The claimants had made several Star Wars films for which the defendants had designed various props items. The parties disputed ownership of the rights in the designs, and in articular of a stormtrooper helmet. The issues came down to whether the defendant had rights to reproduce images under sections 51 and 52. The claimants appealed against findings that the prototypes were not sculptures.
Held: The appeal failed. The models at issue were mass produced plastic toys, and did not fall within the meaning of sculpture in the 1986 Act. The court recounted the history of copyright protection of works of sculpture.
Jacob LJ said: ‘one gets little or no real assistance from the relationship between copyright and registered design right in determining the limits of protection which the use of the word ‘sculpture’ was intended to have . . If one concentrates on the position under the 1949 Act the definition of ‘design’ emphasises that registered designs are intended to protect features of an industrial article which have eye appeal and not merely functional aspects of the design. Features of shape and configuration can be included in the former.
The US copyright judgment obtained between the parties was not enforcable here, since copyright remains in practice a local law. The rule in British South Africa extended beyond real property claims, to claims for infringement of foreign intellectual property rights, including copyright, irrespective of whether issues of title or validity were involved; and irrespective of whether the rights required registration (such as trade marks or registered designs) or not.
Rix, Jacob, Patten LJJ
 EWCA Civ 1328, Times 04-Jan-2010,  Ch 503,  FSR 270,  EMLR 301,  3 All ER 329,  3 WLR 333,  IP and T 391,  All ER (D) 166, (2010) 33(4) IPD 33021,  EMLR 12,  ECDR 6
Copyright Designs and Patents Act 1988 4 51 52
England and Wales
Cited – Usher v Barlow CA 1952
A wall plaque was published before 1950. Its design was an original artistic work but was produced for the purpose of reproduction by an industrial process. It was not registered as an industrial design under the applicable designs legislation . .
Cited – Caproni v Alberti 1891
The defendant copied three casts made by the plaintiff of various arrangements of fruit and leaves. His defence was that the 1814 Act did not refer to casts of flowers, leaves or fruit and that such casts did not fall within the words ‘any subject . .
Cited – Clarke’s Registered Design CA 1896
Lindley LJ said: ‘The Act is confined to designs applicable to manufactured articles, and to the application of designs to such articles. Again, the Act does not apply to the things to which design is applied; the Act applies to the design applied . .
Cited – Britain v Hanks Bros and Co 1902
The plaintiff claimed copyright in a model soldier cast in metal as a statue. The defendant argued that the statute was intended to apply only to substantial works of art, such as busts, large sculptures and casts of copies of works recognised as . .
Cited – King Features Syndicate Inc v O and M Kleeman Ltd HL 1941
The owners of copyright in drawings of ‘Popeye, the Sailor’ sued importers of ‘Popeye’ dolls and other toys. The defendants contended that the copyright in the original work had been lost by the operation of section 22 of the 1911 Act because the . .
Appeal from – Lucasfilm Ltd and others v Ainsworth and Another ChD 31-Jul-2008
The parties disputed ownership of the designs for various props used in the Star Wars films. The defendant had developed designs from ideas originating within the claimant’s companies.
Held: The judgment from the US in a similar claim was . .
Cited – Pytram v Models (Leicester) Ltd ChD 1930
A model of a wolf-cub’s head was produced from a papier-mache mould in order to be used as a totem by the Boy Scouts Association. They had failed to register it as a design under the 1907 Act and sued for infringement of their copyright under the . .
Cited – Singh v Singh CA 1-Feb-1971
The wife appealed against refusal of her petition for agility and for the absence of consent. It had been an arranged marriage, and she met H at the altar. She found him repugnant, and refused to consummate the marriage.
Held: Her appeal . .
Cited – Wham-O Manufacturing Co v Lincoln Industries Ltd 1984
(Court of Appeal New Zealand) The wooden models made from preliminary drawings, which was used to produce a mould from which moulded discs known as Frisbees were made, fell ‘within the definition of sculptures and are thus properly the subject of . .
Cited – Davis (J and S) Holdings v Wright Health Group ChD 1988
The parties disputed the status in intellectual property law of a model of a dental impression tray. A cast was prepared from the model, and a final form prepared from the cast. The author, a professor, made a mock-up of materials but then drew from . .
Cited – British South Africa Company v Companhia de Mocambique HL 1893
Two companies, one Portuguese, the other British and controlled by Cecil Rhodes, were in dispute about a large territory called Manica. The Portuguese company complained that they owned lands and mineral rights in Manica yet the British company had . .
Appeal from – Lucasfilm Ltd and Others v Ainsworth and Another SC 27-Jul-2011
The claimant had produced the Star War films which made use of props, in particular a ‘Stormtrooper’ helmet designed by the defendant. The defendant had then himself distributed models of the designs he had created. The appellant obtained judgment . .
Lists of cited by and citing cases may be incomplete.
Updated: 11 November 2021; Ref: scu.384149