ST guard-duty

A long time ago, in a Galaxy far, far away…

In 1977, George Lucas revitalized the world’s interest in science fiction with the ground breaking cinema classic Star Wars (now referred to as Star Wars: A New Hope or Episode IV).  Since then, Lucas’s Star Wars empire expanded to include six full-length movies (in order of release: A New Hope, The Empire Strikes Back, Return of the Jedi, The Phantom Menace, Attack of the Clones, and Revenge of the Sith), an animated television series (The Clone Wars), countless novels (see, e.g., here ) and graphic novels (see, e.g., here), theme park attractions (Star Tours), Internet message boards (see, for example, theforce.net), and its own fan convention.  Unfortunately for Lucas, an upstart rebellion in the UK recently earned the right to chip away at that empire.

Andrew Ainsworth, who designed the iconic Stormtrooper helmets for the first movie, recently won a long, litigious battle with Lucas over whether he can legally make and sell replicas of those helmets cast from the original molds.  The battle began when Lucas sued Ainsworth in the US for copyright infringement, obtaining a judgment against the former prop designer.  Ainsworth, however, does not live in the US and owns no US assets.  As a result, Lucas brought a second suit in the UK, where Ainsworth’s studio is located.

This time, the outcome was quite different.  Last week, the British Supreme Court ruled that Ainsworth has the right to make and sell Stormtrooper helmets in the UK.  Unlike American IP law, under British IP law, three dimensional industrial props are not considered sculptures (which receive greater protection), but functional, non-artistic works.  Because of this classification, the Stormtrooper helmet was, at best, subject to a fifteen year period of protection.  As the original helmets were created in the 1970s, that protection had expired many years prior and Mr. Ainsworth is free to continue to make, market, and sell his Stormtrooper replicas in the UK.

What does the ruling mean?  For fans and cosplayers in the United Kingdom, it means that they can purchase an authentic replica helmet made from the original molds.  American fans, unfortunately, will be unable to purchase the replicas in the States.  The copyright judgment issued by the US court is still a valid ruling preventing Ainsworth from selling his helmets on this side of the pond.  But perhaps the most important legal lesson is the reminder to all who deal in intellectual property to make sure issues related to IP ownership rights are discussed in negotiations and covered in contracts. Careful IP planning and management can avoid costly litigation battles over who owns what