AA case begins

[Qui-Gonzalez]

Representing Lucasfilm, Michael Bloch QC opened the case by saying: "We are not simply dealing with costumery.

So is this part of the reason why small time replicators like those found on the RPF are more or less left alone or am I reading that wrong?

Just going to hazard a guess here, but the reason small timers are left alone is because they are always cowed by a C&D. They then go underground for a while, stop crafting, then trickle more things back out. AA basically told Lucas to stuff it because he thought he had the original idea for stormtroopers.

He never heard about poking the bear.

 

[Onigiri]

I think that is the gist of it...poking the bear. Lucas has let a lot of stuff slide by people remaining 'humble' and at least PRETENDING to be cowed by the LFL Juggernaut. When AA had the temerity to say that the stormtroopers were HIS he essentially opened a can of worms that had LFL not pursued it would have made a mockery out of their trying to protect any of their intellectual properties. AA diidnt POKE the bear he kicked it repeatedly. This is why I stand by my assertion that AA gets what he deserves.
It sounds from reading between the lines that this isnt going to go AAs way if there is already talk of bridging the gap between what LFL is seeking and what AA is claiming. I read that as 'cant we find a way to do this wherein AA is not left a pauper. Just on his use of the Imperial COG symbol alone Lucas has him by the cajones. Lucas owns that. AA had nothing to do with it. This shows that AA uses others Intelectual property without regard and that will hurt him. Same with the rebel logo on the XWING helmet. Those sigils are owned by LFL.

 

[defstartrooper]

Granted the cog symbol is a clear breach but that has no bearing with any other items said to be IP theft, each will be judged on the facts relating to it nothing more.

 

[Qui-Gonzalez]

Granted the cog symbol is a clear breach but that has no bearing with any other items said to be IP theft, each will be judged on the facts relating to it nothing more.

It does lend itself to his character though. Especially in regards to not caring about infringing.

What is getting me is the fact that people are believing he came up with the stormtrooper sculpt all on his own. The guy made ponds, for cripes sake. How can anyone see the McQuarrie pieces and not draw the conclusion that those are what these are?

 

[defstartrooper]

It does lend itself to his character though. Especially in regards to not caring about infringing.

What is getting me is the fact that people are believing he came up with the stormtrooper sculpt all on his own. The guy made ponds, for cripes sake. How can anyone see the McQuarrie pieces and not draw the conclusion that those are what these are?

Ahhh that old fishpond line :rolleyes yeah he also did car body kits,boats and a lot of other stuff too, the whole he made fishponds thing only came about because he happened to use HDPE he had laying around which he used for ponds to make the stunt helmets.
Character counts for nothing in a courtroom, well not in a civil case anyway.
As i understand it the fact the stormtrooper wasn't his idea or was influenced by McQuarries art isn't the point of the case it's purely a decision on whether the final product was his design and creation.
Basically it's LFL trying to convince a judge the suit was made from their design/ the artwork.
And AA trying to convince a judge the final product differs in a major way to the artwork and is of his own design.
Just how they come about a judgement of how much it has to differ i've no idea.
It's quite clear the designs are similar on a basic level but there's not one part of the McQuarrie art Stormtrooper that actually matches the final suit.

 

[SithLord]

Also, the copyright on the McQuarrie paintings was registered when they were published which was AFTER the production. And a form fitting white suit is fairly generic...it's not that original a design...the helmet is different enough to be unique...there are cues of course but it's a different design. Whether AA can prove it was his design is another story but LFL can't use the McQuarrie painting argument because back in the 70s something had to be published to be copyright. Today the mere act of creation guarantees copyright.

 

[exoray]

Also, the copyright on the McQuarrie paintings was registered when they were published which was AFTER the production.

There were trooper pics registered Decemeber 24, 1975...

http://rpf.exoray.com/LFL_vs_SDS/dec_PJA.pdf

LFL can't use the McQuarrie painting argument because back in the 70s something had to be published to be copyright.

Wrong, read the Copyright certificate in the above file, it clearly details the requirements to obtain Copyright for unpublished works...

And in either case, if the picture was shown to anyone outside of LFL without restriction then it was published ie made available to the public... Publication does not require mass distribution, it merely means made available to the public and not kept private... I guess chances are very good that the McQuarrie drawings were shown to at least someone outside of LFL that was not under contract to keep it private, probably part of the reason AA is denying ever seeing them that and the whole derivative work issue...

 

[SithLord]

I posted this before on the RPF...it was my own argument about the case...have fun reading it :lol

Jan 17 2006, 06:15 PM

Here we go....

AA worked on the stormtrooper molds from February 1976 to June 1976.

LFL's only evidence to rights are McQuarries drawings and photos of
stormtroopers and TIE pilots in SW:ANH. As per the complaint: "The United
States Register of Copright issued Registration Certificate No. LP 477760
for the copyright in the 1977 motion pictures Star Wars: Episode IV- A New
Hope". They also cite registration of all the material in the Art of Star
Wars.

Let's have a look at these:

Registration Number: PA-28-102
Title: Star wars / a aLucasfilm, Ltd. production ; producer, Gary Kurtz
; director, George Lucas.
Imprint: [s.l. : s.n.], c1977.
Description: 6 film reels (121 min.) : sd., col., Panavision ; 35 mm.
Note: Deposit includes synopsis (1 p.)
Motion pictures, major cast members: Mark Hamill, Harrison Ford, Carrie
Fisher et al.
Motion pictures, credits: Music by John Williams; written by George Lucas.
Claimant: acTwentieth Century-Fox Film Corporation
Created: 1978
Published: 5Jun78
Registered: 16Feb79
Author on © Application: Twentieth Century-Fox Film Corporation, employer
for hire.
Previous Related Version: Prev. reg. 1977, LP47760.
Claim Limit: NEW MATTER: English subtitles for the deaf.
Special Codes: 4/X/L
Cross Reference: ac20th Century Fox. SEE Twentieth Century-Fox Film
Corporation.

So the movie Star Wars was registered in 1977.

The title "Star Wars" was registered Dec 1, 1976:

Registration Number: RE-905-921
Title: Star wars. By the aStar Wars Corporation.
Claimant: Lucasfilm, Ltd. (PWH)
Effective Registration Date: 20Dec04
Original Registration Date: 1Dec76;
Original Registration Number: K125787.
Original Class: K

The stormtrooper action figure was registered in 1978:

Registration Number: VA-3-535
Title: Star Wars, Stormtrooper.
Description: Figurine.
Note: Human-shaped being in body covering, holding weapon.
Based on character from photoplay Star Wars.
Claimant: G. M. F. G. I. a.a.d.o. General Mills Fun Group, Inc.
Created: 1978
Published: 30Jan78
Registered: 15Jun78
Date in © Notice: notice: 1977
Author on © Application: General Mills Fun Group, Inc., employer for hire.
Previous Related Version: Photoplay prev. reg. 1977, LP47760.
Claim Limit: NEW MATTER: sculptural adaptation.
Special Codes: 5/G//3

Since the stormtrooper figure was based on the motion picture, not
McQuarries sketches, LFL could not base the stormtrooper figure on the
McQuarrie sketches. If the McQuarrie sketches are similar enough to the
stormtroopers AA created, then why would the stormtrooper action figure be
based on the movie stormtrooper rather than the McQuarrie stormtrooper?

Note that Star Wars Corporation held the original copywrite which was
assigned to Lucasfilm Ltd. In 1979:

V1759 P233 THRU 235 (COHD)
Date Recorded: 21Dec79
Date Executed: 19Dec79
Party 1: Star Wars Corporation.
Party 2: Lucasfilm, Ltd.
Note: Assignment of copyright.

The Art of Star Wars was copywrite by registration certificate No. TX
984-752 which was issued in 1979, three years after AA created the
stormtrooper molds:

Registration Number: TX-984-752
Title: The Art of Star wars / edited by Carol Titelman [i.e. Carol
Wikarska
Titelman] ; art direction & design, Mike Salisbury ; assistant editor,
Valerie Hoffman.
Edition: 1st ed.
Imprint: New York : Ballantine Books, 1979.
Description: 175 p.
Note: Including the complete script of the film, by George Lucas.
Claimant: acStar Wars Corporation
Created: 1979
Published: 31Oct79
Registered: 24Sep82
Author on © Application: editing & compilation: Star Wars Corporation,
employer for hire.
Previous Related Version: Preexisting material: all photos., ill.,
artwork, posters & cartoons.
Claim Limit: NEW MATTER: "editing and compilation."
Special Codes: 1/B/L

Finallye, the artwork including McQuarries sketches were copywrite Dec 24,
1975 (Reg. Cert. No. GU 59-037).

BUT:

Copyright definition:

The legal ownership of a "work," which can take any of the following
forms: written text, program source code, graphics images, sculpture,
music, sound recording, motion picture, pantomime, choreograph and
architecture. Before January 1, 1978, a work had to be published to be
copyrighted. After that date, any work expressed in paper or electronic
form is automatically copyrighted for the life of the author plus 70
years. Registration with the Copyright Office is not required, although it
is beneficial if there are disputes later on. In the U.S., a copyright
symbol is not mandatory, but recommended.

Therefore, since the McQuarrie sketches were not published in 1975, but
rather in 1979, after AA completed the work on the original stormtrooper
molds, those sketches are not valid, nor were they used for reference for
the stormtrooper action figure, which instead was based on the movie
version of the stormtrooper which is based on AA's work.

Thus, for the original sketches (1975 but not published), the motion
picture (1977), and the Art of Star Wars (1979), registration for
copywrite was attained AFTER AA made the molds.

 

[SithLord]

Part II....

A note about international copywrite:

"INTERNATIONAL COPYRIGHT PROTECTION

There is no such thing as an "international copyright" that will
automatically protect an author's writings throughout the entire world.
Protection against unauthorized use in a particular country depends,
basically, on the national laws of that country. However, most countries
do offer protection to foreign works under certain conditions, and these
conditions have been greatly simplified by international copyright
treaties and conventions. For further information and a list of countries
that maintain copyright relations with the United States, request Circular
38a, "International Copyright Relations of the United States."

Works that are published in the United States are subject to mandatory
deposit with the Library of Congress. So unless the McQuarrie sketches
were submitted to the Library of Congress they would not be considered
copyright.

Based on Circular 38a, the United Kingdom was subject to UCC Paris and UCC
Geneva.

"The Universal Copyright Convention was originally written in 1952 in
Geneva. It became effective in 1955. Like the Berne Convention, the
text has been revised. As with the Berne Convention, the most recent
revision was in Paris in 1971. The United States is party to both the
1952 Geneva text and the 1971 Paris text. The U.C.C. is administered by
UNESCO, a United Nations agency."

"The two major treaties governing copyright are the Berne Convention (U.S.
Senate Treaty Doc. 99-27, KAV 2245, 1 B.D.I.E.L. 715; also reprinted at
17 U.S.C.A. 104). and the Universal Copyright Convention (U.C.C.), (25
U.S.T. 1341, T.I.A.S. 7868, 1 B.D.I.E.L. 813 (1971 Paris text); and 6
U.S.T. 2731, T.I.A.S. 3324, 216 U.N.T.S. 132 (1952 Geneva text)). (Note:
the abbreviation U.C.C. to denote the Universal Copyright Convention
should not be confused with the same abbreviation to denote the Uniform
Commercial Code.)

The Berne Convention for the Protection of Literary and Artistic Works
was established in 1886 in Berne, Switzerland. The text has been
revised, and the current edition (and the one to which the United States
and most other nations are a signatory) is the 1971 Paris text. The
treaty is administered by the World Intellectual Property Organization
(WIPO), an international organization headquartered in Geneva,
Switzerland.

The Berne Convention has four main points: National treatment,
preclusion of formalities, minimum terms of protection, and minimum
exclusive rights.

National treatment: Under Berne, an author's rights are respected in
another country as though the author were a national (citizen) of that
country (Art. 5(1)). For example, works by U.S. authors are protected by
French copyright in France, and vice versa, because both the U.S. and
France are signatories to Berne.

Preclusion of formalities: Under Berne, copyright cannot be dependent on
formalities such as registration or copyright notice (Art. 5(2)).
However, as noted in sections 2.5 and 2.7, this provision apparently does
not prevent a member nation from taking adherence to formalities into
account when determining what remedies apply."

January 1, 1978 is the date on which the Copyright Act of 1976 took
effect. If the work was created but not published prior to 1978, its
copyright duration is calculated as if it had been created on January 1,
1978, and lasts as long as that calculation specifies, or through 2002,
whichever is later." Copyright 1994 Terry Carroll

I believe the misconception that you have to "do something" to "get"
copyright persists because the US didn't become a party to the Berne
Convention until 1989 (Canada has been a party since 1928). Prior to that,
the US only belonged to the UCC, and that treaty requires notice with the
© symbol in order for copyright to be secured, e.g. © 1946 Madeleine
L'Engle or Copyright 1932 The New York Times. If you didn't place a
copyright notice on all copies of your work, you risked losing your
copyright! By Theryn Fleming (Beaver)

And, based on UK copywrite law:

"Who owns a piece of work

Normally the individual or collective who authored the work will
exclusively own the work. However, if a work is produced as part of
employment then it will normally belong to the person/company who hired
the individual.

Freelance or commissioned work will usually belong to the author of the
work, unless there is an agreement to the contrary, (i.e. in a contract
for service).

Rights cannot be claimed for any part of a work which is a copy taken from
a previous work. For example, in a piece of music featuring samples from a
previous work, the copyright of the samples would still remain with the
original author.

Only the owner, or his exclusive licensee can bring proceedings in the
courts."

 

[SithLord]

Part III...

If AA is the author of the original molds, then, based on the Berne
Convention, "an author's rights are respected in another country as though
the author were a national (citizen) of that country (Art. 5(1))". Since
UK law required a contract by LFL, and there was none, the rights would
belong to AA.

Also, "rights cannot be claimed for any part of a work which is a copy
taken from a previous work." Therefore, TE and GF have no rights to their
copied armor pieces regardless of what they did to modify them.

So even IF LFL has Reg. Cert. No. GU 59-037 (1975) and IF the Mcquarrie
sketches or paintings were published and IF they were submitted to the
Library of Congress, AA still has the rights to the work based on UK Law
and the Berne Convention which the USA is signatory to. I checked the
Library of Congress and could not find the sketches or paintings.

Also:

"Under the United States' copyright law, new works created using existing
works are referred to as “derivative works.” The United States copyright
law requires creativity in order to obtain copyright protection. In the
United States mere skill and labour, without a minimal degree of
creativity, is not sufficient to attract copyright protection."

If the stormtrooper molds required more than mere skill and labor to
create then they would not be derivative works.

"In 1989 the United States Supreme Court resolved much of the confusion
surrounding the issue of who was an "employee" and who was an "independent
contractor."" "…if the creator of the work is not an employee, but instead
a freelancer, than the "work made for hire" requirements of the
independent contractor prong must be satisfied. This means that the work
must be specially ordered or commissioned by the publisher, the work must
fall into one of the nine enumerated categories of work, and there must be
a signed writing between the parties where they agree that the work will
be considered a "work made for hire."
"A freelancer's creative work in order to qualify as a "work made for
hire" must satisfy the exact requirements of the Copyright Act. (1) The
work must have been specially ordered or commissioned by the publisher.
(2) The work must "fit" into one of nine narrow statutorily enumerated
categories of work: (i) contribution to a collective work, (ii) part of a
motion picture or other audiovisual work, (iii) translation, (iv)
supplementary work (i.e., prepared for publication as a secondary adjunct
to another author's work such as an index or forward), (v) compilation,
(vi) instructional text, (vii) test, (viii) answer material for a test, or
(ix) atlas. (3) The parties must agree in a written and signed document
that the work shall be considered a "work made for hire." In addition,
although it is not stated in the Copyright Act, the "work made for hire"
document must be signed by both parties prior to the commencement of the
work. If the publisher fails to satisfy any of these requirements the work
will not qualify as a "work made for hire" and the publisher could lose
copyright ownership of the work."
© Copyright 1995 Lloyd L. Rich

For statutory protection on such a work to be secured under the old Act,
it still had to be published (in the traditional sense) with notice. SINCE
THE SKETCHES WERE UNPUBLISHED THEY FELL UNDER STATE LAW AT THE TIME. It
wasn't until they appeared in the Art of Star Wars that they became
published and fell under the new 1976(78 ) law or became published
material which was then re-registered.
Since they were under state law, AA would not be subject to state law.
Also any copies he received for reference would have to have the copyright
mark on them along with the name and year of creation for them to be valid
copies. The burden of proof would be on LFL to prove they gave AA such
copies.

"Under the United States' copyright law, new works created using existing
works are referred to as “derivative works.” The United States copyright
law requires creativity in order to obtain copyright protection. In the
United States mere skill and labour, without a minimal degree of
creativity, is not sufficient to attract copyright protection."

Ralph McQuarrie himself was not happy with the stormtrooper design. From
Star Wars Insider #76, page 54: "I liked my refinded drawing of the
stormtrooer's helmet, and it's somewhat grotesque in the film. The people
who made the costumes took my helmet, hyped up certain aspects, and made
sort of a cartoon of it."
Ralph McQuarrie in an interview quoted George Lucas as saying (regarding
McQuarries paintings): "This is not the final thing, this is just giving
them what we think is the general impression that we can come up with in a
reasonable time that's going to work for anything and it's not going to be
the final thing in the film. We are going to hire costume designers, we
are going to hire production designers, and so forth." Plus, C3PO was
clearly derivative of the Metropolis robot.

(1909 Copyright Act)
"Foreign Copyright.—Americans, to obtain a copyright in Great Britain,
must have title entered at Stationer's Hall, London, the fee for which is
five shillings sterling, and five shillings additional if a certified copy
of entry is required.
The work must be published in Great Britain or in her dominions
simultaneously with its publication in the United States, and five copies
of the publication are required, one for the British Museum and four on
demand of the Company of Stationers for four other libraries."

So even if AA saw the paintings with the copyright symbol on them, unless
LFL copyright AA's work in the UK while they were there, they cannot claim
it as their own. Also, take out your paintings of McQuarrie...the ones
from 1977. They are copyright 1977. Where are they in the Library of
Congress? Why are they not copyright 1975?


To reiterate....


AA's rights have nothing to do with LFL copyright of those TK
sketches. Because those sketches were copyright 1979 and the paintings
were not published until 1977. Nor do they appear to be in the Library of
Congress as copyright 1975. And even if they were submitted to the Library
of Congress, they represent the final movie suit no more than C3PO
represents the Metropolis robot. Because the suit has to be molded to a
man, of course there will have to be some similarity, but that cannot be
used as an argument for derivation in this case. And based on UK law, AA
is the author of the work if there is no contract releasing rights from
him, and based on the international treaty, LFL has to respect those
rights.

 

[SithLord]

I also posted this many moons ago...

 

[exoray]

Before January 1, 1978, a work had to be published to be copyrighted.

This is simply a false statement... I have no idea how you came up with it, but it's false, making your whole argument void for the most part...

Right from the official copyright site... http://www.copyright.gov/circs/circ1.html

Works Copyrighted before January 1, 1978

Under the law in effect before 1978, copyright was secured either on the date a work was published with notice of copyright or on the date of registration if the work was registered in unpublished form.

Federal copyright could also be secured before 1978 by the act of registration in the case of certain unpublished works and works eligible for ad interim copyright.

Also any copies he received for reference would have to have the copyright
mark on them along with the name and year of creation for them to be valid
copies.

Again a false statement...

Again from the horse's mouth... http://www.copyright.gov/circs/circ22.html

Works First Published Before 1978: the Copyright Notice
...
...
...
...


Unpublished Works · No notice of copyright was required on the copies of any unpublished work. The concept of “publication” is very technical, and it was possible for a number of copies lacking a copyright notice to be reproduced and distributed without affecting copyright protection.

 

[DARKSIDE72]

I also posted this many moons ago...

What the **** does this prove? :rolleyes

It was the Mcquarrie pre production paintings that were used to SELL Star Wars to the studios.

Here is the Stormtrooper basic final design...

 

[Star Wars Helmets]

This case is really confusing me!

I cant understand why LFL's Barristers are interested in the similarities between McQuarrie's Stormtrooper paintings and AA's final designs, when IMO they key point is WHO produced the clay sculpt (photo'd at Elstree with GL, apparently Jan 76) that the final design was clearly heavily based on.

The only reasons I can think they might be doing this are:

(1) LFL still doesnt know who sculpted the clay sculpt,
(2) They know who did it but cant prove it was one of "their" people (difficult to believe)
(3) Nick Pemberton sculpted it

If the answer is 3 then I'm wondering if NP (like AA) was also not contracted to LFL and therefore they need to go back to the McQuarrie drawings as the only evidence that they own the likeness.

Cheers

Jez

 

[defstartrooper]

4) Unable to prove date of photograph
5) Don't exist

 

[CustomCreations]

A question to the lawyer types- is there a legal thing where if you change a design with three (?) major points, then that design is 'yours' .I wondered if this would mean that if AA had to change 3 (?) points of design to suit the needs of making the design work with his construction techniques, maybe this qualifies as the design being 'his' ?.
.or I could be talking rubbish, sorry!:confused

One thing I would like to ask is a potential scenario over the blasters and lightsabres that could rise from the case.
These must have been created by people (babty etc?) using found objects etc, so therefore, no 'designs' as such could really exist, as the final look was down to the prop builder, rather then McQuarrie etc.
SO, the lightsabre is fundamentally a Graflex Flash Holder, and the blaster a Sterling. All with little bits stuck on.:rolleyes
I wonder if Lucas had rights to reproduce these items- producing copies of the graflex and the sterling- over the last 30 odd years, as he can't claim to own the look of something when 90% of the look is 'owned' by another company?, and the remaining 10% added by a prop maker ?.
Just thought it was an interesting thought ?

 

[Star Wars Helmets]

4) Unable to prove date of photograph
5) Don't exist

Well LFL knows it exists as its in the photo. I agree it might be hard to prove the date (although George does look very much like in those Tunisia shots - however its not like his look has changed that much :lol).

Apparently, the clay sculpt photos were from hundreds taken by Gary Kurtz during pre-pro at Borehamwood - man I'd love to get my hands on that photo archive! So imo its still 1, 2 or 3

Good points CustomCreations. Maybe AA's lawyers argument is based on the work he did turning the clay sculpts into the final design provides him with some ownership, with part ownersip to the sculptor (whoever that is) as well as LFL for the McQuarrie paintings.

Given the original design was a one-piece construction - most likely intended for fabrication in fiberglass - imo that would suggest that AA added the ears and brow trim (to cover the gaps). However it doesnt sound like much.

Cheers

Jez

 

[clayslinger]

A question to the lawyer types- is there a legal thing where if you change a design with three (?) major points, then that design is 'yours' .I wondered if this would mean that if AA had to change 3 (?) points of design to suit the needs of making the design work with his construction techniques, maybe this qualifies as the design being 'his' ?.
.or I could be talking rubbish, sorry!:confused

One thing I would like to ask is a potential scenario over the blasters and lightsabres that could rise from the case.
These must have been created by people (babty etc?) using found objects etc, so therefore, no 'designs' as such could really exist, as the final look was down to the prop builder, rather then McQuarrie etc.
SO, the lightsabre is fundamentally a Graflex Flash Holder, and the blaster a Sterling. All with little bits stuck on.:rolleyes
I wonder if Lucas had rights to reproduce these items- producing copies of the graflex and the sterling- over the last 30 odd years, as he can't claim to own the look of something when 90% of the look is 'owned' by another company?, and the remaining 10% added by a prop maker ?.
Just thought it was an interesting thought ?

This is my thinking as well.
At the time ,AA was the vacu-form expert and the plugs had to be designed to work with that method.
I'm thinking that since he knew what would pull without hanging up in the mold,it in his perspective, became an industrial design of his.
From my own experience at an audio-animatronics house, even forms made by other people were modified to remove undercuts and processing of parts.

Just a small part of the issue but as a maker of things myself,not TOTALLY unreasonable from his point of view.

Artists also have a VERY limited copyright on pieces even if it's a work for hire. Contracts go both ways. If a client failed to pay or used your work without your permission or payment,an artist could argue that the contract was void and hit back with a C&D of his own.
He'd never work with that client ( or possibly in the industry) again,but it's possible......I learned this after Disney recast sculptures of mine made for another client!

I've got to say ,I hope he can pull it off.
Chuck...

 

[Mr. No Stripes]

What the **** does this prove? :rolleyes

It was the Mcquarrie pre production paintings that were used to SELL Star Wars to the studios.

Here is the Stormtrooper basic final design...

may I point out that Ralph McQuarie is AWESOME! :thumbsup

 

[Kuhn Global]

The Crowd Draw INDEED!!!

Wow... this case is ever the attention draw, eh?

I am looking forward to it's final conclusion. I am not certain any of us are going to be satisfied by what happens here, but at least there will be a final, legal decision.