May the force be with you
5 January 2011 | By Katy Dowell
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A legal battle of galactic proportions will be heard by the Supreme Court in March, when litigation boutique SC Andrew takes on the might of movie mogul George Lucas in a copyright fight over stormtroopers.
SC Andrew partner Seamus Andrew has been acting for British engineer Andrew Ainsworth, who produced the stormtrooper helmets and armour for the original 1977 Star Wars: A New Hope film, as well as Luke Skywalker’s X-Wing helmet, since early 2008.
Lawyers acting for Lucas in the US sued Ainsworth in 2004 for $20m (£10.1m) after he started selling replica stormtrooper helmets. It was argued that Ainsworth and his business Shepperton Design Studios could not reproduce the helmets as he does not hold the IP rights to the original articles.
The first victory went to Lucasfilm after a US court upheld the claim and ordered Ainsworth to hand over $20m for copyright and trademark infringement in respect of internet sales of replicas to the US - a huge amount given that Ainsworth’s US sales were admitted to be around £30,000.
However, Ainsworth owned no assets in the US against which the judgment could be enforced and the case moved to the UK courts. For Lucasfilm, conquering the case was always going to be as difficult as defeating the Death Star.
According to copyright lawyers, London’s High Court has long been reticent about hearing cases involving infringement of overseas IP rights, save in limited circumstances.
When Lucasfilm first attempted to enforce the US judgment in the UK it claimed $10m instead of the $20m it was awarded. It was argued that Ainsworth had been in the US voluntarily when the action began, even though he was not there physically, because he had advertised his goods for sale in the country and had targeted the US market via his website.
The High Court rejected the case, stating it would set a new precedent in the concept of presence that was too far removed from the current status quo.
Next, the claimants had to deal with the design rights, which had expired before the UK action began. This meant that Lucasfilm needed to demonstrate that the helmets sold by Ainsworth were in fact works of sculpture or a work of artistic craftsmanship to show infringement. A sculpture would be protected for the life of the author plus 70 years, so that Lucasfilm could prevent Ainsworth from making replicas.
The High Court, and later the Court of Appeal, found that the three-dimensional helmets and armour from the films were not sculptures. This reduced the copyright protection, broadly speaking, to 15 years from the date when they were first marketed by the operation of statutory defences.
The Supreme Court will be asked to decide on two issues: whether a defendant domiciled in England can be sued here for his acts in the US that amount to infringement of copyright under US law; and whether the helmets were in fact sculptures.
According to sources close to the case, Hollywood believes the outcome will have major implications for the UK film industry and the movie moguls came out in force in support of Lucas’s fight to have the case heard by the Supreme Court.
It is understood pleas were made by Steven Spielberg, James Cameron and Brian Henson, son of Jim Henson, for the case to be heard by the court.
Lucas’s supporters argue that if copyright protection is maintained at 15 years it will deter filmmakers from using UK-based prop makers for fear of copyright infringement in the US and would, ultimately, impact the UK film industry negatively.
With so much at stake, it is little wonder Lucasfilms has called on Supreme Court whiz Jonathan Sumption QC of Brick Court Chambers and Wilberforce Chambers’ Michael Bloch QC to lead the fight for Lucasfilm. They will face Hogarth Chambers’ Alistair Wilson QC for Ainsworth.