Costume Wars: copyright storm over the troopers

Nearly 30 years after its debut the Imperial Army is set for battle again. The instantly recognisable white skulled helmets and armoured spacesuits worn by the Stormtroopers in the Star Wars trilogy have entered into movie history. However the right to manufacture and sell replicas of the costumes has created a copyright storm. Lucasfilm Ltd has raised proceedings in London against Shepperton Studios to enforce a United States decision of copyright and trade mark infringement in the UK. The British design studio is now preparing to strike back against the claims.

The recent United States action brought by Lucasfilm Ltd in California found Shepperton Studios guilty of copyright infringement for their sale of Stormtrooper helmets and costumes. The design studio, based in Middlesex, offers both replica battle helmets and body armour for sale. Lucasfilm Ltd sued the British firm for the marketing and sale of unlicensed Star Wars memorabilia. They claimed that the British design studio was distributing unlicensed Star Wars products and in addition making misleading claims as to their authenticity. Lucasfilm Ltd was awarded $20 million in damages and Shepperton Studios were banned from copying, reproducing, importing, licensing or marketing Star Wars products in the United States. Lucasfilm is now seeking to have the judgment enforced in the UK to prevent further sales of the costumes.

However matters are not that simple. Shepperton Studios produced some of the first helmets and body armours for the original Star Wars films back in the 1970s. Mr Ainsworth of Shepperton Studios claims he did not have a contract with George Lucas governing production of the costumes and that he has never surrendered his rights over the designs. Further, this is no attack of the clones as he is continuing to use the original moulds. On the other hand Lucasfilms alleges such claims are misleading and that Shepperton has no rights in the designs. It claims that as Shepperton is not entitled to recreate the costumes, this constitutes copyright infringement.

Copyright in the UK is governed by the Copyright, Designs and Patents Act 1988. Under these provisions copyright will attach to the author of any original literary, dramatic, musical or artistic work. The original designs of the Stormtrooper costumes may well be protected as an artistic work under this regime. Such copyright protection is not limited to two-dimensional drawings and has extended to items as diverse as jewellery and toys. Previously the costumes and prostheses for the film Frankenstein have gained the protection of copyright. If copyright protection is established for the Stormtroopers costumes it entitles the author to the sole right to copy the work for a period of 70 years. Any unauthorised copying by inference amounts to infringement.

Matters consequently turn on establishing who the author is. In most cases the author of the work is the creator, who automatically obtains copyright protection. However an exception to this principle is where the work was created in the course of the author's employment. Such an exception could only be invoked here if Mr Ainsworth was an employee of George Lucas. In this case it appears that while Shepperton Studios were hired to create the helmets, Mr Ainsworth was not an actual employee. Much will depend on whether there was an actual written contract and in the absence of this what was verbally agreed between parties. These are all matters of fact which would need to be established by a court.

Given the tight control Lucasfilms now exerts over its intellectual property rights, such a potential loophole would never transpire today. Indeed all businesses should ensure that they have contracts in place to govern the supply of services by direct employees or other companies providing a service. This is particularly critical where it involves the design of a new product or service and authorship issues may arise.

While the film industry provides ample examples of easily identifiable objects (light-sabres and the Batman and Superman costumes to name a few), there is no need to prove that an item is well known in order for copyright to attach. All that is required is for it to be original and this could as easily extend to items such as architectural plans, toys and furniture. Copyright infringement has the potential to impact on a wide range of industries.

Given that a Stormtroopers costume retails for around £1,500 it is a lucrative business, and the latest saga in Star Wars history looks set to run.