In Brief
The UK Supreme Court recently handed down its decision in an appeal by Lucasfilm concerning the intellectual property rights in various artefacts made for use in the first Star Wars film and reproduced by Mr Ainsworth in 2004.
This decision is a vital lesson for anyone in Australia involved in the merchandising, or commercialisation, of 3D objects, such as figurines, furniture or lighting. The decision highlights the critical importance of obtaining advice and any available registered design protection, if you want to ensure you have the ability to control the use, production and sale of those objects. It is also critical that any steps to obtain registered design rights, to protect your market, are taken early, and before any sale or other commercialisation of the objects.
The most interesting artefact reproduced, and the focus of much discussion in the appeal, was the iconic imperial stormtrooper helmet.
The Respondent, Mr Ainsworth, was engaged by George Lucas around 1976 to produce several prototype, vacuum-moulded stormtrooper helmets which, once approved, were made by Mr Ainsworth into 50 helmets for use in the first STAR WARS film released in 1977.
In 2004, Mr Ainsworth used his original tools to make versions of the stormtrooper helmets for sale to the public.
Lucasfilm sued alleging copyright infringement. One of the issues to be determined by the Court was whether the stormtrooper helmet was protected by copyright, as a sculpture.
The argument centered on what was the right approach to three dimensional objects that have both an artistic purpose and a utilitarian function.
Lucasfilm contended that the helmet is a sculpture because its purpose is wholly artistic and that it had no practical function at all. It argued the helmets’ “sole purpose was to make a visual impression on the filmgoer.”
The judge at first instance and the Court of Appeal did not agree, determining that the helmet was a mixture of costume and prop, with its primary function being utilitarian. The Court concluded that it did not have the necessary quality of artistic creation and so was not protected by copyright, and could be made by Mr Ainsworth without permission.
Not surprisingly, Lucasfilm appealed, as this characterisation has a significant impact on its ability to control very valuable merchandising rights.
On appeal, the Supreme Court agreed with the lower courts. It held that the helmet was part of a production process, being a mixture of costume and prop in order to contribute to the artistic effect of the film as a film. The Court noted:
“It would not with the normal use of the language to apply the term “sculpture” to a 20th century military helmet used in the making of a film, whether it was a real thing or a replica made in different material, however great its contribution to the artistic effect of the finished film”.
Under the Australian Copyright Act 1968, an artistic work may also comprise a sculpture whether the work is of artistic quality or not. However, a 3 dimensional object (such as this helmet) loses copyright protection once commercialised unless it is a “work of artistic craftsmanship”. If it is not such a work of artistic craftsmanship, the owner (Lucasfilm) can only rely on exclusive rights given by obtaining a registered design for the shape of the article.
While the tests for determining whether a work is one of artistic craftsmanship are complex, put simply the issue is whether, considered objectively, the work is designed primarily for functional rather than aesthetic reasons. Applying the Supreme Court’s reasons, it is likely that a similar decision would be reached in Australia, with the Courts finding that there is an important distinction between the aesthetics of a film, as a film, and those of the props used in the film, being a utilitarian part of a production process.
For further information, please contact Swaab Attorneys.
Co-authored by M Hall.
