SDS wins appeal in London court

[Billhag]

This was reported in the London Evening Standard today;-

 

Propmaker strikes back in Star Wars stormtrooper battle

Paul Cheston and Natasha Nischal

16.12.09

 

A propmaker today won in the Appeal Court in his Star Wars battle with Hollywood giant Lucasfilm.

 

Three senior judges ruled unanimously that Andrew Ainsworth, who made the original stormtrooper helmets, had not breached UK copyright laws.

 

They rejected claims by Star Wars creator George Lucas that the helmets were sculptures and thereby breached his copyright. Lord Justice Jacob, sitting with Lords Justices Rix and Patten, ruled there was no copyright in any sculpture.

 

Today's judgment could cost the Hollywood billionaire £500,000 in legal costs but the final decision on who picks up the bill has still to be made.

 

The ruling was handed down to an empty courtroom, in stark contrast to the scenes last year when the High Court was packed with life-size figures of the intergalatic clones, their helmets and assorted gadgets.

 

The judges backed the findings of Mr Justice Edward Mann that Mr Ainsworth did not own the copyright in the helmets and that Lucasfilm could not enforce its US judgment here.

 

Lucasfilm brought the case after winning £10 million damages in America for copyright and trademark infringement and unfair competition.

 

It took its legal action to London in an attempt to protect the £6 billion worldwide merchandising sales from Star Wars since 1977.

 

Mr Ainsworth had been paid £35 each for 50 helmets for the original film. It was not until 2004 when he found one of the original helmets in a cupboard at his home that he sold it to a collector.

 

He began making stormtrooper outfits and selling them through his company, Shepperton Design Studios, for up to £1,800 each.

 

Today Lord Justice Jacob pointed out that Mr Ainsworth, of Twickenham, had achieved only a “modicum” of sales in the US so there would be “no financial remedy” for compensation.

 

However the judge warned Mr Ainsworth that if he was to “seek any further selling into the US,” he would be in breach of copyright laws.

 

 

 

Very interesting

[pandatrooper[TK]]

That is messed up.

 

"Lord Justice Jacob, sitting with Lords Justices Rix and Patten, ruled there was no copyright in any sculpture."

 

So, are they saying that if:

 

- I lived in the UK

- I sculpt a figure

 

according to UK law, I have no copyright or could never get one on it? If so, that's crazy...

[TK-2126_MD[TK]]

WOW

 

SDS legal team actually found & hit Uncle G`s Thermal Exhaust port

[TK:TK]

Wow!

I think the lawyers representing Lucasfilm just lost their Christmas bonuses....

[vicsouders]

Ok fast reply here. Lets read the legal opinion before passing judgment. All too often newspaper articles hit the highlights of a decision without understanding the intricacies of the law as it has been applied. I read opinions for a living, and this article leaves a lot of questions in the air.

 

Vic

[Daetrin[Admin]]

Good point Vic. Oh, and also a great part of the country to be from - very pretty where you are. La Crosse is rapture in the fall, and I've flown over parts of that border in a Huey and loved it.

[synaptyx]

Good grief!

 

If AA was buttered on one side and fell off a table, I swear that man would land butter side up!

[Alex Buechel]

wow

[Billhag]

I did a bit of digging and found the Court Ruling

Here's the link;-

 

http://www.bailii.org/ew/cases/EWCA/Civ/2009/1328

 

And here's a breif outline of the findings;-

 

Lucasfilm cannot enforce US copyright ruling on Star Wars helmets, rules Court of Appeal

 

OUT-LAW News, 16/12/2009

 

The makers of sci-fi blockbuster Star Wars have failed in their bid to establish that they owned the copyright in the helmets of the film's sinister stormtrooper army. In an appeal they lost a right, granted earlier, to enforce a US copyright ruling.

 

In 1977 Lucasfilm made Star Wars, a surprise success that has since spawned five related films and a multi-million pound merchandising industry.

 

Andrew Ainsworth worked in the UK on the menacing, and now iconic, white helmets worn by the imperial army. Ainsworth worked to drawings provided to him and to a clay model made by a neighbour of his.

 

Ainsworth now sells replicas of those helmets, an activity which has attracted the wrath of Lucasfilm, which was one of the first companies to make an extensive business out of film merchandising.

 

Lucasfilm obtained a $20 million copyright infringement judgment in the US by default when Ainsworth did not defend the action. It then took a case in the UK, arguing that Ainsworth's manufacture and sale of the helmets infringed copyright that it held in the helmet design. The company also wanted the UK court system to enforce the US ruling against Ainsworth.

 

The High Court rejected Lucasfilm's copyright claim, saying that the helmets were not artistic works or sculptures and so did not attract any copyright protection under UK law. Its ruling did, though, enforce the US copyright here and ordered Ainsworth to stop advertising or selling the helmets to the US market.

 

The Court of Appeal has overturned the High Court's enforcement of US copyright, lifting the ban on Ainsworth's marketing of the helmets to the US. It also agreed that the helmets are not protected by UK copyright.

 

"Must or should this court accept jurisdiction to enforce Lucasfilm's US copyrights against Mr Ainsworth for what he has done and threatens to do by way of sales from here to the US?" the Court of Appeal judgment asked.

 

Lords Justice Rix, Jacob and Patten, in a jointly issued ruling, looked at previous cases on the issue but said that "there is no binding authority" in the area.

 

"Infringement of an IP right (especially copyright, which is largely unharmonised) is essentially a local matter involving local policies and local public interest. It is a matter for local judges," they said. "Enforcement may involve a clash of the IP policies of different countries. This case is a good example. The effect of the injunction granted by [the High Court] is that the defendant is restrained from doing acts in this country which by the laws of this country are lawful. This is because American law says they are not lawful."

 

They said that governments, and not courts, should decide on the approach to take on the interweaving of different jurisdictions. "It is quite clear that those concerned with international agreements about copyright have refrained from putting in place a regime for the international litigation of copyrights by the courts of a single state," they said. "A system of mutual recognition of copyright jurisdiction and of copyright judgments could have been created but it has not."

 

"[We] conclude that for sound policy reasons the supposed international jurisdiction over copyright infringement claims does not exist. If it is ever to be created it should be by Treaty with all the necessary rules about mutual recognition, lis pendens and so on. It is not for judges to arrogate to themselves such a jurisdiction."

 

Lucasfilm argued that the helmets should have been protected by UK copyright law, and that it owned that copyright. The Court of Appeals agreed with the original High Court ruling that the helmets were not copyright protected because they were not artistic works or sculptures.

 

"The result of [our] analysis is that it is not possible or wise to attempt to devise a comprehensive or exclusive definition of 'sculpture' sufficient to determine the issue in any given case," they said. "Although this may be close to adopting the elephant test of knowing one when you see one, it is almost inevitable in this field. We therefore consider that the judge was right to adopt the multi-factorial approach which he did."

 

Ainsworth had also argued that the helmets were copyright-protected, but that he owned the copyright because he had carried out his work without a formal agreement in place which transferred copyright to Lucasfilm.

 

The Court of Appeal said that even if it had found the helmets to be copyright-protected, that copyright would not have belonged to Ainsworth.

 

"The question, which has to be answered objectively and does not depend in any way on what might in fact have gone through the minds of particular parties, is what the parties would have agreed if the question of licensing opportunities had been raised," they said. "We agree that in those circumstances, it would never have occurred to anyone to say that Mr Ainsworth should have retained any (necessarily limited) copyright interests. We agree that an obligation to assign [the copyright] was necessarily to be implied. It was also reasonable, and there is nothing in the commercial arrangements then made, e.g. in the prices agreed, to suggest that it was unreasonable."

 

A previous case had established the principle that the court of a foreign country can have effect in the UK "If the judgment debtor was, at the time the proceedings were instituted, present in the foreign country", the judgment said. Lucasfilm tried to argue that Ainsworth's web site counted as 'presence' in the US.

 

The Court of Appeal rejected that argument. "On the contrary, it might be said that the sheer omnipresence of the internet would suggest that it does not easily create, outside the jurisdiction or jurisdictions in which its website owners are on established principle already to be found, that presence, partaking in some sense of allegiance, which has been recognised by our jurisprudence," the judges said.

 

 

 

Mr. Ainsworth must be laughing his nuts off and punching the air right now.

 

It certainly is a strange old World that we live in

[Daetrin[Admin]]

Good grief!

 

If AA was buttered on one side and fell off a table, I swear that man would land butter side up!

 

And knowing that cats always land on their feet when dropped, if you tied buttered toast to the backs of cats and dropped them they'd float off the floor, and a string of these can be used to support a levitated train.

[troopermatthew[501st]]

Wait...he won...again

 

I cant think of anything to say regarding this matter...its just surreal!

[TK-1085[501st]]

And knowing that cats always land on their feet when dropped, if you tied buttered toast to the backs of cats and dropped them they'd float off the floor, and a string of these can be used to support a levitated train.

 

Now thats a visual.

 

 

Weird case, shocked it went the way it did.

[Daetrin[Admin]]

If you want to know nutty, check out patent law. You can have a patent for an invention in the US, but not anywhere else in the world. Or a patent that applies in Italy, but not in Spain. Thus things like the EPO

 

"The European Patent Office (EPO) provides a uniform application procedure for individual inventors and companies seeking patent protection in up to 38 European countries. It is the executive arm of the European Patent Organisation and is supervised by the Administrative Council. "

[TK:TK]

"The High Court rejected Lucasfilm's copyright claim, saying that the helmets were not artistic works...."

 

Not works of art??!! Heathens!

[Daetrin[Admin]]

I'm actually wondering what's actually covered in the copyright of a film. For instance one can grant a license for toys made from a film, but I wonder if that has to be done country by country as well. And what happens when there is no license issued?

 

For instance, say there were no toy deals for Avatar and I started selling picture of Na'vi or perhaps a toy bow - what exactly would I be infringing on? LFL has stake in the game because they do in fact grant licenses, but what if they didn't, or didn't for that product.

[RogueTrooper[TK]]

However the judge warned Mr Ainsworth that if he was to “seek any further selling into the US,” he would be in breach of copyright laws.

 

I wonder how AA will try to get around this????

[synaptyx]

And knowing that cats always land on their feet when dropped, if you tied buttered toast to the backs of cats and dropped them they'd float off the floor, and a string of these can be used to support a levitated train.

That's how we make antigravity work!

[usul45]

really torn on this, any shot to old uncle george is a nut buster good time, but this is interesting. It makes you wonder about the nature of art. Since it was made for a movie its not art? But isn't the movie itself art? AA was paid for his services, and that was the end of it, he was paid to create in plastic something someone else wanted him to create, I simply do not understand how he thinks he can come back 30 years later and start making money off of it when all he ever did was get paid to make it. If I work on the assembly line at Ford do I get to make my own Ford trucks later and owe nothing to the parent company? Heck no. That's my angry face. i actually have the exact same argument against comic book artists getting their art work back. you drew pictures of Batman, and were paid for it why do you think then that you can sell those same pages you already got paid for again? I just wonder why exactly AA thinks he CAN sell Stormtrooper Helmets and armor. Why does he believe that his yanking them off of a vac form table instantly means he owns them forever? Look if he had sculpted the things first I might go along a bit more of a ways with him, but he didn't.

[TK4205]

Where do the UK trooprs stand now that AA has rights, I wonder.

 

He could sue anyone in the UK for sporting a stormtrooper bucket.

[TxRadio]

Where do the UK trooprs stand now that AA has rights, I wonder.

 

He could sue anyone in the UK for sporting a stormtrooper bucket.

 

That was my concern. LFL has always been generous and supportive of our efforts. What if someone else gets rights and isn't so much so?

[tigger68[501st]]

Where do the UK trooprs stand now that AA has rights, I wonder.

 

He could sue anyone in the UK for sporting a stormtrooper bucket.

 

Actually, if I read the article correctly, the Court of Appeals stated that there weren't any rights inherent in the sculptures or the helmets. The whole thing came down to the fact that the helmets were not an artistic piece (my guess is they meant a one of display piece). So now Mr. Ainsworth can under UK law sell to the US, but under US law he can't. The US courts stated that George Lucas had the copyright to the helmet and Mr. Ainsworth cannot sell in the US without copyright infringement. So...if I were to go to the UK on a trip to visit some 501st members, just happened to pick up a helmet, and brought it back to the US...would I be subject to problems? I have no plans to do so at the present but it does raise a lot of legal questions.

 

One more interesting twist to this whole thing...if Twentieth Century Fox (TCF) had been more proactive in sigining a contract with LFL for ANH originally, George Lucas may not have owned the rights to anything Star Wars related. Prior to ANH, 90% of the time the studios owned the rights to all merchandising and any profits made from the sale of items relating to that film. But when TCF dragged their feet and only signed a contract after George Lucas had invested over $200,000 of his own money, he and his lawyers negotiated to retain ALL the rights to the film and all things related to it. Kind of interesting. After the film took off and all the merchandizing, I bet TCF is now doing this While LFL is doing this

[TK4205]

From what I gather, regarding marketing,no one had made this kind of request before and 20th was more happy to pay him off at the time.

 

It was shortly thereafter, George invents the toy.

[Daetrin[Admin]]

True enough folks and these are good points to remember. It's not about who creates it, it's about what they agree legally.

[TK-2126_MD[TK]]

Where do the UK trooprs stand now that AA has rights, I wonder.

 

He could sue anyone in the UK for sporting a stormtrooper bucket.

 

 

Only if its not one u bought off of him

[manxtrooper]

Where do the UK trooprs stand now that AA has rights, I wonder.

 

He could sue anyone in the UK for sporting a stormtrooper bucket.

 

Winning a case such as this (although I see it more as a near miss than a win), doesn't give him ownership rights of the brand. Even if he'd sculpted these himself, he wouldn't necessarily have rights to reproduce, especially as conceptually he doesn't own them nor did any of the sculptors to my knowledge. They were paid to carry out works. Normally there are contracts in place to protect such loop holes but I believe so early on, in a rushed production on a shoe string, this is purely why AA is able to get away with what he has.

 

As a software developer, I'm basically owned by the company and any intellectual property belongs to them, no matter what I come up with, while I work under their roof they own all code. This also means that legally I can't produce similar products myself without all sorts of legal issues cropping up.