We all recognize them.  A faceless mask embodying the legion of evil in a galaxy far far away.  Evil, elite and invincible?  Almost.  The Imperial Stormtrooper may be the epitome of might on the silver screen, but that armor matters not against the power of wigs and black capes.  Read on:

A prop designer, who made the original Stormtrooper helmets for the 1977 Star Wars movie, has won his battle with director George Lucas over his right to sell replicas in the United Kingdom.  Lucasfilm argued that the prop designer was breaching Lucasfilm’s copyright.  In 2004, Lucasfilm successfully sued for $20m in the US, arguing the prop designer did not hold the intellectual property rights and had no right to sell them.  It appears from the US proceedings, no formal agreement was ever signed between the prop designer and Lucasfilm.

The US judgment could not be enforced against the prop designer, so the battle moved to the UK, where the situation was not so straightforward:  As the mighty stormtrooper discovered, failure to appreciate the differences in the legal systems of the two countries can have disastrous consequences for the copyright holder.

The prop designer successfully argued the costumes were functional, not artistic works, and so not subject to full copyright laws.  “Art is like a Rodin sculpture, film production is an industry and that’s what these products are, they were always industrial designs.”  The highest court in the United Kingdom agreed, ruling that the 3D works should not be considered sculptures.  This meant their copyright protection was 15 years from the date they were marketed, and had therefore expired.  The prop designer was therefore free to sell the replicas in the UK, for up to £1,800 each.

So, how could you prevent your evil legion from being subverted for nefarious purposes such as Halloween costumes?  Remember that no formal agreement was ever signed between the prop designer and Lucasfilm?  That was a “grievous” oversight:  A simple contract, assigning all rights to Lucasfilm, with a clause precluding the use of the moulds, in hindsight, could have prevented the prop designer from subverting the evil legion for his own purposes.  Work made for hire agreements, young Padawan.

In our next episode, we will explore the interplay of functionality and design:  Episode II – The Functional Menace.

Do you have questions about how to protect things you’ve created?  Perhaps The McHattie Law Firm can be of service.

(Paul Burnett)