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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Lucasfilm Ltd & Ors v Ainsworth & Anor [2008] EWHC 1878 (Ch) (31 July 2008) URL: http://www.bailii.org/ew/cases/EWHC/Ch/2008/1878.html Cite as: [2008] EWHC 1878 (Ch) |
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CHANCERY DIVISION
INTELLECTUAL PROPERTY
Strand, London, WC2A 2LL |
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B e f o r e :
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| (1) LUCASFILM LIMITED (2) STAR WARS PRODUCTIONS LIMITED (3) LUCASFILM ENTERTAINMENT COMPANY LIMITED |
Claimants |
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| - and - |
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| (1) ANDREW AINSWORTH (2) SHEPPERTON DESIGN STUDIOS LIMITED |
Defendants |
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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
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Crown Copyright ©
Mr Justice Mann :
Introduction
It is therefore largely unnecessary to distinguish between them; I can call them corporately "Lucas".
Claimants' witnesses
Mr Norman Reynolds
Mr Brian Muir
Mr Roffman
Mr Mollo
Mr Gary Kurtz
Mr John Richardson
Professor Peter Menell
Professor Roger Fenner
Written evidence
(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
Mr Ainsworth
Miss Bernadette Pitfield
Mr Clive Payne
Mr Nick Pemberton
Ms Nicola Howard-Jones
The facts
The conception of the film; the design control of Mr Lucas; and the creation of the Stormtrooper helmet
The Stormtrooper armour
The other helmets and subsidiary items
(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.
The cheesegrater
The jawbone
The X-Wing pilot helmet
The rebel troop helmets
Other items
Subsequent events and the US proceedings
Issues
(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.
(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?
Are the helmets and other reproductions sculptures or works of artistic craftsmanship?
Sculpture
"'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".
"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.
"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.)
"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."
"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.
"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."
"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."
"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."
"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.
(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