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It isn’t often that a solicitor reads and gets to comment on a case that combines two of his particular interests – in this case the Star Wars movies, and Intellectual Property Law.

Admittedly only one of these has, to my knowledge, spawned a vastly popular range of action figures, but the two worlds have collided recently with litigation in the US and UK courts between Lucasfilm Ltd and Mr Andrew Ainsworth in which the Court of Appeal handed down its Judgment in late December 2009.

Mr Ainsworth had worked as a model-maker through his company Shepperton Design Studios in the mid-1970s, and had prepared the first vacuum-moulded helmets and armour for the films’ iconic cannon-fodder, the Imperial Storm-Troopers, based chiefly upon drawings prepared by George Lucas and others.

Mr Ainsworth held on to all of his tools, moulds etc and many years later began to make and sell replicas on the internet (although he was always very careful not to misuse any of the array of “Star Wars” trade marks, or even to suggest any licence from Lucasfilm, or official endorsement from the company).

The company, however, moved in like the Death Star to attack Ainsworth, and sued in the United States – where they obtained a judgment in default for $20 million, despite the fact that Ainsworth had sold only around $14,500 worth of replicas. (Illustrating, perhaps, the perils of US litigation and awards of damages set by a jury!).

They followed this with a claim in the UK based in copyright infringement and passing-off (the doctrine that protects unregistered “goodwill” in a particular brand) or, alternatively, for an order to enforce their US judgment in this country.

The court at first instance, upheld by the Court of Appeal, ruled that the Stormtrooper “gear” (as opposed to the drawings and plans on which they were based) were an “article” rather than a “work of artistic craftsmanship” or a “sculpture” and as such were not protected by Copyright, but rather they had only ever been protected by Design Right.

The Court’s rationale seemed to focus on the functional nature of the items – they are effectively replica suits of armour, albeit based in science fiction, to be worn and used rather than enjoyed for their pure visual merits. An item cannot generally be protected by both Copyright AND Design Right.

Crucially, Design Right in the UK only has a duration of 15 years (with licences-of-right available in the last 5 years of that period) and so the 3-dimensional Stormtrooper “outfits” were well out of their period of protection and Mr Ainsworth was found not to have infringed Lucasfilm’s rights and was entitled to make the replica outfits. Also, the Court of Appeal concurred with the first-instance judgment in saying that Mr Ainsworth had not committed passing-off, because he had been careful not to claim any official association with Lucasfilm or its Star Wars brands.

Finally, whilst the first-instance decision had suggested that Lucasfilm could enforce its US judgment against Mr Ainsworth in the UK the Court of Appeal disagreed, underlining the territorial nature of copyright – they could not enforce their US copyright (which seemingly DID cover the Stormtrooper replicas) in the UK, and also making the point that Mr Ainsworth’s website alone, although it made sales to the US, was not sufficient to say that he had a US “presence.” The Court’s view was that sales made through the website in this way were really no different to sales by telephone, letter or fax from a UK-based company.

The case has made and underlined a number of interesting issues, from the perils of the short duration available to industrial and “functional” designs under UK unregistered design right, to the impact or otherwise on a seller’s liability of making sales overseas through the internet.

The European Community’s “Registered Community Design Right” may afford one avenue to manufacturers and designers to protect their designs for a longer period (25 years) across the entirety of the EU and it may be worth seeking advice as to whether your particular design might qualify for protection under this newer and arguably more robust right.

Andrew Digwood