STORMTROOPER STRUGGLE; LATEST PATENT OFFICE GUIDELINES

Stormtrooper struggle

This comes to the IPKat from The Times Online via James Heath (News International). It transpires that Andrew Ainsworth, a British engineer from Twickenham, is gearing up for a legal battle with Star Wars film-maker George Lucas over the right to make replica costumes. Ainsworth, who helped design more than a dozen characters for the first Star Wars film in the late 1970s, is seeking legal aid to defend himself against an attempt by Lucas to enforce a $US 20 million damages award made against him in California last month for infringing the rights in replica Stormtrooper costumes.

Ainsworth maintains that the copyright in the costumes vested initially in him as their designer and that those rights have not been assigned. According to him, his relationship with Lucas’s company, Star Wars Productions, was ad hoc. He earned approximately £30,000 for his work in 1976, but his recent costume business has been more lucrative. Complete replicas of Stormtrooper outfits fetch up to £1,500 and has sold more than 500 helmets at £300 or more apiece.

Left: The IPKat models his own Stormtrooper costume

The IPKat, who doesn't want to jump to conclusions, doubts that a US court should have reached its decision without recourse to any evidence of title to the Stormtrooper costume at all. Merpel agrees but wonders what the basis was for a $US 20 million damages award: was this an actuarial computation of damage suffered, or was it punitive? Let's find out more.

More on Stormtroopers here
Build your own Stormtrooper costume here


Latest Patent Office Guidelines

At the end of October, in the combined Aerotel and Macrossan decision (see IPKat comment here), the Court of Appeal for England and Wales gave its ruling on the operation of exclusions to patent protection for software-related inventions and business methods. On Friday the UK Patent Office issued a Practice Note as to when and whether such inventions are patentable. According to the prelude to the Practice Note:

"Following the Court of Appeal’s judgment in Aerotel v Telco and Macrossan’s Application, issued last Friday, The UK Patent Office has issued a Practice Notice on how it will in future decide if an invention is not patentable because it is a computer program or business method as such.

The Notice notes that the judgment considers all the previous caselaw from the UK courts and the European Patent Office and provides a clear approach as to how the computer program and business method questions should be tackled. The judgment is binding on the High Court and the Patent Office, and from now on the Patent Office will follow this as set out in the Practice Notice.

The approach is in the form proposed to the Court by the UK Patent Office and the Notice concludes that it is unlikely that it will substantially change what innovations are and are not patentable. The Notice refers to a number of worked examples applying the new approach to cases recently decided by the Office under the previous approach and in each case the same decision as to patentability is reached".

The IPKat says, the really important bit of the Practice Note is paragraph 4:

"4. In reaching its judgment, the Court also fully considered all the precedent UK case law in this area. ... [T]he Office takes the view that Aerotel/Macrossan must be treated as a definitive statement of how the law on patentable subject matter is now to be applied in the United Kingdom (UK). It should therefore rarely be necessary to refer back to previous UK or EPO case law".

In other words, says the IPKat, if citation of pre-Aerotel/Macrossan case law is cut out or kept to a minimum, the Patent Office can concentrate on patentability on a more highly-focused basis and both examiners and the courts will have far fewer real or hypothetically contradictory precedents to worry about. Merpel agrees but notices that previous attempts to draw a line under old case law in other areas of IP law, notably breach of confidence law, have generally failed.

Full text of the Practice Note here