Posts on this blog represent my opinion. It may be my considered opinion on the basis of my formal study of law and technology. But it is not legal advice. It must not be treated as, or acted upon as, legal advice and no liability is accepted for doing so.

Thursday, 31 July 2008

Lucasfilm v Ainsworth: The Copyright is *not* strong in this one...

A few months ago I found myself lucky enough to be able to attend several days of the argument in the copyright case of Lucasfilm v Ainsworth. Cases are often known colloquially by their subject matter (e.g. Jif Lemon); if that happens here, it will go down as the Stormtrooper Armour case. Today, Mr Justice Mann gave the long-awaited judgment, and I was again able to be in court to hear him give a very brief summary.

The full version is available here; I was lucky enough to pick up one of the copies printed out for media and the public (I got the last one) and it's about half an inch thick. In great detail, Mr Justice Mann goes into the question of whether prop-maker Mr Andrew Ainsworth infringed Lucasfilm's rights by making and selling copies of the Imperial Stormtrooper helmets and armour from Star Wars, items he had made for the original film production.

So who won? Think of the end of The Empire Strikes Back; neither side has exactly come out with what it wanted, and everything has been set up for a sequel. Lucasfilm will have been hoping either for a decision that it could sue for all of Mr Ainsworth's production as infringing their copyright under English law, or for the Court to hold that it could enforce the very punitive US judgment it obtained in Ainsworth's absence. It got neither, as Mann J held that Ainsworth's activities in the UK had not been infringing, and that Ainsworth did not have sufficient 'presence' in the US for a court there to have authority over his activities.

But Ainsworth hasn't got what he will have wanted either. To begin with, Mr Justice Mann had decided, as I'll explain below, that under English law there was simply no copyright in the costume designs at all. Whilst this got Ainsworth off the copyright infringement claim (you can't infringe copyright if it doesn't exist) it also meant that his claim to have rights in the costumes equally evaporated. But Mann J went on to note that even if copyright had existed, Ainsworth's legal obligations would have meant that such rights belonged to Lucasfilm, not him. Indeed, on the basis of the evidence presented, he felt that Ainsworth had very much exaggerated the scope of his creative input, and that relatively little of the design had been his. It has to be said that Mr Ainsworth does not come out of the judgment looking too good; although the judge did not see him as dishonest as such, he found that he was very prone to overstate his contribution to 
Star Wars, even to the point of trying to allege that plain evidence to the contrary had been faked.

Most importantly for Ainsworth though, Mann J decided that he could be held liable for copyright infringement under US law, specifically by making items that copied drawings (the design art) that were protected by US copyright. This might seem odd, and perhaps even alarming. But the judge gave long and carefully-argued reasons for why, in this particular instance, a US claimant could ask an English court to apply US law. As well as technical arguments relating to international recognition of copyright, there was also the point that Ainsworth had copied items and sold them into the US whilst refusing to submit himself to the jurisdiction of the US courts. Having decided that Ainsworth could not be forced to submit to that jurisdiction even though he traded with it, Mann J felt that he could not then reasonably object to its claim being heard in the English courts. And, US copyright law differing in some key respects from English copyright law, Ainsworth 
had infringed US copyright. This leaves him facing a further hearing to decide what remedy an English court can or should impose, and this is a subject I can only speculate on. Will damages be assessed on English principles, in proportion to the actual value of infringing goods, or much more punitive US ones? And will they be based on the total scale of infringement, or just Ainsworth's sales into the US? (For the record, I had earlier been under the impression that those were in the £100,000s; it turns out they were more like £8,000 to £25,000.) Thus Mr Ainsworth is still left with a large and undetermined liability hanging over him, not to mention the question of how to allocate the costs of what was in the end a seventeen-day trial in the High Court with leading counsel and numerous specialist witnesses. Extrapolating from other such trials, I would be very surprised if the costs came to less than £500,000 if not twice that, so even if it is held that both sides did equally well and bear their own costs, Mr Ainsworth will have a huge legal bill.

And it doesn't end here. Both sides will want to appeal; Lucasfilm against the decisions on copyright and enforceability of the US judgment, Ainsworth against the decision that he is liable under US copyright law. If permission to appeal is granted - and the legal issues are controversial enough that I would be astonished if it is not - then we are unlikely to see a hearing until the middle of 2009 or so. And the case might even go to the House of Lords, or the new UK Supreme Court as it will then be. Like the 
Star Wars franchise itself, we have more yet to come.

So what does this case do for copyright law in the UK? (It was an English High Court case, but generally the Scottish Court of Session follows the English courts in decisions on interpretation of UK-wide copyright and IP law.) Actually, it is quite interesting and helpful, and to see why we can look at why Mr Justice Mann found that Ainsworth had not infringed copyright in UK law.

The first issue was whether or not the key items, the Stormtrooper helmets, were subject to copyright. In UK law, there are four categories of copyright: literary, dramatic, musical and artistic. Artistic copyright is itself divided into various sub-categories, such as paintings, photographs and, more relevant here, sculptures and a catch-all class known as 'works of artistic craftsmanship' or WACs. For copyright to subsist in the helmets, they either had to be sculptures or WACs; this led Mann J to a lengthy assessment of the history of the relevant legislation and the not always helpful decisions in previous cases. Mindful perhaps that such prior cases had left later judges (not to mention law students such as me) scratching their heads to make sense of what a 'sculpture' is in the eyes of the law, he sought to give a comprehensive and hopefully definitive analysis. which occupies paras 94-123 of his judgment. His final test is given at para 118; to summarise it, the key factor is that visual appeal in its own right be a primary consideration of the creator. To quote a memorable example he gives,

"A pile of bricks, temporarily on display at the Tate Modern for 2 weeks, is plainly capable of being a sculpture. The identical pile of bricks dumped at the end of my driveway for 2 weeks preparatory to a building project is equally plainly not. One asks why there is that difference, and the answer lies, in my view, in having regard to its purpose. One is created by the hand of an artist, for artistic purposes, and the other is created by a builder, for building purposes. I appreciate that this example might be criticised for building in assumptions relating to what it seeks to demonstrate, and then extracting, or justifying, a test from that, but in the heavily subjective realms of definition in the artistic field one has to start somewhere."

He then applied this test to the helmets (be they the final props or the original clay models of them), and decided that whilst their design was doubtless intended to convey something about the Stormtroopers - menace and anonymity - that expression was utilitarian, for the purpose of being a costume prop, not for artistic ends in themselves. Furthermore, he held that the same applied to toy Stormtroopers produced by Lucasfilm, which he found to be primarily for the purposes of play, rather than artistic interpretation.

[Here I must diffidently and respectfully take issue with one of His Lordship's findings. He says, at para 123, 
"While their appearance is obviously highly important ... they are not made for the purposes of their visual appearance as such. While there is no accounting for taste, it is highly unlikely that they would be placed on display and periodically admired as such" Having wandered around the dealers' rooms of several science fiction conventions, and for that matter seen the very expensive Star Wars figurines on sale just up the road from the RCJ in the London branch of Forbidden Planet, I would suggest that there is quite a market in reproductions of Stormtroopers and many other such characters for the purpose of admiration by adult admirers. Indeed, one prominent law-blogger of my acquaintance comes readily to mind, having seen the inside of his office! I am rather surprised that Lucasfilm did not lead evidence of this market, as it might have made Mann J a little more wary in reaching this conclusion. Nonetheless, it does not affect the underlying test he derived.]

If not sculptures, were the helmets instead works of artistic craftsmanship? Here the legal guidance is even vaguer, with the leading case of 
Hensher v Restawile being infamous for having five Law Lords give five different explanations of what a WAC was. Mann J considered various later attempts to draw some common thread from that case, and settled on the test of Tipping J in the New Zealand case of Bonz Group v Cooke :

"for a work to be to be regarded as one of artistic craftsmanship it must be possible fairly to say that the author was both a craftsman and an artist. A craftsman is a person who makes something in a skilful way and takes justified pride in their workmanship. An artist is a person with creative ability who produces something which has aesthetic appeal."

Again, applying this, the helmets were not created as artistic works as such. Indeed, on close examination, they had many characteristics more typical of the props they were, such as apparently three-dimensional details being painted on. Since the helmets were neither sculptures nor WACs, they fell into no category of items in which copyright could subsist under the Copyright, Designs and Patents Act 1988 and so there was no copyright in them for Ainsworth to infringe. (Equally, as noted, this meant that his own claim for copyright in them fell at the start.)

But this was not the only legal point in Mr Ainsworth's favour. Mann J went on to consider the effect of sections 51 and 52 of CDPA 1988, which deal with the relationship between copyright and registered design. Section 51 in particular was introduced to deal with the problem that arose in the 1970s of car manufacturers seeking to stop the sale of third-party spares by claiming that such items infringed the copyright in the original design drawings. Now, it remains generally true that, as stated in the 1940s case of 
King Features Syndicate v Kleeman - the 'Popeye' case - you infringe the copyright in a drawing by turning it into a 3D object. But s.51 says that this is not so if the drawing you are working from is a design document rather than an artistic work in its own right. In other words, if a drawing is one that exists specifically to be made into an item, then nobody infringes its copyright by so making an item based on it. The item in question might be protected by design right, but such rights are both shorter and more constrained than copyright. S.51 also applies to preliminary models, and Mann J held that both the concept art and the original clay models of the helmets fell within its scope. As such, Ainsworth did not infringe any copyright in them (which, as already noted, did not subsist for the models anyway) by making final items based on them. 

Finally, Mann J turned to s.52, which seeks to avoid the anomaly whereby an industrial design would be protected for a maximum of 25 years by design right, but any element of it protected by copyright got the full life-of-creator-plus-70-years of protection. Here, the legal argument becomes extremely complicated, as the events in dispute took place over a period when the law changed substantially and various transitional measures were put into place. But the end result was that even if s.51 had not provided a defence, Ainsworth could rely on s.52 to say that because the helmet design had been mass-produced, it was protected by the shorter term of design right rather than the full term of copyright - and given the timing of events, such rights had expired. Interestingly, Mann J did not hold that the original bulk prop production constituted mass production, as it had clearly only been for internal, rather than commercial, purposes. Instead he held that Lucasfilm's extensive merchandising of Stormtrooper toys was mass production of the helmet and armour design, and that this had the effect of making the design one limited to the shorter (and thus expired) design right rather than copyright protection.

The judgment also goes into other legal issues, such as whether Ainsworth was contractually obliged in any case to assign copyright in anything he made to Lucasfilm (he was, but as seen nothing he made was protected by copyright anyway) or whether he was under an obligation of confidence not to market products based on his work for Lucasfilm (at the time, perhaps, but not now, according to the judge). He was also held not to have passed off his work as that of Lucasfilm, whilst a trade mark claim was dropped by mutual consent.

So, what do we get out of 
Lucasfilm v Ainsworth for IP law? A long-overdue attempt to provide a clear judicial test for the meaning of 'sculpture' and 'work of artistic craftsmanship' within CDPA 1988, which I expect to see being cited and making its way into IP texts before long. We also got a clear assessment of the application of s.51 to the creation of articles from such items as concept artwork for films; it seems to me that this gives a green light to costume hobbyists to turn to their Making Of... books and turn the design art therein into garments and props, as not only does s.51 legitimise doing so, but arguably Mr Justice Mann's decision on copyright means that it simply does not subsist in film props and costumes at all. Such activity may infringe design right in such items if done commercially, but as there is an exemption for acts done privately, making replica costumes for ones own use would not infringe any design right that did exist.

To summarise then: both Lucasfilm and Mr Ainsworth will be looking ahead to the next legal round, Ainsworth probably with a wary eye on his possible legal bill (which is of course fiddling small change to Lucasfilm), whilst Mr Justice Mann's judgment not only provides useful clarification of some famously vague areas of copyright law but on the face of it removes, in the UK at least, copyright protection from very many costumes and props depicted on film and TV, as well as provided exemption for their reproduction even where copyright may subsist. Meanwhile, we await 
Lucasfilm v Ainsworth, Part II: Return of Queen's Counsel.

Welcome to LawClanger

Does the world need another intellectual property law blog? Indeed, does it need another intellectual property lawyer? I sincerely hope so, seeing as how I have recently given up a well-paid and very interesting (albeit often in the 'may you live in interesting times' sense) career to try to become one.

Firstly, a little personal background. I'm what would be termed a mature entrant to the profession. I graduated in 1990 from Imperial College with an MEng in electrical and electronic engineering, and joined the RAF as an engineering officer. I served in roles as varied as project management and satellite mission control, and in locations from the Falkland Islands to Iraq. During this time, I gained an MSc in satellite communications engineering and later, through the Open University, my LLB. Having become increasingly interested in law, and approaching the mid-career option point where I could leave with an early pension, I decided to attempt the transition to law, and, in view of my technical background, intellectual property law in particular. I am currently nearing completion of an LLM in IP and IT law at the University of Edinburgh (although I am back in London to finish off my dissertation) and will be starting the Bar Vocational Course at BPP Holborn in September.

Why a blog? I've posted on legal and IP issues in the past on a personal journal, but much of that is not open to external readers and I also feel I should be wary of treating my friends to too many discussions on the application of s.51 CDPA 1988 - if for no other reason than I want to keep them. Hence a separate law blog.

Why LawClanger? For those of you unfamiliar with UK childrens' television circa 1969-1972, I suggest you look here; I have long had a fondness for the Clangers, and have used some variation of the term as a user ID before.  

So, welcome to LawClanger. My main interest is IP, but information technology, Web 2.0 (including arguments as to what it is), open knowledge and indeed any matters pertaining to the interaction of law, technology and society are all likely to be discussed herein.