Questions About Copyright On Stormtrooper Costume Hit UK Supreme Court

from the i-find-your-lack-of-copyright-disturbing dept

Wed, Mar 9th 2011 9:58pm — Mike Masnick

Over the past few years, we've covered the ongoing legal battle between Andrew Ainsworth -- the prop designer who created the original Stormtrooper costumes for Star Wars -- and George Lucas. Ainsworth had been selling Stormtrooper costumes, and Lucas claimed it was a copyright violation. In 2008, a UK court tossed out a ruling against Ainsworth, pointing out that movie props are utilitarian, rather than works of art, and thus not covered by copyright in the UK. Of course, Ainsworth is being a bit silly too. At one point he countersued Lucas, saying that Lucas owed him money for all the merchandising he had done involving the Stormtrooper outfits.

Either way, the case is finally going to the UK Supreme Court. Apparently, Lucas is claiming that there was an implied term in the agreement between Lucas and Ainsworth that Ainsworth wouldn't be able to have any rights to sell the works he created. So the question really may come down to whether or not the court really believes in such "implied" terms, or whether it prefers contractual terms to actually be explicit before people can agree to them.

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Filed Under: andrew ainsworth, copyright, costumes, george lucas, storm troopers, uk

24 Comments

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RD, 9 Mar 2011 @ 10:04pm

Contract terms/WFH or nothing
Um, yeah, I dont see how this could even be a question. Unless he had a specific contract that had a "work for hire" type clause (work you do for the company is owned by the company) then thats just too bad for Lucas. This "implied" crap is a load of, well, crap.

If that were to be ruled for Lucas in this case, then that pretty much turns ALL creative works done for or with a party other than the artist on its head. NO one would work with anyone if there was an "implied" transfer of rights one-way - away from the artist.

It would also render contracts and work-for-hire moot, as you wouldnt need them anymore, you could just go "your honor, I paid him to do this and it was implied I would own it." and that would get rubber-stamped right through.

The anti-copyright people here say copyright is a problem and lopsided and outdated (and it is) but this would be far, far worse for artistic endeavors if it were to stand.
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David Good (profile), 9 Mar 2011 @ 11:04pm

Ridiculous
This is very straightforward. Unless he had a contract stipulating otherwise, Ainsworth did the work for hire, so Lucas owns the property.

There's no evidence Ainsworth created the costumes independently then sold them to Lucas. Lucas hired him to specifically make them. So Ainsworth does not own the copyright on the costumes or merchandise. It all belongs to Lucas, who hired Ainsworth to make them.
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- Josef Anvil (profile), 10 Mar 2011 @ 12:15am
  
  Re: Ridiculous
  Ummm I'm not so sure about that being very straightforward.
  
  "Unless he had a contract stipulating otherwise, Ainsworth did the work for hire, so Lucas owns the property."
  
  It was my understanding that work for hire has to be stipulated in contracts, and if it isn't then the work is owned by the creator not the employer. So no, its not automatically work for hire unless stated otherwise.
  
  It would appear your comment is bass ackward.
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  - Anonymous Coward, 10 Mar 2011 @ 12:58am
    
    Re: Re: Ridiculous
    In the U.S. a work for hire MUST be specified IN WRITING and BEFORE any work commences. It cannot be retroactive :-/
    
    But, being the U.K. well... That could be a much different story.
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    - Richard (profile), 10 Mar 2011 @ 3:38am
      
      Re: Re: Re: Ridiculous
      No it isn't the rule is the same.
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    - Richard (profile), 10 Mar 2011 @ 3:45am
      
      Re: Re: Re: Ridiculous
      Even if there is a clause in the contract saying it was a work for hire Ainsworth can easily get around it. All he has to do is say that he had an initial prototype costume that he made outside the contract - the contract one being a small modification to that protoype. Then Lucas only owns his version and Ainsworth can sell the other version to his hearts content.
      
      This is standard practice in the bespoke s/w industry where multiple clients have similar requirements.
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      - ChurchHatesTucker (profile), 10 Mar 2011 @ 6:36am
        
        Re: Re: Re: Re: Ridiculous
        I love the term 'bespoke software.' I picture Jeeves sitting in front of a steampunk computer, coding away.
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        Richard (profile), 11 Mar 2011 @ 4:11am
        
        Re: Re: Re: Re: Re: Ridiculous
        It's actually most of the s/w industry. Off the shelf s/w is a tiny section of the programming activity.
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        ChurchHatesTucker (profile), 11 Mar 2011 @ 11:25am
        
        Re: Re: Re: Re: Re: Re: Ridiculous
        Yeah I know, but 'custom software' just doesn't have the same imagery.
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- Anonymous Coward, 10 Mar 2011 @ 12:55am
  
  Re: Ridiculous
  In the U.S. a work for hire MUST be specified IN WRITING and BEFORE any work commences. It cannot be retroactive :-/
  
  But, being the U.K. well... That could be a much different story.
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  - The eejit (profile), 10 Mar 2011 @ 1:00am
    
    Re: Re: Ridiculous
    Nope. According to the Work-for-Hire section of the 1988 Act, it has to be explicit.
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    - Anonymous Coward, 10 Mar 2011 @ 4:17am
      
      Re: Re: Re: Ridiculous
      and in what year was Star Wars made?
      It was released in 1977, so it predates the 1988 act.
      I don't know for sure what the usual "implied" understanding was at the time, but I don't see how any guidance can be derived from an law passed a decade later.
      
      Just saying...
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      - The eejit (profile), 10 Mar 2011 @ 4:27am
        
        Re: Re: Re: Re: Ridiculous
        The maximalists did so with the 1976 Copyright Act in the US. It applied retroactively, why can't this?
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      - Richard (profile), 11 Mar 2011 @ 4:13am
        
        Re: Re: Re: Re: Ridiculous
        The 1988 act didn't change the situation - although it may have clarified it by bringing existing case law explicitly onto the statute book..
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mike allen (profile), 9 Mar 2011 @ 11:23pm

I agree however the courts in both the UK and USA have really little understanding of copywrong laws even worse when contracts come into play.
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Mojo, 10 Mar 2011 @ 1:40am

I have mixed feelings about this... Technically speaking, I have to admit I'd wager Lucas is in the right. I mean let's face it, the guy was hired to create costumes for a movie and was paid for his work - the intellectual property is owned by Lucas and/or Fox. The people who made the guns can't just turn around and sell "Star Wars Props" just as he can't sell "Star Wars Stormtrooper costumes" without a merchandising license - just like everyone else who sells Star Wars stuff.

BUT... On the other hand... There is an international SW fan club called the "501st Legion" and the entire membership is made up of fans who own Stormtrooper costumes (in fact you have to submit photos and prove your outfit is "up to snuff" before you are accepted).

These guys go to conventions, movie openings, etc, and generally like to just walk around as a squad of Stormtroopers and look like badasses (and nerds or not, a squad of Troopers walking down your city street is pretty freaking cool).

A few years back, Lucas decided to start using these guys at official SW and Lucasfilm functions; got an important event in Detroit? Lucas picks up the phone, calls the 501st HQ and says "hey, I need a dozen Troopers to help make my event in Detroit kick ass" and BOOM, a dozen starstruck Stormtroopers show up, happy to take part in an official SW function.

Of course, they do this for free. It all culminated a few years ago when hundreds of these guys showed up to join Lucas in the Rosebowl parade.

So, Lucas happily gets to spruce up his events with Stormtroopers for free - something that would ordinarily cost Lucasfilm big bank to hire a score of performers, fly them to wherever and provide all those costumes.

And this is why this case stinks to high heaven - Lucas has been enjoying the spoils of the bootleg Stormtrooper costume market for years and now he wants to SUE the guy who made it all possible!

Did George check to make sure all 500 Stormtroopers at the Rose parade were wearing oficially licensed costumes? Of course not, but he was damn happy those guys are at his beck and call!

And that's what makes this even worse - I could understand Lucas' position a bit more if the bootleg guys were competing with an officially licensed maker of Trooper costumes - BUT THERE ISN'T ONE! So this guy's business isn't even stealing sales from a rightful licensee.

And that's what Lucas should have done from the beginning - he should have said "ok, fine, this guy is selling SW merch without a license, but his costumes have benefited me personally (and financially) time and time again. So you know what I'll do? I'll give him the official license, start collecting royalties and make it all nice and legal. Everyone wins."

But the way he's pursuing it, there is no winner. Of George wins, he ruins this guys life, the fans can no longer get costumes and George fails to make a dime.

I wish the 501st would step up and tell Lucas that if he sues this guy into the ground they will no longer make themselves available to him.

That would actually get some press, too.
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- DSS, 14 Mar 2011 @ 7:17pm
  
  Re:
  The membership of the 501st, if you look at the website, is comprised predominantly of owners and fabricators of FANMADE costumes. It actually says most storebought costumes, most of which aren't screen accurate, aren't 501st approved. These are fans that research details, fabricate molds, vaccuform pieces, and construct them themselves. It surely wasn't this guy that made it all posssible. The 501st has been around long before Mr. Ainsworth started mass producing these costumes. I think it's cool that Lucas would recognise these individuals who are dedicated to their hobbies, and their appreciation of his movies enough to spend upwards of a thousand dollars or more to make these costumes. If I had the talent to do so , I would deffinitely join the 501st and would be honored to participate. Before dogging out the 501st, maybe we should get their opinion and input on this. They never told people to go out and buy this man's work and use in their organization. Maybe they side with Lucas and they want original fan made costumes. Maybe they side with SDS or think Lucas should give him a copyright and sell licenced material. Either way, let's not drag the 501st into this without knowing their mission, motivation or opinion. Either way, the 501st will still recruit new members with costumes they made on their own.
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- Mike RC-4257, 15 Mar 2011 @ 3:27pm
  
  501st
  The difference is that the armor is made in the legion, and isn't sold on the open market for a profit. THAT's the big difference between what Ainsworth is doing and what armor makers of the 501st do. Its about using IP that doesn't belong to you to make a profit, not just about making armor. If he wanted to make TK armor, and sell it at cost, and make no money from it, and not market it in stores or his website, but just through word of mouth in the legion there wouldn't be a problem.
  
  However what he is doing is selling unlicensed merch on the open market to make a profit, and while I wish he DID have the license since the Rubies armor sucks so much, he doesn't and shouldn't be doing this.
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Capitalist Lion Tamer (profile), 10 Mar 2011 @ 2:18am

What always irritates me about cases like this
and others, like Ms. Gaga vs. Gaga Baby Food is it all pretty much boils down to a legal scuffle over ivory backscratcher money for the "injured" parties.

I just can't see any gain from this that isn't financial and if that's what you care about, rather than the respect of the people who shell out money for your movies, music and whatever, then I really have zero sympathy for you.
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Andrew Foster (profile), 10 Mar 2011 @ 3:48am

There's no copyright in the costume
The question of whether it's a work-for-hire isn't relevant for this one, as far as I can see. If it was a work-for-hire then the copyright would belong to the guy's employer, yes, but (although I haven't read the judgement) it sounds like the court was saying there is no copyright in the work.

That seems to be why Lucas has fallen back on an argument about implied terms in the contract. Whatever you think of implied terms, they're a well-established part of UK law, but the court is generally pretty good about only using them when it's actually the sensible thing to do. So it seems this one will just turn on whether they decide to imply a term in this particular case.
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Duke (profile), 10 Mar 2011 @ 4:35am

Really about sculpture
From my reading of this article (by a UK law-person) this isn't about works-for-hire but about whether or not the helmet is a sculpture.

There is no question that the original designs (probably by Ralph McQuarrie) are covered by copyright, and that copyright will (most likely) be owned by Lucasfilm. However, there is a specific exemption (s.51 of the CDPA) for making models etc. based on designs (otherwise, for example, any LEGO model would be illegal), provided this is for utilitarian use.

So, if the helmet is a sculpture, it is an artistic work and covered by copyright (both in itself and as a derivative work) and so you have (probably criminal) copyright infringement. However, if it isn't a sculpture, but merely an object, there is no copyright infringement as the s.51 defence applies.

Of course, this is a perfect case for licensing being used as a solution (UK copyright law encourages infringement to be actioned by issuing a back-dated licence) - but they still decided to fight it out in the courts. However, I think it will be useful to see how it goes - it is quite an important case (boring cases rarely make it to the Supreme Court).

[For completeness, the High Court judgment from 2008 is available (for free) here and the Court of Appeal judgment from 2009 here. I haven't had a chance to read through them yet, though, but I will, so feel free to ask me for more details.]
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Jesse (profile), 10 Mar 2011 @ 8:16am

"If I remember correctly there was also an implied term that you would pay me 100 million dollars on my 50th birthday."
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TheStupidOne, 10 Mar 2011 @ 9:58am

The Implied Contractual Terms
For an "implied" contractual term to be valid there must be damn good reason for that term to exist. Simply saying that every other similar contract has the term is not good enough since the absence of the term could just be a result of good negotiating by one of the parties to the contract.

I would say that the only way an implied term could hold water is if that term was required for the fulfillment of the other terms in the contract. For example someone is hired under contract to do work at company's private work-site. The contract doesn't have to specify that this contractor has permission to enter the private property because that is a necessary prerequisite for other terms and is therefore implied. I do not see the need for Lucas to own the copyright. Perhaps the implied term is really a perpetual license for Lucas to use that design.
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TimothyAWiseman (profile), 10 Mar 2011 @ 3:11pm

Implied Terms
I am not a lawyer, but generally, implied terms are extremely common. For example, every contract generally has an implied term of "good faith" if it is not made explicit. The UCC in particular tends to add numerous implied to terms to contracts for the sales of goods, unless those terms are overridden explicitly (in fact, a few of them can't be overridden.) Courts will also create implied terms when they must to cover situations that were not contemplated by the parties at the time the contract was created, such implied terms often do things like assign the risk of the unforseen event between the parties.

Again, I am not an expert, but there are a number of factors courts tend to consider when deciding whether or not something is an implied term such as whether it is necessary to effectuate the explicit terms of the contract and the past dealings of the parties with each other, and also what is common in that field of business. Basically, the same concepts they use in interpreting a contract since adding implied terms really is very much like interpretation.
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