UK: The Football Association Premier League Ltd and others v Panini UK Ltd

Last Updated: 2 September 2003
Article by Julian Ward

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.

Background

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.

The Appeal

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.

Decision

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.

Comment

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.

The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions