In 1976, the shooting of the film “Star Wars” was imminent, but the studio had not managed to produce the armour and helmets for the Stormtroopers. Andrew Ainsworth, an artist with special skills in thermoforming materials, came to the rescue. Not only did he manage to produce the iconic costumes for the Stormtroopers, in accordance with the paintings of Ralph McQuarrie, but, in conjunction with the costume designer, John Mollo, also produced a number of other helmets and articles for characters in the film. He charged a relatively modest amount per item. Over 25 years later, coming across his old moulds, he began to produce, in small quantities, armour and helmets for aficionados. He was sued in the USA for selling about £8,000 of goods, the claim being based on infringement of copyright and breach of the Lanham Act (trade marks). Having spent all he could afford on an unsuccessful challenge to the jurisdiction of the US courts, he was unable to defend and the film company obtained judgment in default for the staggering sum of $20 million.
The film company then brought proceedings in the UK under a number of heads, including (i) infringement of UK and US copyright (ii) breach of contract (iii) infringement of trade mark, passing off and breach of the US Lanham Act and (iv) enforcement of the US Order for damages, limited to $10 million, being what the US Court had ordered in respect of “compensatory” damages (the remainder being in the nature of exemplary damages). George Hamer acted for the defence and, at trial, was led by Alastair Wilson Q.C. In the High Court, the claim was defeated, save in two respects: the Court decided that (i) it could entertain a claim for infringement of US rights and found infringement of US copyright and (ii) that the copyrights in the articles made by Mr Ainsworth were vested in Lucasfilm. The Judge awarded no costs. The Court of Appeal rejected Lucasfilm’s appeal in relation to the two issues of infringement of UK copyright and enforcement of the US Judgment and rejected Mr Ainsworth’s appeal on the ownership of copyrights, but allowed his appeal on the justiciability of the claims under US law. It awarded Mr Ainsworth his costs of the appeals and 60% of the costs in the High Court.
On 7th-9th March 2011, the Supreme Court heard Lucasfilm’s appeal on the two issues of infringement of UK copyright (which turns on whether the helmets and other items constituted “sculptures” and thus copyright still subsisted) and justiciability of the claims in the UK under US law, but has not yet published its Judgment.