional. The claim based on the infringement of the US copyright, therefore, succeeded. (9) The counterclaim failed because what X had produced were not artistic works.

Judgment accordingly.

M Bloch, A Bryson (instructed by Harbottle & Lewis) for the claimants; A Wilson, G Hamer (instructed by SimmonsCooperAndrew) for the defendants.