You Might Need to Be a Jedi to Separate Form from Function in a 3D Object

How a Small Difference Between British and US Copyright Law Made a Big Difference

There’s been a good deal of buzz on some of geekier websites that I frequent about this decision.*  At first, it was portrayed as a huge loss by a Goliath at the hands of a David over ownership of the intellectual property in the Stormtrooper’s helmets from Star Wars.  Quickly, though, a more accurate narrative emerged.  While it really was a victory for David over Goliath–and the victory really was big for David (you have to admire him for sticking to his guns)–it wasn’t so terrible for Goliath.  Goliath got to keep the copyright on the Stormtrooper Helmet design, but it now has to tolerate the manufacture and sale by our “David” (or anyone else in the UK) of articles based on that design.  (Of course, our “David” can do the job better because he has the actual molds!).

The decision was rendered by the Supreme Court of the United Kingdom, which is the highest civil court there.  Before 2009, these judges were known as the “Law Lords,” which is an infinitely cooler term.

Robert Ainsworth is an Englishman who helped design the Imperial Stormtrooper’s costumes, including the helmet, back in 1977 for Star Wars.  George Lucas thought up the concept, another guy rendered the drawings, another guy made clay sculptures of the helmet, and once Lucas approved it, Ainsworth designed the moulds and produced the helmets (and other pieces.  Each of these men–including Ainsworth–contributed something creative to the final design of the Stormtrooper helmet, so each of them would be an author of the helmet for copyright purposes (assuming there were no work for hire arrangement).

Remember that Lucas produced a great deal of Star Wars in England, which is how he got all those great British actors to play the bad guys and make a lot of Lucas’ clunkers sound pretty good.*  It’s also how Ainsworth got involved.  Apparently, he kept some of the molds and made what might be described as highly authentic reproductions, exclusively in England.  He seems to have made no more than the equivalent of $30,000 from these sales–a nice chunk of change for him, but hardly an amount Lucas and his companies would bother to sue over, right?

Such as, “If the Rebels have obtained a complete technical reading of this station, it is possible, however unlikely, they might find a weakness and exploit it.”  Try reading that line convincingly!  It’s the “however unlikely” that gets you.  If there were an award for doing a good job with bad lines, Don Henderson (who played General Tagge/Taggi and uttered that line) would have won.

In 2005, Lucas’ film companies sued Ainsworth in Los Angeles for copyright and trademark infringement, all the same.  Ainsworth didn’t bother to show up, and a surprisingly large default judgment was entered against him:  $30,000,000, roughly a thousand times Ainsworth’s total revenues.  But Ainsworth was taking a calculated risk.  He didn’t live in the United States or have any assets there.  None of this sales was to an American.  In short, there’s no reason a U.S. court should have power over him.*  And even if he were subject to U.S. jurisdiction, Ainsworth had nothing in the United States for Lucas and Co. to collect on.  Like it or not, Lucas had to go to England–and this time, Ainsworth was ready.

As I mentioned in a previous post, you may not be “haled into” every court in the world for every matter, but only courts that bear some relationship to you (e.g., courts of your home state) or the alleged bad acts (which in this case might include selling a reproduction to a U.S. resident).

Three-dimensional works provide a particular challenge to copyright because many of them are partially or mostly utilitarian.  But usefulness is the province of patent law.  Because patent law is so different from copyright law–its term is much shorter and there are many more requirements to obtain one, for example–we want to make sure manufacturers can’t use copyright law to get patent-like protections.  Consider, for example, a mold for making a bumper for a fancy car.  The bumper is stylish but also functional.  We want to encourage stylishness, so we want to provide some copyright protection.  At the same time, we want to make sure that the functional aspects of the bumper are not protected by copyright (but possibly by patent, if one were applied for and granted).  Separating style from function in a principled way is hard.

U.S. and English law resolve this issue differently.  The difference is slight, but in this case, it mattered a great deal.  In the U.S., we exclude “useful articles” from copyright protection unless their creative aspects can be conceptually separated from the functional aspects “and are capable of existing independently of the utilitarian aspects of the article.”  If Ainsworth were subject to U.S. law, I think he’d lose.  Although you wear the helmets, it’s pretty easy to separate their creative design from their utilitarian function.  The helmets are pretty clearly works of the imagination.

But English law uses a subtly different test.  It limits copyright protection to “artistic works.”  By artistic work, English law doesn’t intend to pass some sort of artistic judgment on the work, but to ask whether the sculpture can stand on its own.  If you removed it from its functional context and isolated it, would you still think of it as artistic in some way (putting aside your opinion of whether it’s good or bad art)?  In Ainsworth’s case, the English courts all agreed that the Stormtrooper helmet couldn’t stand on its own–or, at least, it couldn’t have back in 1977.  It might be cool now, but when it was first created, it was just a prop, no different than World War II era helmet used in a different kind of movie.  That Star Wars was fantasy–and later culturally ingrained in our imagination–doesn’t make its props extra creative.

In the end, despite the involvement of the United Kingdom’s highest civil court, all the decision means is it’s OK to make Stormtrooper helmets based on the Star Wars design, notwithstanding Lucas & Co.’s copyright in that design.  So long as he limits his sales to England (and avoids the heck out of the U.S.), Mr. Ainsworth may continue making and selling his reproductions (which is fine with him because that all he wants to do–clever of him to hang onto the molds!)*  A more interesting question is why Lucas went after Ainsworth in the first place.

I suspect the UK Supreme Court took the case not for its copyright issues but for some much trickier issues involving jurisdiction and the enforceability of foreign copyrights.

Thanks for reading!

Rick Sanders

Rick is an intellectual-property litigator. He handles lawsuits, arbitrations, emergency injunctions and temporary restraining orders, opposition and cancellation proceedings, uniform dispute resolution proceedings (UDRPs), pre-litigation counseling, litigation avoidance, and other disputes, relating to copyrights, trademarks, trade secrets, domain names, technology and intellectual-property licenses, and various privacy rights. He has taught Copyright Law at Vanderbilt University Law School. He co-founded Aaron | Sanders with Tara Aaron-Stelluto in 2011.