Copyright Infringement and "Incidental Inclusion"

United Kingdom

In the case of Football Association Premier League v Panini UK Ltd, the Court of Appeal examined whether the use of logos in photographs on stickers and sticker albums could be regarded as "incidental inclusion" under the Copyright Designs and Patents Act 1988 (s.31).

The Court decided that the reasons why one work has been included in another should be examined and in doing this it said that the commercial reasons as well as the artistic reasons for such inclusion were relevant. It stated :

"The authenticity of the image of the player as it appears on the sticker or in the album (work "B") depends on the inclusion in work "B" of the individual badge and the Football Association Premier League ("FAPL") emblem (work "A") in which copyright subsists. It is impossible to say that the inclusion of the individual badge and the FAPL emblem is "incidental". The inclusion of the individual badge and the FAPL emblem is essential to the object for which the image of the player as it appears on the sticker or in the album was created".

In this case, it was very clear that the stickers and albums were created predominantly for a commercial purpose, that is, to produce something collectable for a particular market. The inclusion of such logos in the stickers and albums was not incidental (in the ordinary sense of the word) and formed a central aspect of the stickers and the albums from a marketing point of view. The absence of such official logos from the photographs would arguably detract from the collectability of such items.

One judge questioned whether the argument raised by Panini under s.31 was applicable at all. He noted that s.31 applied only to artistic works, sound recordings, films, broadcasts and cable programmes. He considered that sticker albums might well be considered "compilations" and hence literary works. However, in this case, neither Panini, nor FAPL raised this point and wished to limit the scope of the Court's decision in this respect.

This case has particular significance following the case of Trebor Bassett Ltd v The Football Association [1997] FSR 211 in which the defendant complained of trade mark infringement when Trebor Bassett included within their packets of confectionery photographs of footballers wearing shirts with the three lion logo – a registered trade mark belonging to the Football Association. Here, the judge concluded that there was no trade mark infringement and it was not even arguable that Trebor was using the logo in any real sense.

The availability of an action in copyright infringement is therefore of real significance to brand owners seeking a remedy in such situations.


For further details please contact Stephen Whybrow at [email protected] or Lucy Kilshaw at [email protected]