What constitutesincidentalinclusionofcopyrightmaterial

21 July 2003

Rebecca Harrison

The Court of Appeal handed down judgment in the case of The Football Association Premier League Ltd and others -v- Panini UK Ltd on 11 July 2003. They dismissed the appeal by the defendant, Panini.

The case concerned photographs of football players distributed as stickers. The key issue was whether there was a defence available to copyright infringement of football club badges due to their inclusion in the photographs being incidental under section 31 of the Copyright, Designs and Patents Act 1988. The Premier League, on behalf of the football clubs, sought an injunction to prevent further publication of the stickers.

The footballer cards, distributed by the appellant/defendant, Panini, were sold in packs of 5. The stickers were not viewable through the packaging, meaning that collectors were encouraged to swap footballer stickers, a perennial playground pursuit, in order to collect a full set. Panini also distributed an album in which the stickers could be placed, with a space for each sticker, encouraging collectors to collect the entire collection of 396 stickers and complete the album. The photographs showed footballers, mostly in their club strips with the majority of photographs also showing the club badge, except where obscured in an action shot. The photographs were also mainly of footballers in teams in the Premier League and therefore mostly included the Premier League emblem in addition to the club badge. The album had “unofficial” clearly marked on the front.

Section 31 of the Copyright, Designs and Patents Act 1988, on which interpretation the case turned, provides as follows:

“(1) Copyright in a work is not infringed by its incidental inclusion in an artistic work, sound recording, film, broadcast or cable programme.

(2) Nor is the copyright infringed by the issue to the public of copies… of anything whose making was, by virtue of subsection (1), not an infringement of the copyright.

(3) A musical work, …, or so much of a sound recording, broadcast or cable programme as includes a musical work…, shall not be regarded as incidentally included in another work if it is deliberately included.”

In the appealed judgment, Mr Justice Peter Smith had noted that the dictionary definition of the word “incidental” was “occurring as something casual or of secondary importance; not directly relevant to; following as a subordinate circumstance.” This definition was reflected in the decision in IPC Magazines Ltd -v- MGN Ltd [1998] FSR 431 as well as in the principal copyright law text books. The judge held that it was essential to the purpose of the defendant that the professional footballer should be represented in his current club kit, rather than an old strip, or in any other outfit. The inclusion was not “casual” or “of secondary importance” and accordingly he held that the reproduction of the Premier League emblem and the individual club badges on the stickers and in the album distributed by Panini infringed the copyright of the emblem and badges.

Panini argued, before the Court of Appeal, that the judge had erred in his conclusion. In particular, the Defendant argued that there was no true dichotomy between “integral” and “incidental” in that the emblems and badges could be an integral part of the artistic work and yet be incidental to that work. Further, the Defendant argued, it was necessary to consider when the photograph in question had been taken in assessing whether the inclusion was incidental.

The Court of Appeal held, in the principal judgment given by Lord Justice Chadwick, that it was not appropriate to consider the question of what might have been in the mind of the photographer at the time when the photograph of the player displayed on the sticker was taken, but to consider the circumstances in which the image of the player was created, as it appeared on the sticker or in the album. The Court of Appeal held that the question that had to be addressed was “why, having regard to the circumstances in which [the photograph][work A] was taken, has [the badge/emblem][work B] been included in [that photograph][work A]?” It was held that it was as important to consider the commercial reason for such inclusion as any aesthetic reason. In considering this question in the context of the case, the Court of Appeal concluded that the objective intent, when creating the image of the player as it appeared in the sticker (or album), was to produce something that was attractive to a collector. Such conclusion did not depend on any inquiry into the subjective intent of the photographer from whose photograph the image used was derived. In this case, the Court of Appeal held, it was necessary for the commercial purpose of the stickers and album that the player should appear in his club strip and that the authenticity of the club strip should be made clear by inclusion of the club badge and, where appropriate, the Premier League emblem. The inclusion of the badges and emblem was necessary in order that the informed collector could identify the club strip as authentic. Therefore, the Court of Appeal held, it was essential to the purpose of the image of the players, as they appeared in the stickers or the album, that the copyright works, the club badge and the emblem, were included. Their inclusion was therefore not incidental and did not benefit from the exception set out in section 31.

Lord Justice Mummery gave a supplementary judgment in which he made obiter remarks on whether the albums were able to benefit from the exception in section 31. These comments were made without the benefit of the issues having been discussed in legal argument and were therefore not binding. He commented that the albums were compilations and therefore, in his view, should properly be treated as literary as opposed to artistic works, even though the material compiled was largely artistic, like, for example, maps and atlases. Literary works were not included in the types of copyright work allowed to benefit from the exception in section 31.

Counsel for the Claimants had been invited by the court to make submissions on this point, but had declined, although counsel indicated that the suggested construction could not be correct as it would produce the “startling result that a defence available under section 31(1) in respect of the making of the individual photographic stickers would cease to be available when they were affixed in the album.”

Lord Justice Mummery commented, in relation to this, that even if the defence were available in relation to the stickers, it did not follow, in his opinion, that an album containing photographic action shots of the players wearing their club strips (with the badges and emblems clearly visible) would also benefit from the defence. He also agreed with Lord Justice Chadwick’s judgment that “incidental” in the context of section 31 of the Copyright, Designs and Patents Act 1988, had a clear and common meaning. He held that it was self-evident that the inclusion of club badges and the Premier League emblem in the stickers and in the album was not incidental.

The case is of interest because of the contrasting ways the Courts have applied copyright and trade mark law in relation to the same products. Football sticker albums including club emblems were also at issue in the case of Trebor Bassett Ltd -v- The Football Association [1997] FSR 211. However, there, the Court decided that the unauthorised appearance of club emblems did not amount to trade mark infringement.

Due to be published in the August 2003 issue of WIPR.

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