“INCIDENTAL INCLUSION” COPYRIGHT INFRINGEMENT DECISION UPHELD

Last Friday in Football Association Premier League Ltd and others v Panini UK Ltd [2003] EWCA Civ 995 the Court of Appeal for England and Wales dismissed Panini’s appeal against a ruling that it had infringed the claimants’ artistic copyright. Panini sold unofficial football sticker albums together with photos of footballers from the Premier League clubs. Almost every player was depicted wearing a football shirt which featured thes logo of his club and of the Premier League. The League, acting on behalf of the clubs, had previously granted to Panini’s rival Topps the exclusive rights to use and reproduce the official team logos in its official Premier League sticker collection.
The League, Topps and the clubs sued Panini for infringement of artistic copyright in their logos and sought an injunction. Panini denied infringement, arguing that the inclusion of the logos in its photos was “incidental” and that the incidental inclusion of a copyright work in another work was not an infringement under the Copyright, Designs and Patents Act 1988, section 31. The trial judge held that the use of the logos in the sticker photographs was not incidental: that word meant “casual or of secondary importance” while the inclusion of the logos was not “incidental” since it showed that the players’ photos were current.
The Court of Appeal dismissed Panini’s appeal. In its view the question was not one of what might have been in the mind of the photographer when he took the photos but what were the circumstances in which the photos were created. To test whether the use of one work in another was incidental one should ask why the one had been included in the other, considering commercial as well artistic reasons. Applying that test it was clear that the use was not incidental. The Court added that the sticker albums themselves were probably literary works and not artistic works to which the “incidental inclusion” defence could apply.