Stormtrooper helmets, sculptures and designs: appeal court rules

Lucasfilm Ltd, Star Wars Productions Ltd and Lucasfilm Entertainment Co Ltd v Ainsworth and Shepperton Design Studios Ltd [2009] EWCA Civ 1328, yesterday's lengthy decision of the Court of Appeal for England and Wales in the "Star Wars" stormtrooper helmet dispute, conceived by the claimants but made and sold without authorisation by the defendant, has now been handed down. A note on the full decision, together will further facts, appears on the IPKat weblog here.

Of specific interest to designers and their representatives is the court's treatment of sections 51 and 52 of the Copyright, Designs and Patents Act 1988.

Section 51 provides that "It is not an infringement of any copyright in a design document or model recording or embodying a design for anything other than an artistic work or a typeface to make an article to the design or to copy an article made to the design". The court said at paras 85 to 87:

"This [section] ... is directed to the production of a three dimensional object in accordance with a design which is itself the subject of copyright. Except where the design is one for an artistic work, the use of the design to make what is illustrated is not an infringement.

The judge held that the ... paintings and other drawings were design documents within the meaning of s.51 and were used by Mr Ainsworth to create the stormtrooper helmet and armour. On the basis of his finding that the helmet and armour were not sculpture or works of artistic craftsmanship, s.51 therefore provided a defence to a claim of infringement based on his use of those works.

The judge's decision that the ... paintings and drawings were design documents has not been challenged on this appeal. The application of s.51 was resisted only on the ground that the helmets and armour were sculpture. The judge was therefore right to find that it provides Mr Ainsworth with a defence to the UK copyright claim.".

Section 52(2) provides that

"After the end of the period of 25 years from the end of the calendar year in which .... articles [which are copied from an artistic work and which made by an industrial process] are first marketed, the work may be copied by making articles of any description, or doing anything for the purpose of making articles of any description, and anything may be done in relation to articles so made, without infringing copyright in the work".

Since the stormtrooper helmets were not 'sculptures' their industrial multiplication by Ainsworth was always going to be permitted. Even if they were protected works, since the alleged infringements were governed by the transitional provisions relating to copying done while the Copyright Act 1956 was still in force, the period after which it was safe to make copies was the shorter period of 15 years, which had long since passed.