Lucasfilm Ltd & Ors v Ainsworth & Anor, Court of Appeal - Chancery Division, July 31, 2008, [2008] EWHC 1878 (Ch),[2008] ECDR 17,[2009] FSR 2

Resolution Date:July 31, 2008
Issuing Organization:Chancery Division
Actores:Lucasfilm Ltd & Ors v Ainsworth & Anor
 
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Neutral Citation Number: [2008] EWHC 1878 (Ch)

Case No: HC06C03813

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

INTELLECTUAL PROPERTY

Royal Courts of Justice

Strand, London, WC2A 2LL

Date: 31/07/2008

Before :

MR JUSTICE MANN

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Between :

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MR. M. BLOCH Q.C. and MR. A. BRYSON (instructed by Harbottle & Lewis LLP) for the Claimants.

MR. A. WILSON Q.C. and MR. G. HAMER (instructed by SimmonsCooperAndrew LLP) for the Defendants.

Hearing dates: 8th, 9th, 10th, 11th, 14th, 15th, 16th, 17th, 18th, 21st, 22nd, 24th, 25th, 29th, 30th April and 1st and 2nd May 2008

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JudgmentMr Justice Mann :

Introduction

  1. This is a case about the reproduction of replicas of various props used in the first Star Wars film. The Star Wars films are a series of science fiction films set at some different time and in another part of the Universe, and which feature the struggle between good and evil. They contain a heavy militaristic element, and that in turn requires uniforms. This case concerns the production of uniforms for the first of the films in the series, which is known as ``Star Wars IV - A New Hope'' and which was first shown in 1977. It bears the number IV, even though it was the first in the series to be produced, so as to leave room for expansion backwards in time, as it were, or ``prequels''. I shall simply call it ``Star Wars'', or ``the film''. The second claimant was the English production company for the film; all the claimant companies are, taken together, the producing or licensing companies, and it is accepted that between them they have the necessary rights (if anyone has) to bring the claims made in this action.

    It is therefore largely unnecessary to distinguish between them; I can call them corporately ``Lucas''.

  2. One of the most abiding images in the film was that of the Imperial Stormtroopers. These were soldiers clad in white armour, including a white helmet which left no part of the face uncovered. The second defendant (Mr Ainsworth) made that armour for the film in vacuum-moulded plastic. He has recently started selling versions to members of the public, both in the form of a complete set and the helmet alone. That is said to infringe the copyright of the claimants. He also sells replicas of other helmets. These again are said to infringe. He is able to make these things because he made the originals for the film, and has kept the tools or moulds on which they are made. This action seeks to enforce the intellectual property rights of the claimants. It is based on copyright infringement and passing off. There is also a contractual claim, allied to a claim based in confidence. They all seek essentially the same thing in relation to all the helmets and armour. In addition there was, until its abandonment at the trial, a trade mark claim in relation to one of the adornments of two of the helmets. There are two more limbs in relation to US-centred activities. First, there is a claim to enforce a Californian default judgment which the first claimant obtained against Mr Ainsworth, and second (as an alternative) there is a claim to enforce an American copyright claim itself. At the trial Mr Michael Bloch QC led for the claimants; Mr Alastair Wilson QC led for the defendants.

    Claimants' witnesses

  3. I heard from the following witnesses on behalf of the claimant.

    Mr Norman Reynolds

  4. At the relevant time he was an Art Director engaged to work on the film. He gave some general evidence about the process of creating some of the relevant parts of armour and headgear, and in particular the Stormtrooper helmet. His recollection of the matters that he could recollect was, in my view, generally reliable. He was a careful witness.

    Mr Brian Muir

  5. Mr Muir is a sculptor and described how he contributed to the making of the armour for the Stormtrooper. He is plainly a skilled man, and has a good general recollection of the events at the time. He has been in the film industry since 1968 and was able to bring considerable experience to bear. His job, in relation to the armour, was to create a clay version on a model of an average size actor, and then to carve or sculpt a plaster version of the armour which was taken from that. Further details of this process are given below in the narrative of fact. I was able to accept his evidence, including important evidence of timing.

    Mr Roffman

  6. Mr Roffman is a vice-president of the first claimant, and is in charge of the licensing of Lucas products. He gave some uncontested evidence about the significance of licensing, and a small amount of uncontested detail about licensees. He was, however, cross-examined at some length about his honesty, because the defendants were alleging that he gave some dishonest evidence in the application on which the US default judgment was based. He gave his evidence very carefully, as one would expect of someone in his position accused of dishonesty (an accusation which, if true, could have attracted criminal sanctions in the US). This allegation was unreservedly abandoned after some 2½ hours of cross-examination, and in my view rightly so. He stands entirely acquitted of dishonesty. His evidence can be accepted.

    Mr Mollo

  7. Mr John Mollo was in charge of the costume department for the film. He was responsible for detailed costume design and ended up having dealings with Mr Ainsworth over the design and procurement of the armour and helmets, and gave evidence of those dealings. He had a particular expertise in military uniforms, which is one of the reasons that he was hired. His evidence is important because it is the foundation of a large part of the genesis of the actual designs relied on by the claimants. He is clearly a skilled designer with a great eye for meticulous detail. Unfortunately his oral evidence did not demonstrate the same care. While he was plainly a witness who came to tell the truth, and to be straightforward, he was also an unfocussed and sometimes careless one. His demeanour demonstrated that often he did not concentrate fully on the question, and would often carelessly respond with a ``Yes'' which his demeanour suggested might be merely an indication of his understanding of the matter being referred to in the question or suggestion rather than an intended affirmation of the substance of the question. When combined with a cross-examination that was sometimes less than focussed, it means that his evidence has to be approached with some care - not, I stress again, because he was an untruthful one, but because he sometimes lacked care.

    Mr Gary Kurtz

  8. He has many years in the film industry and was the producer on the film (and the next one in the series as well). He gave careful albeit limited evidence of the background to the production and his involvement in it, and in particular how it moved from the conception in the mind of Mr Lucas, through sketches and into production. He described his understanding of how Mr Ainsworth came to be involved. He gave his evidence in a careful and measured fashion, and in the main I can rely on what he said, though he did give some evidence about Mr Mollo's detailed involvement which did not coincide with Mr Mollo's.

    Mr John Richardson

  9. He was called to give evidence as to the genesis of a particular clay model of the Stormtrooper helmet. His witness statement deposed to its having been made by a Liz Moore. From an undisputed photograph it appeared that the model was made in red, and not grey, clay. In cross-examination he said that she worked only in grey clay. As a result of his evidence the claimants abandoned their contention that she had made the model. As a result I need say no more about his evidence.

    Professor Peter Menell

  10. He was called to give expert evidence on US intellectual property law so far as relevant to the attempts in this case to enforce infringements of that law in this jurisdiction. His written evidence was extremely thorough; it was like reading a large section of a basic textbook with copious citations. I am satisfied that he was a reliable witness who gave his honest opinions in compliance with English requirements applying to experts.

    Professor Roger Fenner

  11. He was called to give rebuttal evidence as to the materials used in certain helmets. In the end his evidence was not controverted and did not go to as central issue in the case. I do not need to say anything more about him.

    Written evidence

  12. The claimants also put in evidence from Mr Ralph McQuarrie, who made important early drawings and paintings. He lives in California and his written evidence was submitted unchallenged under the Civil Evidence Act because he is too elderly and physically unable to travel to London. The written evidence of Mr Alex Tavoularis was also admitted under that Act. He drew some story boards for the development of the film's ideas, some of which contained characters and designs relevant to this case. His evidence was, however, relatively peripheral to the issues in the case.

  13. Witness statements were provided by four other witnesses, who were not called for cross-examination. They were:

    (i) Mr Mark Owen, a solicitor from Messrs Harbottle & Lewis, who provided evidence relating to the US proceedings.

    (ii) A Mr Stephen Sansweet, who provided peripheral evidence as to whether the disputed helmets were ever manufactured in the UK (other than by Mr Ainsworth)

    (iii) A Mr Peter Anderson, a Californian attorney who gave evidence about the availability of set-off in California. This was only ever relevant to an application for security for costs made by Mr Ainsworth shortly before the trial, and which was made again at the trial. It was dealt with without any need for me to make a ruling.

    (iv) Mr David Anderman, who gave formal evidence as to the current...

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