Football Association Premier League Ltd. & Ors v Panini UK Ltd.

The Court of Appeal held that section 31(1) of the Copyright, Designs and Patents Act 1988 does not provide a defence to reproduction of the Premier League emblem and club badges on Panini’s stickers and in its album. The court treated the relevant question as whether the inclusion of the badge or emblem in the image of the player was "incidental" within the meaning of section 31(1). The court applied an objective test focused on the circumstances and purpose for which the image (the artistic work) was created, including commercial considerations where appropriate. Because the authenticity of the player’s club strip was essential to the commercial object of the stickers and album, the inclusion of the badges and emblem was not incidental and the defence under section 31 failed.

The court also recorded a provisional point (left unresolved) that the albums might be compilations (literary works) such that section 31(1) would not apply to the albums in any event.

This was an appeal against an interim order of Mr Justice Peter Smith in copyright proceedings brought by the Football Association Premier League Limited (FAPL), Topps and several Premier League clubs against Panini UK Limited. The claimants alleged copyright in the Premier League emblem and individual club badges and sought injunctive relief, an inquiry as to damages or account of profits and delivery up. The judge granted an interim injunction restraining Panini from offering for sale or distributing specified stickers and albums which reproduced those emblems and badges; this appeal challenged the judge’s conclusion that Panini could not rely on the incidental inclusion defence in section 31 of the 1988 Act.

• Nature of the claim: copyright infringement by reproduction of club badges and the Premier League emblem on collectible stickers and in an album; interim injunction and ancillary relief were sought.
• Issues framed: whether inclusion of the badges and emblem in Panini’s photographic images was "incidental" under section 31(1) of the 1988 Act; a provisional construction point whether the albums were compilations (literary works) and thus outside section 31(1).
• Background facts: Panini sold packets of photographic stickers of Premier League players and an associated album with spaces for each sticker. The album’s commercial appeal depended on players being depicted in authentic club strip, which usually included the club badge and sometimes the Premier League emblem. Topps held an exclusive licence to reproduce official crests; Panini described its product as "Unofficial" and did not have the licence.

Court’s reasoning: The court held that the relevant inquiry under section 31(1) is objective and depends on why the work containing the inclusion was created. The subjective state of mind of the photographer was not determinative. In a commercial product such as Panini’s, it is legitimate to consider commercial purpose as part of the circumstances showing why the badge or emblem was included. Because authentic club strip (including badge and emblem where appropriate) was essential to the commercial object of the stickers and album, the inclusion was not incidental. The court rejected submitted reliance on parliamentary material to redefine "incidental" and relied on the statutory text read as a whole (including section 31(3)).

Subsidiary point: Mummery LJ flagged a related but unresolved construction issue: the albums may be compilations (literary works) and, if so, section 31(1) would not apply to them; the court did not decide that point because it was unnecessary to the outcome.

Appeal dismissed. The Court of Appeal agreed with the judge below that the inclusion of club badges and the Premier League emblem in the photographic images used on Panini’s stickers and in its album was not "incidental" for the purposes of section 31(1) of the Copyright, Designs and Patents Act 1988. The inclusion was essential to the commercial purpose and authenticity of the product, so the section 31 defence failed. A provisional separate point that the albums might be literary compilations (and thus outside section 31(1)) was identified but left unresolved.

Appeal from High Court of Justice, Chancery Division (Mr Justice Peter Smith) arising from an interim order of 13 December 2002; permission to appeal initially refused but subsequently granted by Lady Justice Arden on 31 December 2002; appeal heard in the Court of Appeal and dismissed ([2002] EWCA Civ 995).