This was an appeal made by the appellant Panini UK Limited ("Panini") against the finding of Peter Smith J that Panini was infringing the copyright of the claimants and in particular that Panini was not entitled to rely upon the provisions of section 31 of the Copyright, Designs and Patents Act 1988 (the "Act"), which provides that copyright in a work is not infringed by its incidental inclusion in an artistic work or other work in which copyright subsists.
Lord Justice Chadwick, giving the unanimous decision of the Court of Appeal, upheld the decision of Peter Smith J.
Panini distributed for sale within the United Kingdom collectible stickers depicting well known football players. The stickers were sold in conjunction with an album, also distributed for sale by Panini. The photographic image of those players showed them wearing their premier league club strips which bore, the individual club badge and in some cases, the premier league emblem. The first claimant, the Football Association Premier League ("FAPL") had licensed the production of an official sticker and album collection to Topps Europe Limited ("Topps"). This was a licence for which Topps paid a substantial sum. Panini had participated in the tender process for the licence at the time.
Proceedings were brought by FAPL, Topps and fourteen premier clubs, seeking an injunction restraining infringement of their copyright. Panini argued that the inclusion of any part of the claimant’s logos or badges in the photographic images of the stickers and in the album were merely "incidental" and accordingly it had a defence under s.31(1) of the Act.
Peter Smith J held that the word "incidental" in s31(1) of the Act had the meaning attributed to it in the Shorter Oxford English Dictionary, as adopted by R McCombe in IPC Magazines Ltd v MGN Ltd (1988) FSR 431, which was "casual, inessential, subordinate or merely background". Accordingly, on the facts he held the inclusion of the badges was self-evidently not incidental; it was an integral part of the artistic work comprised of the photographs of professional footballers in their contemporary kit. That without the badges Panini would not have had the complete picture that it wished to produce. Accordingly, Smith P held the reproduction of the claimant’s badges and logos amounted to copyright infringement.
Panini appealed against this decision, submitting the judge was wrong to reach his decision for the following reasons: (i) there was no dichotomy between "integral" and "incidental" - the emblem and badges could be "an integral part of the artistic work", as the judge held, and yet be incidental to that work; (ii) that the test whether the inclusion of the emblems and badges is incidental must be answered in the light of the circumstances when the "photograph in issue is made" - the judge should not have taken into account the characteristics of a notional customer of Panini’s product; (iii) that the "incidentality" of the inclusion must be judged with regard to artistic considerations - again, the judge should not have taken into account the characteristics of a notional customer; and (iv) that the judge should have informed himself of the legislative policy to which s.31 of the Act was intended to give effect as revealed by a consideration of the debate in Parliament.
Lord Justice Chadwick considered each of these grounds in turn. Addressing the fourth point first, he noted it was plain that the decision to leave the word "incidental" undefined was intentional by Parliament. It was clear from looking at the debate in the House of Lords that "what is incidental will depend on all the circumstances of each case".
Lord Justice Chadwick also rejected Panini’s second ground, holding that the question of whether or not the emblem and badges were incidentally included should not be answered by considering what might have been in the photographer’s mind at the time he took the photograph, but by considering the circumstances in which the relevant artistic work - the image of the player as it appears on the sticker or in the album - was created.
In considering the first ground of Panini’s appeal, Lord Justice Chadwick accepted that there was no necessary dichotomy between "integral" and "incidental". But that simply because something was not integral to a work, did not thereby mean its inclusion was merely incidental. Chadwick noted that in determining "incidentality", consideration should be given to the commercial reason for including a work, in addition to the aesthetic reason. This was particularly important where a work was created primarily to serve a commercial purpose. He felt it wholly artificial to test the "incidentality" of the inclusion of the work by reference to artistic consideration, if that meant simply aesthetic considerations, noting that ‘artistic works’ are not confined to works of artistic quality - s4(1)(a) of the Act.
Lord Justice Chadwick stated that the relevant question, for the purposes of testing "incidentality" in the context of s31 of the Act is: why has work ‘A’ been included in work ’B’? The answer, in the instant case, was in Chadwick’s view self-evident. The objective, when creating the image of the player as it appeared on the sticker or in the album, was to produce something that would be attractive to a collector. That conclusion did not depend on any inquiry into the subjective intent of the individual employee who created the image, or of the photographer who took the photograph from which the image was derived. It depended upon an objective assessment of the circumstances in which the image was created. An image of a player in a strip which an informed collector would recognise as not authentic would not achieve that objective. But if the strip were to be authentic it had to include the club badge and where appropriate the FAPL emblem.
Chadwick stated the authenticity of the image of the player as it appeared on the sticker or in the album (work ‘B’), depended on the inclusion in work ‘B’ of the individual badge and FAPL emblem (work ‘A’) in which copyright subsists. He noted it was therefore impossible to say that the inclusion of the individual badge and the FAPL emblem were incidental.
In our opinion, the Court of Appeal was wrong, certainly in respect of FAPL’s emblem, to uphold the decision of Peter Smith J that Panini was not entitled to rely upon the provisions of s.31 of the Act. The fact that (i) not all the photographs used by Panini displayed FAPL’s emblem - players were mostly shown in action, and often the emblem was obscured; and (ii) the fact that not all the premier league clubs chose to include the FAPL emblem on their strip, help support the view that the FAPL emblem was not an essential part of the artistic work comprised of the photograph of the professional footballer in his kit.
It may be that the FAPL emblem falls within the definition of "incidental" contained within the Shorter Oxford English Dictionary as being something which is "not essential" and merely "background". Central to the artistic work is the player’s image and the strip (including the club badge). We would argue that the omission or inclusion of the FAPL emblem within the work would have little or no impact upon the overall impression of the photograph in the mind of the notional customer.
Finally, it should be remembered that the s.31 defence permits the taking of a substantial part of a work or performance; if this were not so the defence would not be required and could never arise.
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