Lucas empire can't strike back in top court ruling

George Lucas's production company Lucasfilm failed to convince Britain's highest court that UK copyright law bars sales of replica Imperial Stormtrooper helmets from the movie Star Wars.

The ruling yesterday by the UK Supreme Court in London upheld a December 2009 appeals court finding that British engineer Andrew Ainsworth, who helped design the white helmets, didn't violate UK law by selling the copies, which he cast from original moulds.

The ruling "maintains an anomaly of British copyright law under which the creative and highly artistic works made for use in films - which are protected by the copyright laws of virtually every other country in the world - may not be entitled to copyright protection in the UK," Lucasfilm said in a statement.

The company, based in California, filed the UK case after winning a US$20 million judgment against Ainsworth in a California lawsuit over the helmet sales in 2006.

The judge in that case said Ainsworth's company, Shepperton Design Studios, infringed Lucas's copyright and made misleading claims about the helmets' authenticity.

Lucas had already determined the look of the fictional soldiers for his 1977 science-fiction epic, before asking Ainsworth to work on the helmets, Lucasfilm argued.

Lucasfilm didn't convince the Supreme Court the helmet qualified as a sculpture, as opposed to being a purely utilitarian creation. If the court had deemed it a sculpture, Ainsworth's online sales would have been violating UK copyright law.

"It was the Star Wars film that was the work of art that Mr Lucas and his companies created," the justices wrote. "The helmet was utilitarian, in the sense that it was an element in the process of production of the film."

The ruling will be disappointing for production companies that seek longer periods of protection for merchandising, said Huw Evans, a lawyer at Allen & Overy in London.

"It follows that full copyright protection for 3D articles in the UK will generally continue to be limited to the fine arts," Evans said.

People interested in intellectual-property law may watch to see what Lucasfilm does next, said Thayne Forbes, a managing director at brand-valuation company Intangible Business.

"The Star Wars films are an upmarket, fantasy experience for the audience, and the merchandise must be reflective of this or it risks damaging the brand value," Forbes said.

"What Lucasfilm quite rightly wants to avoid is stormtrooper helmets and armour being found in cheap plastic-toy territory."

The ruling gave Lucasfilm a partial victory by granting it some rights to sue in the UK over infringement of foreign copyrights. That portion of the judgment is an "important step" in modernising UK law and bringing it into line with the European Union, Lucasfilm said.

The decision is important for business because it clears up a long-running controversy over whether UK courts can decide if non-UK copyrights have been infringed, said Nigel Jones, a lawyer at Linklaters in London.

"That uncertainty has now gone," Jones said. "If you want to sue here, that is good news. If you want to avoid being sued here, it may be less welcome."

The UK Court of Appeal in London said in 2009 that Lucasfilm couldn't enforce the California judgment in the UK and warned Ainsworth about the risks of further sales in the UK.

The "surprise" Supreme Court decision may lead to a flood of copyright lawsuits filed in the UK, said David Allen, who leads the litigation practice at law firm Mayer Brown's London office.

"This will be particularly significant where infringement takes place in a country with less stable and internationally respected legal systems than the UK, for example such as in the developing world," Allen said.

- BLOOMBERG

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