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
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
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
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.
Swaab Attorneys was the highest ranking law firm and the
13th best place to work in Australia in the 2010 Business Review
Weekly Best Places to Work Awards. The firm was a finalist in the
2010 BRW Client Choice Awards for client service and was named the
winner in the 2009 Australasian Legal Business Employer of Choice
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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