The Empire Strikes Back…and Loses


When British model maker Andrew Ainsworth found in his basement the original molds for the Stormtrooper helmets that he’d made for the Star Wars films in 1976, he saw a gold mine of potential. Convention-attending Star Wars megafans shell out big bucks for gear like the helmets, so Ainsworth dusted them off and began (re)producing them through his own company in 2004. Thanks to the Internet, some of the gear made its way across the oceanto the United States.

That’s when Lucasfilm Ltd. brought the hammer down…or tried to, at least. The years-long legal battle that followed involved two distinct legal issues: the extraterritoriality of U.S. copyright claims in English proceedings and the definition of “sculpture,” and whether that sculpture is “functional.” While the Star Wars context is unprecedented, neither of these questions is entirely new, and Lucasfilm v. Ainsworth exemplifies modern trends regarding both aspects of the case.

The film industry giant initially slammed Ainsworth with a $20 million lawsuit, claiming he had no intellectual property rights to the helmets. A U.S. court upheld the argument, but there was a hitch: as a citizen of the U.K., Ainsworth held no assets in the United States. Thus, the case ended in a default.

So, Lucasfilms carried the battle across the ocean to London. But, the powerhouse film company had no better luck there: in 2011, the U.K. Supreme Court judged that Ainsworth could indeed continue making and distributing the helmets.

The U.K. Supreme Court ruled that U.S. copyright claims are indeed addressable in English proceedings, and that the English courts had jurisdiction over Ainsworth because he is a U.K. national.

Christiane Campbell is an IP expert with Duane Morris LLP, and she frequently deals with copyright, intellectual property and trademark cases that skip across international borders.  

“Once international markets opened,” she says, “you saw it more in the brand and trademark realm because brands transcended international borders all the time.”

The spillover in advertising and marketing of products often leads to cross-border litigation. Consider the case of Belmora LLC v. Bayer Consumer Care AG, which boiled down to a single question: does a trademark holder from outside the U.S. have grounds to bring unfair competition action?

Pharmaceutical company Belmora LLC secured trademark registration in 2005 for a product called FLANAX, which the company sold and marketed in the U.S. The hitch? Bayer Consumer Care had been selling a product called FLANAX in Mexico since 1976, marketing the product as ALEVE in the U.S. Seeing Belmora piggyback on their advertising and absorb Mexican-American consumers, Bayer petitioned to cancel Belmora’s FLANAX trademark, invoking the 1946 Lanham Act, which governs trademarks and unfair competition. After a back and forth through the court system, Bayer successfully quashed Belmora’s trademark. So, the answer to the aforementioned, key question is “yes”…in the world of trademarks, that is.                 

The question of whether the Stormtrooper helmet is functional or merely a work of art, however, is more nuanced. The U.K. Supreme Court held that the helmets were not “sculptures” because they serve a utilitarian purpose. Therefore, the 70-year copyright protection afforded to works of art didn’t hold water for Lucasfilm.

Lincoln Bandlow is an intellectual property expert with Fox Rothschild LLP in California, and he cites another similar case that drew upon these elements and climbed to the Supreme Court last fall: Star Athletica, LLC v. Varsity Brands, Inc. The lawsuit began when Varsity Brands – which dominates the cheerleading apparel industry – alleged that smaller provider Star Athletica copied some of Varsity’s designs. The catch is that the designs in question were chevrons, zigzags and stripes– all fairly ubiquitous designs. Copyright law, however, mandates that such designs must stand alone as a work of art in order to warrant protection.    

“It had similarities in that it was a case that involved alleged utilitarian aspects of usable articles, and whether you can have copyright protection in the artistic aspects of somewhat useful articles,” says Bandlow. “The Stormtrooper helmet – you put on your head, it’s a somewhat useful article. And a cheerleader outfit, obviously you need to have certain qualities to a cheerleader outfit for it to work for the purposes that it serves.”

The Supreme Court ruled in favor of Varsity Brands, and Christiane Campbell says the case of the cheerleading uniforms is significant because “it says that there are elements of fashion design that could be protectable and separable from their functionality.”

  The test is a tricky one, and Campbell draws upon an old example from case law to illustrate the functionality v. creativity aspect of a design: belt buckles. Belt buckles serve a purpose: they make sure a person’s pants stay up. But there also exist belt buckles that are covered in rhinestones and filigree that can be separated from the function of the buckle.

“You can’t go out and tell everybody else, ‘You’re infringing my copyright because you got a belt that holds your pants up,’” Campbell explains. “It’s inherently unfair. But you can stop other people – [theoretically]– from offering a belt buckle that copies your design and the aesthetic elements.”

As Andrew Ainsworth told the Telegraph in 2011, “I am proud to report that in the English legal system David can prevail against Goliath if his cause is right. If there is a force, then it has been with me these past five years.” No such luck for Stormtrooper.

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