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Cite as: [2008] EWHC 1878 (Ch)

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Neutral Citation Number: [2008] EWHC 1878 (Ch)
Case No: HC06C03813

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY

Royal Courts of Justice
Strand, London, WC2A 2LL
31/07/2008

B e f o r e :

MR JUSTICE MANN
____________________

Between:
(1) LUCASFILM LIMITED
(2) STAR WARS PRODUCTIONS LIMITED
(3) LUCASFILM ENTERTAINMENT
COMPANY LIMITED



Claimants
- and -

(1) ANDREW AINSWORTH
(2) SHEPPERTON DESIGN STUDIOS LIMITED


Defendants

____________________

MR. M. BLOCH Q.C. and MR. A. BRYSON (instructed by Harbottle & Lewis LLP) for the Claimants.
MR. A. WILSON Q.C. and MR. G. HAMER (instructed by SimmonsCooperAndrew LLP) for the Defendants.
Hearing dates: 8th, 9th, 10th, 11th, 14th, 15th, 16th, 17th, 18th, 21st, 22nd, 24th, 25th, 29th, 30th April and 1st and 2nd May 2008

____________________

HTML VERSION OF JUDGMENT
____________________

Crown Copyright ©

    Mr Justice Mann :

    Introduction

  1. This is a case about the reproduction of replicas of various props used in the first Star Wars film. The Star Wars films are a series of science fiction films set at some different time and in another part of the Universe, and which feature the struggle between good and evil. They contain a heavy militaristic element, and that in turn requires uniforms. This case concerns the production of uniforms for the first of the films in the series, which is known as "Star Wars IV – A New Hope" and which was first shown in 1977. It bears the number IV, even though it was the first in the series to be produced, so as to leave room for expansion backwards in time, as it were, or "prequels". I shall simply call it "Star Wars", or "the film". The second claimant was the English production company for the film; all the claimant companies are, taken together, the producing or licensing companies, and it is accepted that between them they have the necessary rights (if anyone has) to bring the claims made in this action.
  2. It is therefore largely unnecessary to distinguish between them; I can call them corporately "Lucas".

  3. One of the most abiding images in the film was that of the Imperial Stormtroopers. These were soldiers clad in white armour, including a white helmet which left no part of the face uncovered. The second defendant (Mr Ainsworth) made that armour for the film in vacuum-moulded plastic. He has recently started selling versions to members of the public, both in the form of a complete set and the helmet alone. That is said to infringe the copyright of the claimants. He also sells replicas of other helmets. These again are said to infringe. He is able to make these things because he made the originals for the film, and has kept the tools or moulds on which they are made. This action seeks to enforce the intellectual property rights of the claimants. It is based on copyright infringement and passing off. There is also a contractual claim, allied to a claim based in confidence. They all seek essentially the same thing in relation to all the helmets and armour. In addition there was, until its abandonment at the trial, a trade mark claim in relation to one of the adornments of two of the helmets. There are two more limbs in relation to US-centred activities. First, there is a claim to enforce a Californian default judgment which the first claimant obtained against Mr Ainsworth, and second (as an alternative) there is a claim to enforce an American copyright claim itself. At the trial Mr Michael Bloch QC led for the claimants; Mr Alastair Wilson QC led for the defendants.
  4. Claimants' witnesses

  5. I heard from the following witnesses on behalf of the claimant.
  6. Mr Norman Reynolds

  7. At the relevant time he was an Art Director engaged to work on the film. He gave some general evidence about the process of creating some of the relevant parts of armour and headgear, and in particular the Stormtrooper helmet. His recollection of the matters that he could recollect was, in my view, generally reliable. He was a careful witness.
  8. Mr Brian Muir

  9. Mr Muir is a sculptor and described how he contributed to the making of the armour for the Stormtrooper. He is plainly a skilled man, and has a good general recollection of the events at the time. He has been in the film industry since 1968 and was able to bring considerable experience to bear. His job, in relation to the armour, was to create a clay version on a model of an average size actor, and then to carve or sculpt a plaster version of the armour which was taken from that. Further details of this process are given below in the narrative of fact. I was able to accept his evidence, including important evidence of timing.
  10. Mr Roffman

  11. Mr Roffman is a vice-president of the first claimant, and is in charge of the licensing of Lucas products. He gave some uncontested evidence about the significance of licensing, and a small amount of uncontested detail about licensees. He was, however, cross-examined at some length about his honesty, because the defendants were alleging that he gave some dishonest evidence in the application on which the US default judgment was based. He gave his evidence very carefully, as one would expect of someone in his position accused of dishonesty (an accusation which, if true, could have attracted criminal sanctions in the US). This allegation was unreservedly abandoned after some 2½ hours of cross-examination, and in my view rightly so. He stands entirely acquitted of dishonesty. His evidence can be accepted.
  12. Mr Mollo

  13. Mr John Mollo was in charge of the costume department for the film. He was responsible for detailed costume design and ended up having dealings with Mr Ainsworth over the design and procurement of the armour and helmets, and gave evidence of those dealings. He had a particular expertise in military uniforms, which is one of the reasons that he was hired. His evidence is important because it is the foundation of a large part of the genesis of the actual designs relied on by the claimants. He is clearly a skilled designer with a great eye for meticulous detail. Unfortunately his oral evidence did not demonstrate the same care. While he was plainly a witness who came to tell the truth, and to be straightforward, he was also an unfocussed and sometimes careless one. His demeanour demonstrated that often he did not concentrate fully on the question, and would often carelessly respond with a "Yes" which his demeanour suggested might be merely an indication of his understanding of the matter being referred to in the question or suggestion rather than an intended affirmation of the substance of the question. When combined with a cross-examination that was sometimes less than focussed, it means that his evidence has to be approached with some care – not, I stress again, because he was an untruthful one, but because he sometimes lacked care.
  14. Mr Gary Kurtz

  15. He has many years in the film industry and was the producer on the film (and the next one in the series as well). He gave careful albeit limited evidence of the background to the production and his involvement in it, and in particular how it moved from the conception in the mind of Mr Lucas, through sketches and into production. He described his understanding of how Mr Ainsworth came to be involved. He gave his evidence in a careful and measured fashion, and in the main I can rely on what he said, though he did give some evidence about Mr Mollo's detailed involvement which did not coincide with Mr Mollo's.
  16. Mr John Richardson

  17. He was called to give evidence as to the genesis of a particular clay model of the Stormtrooper helmet. His witness statement deposed to its having been made by a Liz Moore. From an undisputed photograph it appeared that the model was made in red, and not grey, clay. In cross-examination he said that she worked only in grey clay. As a result of his evidence the claimants abandoned their contention that she had made the model. As a result I need say no more about his evidence.
  18. Professor Peter Menell

  19. He was called to give expert evidence on US intellectual property law so far as relevant to the attempts in this case to enforce infringements of that law in this jurisdiction. His written evidence was extremely thorough; it was like reading a large section of a basic textbook with copious citations. I am satisfied that he was a reliable witness who gave his honest opinions in compliance with English requirements applying to experts.
  20. Professor Roger Fenner

  21. He was called to give rebuttal evidence as to the materials used in certain helmets. In the end his evidence was not controverted and did not go to as central issue in the case. I do not need to say anything more about him.
  22. Written evidence

  23. The claimants also put in evidence from Mr Ralph McQuarrie, who made important early drawings and paintings. He lives in California and his written evidence was submitted unchallenged under the Civil Evidence Act because he is too elderly and physically unable to travel to London. The written evidence of Mr Alex Tavoularis was also admitted under that Act. He drew some story boards for the development of the film's ideas, some of which contained characters and designs relevant to this case. His evidence was, however, relatively peripheral to the issues in the case.
  24. Witness statements were provided by four other witnesses, who were not called for cross-examination. They were:
  25. (i) Mr Mark Owen, a solicitor from Messrs Harbottle & Lewis, who provided evidence relating to the US proceedings.

    (ii) A Mr Stephen Sansweet, who provided peripheral evidence as to whether the disputed helmets were ever manufactured in the UK (other than by Mr Ainsworth)

    (iii) A Mr Peter Anderson, a Californian attorney who gave evidence about the availability of set-off in California. This was only ever relevant to an application for security for costs made by Mr Ainsworth shortly before the trial, and which was made again at the trial. It was dealt with without any need for me to make a ruling.

    (iv) Mr David Anderman, who gave formal evidence as to the current ownership of copyrights as between the various claimants.

    Defendants' witnesses

  26. The following gave evidence for the defendants.
  27. Mr Ainsworth

  28. He was, of course, the principal defence witness. He is the sole director of the second defendant. He did a diploma course in engineering and is extremely interested in making things. For a time he produced small cars, and he has a great interest in vacuum moulding plastics, which process he has used for making many things. He is clearly a gifted man in terms of his design ability, his fabrication skills and related vision. However, in his evidence he betrayed that he has become somewhat obsessed with the present dispute, and that has led him to put forward versions of events which are reconstructions designed, wittingly or unwittingly, to support his case. His evidence on the events of 1976 changed on a number of occasions. In one sense that is not surprising. Having a detailed recollection of events which took place over 30 years ago is difficult if not impossible, and any purported recollection of detail (and indeed of general patterns) must be viewed with caution. In some cases it will reflect well on a witness's credibility and honesty that he or she is prepared to accept that an initial recollection is wrong in the light of evidence given by others, or of material which can be extracted from genuine contemporaneous documents. However, Mr Ainsworth's changes of evidence sometimes went beyond that. He provided an initial long witness statement. (Although it was described as his second witness statement, presumably because there was a prior one which was not used at the trial, I shall refer to it hereafter as his first, renumbering the subsequent ones as well.) Then, when witness statements were provided by the other side, and when he had further studied documents, he supplemented that with a further witness statement which sought to indulge in a process of amendment and reconstruction. At this stage most of his corrections are fair enough – they are the kind of corrections which many honest witnesses, reflecting on their witness statements, are minded to make because they are doing their honest best. His process of reconstruction, however, betrays a vigour in his approach which puts him more in the role of advocate than witness. In these two witness statements he went so far as to suggest that certain drawings which appeared in Mr Mollo's notebook, and which Mr Mollo's evidence stated to be his (Mr Mollo's) looked as though they could be in another hand. That was always an implausible allegation, and by the time of the cross-examination of Mr Mollo it had been abandoned. This was reflected by an express abandonment in his fourth witness statement. This incident, and others, demonstrates that Mr Ainsworth is always looking for a gloss on, or analysis of, evidence which will favour his case.
  29. Another example concerns his evidence about a space helmet that he helped to design and which he fabricated for a later film called Outland. He discussed this with Mr Mollo before producing it. Until a short time into his cross-examination, he stoutly maintained that Mr Mollo never showed him any drawings in relation to his (Mr Mollo's) requirements. In cross-examination he was forced to admit that he did get drawings from Mr Mollo. His attempts to play up his part, and to play down Mr Mollo's part, in the creation of this helmet is a good example of his viewing events through his own Ainsworth-tinted spectacles.
  30. He also demonstrated a tendency to take credit for things that he was not entitled to in other ways. In his first witness statement (and not corrected by any subsequent witness statement) he said that he created a costume and a particular artefact for a later film called "Alien". His witness statement clearly stated that they were used in the film, and the purpose of the evidence was to establish his credentials as an important prop maker. In fact the position was that the costume was not used at all (and he was aware at the time of the making of the film that it would not be) and the artefact was not used in the final cut of the film (which he realised when he saw the film at the time). His statement was therefore untrue, and plainly so. Furthermore, he did not acknowledge that there was anything wrong with his witness statement in this respect. He was either being dishonest about that, or he has a strange subjective view of the truth which calls into question his reliability as a witness in relation to such matters.
  31. Again, he claimed to have "designed" in 1977 certain Martian characters used in a well-known advertisement for Cadbury's mashed potato. While he was able to produce an invoice for the fabrication of some characters in 1977, which might have been similar characters, the original advertisements went out 2 or 3 years before that. He said that he did not know that there were prior adverts or prior characters, and no-one had shown him any designs at the time he was instructed in 1977. Nevertheless, he said that his designs were the same or virtually the same as those in the prior advertisements. In my view that can only have happened if he saw those prior designs, which would in fact make sense – if (as I find) in 1977 the producers (or their agency) wanted more of the same characters, why would they not demonstrate what they wanted reproductions of?
  32. These particular points are not just general credibility points. They are credibility points going to a central issue in this case, namely the reliability of Mr Ainsworth's evidence as to his alleged design of some of the relevant material in this case. He has clearly demonstrated that he is prepared to claim more than he is entitled to in other contexts. I have to bear that firmly in mind in considering his claims in relation to the designs in issue in this case.
  33. Immediately before he went in the witness box, he produced more evidence in the form of a marked up version of his first witness statement, showing deletions and additions that he wished to make. Some of them were minor; many of them were not. They amounted to very material variations from the first witness statement, for whose truth he had vouched in his statement of truth. That, of itself, might not be a factor going to credibility, but the number and nature of the changes means that in the present case it is.
  34. All these factors, and other challenges made to his credibility during the case, make me approach Mr Ainsworth's evidence with a great deal of caution.
  35. Miss Bernadette Pitfield

  36. Miss Pitfield is the partner of Mr Ainsworth. She gave short evidence in chief about Mr Ainsworth's fabrication of two of the more minor helmets which are the subject of this action. Her evidence was relatively slight. She was an honest witness, but cannot be expected to have a relevantly detailed recollection of events in 1976.
  37. Mr Clive Payne

  38. He was called to give evidence of how Mr Ainsworth made two of the more minor helmets and of how they were named. He is a long time friend of Mr Ainsworth. He came over as slightly glib and careless in his recollection. I do not think that he gave dishonest evidence, but in matters of detail I do not think I can rely much on his evidence.
  39. Mr Nick Pemberton

  40. Mr Pemberton is now retired, but for the whole of his working life he was a freelance scenic artist and prop maker. It was to him that Lucas turned when they wanted the assistance which underlies this case, and it was he who was engaged, at least initially. He created a clay model of the Stormtrooper head which ultimately went to Mr Ainsworth, and Mr Ainsworth was his subcontractor in the early phases of the relationships. He was a good, careful and reliable witness. He was never afraid to say he could not remember, and did not seek to fill in the gaps with uncalled-for reconstruction or speculation.
  41. Ms Nicola Howard-Jones

  42. At the time of the events in question she lived with Mr Pemberton. She is, amongst other things, a sculptress, and helped to make models and prototypes of two of the helmets. Her witness statement came in late – towards the end of the claimant's evidence. The decision to approach her was apparently a late decision. Quite understandably, she had difficulty in dredging up these 1976 events from her memory, particularly at short notice. She did her best, and was plainly honest and trying to help, but her recollection of the detail which she was asked to recall was understandably poor.
  43. The facts

  44. In the narrative that follows, any recitation of fact should be treated as a finding of fact unless the contrary appears.
  45. The events in question took place over 30 years ago. There was an understandable failure of memory of a lot of detail on the part of a number of witnesses. None of the witnesses can be criticised for that. Some memories seem to have been slightly surprisingly strong, but that is doubtless explained because the project that the witnesses were involved in was a striking one. Some reconstruction of precise (or more or less precise) dates has proved possible because of two contemporaneous documents which have survived. The first is Mr Pemberton's diary, which records not only his activities (in general terms) but also some of Mr Ainsworth's. It was not explained how Mr Pemberton's diary came to record the latter, but its accuracy in this respect was not challenged.
  46. The second document (more precisely, a set of separate documents) is a bound up version of notebooks kept by Mr Mollo at the time. Mr Mollo had notebooks in which he did various relevant things. First, he did sketches of proposed costumes and other artefacts that he was expected to produce. Second, he noted things that he need to do, or things that happened at meetings. And third, he experimented with a diary system, mapping out a week or month ahead in box form and inserting forthcoming events and short records of past events (and things such as travel expense information). Not every page is dated, and some reconstruction of the dates of some important drawings has to be done by reference to other dated pages, but the notebook is nonetheless an important contemporaneous record which assists with the dating and recollection (and reconstruction) of events.
  47. The history of the matter is most conveniently pursued in three principal strands, in the interests of intelligibility. The first convenient strand is the Stormtrooper helmet; the second is the Stormtrooper armour; and the third is the other items (mainly other helmets). Then I shall turn briefly to the subsequent events that give rise to this action, as to which there is no real dispute in relation to the main steps in the story.
  48. The conception of the film; the design control of Mr Lucas; and the creation of the Stormtrooper helmet

  49. The original conception of the Star Wars films was that of the producer and director, George Lucas. He plainly had many, and clear, views of how he wanted the film and its characters to look. He worked with many people in order to achieve that. One of those people was Mr McQuarrie. Mr McQuarrie drew many designs. They included two important paintings, one called "Cantina" and the other called "Imperial Troopers confronting Hans Solo, Luke Starkiller and Chewbacca the Wookie". The importance of those paintings is that each contains a depiction of a Stormtrooper and each was provided to those who were charged with producing the props to make Stormtroopers for the film. The drawings show a figure in white or silver armour (the intention was white, but Mr Ainsworth accurately pointed out that it might be taken to be silver). Those figures are shown in the drawings annexed to this judgment. They were arrived at after various drafts, and after careful consultation with Mr Lucas; and they embodied what Mr Lucas wanted so far as the appearance of the characters went (and indeed other matters). He specified the general look and approved the final drawings; it was he who specified that the armour and helmets should be white.
  50. The design control by Mr Lucas was an important factor in the conception and production of the film. Mr Tavoularis explained that his storyboards were important in assisting the director and others in visualising the script. He worked from drawings and paintings prepared by Mr McQuarrie though he never met him. When he prepared drawings he submitted them to Mr Lucas. The latter gave his views and further requirements, and by this process storyboards emerged which reflected Mr Lucas's vision. Mr Reynolds confirmed that the characters as depicted in the film had to be as Mr Lucas visualised them; Mr Lucas's overall involvement in set, props and costume design was, in his experience unusual. Other witnesses testified to the close involvement of Mr Lucas in design matters. This film was encapsulating his vision, and ideas were submitted to him for approval as they evolved. Thus Mr Mollo told me (and I accept) that all the helmets that are in issue in this case were submitted to him for approval. Mr Muir told me that he approved the final sculpt of the Stormtrooper armour created by Mr Muir. I am satisfied that at all times those entrusted with creating the film had to base themselves firmly on Mr Lucas's perceptions, and had to seek his approval on a considerable amount of detail, including the detail of the material that is the subject of this action. One of his concerns was to try to create a greater impression of practicality in the uniforms and weapons than existed in other science fiction productions, and as a result many of the uniforms and weapons were to have, and had, a World War II resonance.
  51. I have already described how Mr McQuarrie and Mr Tavoularis created designs and drawings. I have seen many of them. They formed an important part of the background as to how the film was to look. This work was going on in 1974 and 1975. By the middle of 1975 pre-production work was being set up and certain areas of work commenced in England, in North London. An Art Department was set up, and (among other people) Mr Reynolds was recruited, along with Mr John Barry, a production designer. Mr Mollo was engaged as costume designer; as his job title suggests, it was his job to come up with costume designs. By September 1975 the production work had migrated to Elstree Studios; Mr Lucas and Mr Reynolds came over from the US to live here for a time, in order to be close to the production. Set building began at the beginning of 1976; preliminary shooting of some desert scenes was to take place in mid-March, which meant that deadlines and time limits became more important. In particular, a limited number of some helmets (including Stormtrooper helmets) and some armour needed to be ready by then. Although the production had a lot of in-house expertise, these deadlines meant that they had to turn to out-of-house people.
  52. One of the people to whom they turned was Mr Pemberton. He was asked to go to the studios to meet Mr Lucas, probably on 6th January 1976. Mr Lucas showed him the two Mr McQuarrie paintings referred to above and asked him if he could produce the Stormtrooper helmet shown there. He went away in order to do so and started to sculpt a clay head, basing himself on the Mr McQuarrie paintings. He showed his first attempt to Mr Lucas a few days later, and Mr Lucas made certain observations on it. Amendments were carried out and another version was shown to Mr Lucas, of which he approved at a third meeting between the two men. In the evidence there is a photograph of what is probably Mr Pemberton's clay head, with Mr Lucas studying it from behind. It has some of the general shape, but not the sort of "facial" detail that one sees in the final version of the helmet. It is not clear at what stage of the sculpting that photograph was taken, or what extra detail was subsequently added, but it is plain that Mr Pemberton was following pretty closely the design of the helmet as shown in the two paintings. It is also plain that Mr Lucas had to be satisfied about the appearance of the helmets.
  53. At the third meeting Mr Lucas asked Mr Pemberton to produce a quantity (probably 50) of the helmets. Mr Pemberton did not have the time or, more significantly, the expertise to manufacture a real version himself, so he turned to Mr Ainsworth, who worked and lived 2 doors away and with whom he had had some prior dealings. He respected Mr Ainsworth's ability to work with plastics. Mr Lucas was told by him that he would be able to arrange for the helmets to be made, but Mr Ainsworth was not identified to him.
  54. On or about 20th January Mr Pemberton spoke to Mr Ainsworth about the making of the helmet. He explained that he had a customer who wanted a helmet as a prop, and showed him, and provided him with, good reproductions of the two Mr McQuarrie pictures and his clay model. Mr Ainsworth says that the clay head did not have much detail on it – it did not have eyes, or ears, or any indication of surface finish. Mr Pemberton was unable to say precisely what his head looked like when he handed it over, it terms of the details conveyed. I am, however, satisfied on the probabilities that it was a reasonable 3D rendition of the Stormtrooper in the Mr McQuarrie paintings. The Stormtrooper was a key character in the film, and Mr Lucas is likely to have wanted to see some significant level of detail in its realisation before approving the clay head. Mr Ainsworth was asked if he could produce a helmet in accordance with the drawings and clay head, and he agreed he would produce something. Mr Ainsworth says that the customer was not identified at that time, and he did not even know it was being produced for a film. He thought that it would be used in a play. This was not materially challenged, but the significant thing is that he appreciated that it was a thing for a dramatic production by a customer of Mr Pemberton.
  55. Mr Ainsworth spent a couple of days producing a prototype. He worked from the material he had been given by Pemberton, but added some detail of his own. He had to consider the practicalities of production. The helmet was produced in five parts – the face, the back/crown, an ear piece on each side and an insert piece for the eyes. One of the functions of the separate ear pieces was to cover the join of the other principal parts. They were one aspect of detail where he did not reproduce what was apparent from the McQuarrie drawings. He added his own refinements of precisely how the facial detail was to look – he produced the precise detail of the "frown" (the apparent nasal region), decided how precisely to produce the effect at the "mouth" and on each side (for the latter he used microphone ends) and he decided to use a black rubber moulding (from a car part) above the eyes (the drawings did not contain a black feature there). His initial evidence sought to portray him as being the person who "convinced" Lucas to use white for the helmet (and the armour). He said that he had thought the drawings portrayed silver armour. Whatever he may have perceived as the colour in the drawings, it is quite clear from the evidence that Lucas had already decided to use white. Lucas therefore needed no persuading or convincing, and in his cross-examination he very much toned down the statements in his witness statements about this. I think that this is another example of Mr Ainsworth's propensity to claim authorship of ideas with no real justification for doing so.
  56. Be that as it may, Mr Wilson, on behalf of Mr Ainsworth, did not dispute that the helmet thus produced (and the final version) was a substantial reproduction of the McQuarrie material for copyright purposes; and Lucas did not dispute that some of the detail on the prototype and the final version was created by Mr Ainsworth. I received a lot of evidence from Mr Ainsworth as to how precisely he first produced his own version of the helmet, and how he then went on to make the various moulds which he used for vacuum-forming the five parts which made up the whole. In the end little of that detail mattered, in relation to the Stormtrooper helmet. What is important is the source of its design. During the process of making the prototype Mr Pemberton's clay head was destroyed in some sort of accident. Again, nothing now turns on this, since on any footing the Mr Ainsworth helmets were substantial copies of the McQuarrie drawings.
  57. As part of the evidence I was provided with a DVD film of Mr Ainsworth in his workshop, demonstrating his techniques. Vacuum-forming involves the making of a tool or mould which represents the shape of the finished item and over which plastic is forced in order to produce that shape. A sheet of plastic is heated so as to make it malleable, and the tool is forced up into the softened sheet, while a vacuum is formed under the tool. The vacuum helps to force the plastic around the shape of the tool. The word "tool" is probably a slightly better word than "mould", but I shall use both indiscriminately in this judgment.
  58. Mr Ainsworth made several prototypes as he tried to get to a satisfactory design. In his first witness statement he suggested that he gave a prototype to Mr Pemberton at the beginning of February, and the latter in turn showed it to Mr Lucas. However, having studied Mr Pemberton's diary closely, along with Mr Mollo's diary entries, Mr Ainsworth changed the chronology and participation of the parties significantly. Having originally portrayed the situation as one in which he did not know who the end user was, and in which he did not meet Mr Mollo until mid-February, he then suggested that he met Mr Mollo as early as 23rd January. He also materially shifted the date on which he said he was asked to create other helmets from March to this January date. Whether he was right about that, I think it likely that he did meet Mr Mollo before mid-February. They probably met in the last week of January, either at Mr Ainsworth's premises or at Mr Pemberton's, and that enabled them to have a discussion about the then form of the prototype helmet. There was discussion about further modifications to the design – Mr Mollo accepted, and indeed asserted, that there were changes which were discussed between him and Mr Ainsworth. There was an exchange of ideas, probably over the next week or two, leading to the presentation of what seems to have been a final prototype to Mr Lucas on 17th February. There was a dispute as to the date when the first prototype was handed over, but the precise date does not matter; it was at some point within the last 10 days of January 2006. There may have been a little discussion over the modification of detail. Mr Lucas, who was still exercising the close and detailed control that he had hitherto exercised, approved the helmet by 19th February and he and Mr Mollo said that they wanted 50 of them. They dealt with Mr Pemberton in relation to that. Mr Pemberton told Mr Ainsworth that he wanted 50 helmets and Mr Ainsworth quoted £20 per helmet. Mr Pemberton said he would have to get back to his customer about that and a couple of days later the price was approved. Mr Ainsworth set about making the 50 using his moulds and vacuum moulding machinery. Some were made in a khaki plastic and painted white, but that was less than satisfactory because the paint tended to come off, so he made most in white ABS. They were delivered to the studio during March and Mr Ainsworth invoiced Mr Pemberton for them. He was duly paid. More were produced later.
  59. The Stormtrooper armour

  60. The Stormtrooper armour is another detail conceived by Mr Lucas. Mr Muir told me how his conception was embodied, in its early stages. The armour was the first project he worked on in the film. He worked from the two McQuarrie drawings given to Mr Pemberton and Mr Ainsworth. A plaster cast of an average-sized actor was taken, and used as a sort of tailor's dummy on which armour was modelled using clay. During the modelling phase changes were made as required by those involved in design, which must have included Mr Lucas. The final sculpt was approved by both Mr Lucas and Mr Barry. That approval having been given, the model was broken down into sections and a rubber mould was taken (within a fibreglass case). From that rubber mould a plaster cast was made, giving the same shape as the original sculpture. Mr Muir then worked on the plaster by carving to produce a more refined version of the original clay shapes. Again, Mr Lucas was involved in approving detail at this phase of the operation. The detail was sharper so that when (as would happen later) moulds were produced, the detail would survive through the ensuing process into the final shapes. This phase, Mr Muir said, took him about 4-5 weeks and was finished by the end of January 2006.
  61. That completed his direct involvement in the process. He said that what happened next was that another rubber mould was taken from those plaster works, and from those moulds fibreglass tools were produced on which the armour was to be vacuum moulded. I can see from the armour displayed during the trial that the full armour set involved a number of pieces – back plate, two front pieces, shoulder pieces for joining the back and upper front piece, a belt, shoulder, upper arm and lower arm pieces, pieces for the back of the hands, upper and lower leg pieces and different pieces for each knee.
  62. Mr Muir believed that the fibreglass tools were supplied to Mr Ainsworth so that he could make armour. The precise circumstances in which Mr Ainsworth, rather than the studio workshops, came to be asked to make the armour (which he undoubtedly was) was the subject of some dispute on the evidence. It was suggested by Mr Wilson that the studio vacuum production facility, which might have been expected to be made available for producing the armour, would have been used for this process, but in fact it was not. Whether this was because it was not up to the job, or whether time did not permit it to do it along with all its other commitments, is not something that I have to determine, and I do not do so. Mr Muir says that he saw the final fibreglass tools, though he did not see them used.
  63. On about 17th February, on the occasion when Mr Pemberton took the prototype helmet to the studio for Mr Lucas's approval, he was told that Lucas was having trouble making the armour. He believes that he was told that the vacuum forming machine could not handle the heavy gauge material required. He suggested that he knew someone (meaning Mr Ainsworth) who could make the armour if the studio could not cope. Lucas were interested and a few days later (on about 26th February), on a visit to the studio at Elstree, Mr Ainsworth was asked if he could produce some armour. A deadline was looming, because in mid-March filming was due to begin in Tunisia, and several sets of armour were required for that. Mr Ainsworth agreed to attempt to produce armour. Over the following weeks he did so, both for the initial filming and for subsequent studio production. He also modified the armour in order to make it more wearable, based on the experience of actors on the Tunisia shoot, and produced modified tools to produce it. The armour that one sees in the 1977 film was all made by him. He made 50 sets. In relation to the armour, Mr Ainsworth contracted directly with Lucas. His invoices were drawn on the instructions of Mr Mollo. He did not have an order number before the Tunisia shoot, but he obtained one afterwards. His first invoice was for 50 sets of armour at £385 per set, and his invoice for new tools, including some for additions, apparently, was for 12 sets of tools at £200 per unit.
  64. There is a dispute as to what Mr Ainsworth was provided with for that purpose. At the beginning of the trial that was of great significance, because Lucas claimed that Mr Ainsworth had been provided with all the fibreglass moulds that it had created, and that Mr Ainsworth had created the armour from those moulds either directly or indirectly, thereby copying. Mr Ainsworth denied being provided with those moulds. According to him, not only did he not get them, but they would have been useless to him (if they existed, which he was not in a position to admit) because for technical reasons fibreglass moulds could not be used on vacuum forming processes because of the heat involved. He said that he was provided with what he described as some plaster casts on sticks, reinforced with hessian. These were for the chest, abdomen and forearms only, but they were of no use to him. He was also given some sort of additional drawing, and he already had the two McQuarrie paintings. From this material he produced the armour. If the casts were of no use to him, then he must have been working just from the drawings.
  65. A little way into the trial Mr Wilson largely removed the importance of this factual issue by accepting that Mr Ainsworth's factual case on the point still involved copying one of the claimants' admittedly copyright works because the armour was a substantial reproduction of the armour as shown in the McQuarrie paintings. Mr Bloch then contributed further to a narrowing of the issues by saying that his side did not consider that it made any difference whether what they handed over, and what was therefore copied, was three-dimensional or two dimensional. It might therefore be thought to be unnecessary to make a further factual finding about what Mr Ainsworth received by way of prior works for the armour, but there was a significant amount of cross-examination on the point and it does go to credibility in relation to a directly relevant issue, namely what did Mr Ainsworth have when he came to make the other helmets. I shall therefore deal with it.
  66. I do not accept Mr Ainsworth's evidence on this point. I think that his factual case is born of a combination of loss of recollection over time, and his propensity to claim credit for greater creativity than he in fact demonstrated. I find that Mr Muir's evidence is correct in relation to the design of the armour. That means that many man hours, over several weeks, were spent producing a design for the armour. That design was approved by Mr Lucas. Even if it could not be reproduced in-house, the fruits of the design exercise (plaster casts and fibreglass tools) were available. It is inconceivable that that would not be provided to any contractor charged with fabricating the armour. It would otherwise have represented wasted effort, and there is no reason why it would not naturally be provided. Furthermore, there were positive reasons why it would be. The whole design and appearance of the film was closely controlled and supervised by Mr Lucas. He had approved the armour as finalised by Mr Muir. Anything new would have to obtain fresh approval, and there was no point in seeking that when approved designs were to hand. The idea that Mr Mollo and others would hand over the armour project to a third party (even one with Mr Ainsworth's capabilities) and invite them to start again (albeit from drawings) strikes me as being faintly absurd. If that were done, one would have expected a series of prototypes, and a pattern of discussions, approval and modification, taking (probably) weeks. It is highly unlikely that Lucas would have just taken and approved whatever Mr Ainsworth produced. There is no evidence of any such course. Mr Ainsworth said that he had made about 14 sets of armour by 5th March. That left nothing like enough time for him to make up some sets and have the sort of discussion that the design values of the film would require. He cannot have just worked up some immediately acceptable armour from the McQuarrie paintings. He must have had some real designs to duplicate. He was unable to give a convincing description of what the extra drawing with which he said he was provided (the only descriptions he was able to give did not demonstrate it to add anything useful to the McQuarrie drawings, leaving one wondering why he would have been provided with it). I find that he was provided with the Lucas tools, or useful casts, from which he made his own tools (I accept he did that) which produced copies corresponding to what Mr Lucas had approved (the clay originals) and ultimately the McQuarrie drawings.
  67. The other helmets and subsidiary items

  68. The Stormtrooper helmet and armour are the most important items in respect of which the present claim is brought, but there are other helmets as well. Like the Stormtrooper helmet and armour, they were all made by Mr Ainsworth for the film, but their origins are rather more vague. It will be useful to describe them shortly here, using nicknames by which they were known at the time:
  69. (i) The "cheesegrater". This is a helmet worn by some Imperial troops. Its nickname comes from two outer plates on the front and rear of an underhelmet which have large holes in them. It features a notional radio-like earpiece, and a deep rear neck covering, reminiscent of some samurai designs. A photograph of one appears in Appendix 5.

    (ii) The "jawbone". This is a helmet worn by Imperial gunners. It takes its name from a protruding element which sticks out in front of a thin visor. A photograph appears in Appendix 6.

    (iii) The X-wing fighter pilot helmet. This was worn by the rebel fighter pilots. A photograph appears in Appendix 10.

    (iv) The rebel troop helmet. Its name is self-explanatory. It had various versions; some had visors, some did not. A photograph of one version appears in Appendix 11.

    (v) The Tie fighter pilot helmet. This is a helmet and face mask worn in the film by Imperial fighter pilots. The helmet had some sort of origin in another drawing. The mask is a reproduction, in black, of the Stormtrooper face. Because of the face element, it is accepted that this is a substantial copy of the McQuarrie drawings, so there is no dispute about copying. As a result of that concession by Mr Ainsworth, the sometimes extensive evidence and submissions as to this go to credibility only, though on the facts this credibility point is closely related to the liability points in relation to the other helmets.

    (vi) A "chest box" worn by the Tie fighter pilots. This was a mock chest-pack connected by gas tubes to a helmet and face mask, and bearing (non-functional) buttons and switches. I need say little about this because it is in substance no longer a disputed item.

  70. The main issues in the case about these other helmets relate to the manner in which they were designed and produced, and in the light of concessions those issues arise only in relation to the first four helmets listed above. I shall therefore focus on those.
  71. Mr Ainsworth's original case was that towards the end of March 1976 (he put the date at 22nd March in his first witness statement) he was asked by Mr Lucas if he could produce the back of a black helmet for an Imperial fighter pilot, and he was shown another McQuarrie painting which demonstrated that. Mr Ainsworth decided to do that by using the X-wing helmet which he was working on, modifying the crest, and adding a face from the Stormtrooper as a contribution of his own. The resultant creation was then used in the film, front and back.
  72. He then went on to say that in April 1996 Mr Mollo asked him to produce 2 other types of black helmet for the Imperial forces and three types of white helmet for the rebels. The chronology of this is confused in the witness statement. It suggests that the request was made in March, or even in April, yet it refers to Mr Ainsworth's being given helmets on which they were to be based in February. As a result of the request he produced the cheesegrater, jawbone and various rebel troop helmets referred to above. He said he never saw sketches, and the helmets were not based on any sketches provided by Mr Mollo. Mr Mollo did say that for one of the black helmets he wanted something like a Japanese samurai helmet, but that is about the only guidance that Mr Ainsworth says that he got. He was given a US army helmet on which to base the shape, but his first witness statement denied any further guidance. Mr Ainsworth said that he formed the helmets by a process of "free-forming". He made a tool based on the helmet he was given, and then played around with shapes based on that until he came up with the final shapes of the helmets. Mr Mollo's work book contains drawings which reflect a lot of elements of the final products. Mr Ainsworth says that he never saw those, or any similar, drawings at the time, and originally stated that Mr Mollo must have created his drawings from Mr Ainsworth's final product rather than the other way round.
  73. Mr Mollo's evidence was that the helmets other than the X-Wing and TIE fighter helmets were based on a World War II US marine helmet called a "Talker". His notebook records the need to get such a helmet from the US. This was a particularly wide helmet designed to accommodate headphones. This helmet was provided to Mr Ainsworth. He was also provided with sketches for the various helmets that he was asked to produce. He was not simply left to develop helmets with only the broadest guidance as to colour and party. Mr Mollo has sketches for most of the helmets in his notebook. He says that other drawings were provided to Mr Ainsworth so that he could make these helmets, but Mr Mollo did not ask to have them back and therefore no longer has them.
  74. In a later witness statement Mr Ainsworth significantly adjusted his chronology in relation to these items. Having looked at diary entries, Mr Ainsworth came to the conclusion that he was asked to make the other helmets on a much earlier date – 23rd January, the date when he says he showed the prototype helmet to Mr Pemberton and Mr Mollo. He went back and reported to Mr Payne and Miss Pitfield that that is what he had been asked to do. He had made prototypes within 6 days, and showed them to Mr Mollo on 29th January. The prototypes were photographed on that day before being handed over to Mr Mollo – a photograph of a man wearing a prototype cheesegrater was produced at the trial. He was given some form of approval on this date, though not a firm order, and on the basis of that Mr Ainsworth says he placed an order for grey material for the production runs of these helmets and some clear acrylic for visors. He claims to be able to identify these orders from his books. His next statement modifies the chronology again, saying that his order books reflect a delivery of black material for the cheesegrater and jawbone helmets on 17th February. His invoice shows that he did not get an order for jawbones, cheesegraters, or rebel helmets until 30th April 1996.
  75. These discrepancies in the chronology only matter so far as they increase or decrease the likelihood of drawings being made available to Mr Ainsworth. Lucas's first line case on these helmets is that they were substantial reproductions of drawings showing Mr Mollo's intentions, and that Lucas has copyright in those drawings. Reproduction of helmets by Mr Ainsworth is said to be an infringement of that copyright in the same way as the reproduction of the Stormtrooper helmet and armour infringe copyright in the McQuarrie drawings. Mr Mollo has drawings in his notebooks. If the dates of first production by Mr Ainsworth precede those drawings, he cannot have copied them, and further reproductions of helmets cannot infringe copyright in those drawings. If the notebook drawings came after the first production of helmets, it also makes it less likely that those helmets were based on any other drawings provided to Mr Ainsworth and now lost. Although these other helmets are not very important in the scheme of things, they are part of the subject of this action, and it is therefore necessary to make some findings about this.
  76. The first observation I would make is that Mr Ainsworth's version of events is intrinsically unlikely. As I have had occasion to observe more than once already, this was a closely controlled film in terms of design, and the idea that Mr Ainsworth would have been given a generalised brief to come up with helmets with no guidance at all except as to colour and party (Imperial or rebel) is inconsistent with that. It is not really plausible. On his case, he knew next to nothing about the film and its characters. In that context a request of the kind that he says Mr Mollo made would be largely meaningless. He must have had some guidance, in my view, and Mr Mollo is the only man who can have given it to him. Mr Mollo was a man who drew experimentally in order to arrive at designs that were acceptable. He was going to have to get approval of designs by Mr Lucas. He knew what the film required. It is highly unlikely that he would have sought to convey his idea for designs without some visual indication in the form of drawings of some sort. For those reasons alone, therefore, I think that Mr Ainsworth's version of events is not probable. However, it becomes even less probable when one sees that in Mollo's notebooks there are drawings which are plainly intended to represent at least some of these subsidiary helmets. There is no reason why he would be drawing helmets after he had finalised a design with Mr Ainsworth by other means, and some of his drawings plainly show he was playing with ideas for helmets. So if he was putting ideas on paper, it makes no sense that he would not have shown them, and/or some others, to Mr Ainsworth. In those circumstances it is plain that he must have conveyed his ideas via the medium of some drawings. In the context of the Outland space helmet, Mr Ainsworth was forced to concede that Mr Mollo must naturally have conveyed his ideas by some drawing, and although he did not admit that in relation to these other helmets, it is in my view equally likely, and indeed inevitable, that Mr Mollo would use the same mechanism.
  77. A point of timing arose in relation to this. On Mr Ainsworth's original evidence, a lot if not all of Mr Mollo's relevant sketches could have been drawn before the date when Mr Ainsworth says that he was instructed to produce helmets. However, once he put the date of the instruction as early as 23rd January, he was able to raise a question-mark about which came first. In particular, there are drawings of what appears to be the cheesegrater helmet from about this time, and an attempt was made to establish that they must have come after, and not before, Mr Mollo's instruction on 23rd January. Furthermore there was also a point of timing in relation to the provision of sample helmets from the United States. Lucas's case is that they were getting these, and that the instructions for producing helmets were not given until they were in this country, which was some time after 23rd January. This, if true, enabled more drawings in the notebooks clearly to have been created before the instruction was given.
  78. I do not rely much on these particular timing points. Mr Ainsworth's putting the timing as early as 23rd January is a matter of reconstruction from other matters, principally from his records of ordering material. It is not at all convincing. If he is right that he met Mr Mollo as early as that then it would have been their first meeting, at which the prototype Stormtrooper helmet was made available. Although Mr Ainsworth's doing that was a significant step, it said nothing about his creativity or his ability to deliver. It is fundamentally implausible that at such a meeting, with no background or other knowledge of Mr Ainsworth, Mr Mollo should have made the request that Mr Ainsworth said he made. That is another reason for not accepting Mr Ainsworth's version of events about this. I consider that his claims to authorship of these helmets is yet another example of his propensity to make excessive authorship claims.
  79. Witnesses, and in particular Mr Payne, claimed to have seen Mr Ainsworth making helmets without the assistance of drawings. Mr Payne sought to support Mr Ainsworth's account of free-forming helmets. I consider that the passage of time, and perhaps subsequent discussion with Mr Ainsworth, has clouded his recollection. He may have seen the creation of helmets; I do not consider that he can have seen the free-forming of helmets without prior guidance from Mr Mollo, for the reasons given above.
  80. The question of whether the helmets were based on the "Talker" helmet or not is basically a matter of chronology. I do not think that I need to decide whether it was used or when it arrived. The important finding, which I make, is that Mr Mollo showed Mr Ainsworth some drawings in order to guide him in the creation of these other helmets. That is overwhelmingly likely, and nothing in the chronology demonstrated by Mr Mollo's books gainsays it.
  81. If there were prior drawings then there is no dispute about the copyright in them – it is vested in Lucas. But it does not follow that the final helmets were reproductions of a substantial part of any of those drawings, so as make future reproductions of the same helmet a potential infringement of copyright in the drawings. In order to establish that one needs to ascertain the content of the drawings shown, and here there is an evidential problem. Mr Mollo, understandably, cannot recall any detail as to what drawings were shown or handed over. The most he could say is that he probably did use drawings to convey what was required, and I have found that that is the most likely method of communication of what was required. But those drawings cannot be plainly identified. There are some drawings in his book, but not for all the detail of all the helmets. Furthermore, any other drawings that were handed over have not survived, so one does not know their contents precisely.
  82. The inability to identify the drawings is not fatal to a claim to copyright and a claim of infringement. In Lucas v Williams & Sons [1892] 2 QB 113 it was held that a copyright action in relation to an original painting could be maintained notwithstanding that the original painting was not produced. All three judges held that the likeness to the original could be proved by a witness stating that he had seen the original and that the infringing item was like it. In Wham-O Manufacturing Co v Lincoln Industries Ltd [1985] RPC 127 the New Zealand Court of Appeal declined to adopt the position that in the absence of the original "the most rigorous evidence is necessary". They adopted the position of the trial judge that where the original could not be produced to the court, establishing what it looked like was "in each case … a matter of degree dictated by its own circumstances" (see age 145). It is therefore clearly not necessary to produce an original, and it is a matter of inference what the contents of the original were.
  83. However, I bear in mind that there are material differences between the present case on the one hand and the two cases just cited on the other. In each of those cases the claimant was able to produce clear evidence from someone who had seen the original, and in one of them (Wham-O) the witness was closely associated with the production of the prior items. Furthermore, in the Wham-O case the witness was able to establish a clear progression of the design through paper designs, to models, to machine drawings, to moulds, to final model. In relation to some of the models the evidence was that stage C (say, drawings) was an embodiment of stage B (a prior model). Where such evidence is accepted, one can work out what was in prior drawings B by notional reverse engineering from stage C. That sort of evidence is not available in the case before me. Mr Mollo accepted, in my view realistically, that there was give and take and discussion in the evolution of the final design, not all of which was embodied in a drawing. So one can be reasonably confident that a final stage did not precisely embody a prior drawing. This, and the absence of evidence of a chain such as that in Wham-O (a case about Frisbees), means that one cannot reconstruct the original from the final form. No-one can prove from recollection what the prior drawings were, where they are not in Mr Mollo's sketchbook, so this case is somewhat removed from the two authorities just referred to. Particular care is therefore required in determining what was in any provided drawings and the extent of copying. I bear firmly in mind that Lucas has the burden of proof in relation to this.
  84. It will be convenient to take each of the helmets separately, starting with the cheesegrater.
  85. The cheesegrater

  86. There are several pages in Mr Mollo's notebook with what seem to be prototype cheesegrater drawings. The pages were numbered at the bottom, probably for future reference (and possibly for the purposes of this action – it does not matter), and I shall use those numbers. The final form of helmet had a reference to Samurai ideas (it was one of the few areas of common ground between Mr Mollo's evidence about helmets and Mr Ainsworth's evidence that Mr Mollo expressed the idea of a Samurai influence) and one can see some sketches of a helmet with a samurai influence (in the form of a neck drape) at page 221. However, a clearer picture emerges by page 228, where one can see sketches of several helmets with holes in the upper parts – see Appendix 1 to this judgment. They seem to reflect a method of construction as well as a design (and Mr Mollo's evidence was that the drawings showed how things might work when connected together) because one can see that underneath some of them there is the outline of a US army helmet (which may or may not be the Talker helmet), with the "holed" pieces mounted on top. At the top of the page there is apparently a picture of what the two "holed" pieces would look like. The helmets have a neck drape, which is probably not quite as deep or wide as the final form but which is clearly the same sort of thing. This drawing can be approximately dated, if that matters. On p 215 there is a manually drawn box with space for putting events in for five days from Monday 19th January to Friday 23rd (morning and afternoon). This is plainly a prospective diary box, rather than one recording events which have happened (contrary to what Mr Mollo said about these boxes on one occasion – on that occasion he said he thought they were looking backwards in time, not forwards, which is plainly not the case), because on page 218 (ie 3 pages further on) there is a note of or for a meeting on 16th January, demonstrating that the box must have been drawn before the week in question. The page with the cheesegrater sketches comes some 10 pages after that. On the next page (page 229) is a diary box for matters to be done in the week beginning 26th May. So it looks as though the drawings were done in the latter half of the preceding week – on Thursday 22nd or Friday 23rd January. This means that they could have been available to show to Mr Ainsworth on 23rd January if the two men met then, but in any event I think that they probably first met afterwards. The thinking was developing, because on the same page as the later diary box there is another drawing of a helmet with a neck drape and with holes ion an upper part. There is a diary "entry" for 29th January which reads Imperialist & Rebel helmets", underneath a reference to Mr Pemberton, so it may just be that there was discussion about that date. However, the important point is that on any footing these drawings could have been available to Mr Ainsworth as a matter of chronology. What is quite incredible is that they could be developing as a matter of independent coincidence, parallel to Mr Ainsworth's own development; nor is it credible, as a matter of chronology or otherwise, that they were copies of what Mr Ainsworth had already produced.
  87. Whatever the date of that drawing may be, there is a clearer indication that the basics of the cheesegrater were in Mr Mollo's mind by 23d January, because there is a drawing of an "Imperial Crewman" wearing a holed helmet and bearing that date – see Appendix 2. That drawing was done by Mr Mollo, but is not in his notebook – it is now stored in the Lucas archives. It is not precisely the same as the final form, but clearly contains much of the essence.
  88. Other drawings of cheesegrater-type helmets exist, including one of a dressed crewman which is somewhat closer to the final form but which is probably not relevant to the question of copying because it is probably a late drawing; Mr Mollo described it as being for the wardrobe department so that they knew how to dress the characters. That probably comes too late to be a candidate for provision to Mr Ainsworth. One other drawing is said by Mr Mollo to be "early"; it appears as Appendix 3. One more needs to be dealt with. At Appendix 4 is another drawing by Mr Mollo which does not appear in his notebook (again, it is taken from the Lucas archives). Again, it shows a drawing for what is apparently the cheesegrater. Mr Mollo said that it was the sort of drawing that he would have provided to Mr Ainsworth, but was unable to say that he provided that actual one.
  89. In the case of the cheesegrater we have an indication of what Mr Ainsworth actually did with his instructions before the design was finalised. There is a photograph of a man wearing an earlier prototype version. It shows an underlying helmet shape, like the final version, with a front holed plate very similar to the final version. There is an ear-piece whose overall shape is the same as the final version, but whose surface detail differs. At the rear the helmet has further differences. The neck drape is much longer and goes straighter down. The rear "holed" part overlaps it on top, not underneath. In overall shape at the rear, it is not as close to the drawings to which I have referred as the final shape is. Mr Wilson relied on this as demonstrating that the process of working from drawings was not as Lucas says it was. If Mr Ainsworth had been working from drawings such as those referred to above, he would not have produced the prototype shown in the photograph. That, says Mr Wilson, shows that he cannot have been working from drawings, or at least not those drawings.
  90. No-one has a particularly clear recollection of any detail relating to this helmet. When he did his first witness statement Mr Ainsworth had apparently forgotten that he ever made prototypes at all. Working out what happened is therefore a question of ascertaining the probabilities, with such assistance as the contemporaneous documents provide. I have already found that Mr Mollo used drawings to communicate what he wanted to Mr Ainsworth. Since he had drawings already, then it is likely that he used those drawings, or sketches which reproduced the essential parts of them – sketches like that in Appendix 4. Mr Ainsworth worked from those sketches. To some extent he was constrained by the techniques that he was adopting – no doubt some points of detail were easier to achieve than others – but he was nonetheless working to what Mr Mollo required. The fact that he produced the prototype shown in the photograph may be down to what could be more easily achieved, or perhaps a first attempt, or even demonstrate some creativity on the part of Mr Ainsworth himself (rejected by Mr Mollo). But at the end of the day the final form of the helmet contains large numbers of the essential elements of the drawings. It is true that it differs to some extent – particularly the shapes of the holed plates, and the depth and splay of the neck drape, but nonetheless the elements are there. It is inconceivable that Mr Ainsworth was not working from drawings very like those, if not those actual drawings.
  91. Comparing those drawings with the final form, I also find that he copied substantial parts of those drawings. That, after all, is what they were likely to be for. If he was working from reproductions of the drawings that I have seen, then I consider that he copied substantial parts of them – the overall shape, and a substantial part of the two hole plates. If he was working from other drawings provided to him, then again his job was to reproduce them or copy substantial parts of them, and I find that he did. What he is producing now is the same thing, subject to a point about the earpiece which I refer to below.
  92. There is one last thing to be said in relation to the cheesegrater. For the purposes and duration of the trial, various helmets were made available to me and to the other participants at the trial. They included all the disputed helmets, and there were examples of both originals and Mr Ainsworth's modern copies. As the trial progressed Mr Ainsworth claimed that the cheesegrater in court which was said to have been the original made by him was not made by him. He said that the earpiece was different and was not that originally used in the film, that the plastic material was not the same as he used, and that it demonstrated methods of construction or alteration that he would not have used. That challenge largely evaporated when it was demonstrated (by carefully playing parts of the film almost frame by frame) that the earpiece was indeed the original (and that the one used on his modern reproduction is not the same), and that scientific tests demonstrated that the material used was indeed the material used by him (and he retracted his allegation to the contrary). At the end of the day this somewhat expensive side-show did not go directly to any of the issues in the action, but it did demonstrate the inappropriate vigour with which Mr Ainsworth pursued allegations on the basis of imperfect (or non-existent) recollection. He even went so far as to suggest that parts of the film had been digitally remastered or had been re-shot using different cheesegraters (with nothing but guesswork to go on) or that the studio had changed just the earpieces on the helmets (which was implausible in the extreme). All this demonstrates the great care which has to be brought to bear in considering his evidence and his reconstructions. It also demonstrates his unwillingness to accept he has been mistaken. The earpiece of the helmet used in the film differs in detail from that on the prototype, as I have mentioned above. Mr Ainsworth's modern helmet uses the prototype version, not the final one. Mr Ainsworth insists to his public that he is faithfully using the original moulds as used on the film version. That cannot be the case in respect of this piece of detail; but he was reluctant to admit it. All that is detail, but it is detail going to Mr Ainsworth's credibility in important areas.
  93. The jawbone

  94. I turn next to the jawbone helmet. The final form of the jawbone appears at Appendix 6. There are fewer extant drawings relating to this helmet. There are two early drawings made by Mr Mollo of a full length soldier wearing a helmet which was said by him to be the fore-runner of the jawbone. They differ materially, however, from the final style. The face opening is much wider, and there is no apparent visor. The back and sides are materially splayed out. Since they are largely full face and not profile it is not apparent how much the lower "chin" element protrudes, but while there is some protrusion on at least one it does not appear to be very exaggerated. Mr Mollo told me that Mr Lucas was particularly interested in one of those, and that being the case it becomes apparent that this was the inspiration of the general style of this helmet. There appears to be no question of these particular drawings being provided to Mr Ainsworth. There are then three more extant drawings – Appendices 7, 8 and 9. It seems to me to me to be likely that they were created in that order.
  95. Appendix 7 (which is the same as Appendix 3, but which is reproduced again for ease of reference) is a page which contains various drawings. The two in the top left are pre-cursors of the final jawbone. The drawing and most of the writing is Mr Mollo's. The crudely written words "Jaw Bone Gunners" are not in his hand. This drawing is not in his notebook – it has been preserved in the Lucas archives. It should be noted that the word "cheesegrater" has been added to the cheesegrater design – it had clearly been called that by the time that this drawing had been done. However, Mr Mollo has not called the jawbone "jawbone".
  96. The next drawing (Appendix 8) appears on page 253 of Mr Mollo's notebooks. It is positioned one page after a note of a wardrobe meeting with Mr Lucas on 5th February, so it was plainly drawn at about that time. On page 254 Mr Mollo lists numbers of helmets to be required. He identifies the cheesegrater by name, but not the jawbone – he describes "Imperial Troops Mk II (with face visor)", which is presumably a reference to the jawbone – it is much the same designation as that shown on Appendix 7. The eventual jawbone is much closer to the Appendix 8 sketch. The first reference in his book to "jawbone" is on a page bearing the date 23rd February 1996.
  97. The last drawing is Appendix 9. This is a more careful drawing. Mr Mollo's initial reaction to being asked about that drawing (which is not in his notebooks) was that it was to help the wardrobe department dress the characters, though he then demonstrated misgivings about that. I think that his first reaction was probably the correct one. Clearly it demonstrates late development of the jawbone design. The jaw now protrudes very significantly and there is a transparent visor. It does not show the radio box on the side of the head (or at least not in the final position) but it is plainly the last in the series.
  98. That material enables one to place the drawings in order. The order must be that in which I have listed them above. The first two (not reproduced) are plainly early ideas, not literally pursued. Appendix 7 is apparently based on them, with the flare at the back and sides. The protruding jaw is not so plain on those drawings but there might be an attempt to portray something like it. The two protuberances on the top of the helmet are not seen anywhere else. The description there, omitting the word "jawbone", puts it prior to February 23rd, and its design concept puts it prior to 5th February. It therefore existed in time for Mr Ainsworth to see it, but if he did then he did not reproduce any substantial part of it. Then there is the small drawing on or about 5th February. This shows Mr Mollo was thinking about a design with obvious similarities to the jawbone helmet at that time. It is likely to have been a date after that drawing when he asked Mr Ainsworth to produce the extra helmets. Given that he had by now had these ideas, and given that he would want to communicate them to Mr Ainsworth, and given that sketching would be a natural method of communication, why would he not show or provide sketches? It seems to me probable that he did. If this was the only sketch that he had, he would have shown this one; the drawing in Appendix 9 probably comes too late to have been shown. If he did not show this one, he will have shown or provided another one communicating the relevant ideas.
  99. If he showed the one in Appendix 8, then there are plainly differences between what Mr Ainsworth produced and that drawing. The drawing does not show the fully protruding jaw; it is not plain that a visor is shown; the drawing is not based on a central helmet to which parts are added; and the drawing shows a sort of hinged effect which is not in the final version. Nevertheless, there is enough there to mean that if Mr Ainsworth used this drawing to make his helmet, he copied a substantial part of it. The overall shape and concept is there – a top curve with an extended back, a narrow slit for eyes and a pronounced jaw-like effect. Mr Ainsworth's evidence is that he free-formed this helmet, albeit with an explanation from Mr Mollo that he wanted an extended protruding jaw-line which he demonstrated with his hand – this, said Mr Ainsworth, came to him at the trial when he was listening to the evidence. He said he drew inspiration from a character in a Bosch painting which shows a stunted person with a helmet which has a similar idea. He produced a copy of the picture. I do not accept this evidence, which I consider smacks of ex post facto justification and the sort of reconstructive wishful thinking that litigants sometimes indulge in without actually meaning to tell an untruth. This version of events did not figure in his witness statements. He says he was reminded of it during the trial when he saw Mr Mollo make a hand gesture. While such things happen, I do not think that it happened in this case. It may be that in the course of explaining what he wanted, Mr Mollo made the hand gesture referred to by Mr Ainsworth, but if he did (and it does not matter) then it is more likely that he did it in the context of having presented sketches. Mr Mollo would not let a hand gesture suffice if a sketch would be better (which it was). I do not see realistically how he can have conveyed what he wanted for this helmet without showing a sketch or sketches. Of course, it is possible, and indeed I would say likely, that Mr Ainsworth was given something better than the small sketch to work on. If so, then Mr Ainsworth substantially copied that even if he did not faithfully reproduce it. Again, the constraints imposed by the manufacturing process might have required modifications, but nonetheless I am satisfied that he will have been working to realise the overall impressions conveyed by sketches. That, again, was his function.
  100. The X-Wing pilot helmet

  101. This helmet is shown in Appendix 10. It was to be worn by rebel fighter pilots. Although not shown in the photograph in Appendix 10, it also had a yellow faceted visor, which Mr Mollo accepted Mr Ainsworth devised by himself without copying from anything that Mr Mollo did.
  102. Mr Mollo's evidence, which I accept, was that it was intended to base the X-wing pilot helmet on a particular type of US army helicopter pilot helmet used in the Vietnam war. Mr Lucas provided a version of the helmet. His notebooks contain drawings of various aspects of that helmet, and of similar helmets. As well as designs of the helmet (or an equivalent) there is also a drawing of a pilot wearing one, in the Lucas archives.
  103. However, in the case of this helmet it is apparent that the drawings played a far less direct part in the creation or construction of the helmet by Mr Ainsworth. Mr Mollo's notebooks demonstrate that Lucas was expecting to send, and he was expecting to receive, a helicopter helmet, coming over from the US. A note made in mid-January says: "Helicopter helmet and Talker helmet – get samples from States". A note of 2nd February records that for rebels they were still "awaiting sample helmets from US?" There are drawings of what appear to be parts of the helicopter helmet on two sheets preceding the one which records a wardrobe meeting on 5th February. It looks as though Mr Mollo might have had the helmet before him at that point, because it contains a reference to a wing-nut which controlled the movement of a visor and to which Mr Ainsworth referred in his evidence, though Mr Mollo was not asked in terms about that. The original helmet seems to have had a rounded dome. Mr Mollo's drawings showed an intention to have a raised strip a few centimetres wide running backwards from the centre at the front down to the bottom of the back. This was called a "mohawk" in the parlance of the case. Other than some drawings of a rebel pilot helmet which occur on the same piece of paper as Appendix 3, and which do not particularly resemble the final product or the other Mollo drawings, no other drawings were in evidence.
  104. Lucas's case is that Mr Ainsworth had drawings to work from in relation to the X-wing helmet just as he had drawings of other helmets, though it also accepts that he had a helicopter helmet to work from too. Mr Ainsworth's evidence was that, again, he did not have drawings to work from. He was given the helmet. He took a cast from each side, manufactured a corresponding tool and then created duplicates of each half in plastic via his vacuum moulding process. That gave him two plastic halves of the original whole. He then had to decide how to join them together, and they needed to be spaced a little apart in order to accommodate the faceted visor that he had created. He achieved the join, and the necessary spacing, via the means of the mohawk – in essence it covered the join and provided extra lateral spacing. In his evidence Mr Mollo accepted that this was essentially the method of construction. It, and the final detail (such as the width of the mohawk) evolved as a matter of discussion between them during the manufacturing phase. There is in fact a photograph of a prototype which has a face mask which did not survive into the final version, so there was plainly a process of evolution.
  105. I accept Mr Ainsworth's evidence as to how he went about the creation in the case of this helmet. I also find that drawings played little part in it. It may be that some drawings were shown to him in order to give some vague idea of the intended mohawk, but there would be no reason to show him drawings of the physical thing (the helicopter helmet) when he was being given the physical helmet to work from, and then expect him to refer to those drawings. Mr Ainsworth's creativity in relation to the visor was accepted. The only reason that he can have been given the helmet is because his product was to be based on it; the helmet replaced the drawings of the other helmets in this respect. It would not be necessary to provide drawings to describe the mohawk – that is something that is more likely to have come out of discussion. Even if a drawing was shown, all that Mr Ainsworth will have taken from it is the idea of the Mohawk, and not its substance.
  106. I therefore find that the X-wing helmet was not created by copying drawings or a substantial part of them.
  107. The rebel troop helmets

  108. The basic rebel troop helmet appears in Appendix 11. The need to design and cater for rebel troop uniform is apparent from Mr Mollo's notebook at an early stage, and it continues throughout the book. Mr Mollo's evidence was that the design was based on the "Talker" helmet, but it was plainly intended to have extra bits and pieces on it. He identified early drawings in his notebook, and they appear at a position which puts them at about 20th January. I accept his identification of those drawings. The precise date does not matter; nor does the precise sketching at that time. What does matter is that he was concerned with design at an early stage of his thought processes. That, again, makes it fundamentally unlikely that he would leave Mr Ainsworth to free-form these helmets without any form of guidance. Further early ideas appear in Appendix 3. One can see there the idea of a helmet radio emerging. The design for a radio box appears at Appendix 12. It is positioned at the beginning of February; but it does not reflect the extended shape or the added plates. Those appear clearly in the drawing at Appendix 13, which bears the date 10th February 1976 and which was produced from the archives, not the notebook. This is early enough for it, or something similar, to have been provided to Mr Ainsworth. Since, once again, Mr Mollo is likely to have communicated by drawing rather than by explanation, I find that he is likely to have supplied drawings. There was no positive evidence that Appendix 14 was provided to him but since drawings of this kind were available it is likely that something similar was provided. From those drawings Mr Ainsworth produced the final version. That version uses elements similar to other helmets, and no doubt that emerged as part of the development discussions and as a convenient method of proceedings, but in my view Mr Ainsworth was still proceeding from, and copying, drawings. Although the precise drawings cannot be identified, he must have taken a substantial part from them, and I so find.
  109. Other items

  110. Other items were made by Mr Ainsworth, but one way of another they have been removed from the fray (or at least the factual part of the dispute) by agreement between the parties. I therefore do not need to deal with the details of their conception and manufacture.
  111. Subsequent events and the US proceedings

  112. The film was duly made, and its success is a matter of film history. It spawned sequels and "prequels". Marketing opportunities were thoroughly exploited by Lucas, yielding many billions of dollars. Mr Mollo had asked Mr Ainsworth to return the McQuarrie drawings that he had been given, and Mr Ainsworth did so. He was not asked to return such other drawings as he was given. He was also not asked to return any other material, including the tools that he had made. In 1997 he found them and wrote to Lucas suggesting they might be exploited, but nothing came of that. He still kept them. He sold some items he had kept at a Christie's auction in 2000. Nothing turns on all that.
  113. In 2004 Mr Ainsworth set up a website (www.sdsprops.com) and started to sell products in a concerted manner. There is a significant market for such products amongst aficionados of the Star War films all over the world, some of whom organise themselves into "Garrisons". They were the products that are the subject of this action. His website emphasises that Mr Ainsworth made the original helmets and armour and that his helmets were produced from the original moulds used to make the helmets seen on the screen. That he using the original moulds was also emphasised by a website called www.firebox.com, to whose proprietors Mr Ainsworth supplied his goods. Mr Ainsworth also advertised on one occasion in the US. Some of his products were sold and delivered to US customers.
  114. Those activities attracted the attention of Lucas. Proceedings were commenced against him in the US District Court, Central District of California, Western Division in 2005. The action claimed relief in respect of copyright infringement, unfair competition, and trade mark infringement. Mr Ainsworth challenged the court's jurisdiction but that challenge failed. Having limited his participation in the action to that extent, Mr Ainsworth then took no further part, and on 26th September 2006 judgment was ordered against him in the sum of $5m for copyright infringement, $5m for trade mark (Lanham Act) infringement and unfair competition, and an additional $10m to treble the Lanham Act damages. Mr Ainsworth's admitted sales in the US were about $14,500. The large sums awarded under the copyright head were based on the notional costs of a reasonable licence fee for the licence which Mr Ainsworth was treated as having appropriated to himself. So far as the Lanham Act damages are concerned, the loss is based on what was said to be the value of the rights appropriated to himself by Mr Ainsworth. There was also injunctive relief, but that does not impact on the present proceedings.
  115. In the present action Lucas seeks to enforce that judgment in this jurisdiction to the extent of those damages, but without the trebling element; that is to say it confines its claim on the judgment to $10m. If there is a problem about enforcing that judgment then Lucas seeks to claim in this jurisdiction in respect of infringements of US copyright. Mr Bloch told me that his clients do not seek to have both the US judgment and a UK judgment on the US copyright claims. If there is a UK judgment on the US copyright, then the judgment in the US would fall away (so far as otherwise enforceable). Furthermore, were this court to find that the US copyright claim was bad on its own merits, his clients would not seek to enforce the US judgment anywhere. And furthermore, as a matter of reality, his clients realised that Mr Ainsworth was not good for $10m and were not looking to bankrupt him on it. What I think all that probably demonstrates is that Lucas is understandably sensitive to the impression that its apparent sledgehammer or steamroller approach might portray to this court, and to others, and is anxious to mitigate that impression, at least as far as this court is concerned. What is quite clear is that Lucas is determined to stop Mr Ainsworth by whatever legitimate legal means are open to it, including the threat of a $10m judgment hanging over him. Whether or not it is entitled to do that is, of course, a matter for this court.
  116. Issues

  117. Based on that history, Lucas brings the following claims, so far as still extant at the end of the trial:
  118. (i) A claim for infringement of copyright.

    (ii) A claim in passing off.

    (iii) A claim to such copyrights as Mr Ainsworth might himself have acquired.

    (iv) A claim in confidence to restrain Mr Ainsworth from making his helmets and armour.

    (v) A claim to enforce the US monetary judgment.

    (vi) A claim to enforce US copyright (but no other US rights).

    Mr Ainsworth counterclaims to enforce his own alleged copyright in the helmets.

  119. Some of what otherwise might have been issues of subsistence and infringement of copyright have been removed by concessions between the parties. Thus Mr Ainsworth accepts that the McQuarrie paintings are graphic works for the purposes of the Copyright Designs and Patents Act 1988 ("the 1988 Act"), as was the sketch of armour that he says he was provided with by Mr Mollo. It was accepted by him that English copyright in those works vests in one or more of the claimants (it matters not which). He also accepts that he took substantial parts of what was depicted there when he came to create the Stormtrooper helmet and armour. He therefore accepts that if and insofar as he continues to reproduce the helmet, he is copying from those drawings and infringes so far as copyright is enforceable, but subject to statutory defences. It was also not disputed that so far as there were other drawings from which he prepared his works, then copyright in those drawings is in one or more of the claimants. I therefore do not have to make any determination as to the ownership of such copyrights as might exist. Other objects have been taken out of the claim by agreement between the parties – for example the "Tusken Raider" and one of the chest boxes. In relation to another chestbox Mr Ainsworth is willing to submit to an injunction on the footing that he does not intend to make one anyway. A trade mark claim in relation to certain insignia has also been dealt with.
  120. However, despite the various concessions, the facts still give rise to a potentially complex series of interlocking issues. They are in summary as follows:
  121. (i) Are any of the helmets artistic works within the 1988 Act, so as to attract copyright in themselves? This involves a consideration of whether they are either sculptures or works of artistic craftsmanship.

    (ii) If there is copyright in the helmets, is that copyright owned by Mr Ainsworth, either because he was the author himself, or because he contributed his own elements to those which he took from the claimants.

    (iii) If Mr Ainsworth is otherwise entitled to the copyright, is he obliged to hold it for, and assign it to, the claimants?

    (iv) If Mr Ainsworth is otherwise entitled to use his moulds, is he nonetheless restricted from doing so by duties of, or akin to, confidentiality?

    (v) If and insofar as Lucas was or is entitled to any of the copyrights in drawings that it asserts against Mr Ainsworth, does he have a defence under section 51 of the 1988 Act?

    (vi) If and insofar as Lucas was or is entitled to any of the copyrights that it asserts against Mr Ainsworth, does he have a defence under section 52 of the 1988 Act?

    (vii) Is there a claim in passing off?

    (viii) Are the claimants entitled to enforce the US judgment?

    (ix) Are the claimants entitled bring an action in this jurisdiction claiming infringement of US copyright? If so, have they made out such a claim?

  122. That is a large number of issues, some of them of some complexity. In relation to the English copyright issues, the most important are those concerning section 51 and 52. It will not be convenient to tackle the points in that order, and one of the points (the issue of whether products are sculptures or works of artistic craftsmanship) arises in relation to more than one point. It will therefore be convenient to tackle that point first, and then take the other issues in an order which seems convenient. I shall leave the US-related issues until near to the end. The factual issues relating to what was and was not copied when Mr Ainsworth made the helmet and armour have been dealt with above in the course of the factual narrative.
  123. Are the helmets and other reproductions sculptures or works of artistic craftsmanship?

  124. This has a relevance to two particular areas of dispute. So far as the major items in dispute are concerned (the Stormtrooper helmet and armour) it is conceded by Mr Ainsworth that what he did amounted to copying from a copyright work (the McQuarrie drawings). It follows, and he accepts, that if he reproduced them now, then, subject to special defences, he infringes the claimants' copyright in those drawings. The same would apply so far as he substantially copied any prior drawing of the other helmets. However, if he did not do that, then the claimants claim that the helmets that Mr Ainsworth produced are themselves copyright items (as being sculptures or works of artistic craftsmanship), and that they are entitled to that copyright. Mr Ainsworth himself claims copyright in the helmets and armour that he produced, and he can only do so if they are one or other of those two things.
  125. The question of whether an item is a sculpture also arises in relation to some of the defences. Section 52 operates to restrict copyright where there has been industrial exploitation. Mr Ainsworth relies on the section because over the years Lucas has sold a large number of copy items which equate to the subject matter of this action. It does not apply if what has been made and sold, or perhaps copied, are sculptures, via some subordinate legislation to which I shall have to come. Lucas seeks to say that all of what it sold were sculptures for these purposes. In order to avoid a detailed investigation as to what was sold, where they were made, and in what numbers (all of which would theoretically be in issue) it has been agreed between the parties that I can take a sort of test item. One of the things sold is a toy model of a Stormtrooper. It exhibits what can be treated as a reproduction of the armour and the helmet (some of the surface decoration might not be precisely the same, but it is agreed that that does not matter). I was invited to consider whether this was a sculpture for the purposes of section 52 (or the preceding legislation). If it was not then there have been enough sales of a non-sculpture for Mr Ainsworth's purposes in relation to this section. I therefore have to consider the sculpture question for that purpose too. Furthermore, for the purposes of section 51 it will be necessary to consider whether the helmets and armour are sculptures.
  126. Sculpture

  127. Technically the meaning of sculpture arises under various different statutory provisions. They are identified hereafter in later sections of this judgment. I am satisfied that it must have the same meaning in relation to all of them.
  128. A sculpture is an artistic work under the 1988 Act. There is no statutory definition of "sculpture" for the purposes of this area of legislation. The only statutory assistance one has in relation to this question is a somewhat circular indication of what is included:
  129. "'sculpture' includes a cast or model made for purposes of sculpture" (section 4(1)(2)(b)."

    In addition there is the provision of section 4(1)(a) which provides that something can be a sculpture "irrespective of [its] artistic quality".

  130. That does not help much in the present circumstances. Nor do the cases in the area provide many guidelines for determining whether something is a sculpture or not. What they provide is a series of examples, with some of the factors (explicit and implicit) taken into account by the judges deciding the cases. The authorities are as follows.
  131. In Caproni v Alberti (1891) 65 LT 785 the item at issue was a cast made by a firm of modellers comprising a depiction of fruit and leaves. Protection was claimed under the Sculpture Copyright Act 1814; the defendant claimed that the cast was not something which fell within the wording of the Act, which was "any subject being the matter of intention in sculpture". There is no indication in the report of why that submission was made, and Mathew J made short work of it:
  132. "Having heard the evidence in the case, I am clearly of opinion that the productions in question come within the words 'any subject being the matter of intention in sculpture' … I am not going to defend the phraseology of the section, which is verbose, inaccurate and troublesome; but I think the words of the section which I have quoted do not need any interpretation but leave the matter free from doubt."

    He went on to find that the cast had "artistic taste, judgment and arrangement"; that is no longer a requirement of a "sculpture" under the 1988 Act.

  133. There is no material assistance to be gleaned from that case. It dealt with something which could perfectly fairly be called a sculpture in everyday parlance, but it did not elucidate the concept of "sculpture".
  134. . Britain v Hanks (1902) 86 LT 765 concerned a claim to copyright under the 1814 Act in a model soldier cast in metal. The defendant argued that the statute was intended to apply only to substantial works of art, such as busts, large sculptures and casts of copies of works recognised as works of art, and there was no artistic merit in the model soldiers in the sense contemplated by the Act. Wright J held that the first question was whether the toy representation was "an artistic thing – an artistic production within the meaning of the [1814 Act]". He went on:
  135. "It is tolerably certain that some toys would not fall within the protection of the Act; and the question whether this soldier's or mounted yeoman's figure comes within it must be decided upon evidence as to its artistic character. The evidence before me is all one way. A war correspondent has been called who is at the same time an artist and has shown several of these figures to be artistic productions, in that the anatomy is good, and that the modelling shows both technical knowledge and skill. I see nothing to quarrel with in that statement. On the whole, therefore, although I have great doubt as to the meaning of the Act, I am prepared to hold that the production of a metal figure of a mounted yeoman such as this is good enough to be protected by the provisions of the Act if [certain other provisions] are complied with." (Those other provisions are not relevant to the point I have to consider.)

  136. The fact that it was a toy was not conclusive against its being a sculpture. It seems that what ultimately weighed with Wright J was the fact that the model had some artistic "character". Like Mathew J, he implicitly assumed that a sculpture within the Act had to have some such quality. The thing before him was not merely a toy; there was more to it than that. I think that he was trying to convey two things. One is actual artistic merit. If that was a requirement then, it is no longer a requirement now, under the 1988 Act. The other is an artistic character. This is probably a slightly different quality. It is something which elevated it above being a mere toy. The distinguishing feature is probably that it had a purpose in that (if you liked that sort of thing, which is an artistic merit point) then one could be content just looking at it. Mr Wilson said that the model had no purpose other than being intended to be looked at. I do not think that is true of that case on the facts – there was an element of toy about the model, which suggests an additional purpose that did not disqualify it from being a sculpture – but it also had some pure eye appeal for which some might buy it. That is, of course, not spelled out by Wright J, but it seems to be something that one can take from this case.
  137. . In Pytram Ltd v Models (Leicester) Ltd [1930] 1 Ch 39 a question arose as to the copyright status of a model of a wolf-cub's head, which was intended to be (and which was) reproduced in papier machι from a mould for display on poles as a totem by Boy Scouts. Copyright was claimed in the original model, and a claim for infringement was brought. The claim failed for various reasons concerning the interaction between the Copyright Act 1911 and the Patents and Designs Act 1907; that does not matter for present purposes. Of more relevance is the fact that Clauson J seems to have considered, without giving any reasons, that the head was a sculpture (see page 645). This is no more than an example of what has been found to be a sculpture, and it is not really controversial. The copyright was maintained in an original plaster model, which was itself reproduced from casting from a mould based on an original hand-fashioned clay version. While not high art, that model is plainly fairly treated as a sculpture.
  138. Moving into a more industrial application area produces potentially greater problems. In Breville Europe plc v Thorn EMI Domestic Appliances Ltd [1995] FSR 77 the claimants produced a sandwich toaster. In order to produce the heating plates they produced plaster shapes as a sort of target food product so that moulds could be produced for the heated plates which would, when used in the finished machine, produce sandwiches which would (naturally) correspond to the shape of those plaster shapes. The claimants claimed (inter alia) copyright in the plaster shapes. For various reasons not material to this judgment, Falconer J held that there was no infringement. He did, however, hold that the plaster shapes were sculptures. He said:
  139. "I do not see why the word 'sculpture' in s.3 of the Copyright Act 1956 should not receive its ordinary dictionary meaning except insofar as the scope of the word is extended by s.48(1) which provides that '"sculpture" includes any cast or model made for the purposes of sculpture.' The Concise Oxford Dictionary defines 'sculpture' as the
    'art of forming representations of objects etc or abstract designs in the round or in relief by chiselling stone, carving wood, modelling clay, casting metal, or similar processes; a work of sculpture,'

    a definition forming the basis of paragraph 3.15 on 'sculptures' in [Laddie, Prescott and Vitoria's Modern Law of Copyright] where it is suggested that:

    "Since copyright may subsist irrespective of artistic quality it would seem that, for example, carved wooden patterns intended for the purpose of casting mechanical parts in metal or plastic might well be susceptible of protection, although the point has not yet received much attention from practitioners.""

    Falconer J then went on to refer to Wham-O Manufacturing Co v Lincoln Industries Ltd [1985] RPC 127 (see below) and said:

    "In my view the plaster shapes…were sculptures and as such attracted copyright."
  140. This approach concentrates on the method of production of the item in question rather than its purpose. The application of this approach would assist Lucas, because of the method of construction of the helmet. It also suggests that art plays no part in the determination. A purely functional article with no artistic pretensions whatsoever can, on this approach, be a sculpture. Mr Wilson pointed out that this decision on the point is strictly obiter. I am not sure that that is correct, but even if it is the view of a judge of the experience of Falconer J is entitled to particular respect. He also said that the case reflected a tendency of the courts to provide protection by forcing notions such as "sculpture", which is no longer appropriate because sections 51 and 52 demonstrate a more modern intention to cut down protection. I do not accept this submission either, or at least not in relation to sections 51 and 52. Those sections are predicated on a degree of protection existing, and cut it down in their respective manners. They do not say anything about the appropriateness of any particular original level of protection.
  141. The Wham-O case referred to by Falconer J is another example of a purely functional, and indeed industrial, object being held to be a sculpture. It was a case in the New Zealand Court of Appeal in which copyright in various elements of Frisbee (the plastic flying disk) production were in issue. After initial drawings were made, a wooden model was produced, presumably by carving or turning. From that model detailed drawings were prepared which enabled an engineer to produce a metal mould, and from the metal mould the final plastic product was produced by a process of injection. Copyright was claimed in, inter alia, the wooden model and in the final plastic form, on the footing that they were sculptures. The Court of Appeal upheld a claim to copyright in the former (as a sculpture), but not in the latter. The wording of the New Zealand statute was the same as the English 1988 Act.
  142. The New Zealand Court of Appeal had to consider whether certain items were engravings, as well as the question of sculptures. In that context, they made remarks which are of assistance in relation to both enquiries. At page 150 they referred to the need to look to the ordinary meaning of words:
  143. "Insofar therefore as those definitions are merely inclusive and are not exhaustive of the original meanings of 'engraving' and 'sculpture', the court can have regard to the ordinary meaning of such words as ascertained from various sources."

    They then set out various dictionary definitions relating to engraving, which I do not need to deal with, and they dealt with a particular authority on the point. At page 153 they dealt with a point about visual appreciation:

    "Mr Hillyer submitted than an engraving in the form of a mould or dye could not be an engraving as protected by the Act because it is not meant to be appreciated visually but rather is merely a device used to create an end product, namely the finished plastic disc. This submission cannot be upheld, particularly in view of the developing nature of the law of copyright. The requirement for works to be of artistic quality has been removed from the definition "artistic work" in s.2 of the Act so far as the items referred to in clause (a) of that definition are concerned, and so long as the dye or mould falls within the words of the definition to which we have referred, then it may be the subject of copyright protection." (page 153)

    This, if followed, is an answer to one of Mr Wilson's submissions, which is that it is of the essence of a sculpture that it should be intended to appeal to the eye and to be enjoyed for its appearance, whether or not it had an additional function. That seems to be a point which the Court of Appeal did not accept.

  144. Having reached certain conclusions about engravings, Davison CJ then turned to deal with questions of sculpture. At page 155 he sets out various dictionary definitions and stated as follows:
  145. "The Shorter Oxford English Dictionary defines 'sculpture' as:
    'Originally the process or art of carving or engraving a hard material so as to produce designs or figures in relief, or in intaglio, or in the round. In modern use, that branch of fine art which is concerned with producing figures in the round or in relief, either by carving, by fashioning some plastic substance, or by making a mould for casting in metal.'
    Although that definition refers to sculpture as a branch of fine art, for the purposes of copyright, sculpture is classed as an artistic work, 'irrespective of artistic quality.'
    "Webster's Third New International Dictionary defines 'sculpture' as:
    '1. The act, process or art of carving, cutting, hewing, moulding, welding or constructing materials into statues, ornaments or figures.
    2. The act, process or art of producing figures or groups in plastic or hard materials.'
    ……
    'In the New Encyclopaedia Britannica, vol. 16, p.421 there appears an article on 'Art of sculpture'. The following passages are of some interest:
    'Sculpture is not a fixed term that applies to a permanently circumscribed category of objects or sets of activities. It is, rather, the name of an art that grows and changes and is continually extending the range of its activities and evolving new kinds of objects. The scope of the term is much wider in the second half of the 20th century than it was only two or three decades ago, and in the present fluid state of the visual arts, nobody can predict what its future extensions are likely to be.
    Certain features, which in previous centuries were considered essential to the art of sculpture, are not present in a great deal of modern sculpture and can no longer form part of its definition. One of the most important of these is representation. Before the 20th century, sculpture was considered a representational art; but its scope has now been extended to include non-representational forms. It has long been accepted that the forms of such functional three-dimensional objects as furniture, props and buildings may be expressive and beautiful without being in any way representational, but it is only in the 20th century that non-functional, non-representational, three-dimensional works of art have been produced.
    …..
    20th century sculpture is not confined to the two traditional forming processes of carving and modelling or to such traditional natural materials as stone, metal, wood, ivory, bone and clay. Because present-day sculptors use any materials and methods of manufacture that will serve their purposes, the art of sculpture can no longer be identified with any special materials or techniques. Through all of these changes there is probably only one thing that has remained constant in the art of sculpture, and it is this that emerges as the central and abiding concern of sculptors:
    The art of sculpture is the branch of the visual arts that is especially concerned with the creation of expressive form in three dimensions."

  146. Davison CJ then records the finding of the judge at first instance that the wooden models were "as far as its basic nature is concerned a sculpture". Having set out a sentence from Laddie, Prescott and Vitoria (1980 edition page 107) he then turns to consider the final plastic product which emerges from the injection moulding process. While he accepted that articles produced from a mould, which was in turn produced from an original sculpture, could be classified as sculptures, he did not accept that that was the case in respect of the final plastic articles.
  147. "But it appears to us to be straining the meaning of the word 'sculpture' to apply it to the discs produced by the injection moulding process used in the present case when the moulds concerned have simply been created by a process of engraving and no original model has been created."

  148. With respect, I find that distinction somewhat arbitrary. It was certainly true on the facts of that case that the moulds were produced by a process of carving out an appropriate shape in the mould (held to be engraving). The result was a reproduction of the original wooden model (which, as will become apparent, was held to be a sculpture). It is to be inferred from what Davison CJ said that, had there been a method of forming a mould by reason of direct contact with the original sculpture, then the final product would have been a sculpture, at least at this stage of the reasoning. It seems to be to generate an arbitrary distinction to say that the position is different where the mould is produced by a separate 'carving' activity based on drawings which are themselves based on the original sculpture. Such a process of reasoning seems to vest the process of manufacture with too much significance.
  149. That was not the only basis on which the Court of Appeal determined that the final product was not a sculpture. The court also relied on what might be described on certain artistic, as opposed to utilitarian, qualities in the product. At page 157 Davison CJ said:
  150. "Furthermore, it appears to be implicit in the definitions of sculpture to which we have already referred and from the article in the New Encyclopaedia Britannica, particularly the passage reading:
    'The art of sculpture is the branch of the visual arts that is especially concerned with the creation of expressive form in three dimensions.'
    That sculpture should in some way express in three-dimensional form an idea of the sculptor. It seems to us inappropriate to regard utilitarian objects such as plastic flying discs, manufactured as toys, by an injection moulding process, as items of sculpture for the purposes of the Copyright Act. They lack any expressive form of a creator and any idea which the creator seeks to convey.
    In the result, we are unable to hold that the final plastic product – the discs – are sculptures in terms of the Act and entitled to copyright protection as sculptures."
  151. So the court was relying on the purely utilitarian nature of a frisbee, and what might be regarded as the complete absence of any artistic quality. This is despite the fact that, so far as one can tell from the report, some of the features of the Frisbee (in the form of rings) were purely decorative, and to that extent might be said to represent an element of creativity. What this aspect of the decision probably demonstrates is that, while the boundaries of what is a sculpture have been pushed way beyond traditional notions, one cannot push them, and the logic of some of the previous cases, too far. There comes a point where the court is entitled to say that what is produced simply cannot fairly be regarded as a sculpture.
  152. Having dealt with the final product, the court then turned to deal with the wooden model. At page 157, in relation to this, Davison CJ said:
  153. "All that is required therefore is that the work in question shall be a sculpture in the ordinary sense of that term or as included in the extended definition of sculpture contained in the Act.
    We think that the wooden models of the Frisbees, which were prepared for the various models, do fall within the definition of sculpture, and are thus properly the subject of copyright protection. We agree with Moller J on this point."

    The report of Moller J's judgment at first instance [1982] RPC 281 does not fully reveal his process of reasoning in arriving at this conclusion. It refers to the definitions and citations which he had read, and then simply expresses the conclusion that the models were sculptures. However he, like the Court of Appeal, held that they were engravings, and thus "artistic works" within the Act.

  154. It seems to me that this case can be relied on for the following:
  155. (a) It is another example of something which had an ultimate utilitarian function as being a sculpture (the wooden model);

    (b) Not every three-dimensional object produced as a result of a human design is capable of being a sculpture. While a utilitarian or other function does not, by itself, exclude, there must nevertheless be some element of artistic expression, however unsuccessful.

    (c) It is appropriate to start with what is the normal understanding of the expression "sculpture", though in my view the case demonstrates that that is a pretty loose boundary bec