From: Neil Foster [mailto:Neil.Foster@newcastle.edu.au]
Sent: Friday, 29 July 2011 11:51 AM
To: obligations@uwo.ca
Subject: ODG: Star Wars in the UKSC

I post this note because (1) someone once said that "copyright infringement is a tort", and (2) the case is unbelievably cool. But since we don't usually do IP here I won't go into the details too closely. The UK Supreme Court has just handed down its decision in Lucasfilm Ltd & Ors v Ainsworth & Anor [2011] UKSC 39 (27 July 2011) http://www.bailii.org/uk/cases/UKSC/2011/39.html. It upheld the decision of the trial judge and the CA that the original model for the "storm trooper" helmet in the first Star Wars film was not a "sculpture".

Why was this an issue? Effectively (glossing over some details) because UK copyright law (like Australian law, as to which it was nice to see citation of some cases) has provisions terminating or limiting "artistic" copyright where 3-D models based on an artistic work have been "industrially produced" (usually, more than 50 copies made), except where the artistic work was a "sculpture". Since George Lucas' companies have been making replicas of the helmets for years, they have effectively lost UK copyright over them, and Mr Ainsworth (who was one of the original model-makers on the movie) is free to make and market his copies in the UK. (And, I am pretty sure, in Australia.)

The more boring bits of the judgment (but of more general interest long-term) deal with the effect of a US judgment that had been given for $20 million against Mr Ainsworth in the States in his absence. Could the judgement be enforced as a judgment? The CA said no, and the SC did not revisit this issue. So could Lucas now apply in a UK court to have the US copyright enforced by a UK court? The ultimate answer given by the SC (contrary to the CA) was, yes. Old cases about title to foreign IP were either distinguished or over-ruled.

The bottom line seems to be this: Lucas can apply to enforce their US copyright in the UK. Presumably, however, since the copyright has expired in the UK, Mr Ainsworth will not be prevented from selling his materials in the UK. But I guess Lucas may get an injunction preventing him from selling stuff into the US in future. And if I were Mr Ainsworth I wouldn't be taking any plane trips to the States in the near future with the $20 million US judgment hanging over my head.

Regards

Neil

PS I have to add, however, that I think the very first line of the judgement gets it wrong when it says that the first Star Wars film was "later renamed "Star Wars Episode IV- A New Hope" in order to provide for "prequels"." I distinctly recall thinking that one of the many cool things about the film when I first saw it in 1977 was that it had this bizarre "Episode IV" label. But other Star Wars nerds may be able to correct me.