CLASS 99
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THURSDAY, 28 JULY 2011
Lucasfilm revisited
Well, we have now read it. The discussion on jurisdiction and justiciability is fascinating, and we propose to leave that to others, and focus on the copyright issues.
First, a very brief recap of the relevant facts. Ainsworth, the defendant, was one of the craftsmen who participated in making the Storm Trooper helmet (and some other items, but in the end only the helmet was considered). His claims to be the owner of copyright were rejected - any copyright belonged to Lucasfilm, the claimant. Their case turned on the applicability of two defences; those of Section 51 and Section 52 of the UK Copyright, Designs and Patents Act 1988.
Where a copyright work is "industrially applied", Section 52 has the effect of curtailing the enforceable lifetime of UK copyright to 25 years (the period provided for "works of applied art" in the Berne Convention, and also the lifetime of a UK registered design), and the period starts to run when you make at least 50 articles which are copies of the work and sell at least one. However, the Section 52 defence does not apply to sculptures "other than casts or models used or intended to be used as models or patterns to be multiplied by any industrial process" (Copyright (Industrial Process and Excluded Articles)(No. 2) Order 1989, SI 1989 No. 1070).
Section 52 therefore provides an exclusion from protection after 25 years, but one from which sculptures are excluded, although casts or models are excluded from the exclusion from the exclusion. The whole sorry provision goes back many decades, and used to be the mirror image of Rule 26 of the Registered Designs Rules, which excluded from registration as designs sculptures "other than casts or models ..." (though many were in fact registered).
In this case, the first Star Wars film was released in 1977 and at least one trigger event may have taken place over 25 years ago so that, if applicable, Section 52 provided a defence.
Section 51 is, perhaps, more easily summarised in effect. There is no infringement by making an article (or copying one) which is a copy of a copyright work unless the article is itself an artistic work. The only UK statutory categories of copyright work which are three-dimensional are sculptures, works of artistic craftsmanship and, though not relevant in this case, engravings.
Lucasfilm initially pleaded that the helmets were both sculptures and works of artistic craftsmanship, but the lifetime of the latter would have been curtailed by Section 52 as discussed above, and thus only the sculpture point was pleaded on appeal and in the Supreme Court. The only point of interest in the Supreme Court case on works of artistic craftsmanship is the sideswipe at Lord Simon's explanation in Hensher v Restawhile [1975] RPC 31, which "some may not find wholly convincing" (para 26).
So both the Section 51 and 52 defences turned on whether or not the helmet, and copies of it, were "sculptures". All three instances held that they were not. It would have been nice to have some clarity from the Supreme Court on what a "sculpture" is, but no bright-line test emerges. Their Lordships make the following points:
1 The normal meaning of the word is important.
2 Not all mouldings are sculptures - they have to be "for the purposes of sculpture". Breville Europe v Thorn EMI Domestic Appliances [1995] FSR 77 was wrongly decided.
3 Laddie J's finding in Metix v Maugham [1997] FSR 718 (adopted from Richard Meade's argument in the case) that a sculpture is "a three dimensional work made by an artist's hand" has not attracted adverse comment from any corner.
4 "Elephant tests" won't do - the Court of Appeal should explain their reasoning, and something like the multi-factorial assessment made at first instance and upheld on appeal is appropriate.
The main issue in this appeal was whether the Stormtrooper helmet was functional/utilitarian, as had been held by the Court of Appeal, on grounds which were criticised by Lucasfilm as confusing real military apparel with fantasy apparel. On this, the Supreme Court's analysis was clear, but may prove to have wide ramifications. They commented (para 44) that "it was the Star Wars film that was the work of art ... The helmet was utilitarian in the sense that it was an element in the process of production of the film." And that was the end of Lucasfilm's claim.
Is this correct? Consider an original and artistic bust. If created as a film prop, the Supreme Court's reasoning appears to imply that it is not a "sculpture" as being utilitarian. If created with no such purpose, however, the identical bust is a sculpture. Going further, what is the status of, say, a still photograph from a film - does it lose copyright as an artistic work because the film from which it is taken is the true "work of art"?
Even allowing that the existence of a film as a separate "work of art" is relevant, should the artist's subjective purpose determine the fate of the work, or should the question be whether the "sculpture" is separable from the film as a work in its own right?
In more ruminative vein, their Lordships accepted the Defendants' submission that there was an "emerging legislative purpose" underlying the different periods of protection for different 3D works, with 10 year design right for "purely functional works", 25 years for works with "eye appeal" (designs registered under the legislation prior to 2001), and full copyright for "Artistic works of art (sculptures and works of artistic craftsmanship").
But did their Lordships make a simple error of law here? As noted above, enforceable copyright in works of artistic craftsmanship is not "full copyright" like works of sculpture but is curtailed to a "mere" 25 years by Section 52.
If there really was an emerging legislative purpose behind the UK legislation, it may since have been derailed by a different legislator - the EU Design Directive 98/71 now requires cumulative copyright protection for protectable designs, unlike the former UK legislation which sought to control dual protection. Perhaps it is time to revisit Sections 51 and 52, works of artistic craftsmanship and sculptures, all of which have proved difficult to apply or even to understand, and replace them with something which more clearly whatever legislative intent these competing legislators have in common. Posted by: David Musker @ 12.27
Tags: copyright, litigation uk statistics, Lucasfilm, sculpture, star wars, supreme court,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA259
Lucasfilm revisited
First, a very brief recap of the relevant facts. Ainsworth, the defendant, was one of the craftsmen who participated in making the Storm Trooper helmet (and some other items, but in the end only the helmet was considered). His claims to be the owner of copyright were rejected - any copyright belonged to Lucasfilm, the claimant. Their case turned on the applicability of two defences; those of Section 51 and Section 52 of the UK Copyright, Designs and Patents Act 1988.
Where a copyright work is "industrially applied", Section 52 has the effect of curtailing the enforceable lifetime of UK copyright to 25 years (the period provided for "works of applied art" in the Berne Convention, and also the lifetime of a UK registered design), and the period starts to run when you make at least 50 articles which are copies of the work and sell at least one. However, the Section 52 defence does not apply to sculptures "other than casts or models used or intended to be used as models or patterns to be multiplied by any industrial process" (Copyright (Industrial Process and Excluded Articles)(No. 2) Order 1989, SI 1989 No. 1070).
Section 52 therefore provides an exclusion from protection after 25 years, but one from which sculptures are excluded, although casts or models are excluded from the exclusion from the exclusion. The whole sorry provision goes back many decades, and used to be the mirror image of Rule 26 of the Registered Designs Rules, which excluded from registration as designs sculptures "other than casts or models ..." (though many were in fact registered).
In this case, the first Star Wars film was released in 1977 and at least one trigger event may have taken place over 25 years ago so that, if applicable, Section 52 provided a defence.
Section 51 is, perhaps, more easily summarised in effect. There is no infringement by making an article (or copying one) which is a copy of a copyright work unless the article is itself an artistic work. The only UK statutory categories of copyright work which are three-dimensional are sculptures, works of artistic craftsmanship and, though not relevant in this case, engravings.
Lucasfilm initially pleaded that the helmets were both sculptures and works of artistic craftsmanship, but the lifetime of the latter would have been curtailed by Section 52 as discussed above, and thus only the sculpture point was pleaded on appeal and in the Supreme Court. The only point of interest in the Supreme Court case on works of artistic craftsmanship is the sideswipe at Lord Simon's explanation in Hensher v Restawhile [1975] RPC 31, which "some may not find wholly convincing" (para 26).
So both the Section 51 and 52 defences turned on whether or not the helmet, and copies of it, were "sculptures". All three instances held that they were not. It would have been nice to have some clarity from the Supreme Court on what a "sculpture" is, but no bright-line test emerges. Their Lordships make the following points:
1 The normal meaning of the word is important.
2 Not all mouldings are sculptures - they have to be "for the purposes of sculpture". Breville Europe v Thorn EMI Domestic Appliances [1995] FSR 77 was wrongly decided.
3 Laddie J's finding in Metix v Maugham [1997] FSR 718 (adopted from Richard Meade's argument in the case) that a sculpture is "a three dimensional work made by an artist's hand" has not attracted adverse comment from any corner.
4 "Elephant tests" won't do - the Court of Appeal should explain their reasoning, and something like the multi-factorial assessment made at first instance and upheld on appeal is appropriate.
The main issue in this appeal was whether the Stormtrooper helmet was functional/utilitarian, as had been held by the Court of Appeal, on grounds which were criticised by Lucasfilm as confusing real military apparel with fantasy apparel. On this, the Supreme Court's analysis was clear, but may prove to have wide ramifications. They commented (para 44) that "it was the Star Wars film that was the work of art ... The helmet was utilitarian in the sense that it was an element in the process of production of the film." And that was the end of Lucasfilm's claim.
Is this correct? Consider an original and artistic bust. If created as a film prop, the Supreme Court's reasoning appears to imply that it is not a "sculpture" as being utilitarian. If created with no such purpose, however, the identical bust is a sculpture. Going further, what is the status of, say, a still photograph from a film - does it lose copyright as an artistic work because the film from which it is taken is the true "work of art"?
Even allowing that the existence of a film as a separate "work of art" is relevant, should the artist's subjective purpose determine the fate of the work, or should the question be whether the "sculpture" is separable from the film as a work in its own right?
In more ruminative vein, their Lordships accepted the Defendants' submission that there was an "emerging legislative purpose" underlying the different periods of protection for different 3D works, with 10 year design right for "purely functional works", 25 years for works with "eye appeal" (designs registered under the legislation prior to 2001), and full copyright for "Artistic works of art (sculptures and works of artistic craftsmanship").
But did their Lordships make a simple error of law here? As noted above, enforceable copyright in works of artistic craftsmanship is not "full copyright" like works of sculpture but is curtailed to a "mere" 25 years by Section 52.
If there really was an emerging legislative purpose behind the UK legislation, it may since have been derailed by a different legislator - the EU Design Directive 98/71 now requires cumulative copyright protection for protectable designs, unlike the former UK legislation which sought to control dual protection. Perhaps it is time to revisit Sections 51 and 52, works of artistic craftsmanship and sculptures, all of which have proved difficult to apply or even to understand, and replace them with something which more clearly whatever legislative intent these competing legislators have in common. Posted by: David Musker @ 12.27
Tags: copyright, litigation uk statistics, Lucasfilm, sculpture, star wars, supreme court,
Perm-A-Link: https://www.marques.org/blogs/class99?XID=BHA259
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