Friday, August 01, 2008

The law of Star Wars

A new UK decision on costume copyrightability features Lucasfilm versus a seller of Stormtrooper helmets. As one commentator says, "Think of the end of The Empire Strikes Back; neither side has exactly come out with what it wanted, and everything has been set up for a sequel." Things I noted: the way the court grapples with the problems that US courts know as the "useful articles"/separability issue, determining in the end that the helmets are a product of prop design rather than unconstrained artistic judgment and thus not copyrightable in the UK. But the court also rules that the same acts that didn't infringe in the UK infringed in the US, which seems correct to me at first glance, given that I think most US courts would consider prop design artistic rather than industrial design under Brandir. Even our artistic judgments are affected by the commercialization of our culture!

Also, by finding a violation of US law, the court raised the questions of what damages would be available, and whether US cost-shifting rules or UK rules would apply. This isn't my area, but those questions seem central enough to US copyright rules that I'd apply them as part of the substantive law. (The finding was that the helmets infringed design drawings; were they registered? Whether or not they were, the damages claimed in an unenforceable US judgment of $5 million in copyright damages alone seem wildly unreasonable.)

Separately, the court rejected a passing off claim based on the idea that, by representing that the Stormtrooper helmets at issue were made from the original molds, the defendant necessarily implied that they were Lucas-licensed (not true):
It seems to me that such a mis-statement, if made, would be capable of amounting to passing off. However, I do not consider that it was made in the present case. The website makes some wrongful claims. It claims that Mr Ainsworth was the creator of the original helmets and armour ... when that does not correctly describe the situation. The word "created" in that context suggests design creativity, and he did not contribute that (or not much of it) – he made the Stormtrooper helmet and armour to someone else's design. However, that does not amount to any misrepresentation about licensing. I have looked at the entire website. It certainly puffs the alleged originality of the products (in that they were derived from the same moulds) but the emphasis is on Mr Ainsworth and his acts. Neither the extracts referred to above, nor anything else in the website, expressly or impliedly suggests that what he was doing was with Lucas's consent or licence. The references to authenticity are all references to the fidelity of the product to the original design, having been made on the same moulds or tools as the film's original.
I wish our courts would be as careful. And on reverse passing off:
He has not pretended that Lucas's goods are his; nor has he pretended that the goods that he was selling, which were in fact his own, were Lucas's. He says what he is selling are his own, and he is proud of them. What he says is true so far as the origin of the goods is concerned. It might be false so far as the creation of the original design is concerned but that is not misappropriating Lucas's goodwill in the manner required in passing off. What he has done is different – he has described himself as the original creator of the original goods. That may be untrue, and it may amount to one or more other civil wrongs (as to which there was no argument and there is no claim), but it does not amount to passing off. It is a (mis)statement about him, not about the goods he is selling. He does not sell his goods by reference to someone else's goods or someone else's goodwill.

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