Lucasfilm to Strike Back March 7th - Lucasfilm vs Andrew Ainsworth

Dpp1978 · Mar 5, 2011

Re: Lucasfilm to Strike Back March 7th

exoray said:
Actually it goes deeper than just a 'could', a ruling against LFL almost certainly puts the validity of existing Copyright in question for any such similar items, and opens them to challenge with a valid precedent behind being able to shorten the assumed Copyright... That isn't a 'could' but a 'will'...

I really think you are overstating this.

Any future case will be assessed on its own merits, and can easily be distinguished from this one.

I certainly don't foresee a rush of speculative litigation in an attempt to liberate copyrights from their owners. I'm not sure exactly how one would go about doing that anyway, you generally need an accepted cause of action in law or equity to bring suit, and I can't think of any that fit.

For example an open challenge to say the Dr. Who Cyberman or Dalek (or other vintage UK creature/monster/robot) design is certainly wide open for interpretation if this goes against LFL...

Again who would bring such an action? Copyright cases are brought by those who claim to have it, against those they claim are infringing upon it: not the other way around. For someone to fund lawyers to raise and fight a case where there is no real personal upside seems unlikely to me.

If anything it might make the rights holders less bullish, which I'm not sure is such a bad thing.

Truth is that until further litigation and challenges the full implications will not be known, but what is known is that it will open a door to void long assumed Copyrights...

I wholeheartedly agree to the first part. We just don't know what the full implications will be. For all we know the Supreme Court could overturn it and all this discussion will be rendered moot. I don't expect it will be, but it wouldn't surprise me if it was.

I seriously doubt that if the decision is left standing it'll have any great impact.

As for the second part, that door has always been ajar, even in the US. Who'd have thought that DC would have their hold on Superman weakened before it happened?

In any case copyright is quite weak from a commercial perspective; the trademark is far more valuable, and more easily defended.

exoray · Mar 5, 2011

Re: Lucasfilm to Strike Back March 7th

Dpp1978 said:
I really think you are overstating this.

While you constantly downplay it... It goes both ways...

Again who would bring such an action? Copyright cases are brought by those who claim to have it, against those they claim are infringing upon it: not the other way around. For someone to fund lawyers to raise and fight a case where there is no real personal upside seems unlikely to me.

The copyright owner would bring the challenge obviously against the suspected infringer, who said anything different? I simply said open challenges could be exerted, aka a company starts making cyberman costumes without a license out in the open and flaunts just like AA did with the trooper, and if sued can challenge the legitimacy of the copyright expiration based on industrial design vs art, using this ruling as precedent...

If anything it might make the rights holders less bullish, which I'm not sure is such a bad thing.

Why? If the ruling doesn't or isn't changing the game (as you imply) why would they change their tactics in pursuing copyright? Or are you admitting that the much more black and white copyright issues that existed previous for movie props as art vs industrial design would certainly be blurred if they rule against LFL?

I wholeheartedly agree to the first part. We just don't know what the full implications will be. For all we know the Supreme Court could overturn it and all this discussion will be rendered moot. I don't expect it will be, but it wouldn't surprise me if it was.

Exactly, no one knows what if any precedent will be set or followed in the future... To say it won't have an impact is just as wrong as stating it will have huge impact, as the potential for it to go either way is very much up in the air, it's all speculative until the issue is pursued further...

Are the Dalek or Cyberman industrial design or art?

defstartrooper · Mar 5, 2011

Re: Lucasfilm to Strike Back March 7th

........

Dpp1978 · Mar 5, 2011

Re: Lucasfilm to Strike Back March 7th

exoray said:
While you constantly downplay it... It goes both ways...

Indeed it does.

The copyright owner would bring the challenge obviously against the suspected infringer, who said anything different? I simply said open challenges could be exerted, aka a company starts making cyberman costumes without a license out in the open and flaunts just like AA did with the trooper, and if sued can challenge the legitimacy of the copyright expiration based on industrial design vs art, using this ruling as precedent...

If this were to happen the rights holders would argue the case based on the facts specific to them. The judge would make a decision based on the merits of that case. It is possible on the merits that the decision could go in either party's favour.

Again the precedent does not say that props are industrial design; the judges noted just because it is a prop doesn't preclude it from being art in its own right. It is precisely because of this possibility of duality that these cases are difficult and have to be decided on a case by case basis.

If the marketing involved registered (or even unregistered) trademarks it is pretty much game over.

Why? If the ruling doesn't or isn't changing the game (as you imply) why would they change their tactics in pursuing copyright? Or are you admitting that the much more black and white copyright issues that existed previous for movie props as art vs industrial design would certainly be blurred if they rule against LFL?

Pursuing copyright claims is a dangerous game at the best of times precisely because it is about as far from black and white an issue as it is possible to get and can easily blow up in the rights holder's face. Even seemingly clear cut cases of copyright infringement fail because there are no hard and fast rules. Even the test here is more a list of factors to be considered than a hard definition. Deciding copyright cases is (perhaps appropriately) more of an art than a science.

The art/industrial design issue was an incredibly muddled part of this already unclear area of law; that is why the case law was a contradictory mess. If anything this ruling helps tidy it up. This ruling didn't so much change the law as clarify it.

If there is a successful claim over IP it is usually for patent, trademark or registered design infringement. The term may be shorter but the protection is all but absolute. There is also the tort of passing off which is particularly relevant to the scenario you propose.

Exactly, no one knows what if any precedent will be set or followed in the future... To say it won't have an impact is just as wrong as stating it will have huge impact, as the potential for it to go either way is very much up in the air, it's all speculative until the issue is pursued further...

I didn't say it will have no impact, just that the effect it will have is likely to be less than those acting as if the sky is falling want to make it.

Are the Dalek or Cyberman industrial design or art?

That is entirely dependant on the skill of the lawyers arguing the case; as it is with any copyright/industrial design issue (even before this ruling). It could go either way.

lonepigeon · Mar 6, 2011

Re: Lucasfilm to Strike Back March 7th

Dpp1978 said:
If the marketing involved registered (or even unregistered) trademarks it is pretty much game over.

In that case what about Ainsworth's liberal use of the term "Stormtrooper" on his website?
Lucasfilm actually has a trademark on the term. I believe the German type were spelled with 2 words.
Motorola actually pays Lucasfilm for the trademarked term "Droid".

How about the "Shadowtrooper"?
The black stormtrooper first appeared in the Star Wars comics in 1979.
They're older than 25 years still, but they are a comic book invention.

Dpp1978 · Mar 6, 2011

Re: Lucasfilm to Strike Back March 7th

lonepigeon said:
In that case what about Ainsworth's liberal use of the term "Stormtrooper" on his website?
Lucasfilm actually has a trademark on the term. I believe the German type were spelled with 2 words.
Motorola actually pays Lucasfilm for the trademarked term "Droid".

LFL did enforce certain trademarks against AA. He was forced to stop using the Rebel logo and Imperial logo on his items.

While LFL hold trademarks for Stormtrooper, as a pre existing word (it has been used in various forms including this one since long before Star Wars) it is more vulnerable than the logos and could potentially be ruled invalid. I don't know why LFL is not enforcing it (if they don't they risk losing it). Perhaps they are holding it in reserve as an alternative cause of action, but I can only speculate.

How about the "Shadowtrooper"?
The black stormtrooper first appeared in the Star Wars comics in 1979.
They're older than 25 years still, but they are a comic book invention.

I can't find a registration for Shadowtrooper in the US, UK or EU.

Any design interest in them is derived from the one that has been ruled to have expired, save the changed colour.

Vaderman · Mar 8, 2011

Re: Lucasfilm to Strike Back March 7th

This is very interesting! I was wholly unfamiliar with this case.

But to the point about Andy Warhol's soup can, saying that the can itself it not then considered art, because it was painted and the painting was art is a little off the point, isn't it?
I mean, if Andy Warhol had sculpted something and then painted it, wouldn't they both be considered pieces of art? Of course they would.
The stormtrooper helmets didn't already exist, they were created for a film, which Lucas or others might argue was art.
So, if I create a sculpture that is going to be used in a larger sculpture, it's still all art, right?
In any case, our opinions don't matter and will not be saying the decisions here.

I think the comic book use, as work for hire, is probably owned by LFL. They approved the script which described the shadow trooper, they approved the line art, the color art and they trademarked the final product.
It's also of note that things are trademarked for particular categories. When I was at Paramount and the "Phaser" printer came out, it had no impact on any Star Trek licensing.
The name wasn't wasn't protected for whatever class included printers, nor was there a licensee paying for the use of the term in that category.
It fascinating the way it all works.
The "industrial design" nomenclature is also very interesting to me, especially if it is determined simply by numbers.

By the way, dpp1978, are you a lawyer or a barrister? You seem to be well versed in the intricacies of the law in England and how it relates to US law.

I wonder if the BBC have also been watching this for Daleks, K-9 and other characters they don't own, but use for a fee. Terry Nation might be interested as well, though I suppose since his Daleks have been continually used, they are still current. Though the design has changed...

sskunky · Mar 8, 2011

Re: Lucasfilm to Strike Back March 7th

This is very interesting and a breath of fresh air being able to read facts and factual information without all the usual political BS associated with this case.

@ Dpp1978,

Thanks.

I never thought I would find reading law so interesting......:thumbsup

Dpp1978 · Mar 8, 2011

Re: Lucasfilm to Strike Back March 7th

Vaderman said:
This is very interesting! I was wholly unfamiliar with this case.

But to the point about Andy Warhol's soup can, saying that the can itself it not then considered art, because it was painted and the painting was art is a little off the point, isn't it?
I mean, if Andy Warhol had sculpted something and then painted it, wouldn't they both be considered pieces of art? Of course they would.

I was replying to your comment:

Seems like, if a movie is considered "art" then the pieces of it would be too, no?

The implication of that statement as I read it is that everything incorporated into a piece of art must be art in its own right. That is not the case. I merely used the Campbell's Soup example to illustrate this.

The soup tin is entirely utilitarian so copyright does not attach. However the logos are protected trademarks which is for commercial purposes better than copyright but that is a different issue.

The stormtrooper helmets didn't already exist, they were created for a film, which Lucas or others might argue was art.

They have argued it was art: the judge disagreed. The way something is made may point towards it being art, but it is not conclusive.

Here despite many of the skills used by artists being used in their genesis, by people who by any definition artists (AA is not included here) the judge could not find the pre-requisite (at least according to the proposed test being examined this week at the Supreme Court) artistic purpose in the helmets.

So, if I create a sculpture that is going to be used in a larger sculpture, it's still all art, right?

If it satisfies the legal requirements, certainly.

In any case, our opinions don't matter and will not be saying the decisions here.

Sadly, but understandably, that is the case.

I think the comic book use, as work for hire, is probably owned by LFL. They approved the script which described the shadow trooper, they approved the line art, the color art and they trademarked the final product.
It's also of note that things are trademarked for particular categories. When I was at Paramount and the "Phaser" printer came out, it had no impact on any Star Trek licensing.
The name wasn't wasn't protected for whatever class included printers, nor was there a licensee paying for the use of the term in that category.
It fascinating the way it all works.

Agreed, although I did a trademark search in the UK, EU and US for Shadowtrooper and its variants but found nothing.

It is interesting how the various rights mesh.

It is tempting to look at them in isolation, but that would be a mistake. Even if one right fails there may be another one which can be enforced.

In the present case copyright failed, but the Stormtrooper was still a protected piece of design. Unfortunately the protection period is much shorter and has long since expired. Lucasfilm can still enforce the Star Wars brand as a trademark, and AA has been forced to stop using trademarked logos.

The "industrial design" nomenclature is also very interesting to me, especially if it is determined simply by numbers.

Industrial design covers any non copyright design used commercially. Numbers produced may be a factor to be considered but it is not solely determinative.

By the way, dpp1978, are you a lawyer or a barrister? You seem to be well versed in the intricacies of the law in England and how it relates to US law.

A barrister is a lawyer, and I am not one. I trained as a solicitor (the other sort of lawyer), but never practised. I am 2/3 of the way through an LLM (master of laws degree) and might do a dissertation on copyright, which is why I am following this case closely.

Current US copyright law (since the big change in the late 1980s) was made to comply with the Berne Convention, which came in large part from English copyright law.

They are broadly similar, but when presented with the question of whether the Armour was utilitarian the US courts ruled in Lucasfilm's favour.

I wonder if the BBC have also been watching this for Daleks, K-9 and other characters they don't own, but use for a fee. Terry Nation might be interested as well, though I suppose since his Daleks have been continually used, they are still current. Though the design has changed...

The copyright may potentially be called into question (should the appeal fail), at which time the Terry Nation estate would be able to put forth the case these objects have artistic purpose.

Even if the copyright is ruled invalid the BBC will still have to license any trademarks (which may be enforced even if unregistered) to the names.

Dpp1978 · Mar 8, 2011

Re: Lucasfilm to Strike Back March 7th

sskunky said:
This is very interesting and a breath of fresh air being able to read facts and factual information without all the usual political BS associated with this case.

@ Dpp1978,

Thanks.

I never thought I would find reading law so interesting......:thumbsup

You are welcome.

I'm just happy that anyone has bothered to read it, let alone take anything positive from it.

Vaderman · Mar 8, 2011

Re: Lucasfilm to Strike Back March 7th

Say, I meant to add, to my previous, typo-ridden post: today is the 8th... Did anyone hear what happened, if anything?

defstartrooper · Mar 8, 2011

Re: Lucasfilm to Strike Back March 7th

........

Supa troop · Mar 8, 2011

Re: Lucasfilm to Strike Back March 7th

Vaderman said:
Say, I meant to add, to my previous, typo-ridden post: today is the 8th... Did anyone hear what happened, if anything?

I was informed that Yesterday and Today it was just going over old ground a prelim for the rest of the hearing.
LFL are yet to produce any new evidence as such, and its Looking like the estimated time to be 3 months until any real final outcome or decisions are made.

Batton down the hatches and grab your pop corn we are going to be here a while

Cobalt60 · Mar 8, 2011

this won't effect the daleks on Dr. Who.

the problem here is, Lucas didn't have his own 'creature shop' to produce his designs in-house. if lucas had produced the TK helmets "in-house", (like all the creatures in ROTJ, for example), then there would be no questions about copyrights. instead, he went to a third-party and asked this third party to sculpt helmets & reproduce them for his own personal use.

THIS is like hiring a contractor to design/build your swimming pool, based on your sketch on the back of a napkin: at the end of the day, the designer owns his blueprints, along with ALL the custom-tooling he might have created to make your swimming pool. YOU just own the swimming pool.
and he can make another one just like it for your neighbor.

( and/or.. its like hiring a contractor to build a custom house to your specifications:
at the end of the day, HE owns the design to YOUR home --- YOU just own the home)*
(and HE has every right to build another one)*

(( and/or.. its like the photographer who shot photos at my wedding:
at the end of the day, HE owns the negatives -- I just own the prints)).
((you get the idea)).

the UK judge has ruled that the design/moulds were "utilitarian" --- in the sense that they were "tooling" created by the designer, in order to do a job, for which he was HIRED by lucas: to provide "X" number of custom-helmets for lucas, based on a sketch.

-=====-

* who here plays video games?

there was a company called "Raven" (or ravensoft?) who made a game called "Star Trek Voyager: Elite Force" using the Quake3 engine.

George Lucas looked, and he saw that it was good.

he hired Raven to make a game for HIM now, called "DarkForces3: JK2: JediOutcast1".

--> Raven simply copy/pasted the ENTIRE game code for STV:EF,
and then "reskinned" the game with new sounds and textures, and resold the SAME code as a SW title.

(( if you open the .pak file for JK2:Jedi outcast, you will see the main character is still called "Lt. Munroe" in the game code)).

thats because the game code is utilitarian in nature. the developer has EVERY RIGHT to re-use it,
when making his NEXT game, for the NEXT customer. (who, in this case, just happened to be george lucas).

-====-

when a contractor is hired to create a product to your specifications..
he owns ALL the tooling which HE created, to make YOUR product. (YOU just own the product).

this is the same in the US, as it is in the UK.

Lucas KNOWS this, better than ANYBODY:

he re-used the 3D models for speilberg's dinosaurs from jurrassic park, when he made rhonto-beasts for the jawas to ride; he re-used effects from The Abyss, to make the gungan city (including exact sound FX); he re-used effects from "twister" when he made the podracers break apart; (etc etc).

--> he re-used EVERY special FX tool he had in his 20-year arsenal, when he made the phantom menace.

he KNOWS what it means, to make "art" for somebody else..
..AND still retain the tools, to make that SAME art en masse.

(he knows what it means to be a third-party contractor).

the problem HERE is, the shoe's on the other foot.
he didn't own his own "creature-shop" back in 1976,
and so he relied on third-party contractors to create the helmets in ANH.

IF he had made the helmets himself.. in his OWN workshop.. in his OWN studio..
there would be NO QUESTION of who owns the tooling, and what they can('t) do with it.

but he didn't. (so there is). :\

((this has nothing to do with daleks on Dr. Who))

((hehe))

exoray · Mar 9, 2011

Cobalt60...

Your post was incredibly disjointed and filled with falsehoods, and to be blunt has nothing to do with what is currently being challenged in this case... I don't even know where to begin with your post as it's really irrelevant to the subject at hand, maybe Dpp1978 can make some sense of it...

Qui-Gonzalez · Mar 9, 2011

Hello apples, meet oranges. Yeeesh.

defstartrooper · Mar 9, 2011

........

Dpp1978 · Mar 9, 2011

Cobalt60 said:
this won't effect the daleks on Dr. Who.

the problem here is, Lucas didn't have his own 'creature shop' to produce his designs in-house. if lucas had produced the TK helmets "in-house", (like all the creatures in ROTJ, for example), then there would be no questions about copyrights. instead, he went to a third-party and asked this third party to sculpt helmets & reproduce them for his own personal use.

There is some truth here.

If AA was an employee of Lucas all rights automatically go to the employer. He wasn't an employee but that doesn't mean he retains the rights. There is a mechanism which allows a term to be implied into a contract if it is necessary to make it work, or to protect the rights of the parties.

Here the judge at trial stated any rights which may have vested in AA were the equitable property of Lucasfilm, and implied a term in the contract which assigned them to Lucasfilm.

THIS is like hiring a contractor to design/build your swimming pool, based on your sketch on the back of a napkin: at the end of the day, the designer owns his blueprints, along with ALL the custom-tooling he might have created to make your swimming pool. YOU just own the swimming pool.
and he can make another one just like it for your neighbor.

( and/or.. its like hiring a contractor to build a custom house to your specifications:
at the end of the day, HE owns the design to YOUR home --- YOU just own the home)*
(and HE has every right to build another one)*

Copyright and its application to architecture is an exception to the normal rules, and one I have little knowledge of. I am unable to comment on this without further investigation.

It should suffice to say that it has very little bearing on what we are discussing here.

(( and/or.. its like the photographer who shot photos at my wedding:
at the end of the day, HE owns the negatives -- I just own the prints)).
((you get the idea)).

Similar but there is a distinction.

As above the court will imply terms into a contract. The court will only imply a term if it is necessary, and that term will only do as much as is necessary.

In this case it was necessary for Lucasfilm to have the ability to exploit the design free from restraint, and the court could imply a term assigning ownership.

In the wedding photographer's case this need is not present so the courts will only imply a term broad enough to allow you to enjoy the photos.

In any case most commercial photographers expressly retain the copyright in their standard terms of business, which renders the need to imply a term unnecessary.

the UK judge has ruled that the design/moulds were "utilitarian" --- in the sense that they were "tooling" created by the designer, in order to do a job, for which he was HIRED by lucas: to provide "X" number of custom-helmets for lucas, based on a sketch.

No they were deemed utilitarian because the judge was unable to find the necessary artistic purpose in the items, which he deemed was the most important factor when assessing whether an oblect is sculpture or not.

* who here plays video games?

there was a company called "Raven" (or ravensoft?) who made a game called "Star Trek Voyager: Elite Force" using the Quake3 engine.

George Lucas looked, and he saw that it was good.

he hired Raven to make a game for HIM now, called "DarkForces3: JK2: JediOutcast1".

--> Raven simply copy/pasted the ENTIRE game code for STV:EF,
and then "reskinned" the game with new sounds and textures, and resold the SAME code as a SW title.

(( if you open the .pak file for JK2:Jedi outcast, you will see the main character is still called "Lt. Munroe" in the game code)).

thats because the game code is utilitarian in nature. the developer has EVERY RIGHT to re-use it,
when making his NEXT game, for the NEXT customer. (who, in this case, just happened to be george lucas).

Game code is not utilitarian. Case law states computer code should be treated as a literary work for the purpose of copyright.

I am unfamiliar with the specific ownership rights to the source code of the game, and the contractual arrangement s between the parties so am unable to come to any reasonable conclusions here.

when a contractor is hired to create a product to your specifications..
he owns ALL the tooling which HE created, to make YOUR product. (YOU just own the product).

this is the same in the US, as it is in the UK.

Not necessarily. It may be the ownership of tools is provided for in the the contract. It may be that this can be implied even if not expressly provided for if it is necessary to fulfil the needs of the commissioner.

This wasn't the case here, but to claim it is a hard rule is in error.

Lucas KNOWS this, better than ANYBODY:

he re-used the 3D models for speilberg's dinosaurs from jurrassic park, when he made rhonto-beasts for the jawas to ride; he re-used effects from The Abyss, to make the gungan city (including exact sound FX); he re-used effects from "twister" when he made the podracers break apart; (etc etc).

--> he re-used EVERY special FX tool he had in his 20-year arsenal, when he made the phantom menace.

he KNOWS what it means, to make "art" for somebody else..
..AND still retain the tools, to make that SAME art en masse.

(he knows what it means to be a third-party contractor).

This touches on the most nebulous issue within the area of copyright: how much can one artist take from another before it becomes actionable?

There are no hard rules and litigation on it is always messy.

Again without detailed knowledge of the legal arrangements it is hard to do anything other than speculate.

the problem HERE is, the shoe's on the other foot.
he didn't own his own "creature-shop" back in 1976,
and so he relied on third-party contractors to create the helmets in ANH.

I would repeat my arguments from earlier in this post.

IF he had made the helmets himself.. in his OWN workshop.. in his OWN studio..
there would be NO QUESTION of who owns the tooling, and what they can('t) do with it.

but he didn't. (so there is). :\

On that we can agree

((this has nothing to do with daleks on Dr. Who)) ((hehe))

Potentially it does for reasons posted by myself and others previously.

Dave Ward · Mar 9, 2011

The daleks were designed in-house at the BBC but manufactured by a third party, Shawcraft models.

Cobalt60 · Mar 9, 2011

don't get me wrong.

I'm just saying: a photographer owns his negatives; a contractor owns his blueprints; (a designer owns his designs)

the US courts have ruled that, while ainsworth may (or may not) own the "design",
it is STILL illegal to sell replicas of copyrighted art, without a license from lucasfilm;

the UK courts have ruled that ainsworth CAN sell 'unlicensed copies', because he owns the design.

--> the difference being, the US courts acknowledge that a stormtrooper is "art"
(which is copyrighted to Lucas, and thus, you need a license from lucasfilm)

the UK courts have decided that it is not "Art" but rather "utilitarian", (like a house and its blueprints),
in which case, "unlicensed" (generic) copies are not illegal -- the designer can make copies of his own design.

The daleks were designed in-house at the BBC but manufactured by a third party, Shawcraft models.

the stormtrooper was designed by the third party. at least.. thats the argument anyway.

Lucasfilm to Strike Back March 7th - Lucasfilm vs Andrew Ainsworth

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