Did unauthorised Premier League team logos on album sticker footballers’ shirts appear “incidentally” and avoid copyright infringement?
Who: Football Association Premier League Limited and Panini UK Limited
When: December 2002
Where: Chancery Division of the High Court, London
In this case the Court looked at the question of when it is possible to defend successfully a copyright infringement claim on the basis that the appearance of the material in question was merely "incidental".
Without any Premier League authorisation, the Defendant Panini published a "Football 2003" Premier League sticker album. The album and the individual football cards featured photographs of Premier League footballers with shirts bearing Premier League club logos. Insofar as these were artistic works, these logos were protected by copyright, and since Panini did not have any licence to reproduce the logos, the FA, the Premier League clubs and the company which did have the official licence to produce a 2003 football sticker album for the Premier League all sued Panini for copyright infringement and sought an immediate injunction preventing all further manufacture distribution and sale of the Panini product.
Panini defended on the basis that the appearance of the logos on the footballers' shirts in the photographs on the stickers was merely "incidental". Section 31(1) of the Copyright Designs and Patents Act 1988 provides that if the appearance of copyright material is only "incidental" there will be no infringement.
Mr Justice Peter Smith consulted his Shorter Oxford English Dictionary. Here "incidental" is defined as "casual, inessential, subordinate or merely background". Applying this test, the Judge found that Panini's use of the logos was "self evidently not incidental". On the contrary, it was an integral part of the artistic works which were the photographs of the footballers in their current kit. To put it another way, without the logos, Panini would not have the photographs that they needed to make the product work.
Accordingly, this was in the Judge's words a "classic case" for the grant of an injunction, which was duly handed down.
Why this matters:
On the face of it, it is difficult to see why Panini bothered to defend the claim at all. However a delve back into football logo case law quickly reveals a 1996 case whose facts were not a great deal different to those here, but whose outcome was completely different.
This involved not footballer stickers to go into an album but footballer cards given away free with packets of sweet cigarettes. Here, the claim was based not on copyright but on trademark infringement, and that appears to have been the Claimants' mistake. The Judge took a look at the cards, and formed the view that the reproduction of the registered trademarks in question was so insignificant in terms of the overall footballer image, that the appearance of the trademark did not qualify as "use" at all. Accordingly, in a decision which was strangely not appealed and which has often been questioned, he found for the Defendants and threw the claim out.
In this new Panini case, the verdict is much less open to question, and underlines the extreme care that should be taken before relying upon the "incidental use" defence in putting together advertising material containing third party copyright works.
Let's take a fashion model shoot in a house interior where there just happens to be pictures on the wall in the background. It is highly unlikely that no thought whatsoever would have been given to that picture's appearance in the ultimate image for advertising use, so "incidental use" is simply not going to be available as a defence, and it is also highly unlikely that the owner of the house and the picture will be able to grant a copyright licence!