Imperial Storm Troopers Skirmish in Latest IP Battle

fm6 writes "According to guardian.co.uk, George Lucas is suing the designer of the Imperial Stormtrooper armor. Andrew Ainsworth took the original molds he used to make the props for the movies, and has been using them to make outfits that sell for up to £1,800 (US$3,600) apiece. Ainsworth has countersued for a share of the $12 billion that Star Wars merchandise has generated since the first movie."

Comments

Ungrateful Lucas?

[Izabael_DaJinn]

Lucas Licensing called the prop designer a "fan" even though he created the Stormtroopers!

A spokesman for Lucas Licensing said: "We would never want to discourage fans from showcasing their enthusiasm for the movies. However, anyone who tried to profit from using our copyrights and trademarks without authorisation ... we will go after them."

This guy made one of the really cool things about Star Wars!! We all see the sort of nonsense Lucas came up with without this guy :-( Nothing in the newer 3 movies was there anything as memorable as Stormtroopers. Am I wrong??

TFA doesn't really say anything about the details of the original contract, but it seems ridiculous for someone with the money of God to come after a little guy who did so much to make his movies distinctive.

Re:Ungrateful Lucas?

[King_TJ]

I thought it was pretty blatantly obvious by now that George Lucas is out to milk the Star Wars franchise for every dollar he can squeeze from it. This sort of thing would be par for the course, coming from him.

To an extent, that's not even necessarily a "bad thing". One of the moves Lucas made in the beginning which he's often admired/noted for was his shrewdness in securing the rights to royalties on all the toys and products (which Hollywood thought was worthless).

I think the information we're lacking here is the legal contract made between him and the set designer.... If it's clear that Lucas didn't allow the guy to go off and make money duplicating Stormtrooper outfits, then Lucas is in the right to sue him. Otherwise, I'd say he deserves to lose this case.

Re:Ungrateful Lucas?

[Dun Malg]

I think that holders of copyrights and trademarks are obligated to protect them or else risk losing the copyright or trademark. trademark, yes. copyright, no.

Re:Ungrateful Lucas?

[dougmc]

I'm not sure it's quite that cut and dried.

If I ask you to design some futuristic looking armor for some soldiers, and you do so without much more input from me beyond `I like it!', then you'd own the copyright on that. If we both worked on it equally, we'd probably both own the copyright.

If I paid you to design and make the design for the armor, then the contract would probably say who owned the copyright. If there's no written contract, then there's probably some law (`work for hire') that covers the situation, but I'm not so sure about that.

In this case, I would have expected that Lucas paid to have the design made, and there was probably a written contract and it probably assigned complete ownership of the final work (including the copyrights) to Lucas. But perhaps Lucas didn't fully lawyer up and there's some holes in this theory ...

Re:Ungrateful Lucas?

[Kierthos]

Unless I did it as part of a "work for hire" agreement. If he (Ainsworth) did the work under such an agreement, then he doesn't own the copyright (or any creation rights) on the armor he originally created for Lucas.

Re:Ungrateful Lucas?

[ecavalli]

Sigh.

This is what I get for learning due diligence from /.

Since the guy was the one who originally created the armor for the films, it all depends on what the original contract said. If it isnt specifically stated that Lucas owns the design of the whole thing, I think the guy does deserve a bit of the royalties, at least as far as they relate to the actual Stormtrooper armor.

That said, I'd be surprised if Lucas wasn't clever enough even then to write in bits of the contract that state that he owns the whole thing.

I'd be shocked if this actually goes anywhere.

Re:Ungrateful Lucas?

[Saint Fnordius]

That's the problem right there. The designer as artist also has unalienable rights, and most likely he signed a boilerplate contract selling Lucas' production company the suits without addressing the issue of derivative designs or casting new suits. Such a thing was probably not even considered a possibility all those thirty-odd years ago.

The article states that a California court already ruled in favour of Mr. Lucas, but that ruling doesn't apply since Mr. Ainsworth is a Briton and most likely signed his contract under British law. That suggests to me that there may be some merit to the claim, possibly hinging on Ralph McQuarrie's concept design drawings/paintings, but Mr. Ainsworth is also a designer, and I think he could successfully argue that his designs are a derivative but separate artwork, and his counter-suit could have merit.

I think the real reason for Mr. Lucas' suit is as a warning shot to all of those prop designers who worked for the original Star Wars movies, in an attempt to maintain total control over his merchandising empire. It's not about the money, but keeping control, and I personally feel that it's a very selfish act.

Re:Ungrateful Lucas?

[wild_berry]

If these were commissioned, designed and made in the UK, then there's no inherent rights remaining. The UK (and Europe) have a maximum of 25 years on Registered industrial design rights, and either 15 years (GB) or 3 (EU) for unregistered design rights. There's the possibility that the designer is riding the shirt tails of the Star Wars phenomenon and is therefore an unlicensed user of its trade mark. But without branding (like "Star Wars(TM) Storm Trooper(TM) Suit!" -- with notes that "Star Wars" and "Storm Trooper" are trademarks of their respective owners) there's nothing to stop him using the public domain property.

Such a thing was probably not even considered a possibility all those thirty-odd years ago.

Yes, it was. Trade mark law in the UK is more than a century old; UK has had a Registered Designs Act since 1949 which moves industrial use of copyrighted work from the life + 50 years (as was) of Copyright to a maximum of 25 years when registered with the UK Patent Office.

I am not a patent or trade mark attorney and this is not legal advice.

Re:Ungrateful Lucas?

[Moryath]

As opposed to the US, where every time copyrighted anything comes close to hitting public domain, Dizney sends a bunch of hookers to the congressional offices to "lobby" for an "extension."

Re:Ungrateful Lucas?

[quanticle]

The way a foundation works is by donating the the interest, not the principal. Therefore, it makes sense that the Bill and Melinda Gates Foundation will only be donating a small portion of its total assets, since the principal will not be touched.

Why pay 3600$ fo this...

[Datamonstar]

when you can just use a RepRap?

Cue obligatory...

[Mongoose Disciple]

I am altering the deal. Pray I don't alter it any further.

In other news...

[Anonymous Coward]

Kaiser Wilhelm II is suing them both for use of the term "Stormtrooper".

Re:Biter bitten

[TooMuchToDo]

RTFA: A california court ruled in favor or Lucasfilms, but since the designer lives in the UK, Lucasfilms has to sue there. Good luck getting a UK court to go along with the same tort bullshit the US passes off as civil law/justice.

Whats in the contract?

[mckinnsb]

If the contract signs over all work to Lucas Film, this guy may be in a bit of a bind. If it doesn't, Lucas Film is in a bind.

I bet you two different contracts are presented.

Logical mode off: Its a goddamn Storm Trooper Costume! He was making them for 3k! You make millions of dollars! Go home!

Re:Biter bitten

[belmolis]

That's a bit too cynical. We don't have all the information here. If Lucas went hired Ainsworth and told him what he wanted and Ainsworth developed the detailed design and the molds, then the basic idea was Lucas's and the design was a work for hire, the rights to which belong to Lucas. It's just like when an engineer designs a chip for Intel - the design belongs to Intel, not the engineer.

It is possible that the arrangment was different, e.g. that the designer came up with the design and offered it to Lucas, in which case the rights would depend on what sort of contract they entered into (that is, whether Ainsworth merely licensed Lucas to use the design or whether he sold the rights outright), but the fact that a court has already ruled in Lucas' favor suggests a scenario like the one above. If so, it isn't a case of the courts screwing the little guy - it is a standard case of work for hire.

Re:How much

[$RANDOMLUSER]

does it cost to get a girl with a suit like this: http://webzoom.freewebs.com/basementnightclub/Stormtrooper%20Bride.jpg

$4,300.00 at last quote.

Re:He was hired to do a job

[Dun Malg]

He was hired to do a job. The particularities of employment contracts vary. Unless you are privy to the specifics of the agreement, you, an uninformed goof on Slashdot, aren't really in any position to say.

Re:He was hired to do a job

[Anonymous Coward]

By default independent contractors under English law own their work. Assuming this guy was contracted rather than employed, unless otherwise specified by a contract he owns copyright.

If, as the article says, Lucas bought the helmets by the unit already manufactured that would imply that the guy was an independent contractor. If the guy was an employee he would have been paid at a flat rate and it would have been irrelevant to him home many Lucas then had manufactured. If you buy a dozen prints of an artist's work that doesn't mean you own the original.

Re:Biter bitten

[whoever57]

I'm guessing Lucas screwed this guy in the original contract,

According to the UK Daily Telegraph there was no contract:

Mr Lucas, who wrote the screenplay and directed the 1977 film, is understood to have hired Mr Ainsworth through intermediaries in 1976, but it is claimed no formal contract was put in place. The designer received just £30,000 for his work.

I wonder if the award in the US was a default judgment?

Re:Biter bitten

[Duhavid]

So, let me make sure I have this straight....

The Imperial Stormtrooper armour is *not* suing the designer of George Lucas?

I'm waiting...

[sootman]

... for the Special Edition lawsuit, where Andrew sues first.

That's an interesting business model

[caitsith01]

So you do work creating IP for people and then refuse to give them the rights to the IP that you create? Let me know how that works out for you.

I think you will find that the majority of companies who get design work done by independent contractors would have watertight agreements transferring all of the relevant intellectual property to them, for obvious reasons, i.e., that people like you can't then attempt to weasel around their rights with dubious contractual terms and thereby hold them hostage.

Honestly, I am generally all in favour of limiting the IP rights of companies, but when you do work for a business creating IP and then try to suggest that it's somehow reasonable and equitable that you retain the rights to all of the "original art work" that goes into it then you are being borderline dishonest. Certainly it's reasonable for you to retain IP you create which is not specific to that job; but it would be entirely unreasonable to refuse to relinquish the rights to the 99% finished "work in progress" version of a website, for instance.

The Windows example is silly, because Windows is not uniquely crafted to each user's requirements (if only), it is a generic piece of IP that is licensed and relicensed.

Re:That's an interesting business model

[lakeland]

It seems to be that way where I work.

We contract companies to write software for us, but then they retain full ownership of that software.

It means we often don't get to see the source code, and even if we do, we are not permitted to modify it or to get any other company to extend the software, etc.

I have to admit, I find it foolish to enter into such agreements. When I pay for work I expect to receive IP, but such situations clearly do exist. Other people must just not care so much...

why?

[blakecraw]

The design wasn't even any good. One blaster shot and they're finshed!

Correct!

[Anonymous Coward]

> trademark, yes. copyright, no.

You are correct in saying that you have to defend a trademark but do NOT have to defend a copyright, so I'll add on to that. IANAL, but unless there was a copyright assignment with a 'written memorandum of transfer' (I learned that one from SCO v. Novell; copyright law being federal, it applies to the whole USA), THE COSTUME MAKERS own whatever copyright there could be on the costume. Though I assume that Lucas owns the trademark. True, it could be a 'work for hire', but I think that only applies to individuals working for some company (and it would probably have to be spelled out), so I don't know.

I should also mention that while trademarks have to be defended, you are NOT required by law to be a dick when defending them (even if it seems that way). I think it was Second Life where they sent the "Get a First Life!" people a "Permit & Proceed" letter that let them know they were *okay* with using the trademark.

Lucas? Sounds like he believes he deserves all the money from anything related in any way to Star Wars, even if he did absolutely none of the work in creating it, simply because he came up with Star Wars to begin with.

So yeah, I'm not really going to take either side here, but I just want to say that if they had any sense, they'd come up with some kind of arrangement that doesn't involve suing each other, or there won't be any money left to fight over.

Re:Correct!

[electrictroy]

IMHO

George Lucas showed unusual intelligence when he asked FOX Studios for the rights to the merchandise. Prior to 1976, virtually no other filmmakers did that, because it was believed by both directors and studios that "toys" were worthless, and the real money was in the film.

FOX was more than happy to sign that contract, because they thought Lucas was a fool. Well Lucas turned-out to be smarter than everybody else. And the fact that Andrew Ainsworth in 1976 failed to request payment for post-movie merchandishing is HIS OWN FAULT, and he has no one to blame but himself.

George Lucas' contract with Fox gives him the right to make money off the merchandise.

Andrew Ainsworth's contract does not; he could have requested a share, but he chose not to. His own dumb fault.

He's a lawsuit-crazy bastard...

[Vthornheart]

This isn't the first frivolous lawsuit he's done lately. He tried to sue the pants off of this warehouse company a year ago or so because he kept his storage facility in bad condition and one of his R2D2 props got moldy.

I don't know the details of it, but my grandmother in law works for a sister company of the warehouse that was getting sued. Apparently it was enough that if it hadn't been dismissed, it would've sent them into immediate bankruptcy.

Re:Biter bitten

[cheater512]

The US has had plenty of time to mutilate it.

Just like how you guys have mutilated the English language. :)

Does anybody know what the armor does?

[Joce640k]

It certainly doesn't stop blasters or light sabers. What use is it?

Re:Does anybody know what the armor does?

[kalirion]

To remove the blood and dehumanize the enemy so that we don't feel like real humans are being killed by the hundreds and the movies can be rated PG.

Ainsworth was the caster, not the sculptor

[Misagon]

Brian Muir is known as the sculptor of the original Stormtrooper armor, and Nick Pemberton is believed to have sculpt most of the helmet. Andrew Ainsworth's company manufactured the outfit. Of course, there must have been some interaction between these people during the process. Some prototypes were made, and refined. It is possible that Liz Moore (who sculpt C-3PO) was involved, but she died in 1976, so it is difficult to tell.

Andrew Ainsworth's company refined the molds after the production of the first movie to simplify production. It is believed by fans that Ainsworth kept some of the latter molds, which he when setting up his new business in recent years, modified back to produce casts more like the screen-used pieces. Some pieces of his Stormtrooper outfit are recast from pieces made by fans in recent years, who never gave Ainsworth permission to recast their sculpts.

If you want a Stormtrooper helmet and/or armor, then there are other "fan-made" armor that is actually more accurate to the original (recast from original screen-used armor), and also of better build and much cheaper.

Lucasfilm is not going after fans making and selling Stormtrooper armor. They are only going after those who are making a high-profile business out of it, like Andrew Ainsworth.

On the contrary, Lucasfilm is often cooperating with a fan organization called the 501st Stormtrooper Legion, which, being the largest costuming club in the world, has a few thousand members owning Stormtrooper costumes. George Lucas himself has appeared at events to meet and greet members and thank them for their appearance. The name "501st Legion" has even entered official canon, given to a group seen in the last movie. Almost all of the Stormtrooper cosplayers in the 501st Legion bought their armor from one of the dozen makers that exist - none of which has any licensing agreement with Lucasfilm. Licensed armor does not exist.