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

For the incidental-inclusion exception in section 31(1) of the Copyright, Designs and Patents Act 1988, the question is why the protected work was included in the work said to infringe it, viewed objectively in the circumstances in which the latter work was created. Commercial purpose may be relevant; the inquiry is not confined to aesthetic considerations or the photographer’s subjective intention. A work may be integral to an image yet its inclusion may still be incidental. Here, authentic club badges and league emblems were essential to depicting players in genuine club strip, so their inclusion was not incidental and the defence failed.

FAPL, Topps Europe Limited and fourteen Premier League clubs brought copyright proceedings against Panini UK Limited concerning the reproduction of the Premier League emblem and individual club badges on football stickers and in an album. Panini relied on the incidental-inclusion defence in section 31(1) of the Copyright, Designs and Patents Act 1988.

Mr Justice Peter Smith, in the High Court, held that the defence was unavailable and made an interim injunction restraining the sale and distribution of the relevant products. The Court of Appeal granted permission to appeal and stayed substitution of a final order. The central issue was whether the inclusion of the emblems and badges in the stickers and album was incidental.

The appeal was dismissed. Chadwick LJ gave the principal judgment. Mummery LJ and Brooke LJ agreed with his reasons.

1. Relevant work and statutory focus. For the purposes of section 31(2) of the Copyright, Designs and Patents Act 1988, the relevant work was the image as it appeared on the sticker or in the album, rather than the original photograph from which it was derived. The question was whether making that image was protected by section 31(1). It was not answered by considering the photographer’s subjective intention at the time the photograph was taken.
2. Meaning of incidental inclusion. There is no necessary dichotomy between an inclusion being integral to an artistic work and being incidental for statutory purposes. The court must ask why work A was included in work B, having regard to the circumstances in which work B was created. The assessment is objective. In a work created primarily for a commercial purpose, the commercial reason for inclusion may be considered alongside any aesthetic reason. The inquiry should not be confined, or primarily directed, to aesthetic considerations. The ordinary-language approach discussed in IPC Magazines Limited v MGN Limited [1998] FSR 431 did not replace that contextual assessment.
3. Deliberate inclusion. Incidental does not mean unintentional or non-deliberate. Sections 31(1) and 31(3), read together, show that deliberately included material may nevertheless be incidental.
4. Application. The objective purpose of the images was to attract collectors by depicting players in authentic club strip. Authenticity required the inclusion of the relevant club badge and, where present, the Premier League emblem. Their inclusion was therefore essential to the purpose of the images and was not incidental. The section 31 defence failed.
5. Unresolved album issue. Mummery LJ expressed the provisional view that the albums were compilations and therefore literary works under section 3(1)(a), outside the categories of work to which section 31(1) applies. He also observed that a copyright defence must be considered in relation to the particular infringing act, so that non-infringement of individual stickers would not necessarily protect distribution of albums. The point was left unresolved because it had not been fully argued and was unnecessary to the result.

The appeal was dismissed. Panini was ordered to pay £30,000 within 14 days on account of costs, with the balance subject to detailed assessment. Permission to appeal was refused.

• Court of Appeal (Civil Division): On 11 July 2003, the appeal from the High Court order was dismissed. Permission to appeal was refused. The court ordered payment of £30,000 on account of costs.
• High Court, Chancery Division: On 13 December 2002, Mr Justice Peter Smith held that Panini could not rely on section 31 of the Copyright, Designs and Patents Act 1988 and made an interim injunction restraining sale and distribution of the relevant albums and stickers. The supplied judgment gives no citation for that decision.