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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Football Association Premier League Ltd. & Ors v Panini UK Ltd. [2003] EWCA Civ 995 (11 July 2003) URL: https://www.bailii.org/ew/cases/EWCA/Civ/2003/995.html Cite as: [2003] EWCA Civ 995, [2004] 1 WLR 1147, [2004] WLR 1147 |
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COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
(MR JUSTICE PETER SMITH)
Strand, London, WC2A 2LL |
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B e f o r e :
LORD JUSTICE MUMMERY
and
LORD JUSTICE CHADWICK
____________________
| THE FOOTBALL ASSOCIATION PREMIER LEAGUE LIMITED and others |
Claimants/Respondent |
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| - and - |
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PANINI UK LIMITED |
Defendants/Appellant |
____________________
Smith Bernal Wordwave Limited, 190 Fleet Street
London EC4A 2AG
Tel No: 020 7421 4040, Fax No: 020 7831 8838
Official Shorthand Writers to the Court)
Mr Mark Platts-Mills QC and Mr James St Ville (instructed by McCormicks of Britannia Chambers, 44 Oxford Place, Leeds LS1 3AX) for the Respondents
____________________
AS APPROVED BY THE COURT
CROWN COPYRIGHT ©
Crown Copyright ©
Lord Justice Chadwick :
Panini
UK Limited. The principal issue raised in the proceedings was whether the appellant could rely on the provisions in section 31 of the Copyright, Designs and Patents Act 1988 ("the 1988 Act") which relate to the incidental inclusion in an artistic work of other work in which copyright subsists. The judge held, on facts as to which there was no material dispute, that the appellant could not do so. The question on this appeal is whether the judge was right to reach that conclusion.
The underlying facts
Panini
UK Limited distributes for sale within the United Kingdom collectible stickers depicting well-known football players. The stickers are sold in conjunction with an album, also distributed for sale by
Panini.
The album provides a designated space for each sticker in the collection; so that, when the album is full, the collection is complete. Stickers are sold in packets of five. They are packaged in such a way that the stickers within each packet are not identifiable at the point of sale; thereby introducing an element of chance which – it must be assumed – adds interest to the task of completing the collection. It is clear from the evidence before the judge that there is a well-established and active market for product of this nature, particularly amongst the young. The evidence shows, also, that (as might be expected) a secondary market in 'swaps' has developed amongst collectors.
Panini
is distributor include "
Panini's
Football 2003 Sticker Collection", which was launched at the end of last year. The album comprises 64 pages, within covers. Ten of those pages are devoted to "World Superstars", one to "Hotshots" and there is one introductory page. The remaining 52 pages are for the twenty clubs which play in the Barclaycard Premiership competition (the "premier league"). The majority of those clubs are given a double page spread; but there are six (Arsenal, Chelsea, Leeds, Liverpool, Manchester United and Newcastle United) which are given two double pages. Each double page spread provides spaces for the insertion of twelve stickers; and includes, in addition, photographic images of two of the club's players.
Panini
sticker collection and album. Nor is any complaint made, in this action, as to infringement of copyright or design right in the strip as a whole. The complaint is based on two particular features of the strip: the individual club badge and the premier league emblem.
Panini
2003 collection do show the club badge; as do almost all the photographs in the album itself.
"The purpose is to set up a situation where children buy and swap stickers with a view to completing the album. . . . I believe that the product is rendered very much more attractive to its customers because the players are depicted in the authentic strip of the Clubs they represent, including the Club crest and other images marked on the strip".
As I have said, that may fairly be taken to be
Panini's
view also.
Panini
(amongst others) had taken part. By that licence FAPL, acting on behalf of the premier league clubs, granted Topps exclusive rights "to use and reproduce official team crests and logos" in the production of stickers and albums. That was a licence for which Topps paid a substantial sum.
Panini's
participation in the tender process indicates that it took the view that an exclusive licence was of value. Nevertheless,
Panini
now claims to be entitled to distribute stickers and an album without having obtained a licence from FAPL or the premier league clubs.
Panini
is careful to describe its album as "Unofficial": that word appears on the cover of the album. By contrast, the Topps product is described as "The Official F.A.Premier League Sticker Collection 2003".
These proceedings
Panini,
an inquiry as to damages or an account of profits and interest, and delivery up of the infringing material. Application was made, under CPR Part 23, for an interim injunction until after the trial of the action.
Panini
2003 collection. But the issue raised by this appeal (if not determined by the Court) is likely to arise, again, in relation to a 2004 collection in the autumn of this year. The point is not academic; and this Court can properly be asked to decide it.
The 1988 Act
"(1) Copyright in a work is not infringed by its incidental inclusion in an artistic work, sound recording, film, broadcast or cable programme.
(2) Nor is the copyright infringed by the issue to the public of copies . . . of anything whose making was, by virtue of subsection(1), not an infringement of the copyright.
(3) A musical work, . . . , or so much of a sound recording, broadcast or cable programme as includes a musical work . . . , shall not be regarded as incidentally included in another work if it is deliberately included "
". . . the copyright in an artistic work is not infringed by the inclusion of the work in a cinematograph film or in a television broadcast, if its inclusion therein is only by way of background or is otherwise only incidental to the principal matters represented in the film or broadcast."
There are obvious differences between section 9(5) of the 1956 Act and section 31 of the 1988 Act. First, section 9(5) provided a defence only in cases where the copyright which would otherwise have been infringed was "copyright in an artistic work". Section 31 is not so restricted. Second, section 9(5) provided a defence only where what would otherwise have been an infringement of copyright was the inclusion of the work in "a cinematograph film or in a television broadcast". Section 31 extends to the inclusion in "an artistic work, sound recording, film, broadcast or cable programme". But the two sections have in common the requirement that the inclusion of work 'A' (the work in which copyright subsists and, but for the section, would be infringed) in work 'B' (the work which, but for the section, would give rise to the infringement) must be "incidental".
"A provision of this Part [I] which corresponds to a provision of the previous law shall not be construed as departing from the previous law merely because of a change of expression."
Be that as it may, I am not persuaded that the result in the present appeal turns upon an analysis of the linguistic differences between section 9(5) of the earlier Act and section 31 of the 1988 Act.
The judgment below
Panini
stickers and in the
Panini
album was "incidental" within the meaning to be given to that word in section 31(1) of the 1988 Act. He reminded himself of the definition of the word in the Shorter Oxford English Dictionary as:
"(2) occurring as something casual or of secondary importance; not directly relevant to; following as a subordinate circumstance."
He referred to a passage in Copinger & Skone James on Copyright (14th Edition, 1999) at para 9-26 which, in effect, adopts the dictionary definition:
"'incidentally' is not further defined, but presumably it bears its ordinary meaning as something casual or of secondary importance."
The passage appears in the same terms in the 15th Edition, 2003. The judge referred, also, to the other leading text book - Laddie, Prescott and Vitoria "The Modern Law of Copyright and Designs" (3rd Edition, 2000):
"The Act contains no definition of 'incidental', but this is an ordinary English word with connotations of what is casual, not essential, subordinate, merely background, etc. It is submitted that while what is incidental is a question of fact and degree, an important consideration would be as to whether the taking [semble, what has been copied] enables the work to compete with or act as a substitute for the work which is included."
The judge noted that Mr Richard McCombe QC, sitting as a deputy judge of the High Court in IPC Magazines Limited v MGN Limited [1998] FSR 431, had adopted the approach in Laddie, Prescott and Vitoria, treating "incidental" as meaning "casual, inessential, subordinate or merely background" – ibid, 441.
"It seems to me that the word 'incidental' in the section [section 31] (and nobody has suggested to the contrary) has the meaning attributed to it in the Oxford English Dictionary, which was adopted by McCombe J. I have to decide whether or not the inclusion of the badge is incidental. To my mind it is self-evidently not incidental. It is an integral part of the artistic work comprised of the photograph of the professional footballer in his present-day kit. That is the intent behind the reproduction of the photograph. That is what the Defendant intended, and without the badge they would not have the complete picture which they wish to produce, which is, as I say, the footballer as he plays now."
Accordingly, he held that the reproduction of the FAPL emblem and the individual club badges on the stickers and in the album distributed by
Panini
infringed copyright in those works.
The appellant's contentions on this appeal
Panini's
product; (iii) that the "incidentality" of the inclusion must be judged (or judged primarily) with regard to artistic considerations – again, the judge should not have taken into account the characteristics of a notional customer; and (iv) that the legislative policy to which section 31 of the 1988 Act was intended to give effect is revealed by a consideration of the debates in Parliament – the judge should have informed himself of that policy by reference to the extracts from Hansard put before him.
Conclusion
Lord Justice Mummery :
Panini's
Football 2003 Sticker Collection" albums are probably not within the categories of work specified in section 31(1) (i.e. artistic works, sound recordings, films, broadcasts and cable programmes), in which the incidental inclusion of copyright material is a permitted act. The albums appear to be "compilations" within section 3(1)(a) of the 1988 Act. A compilation is a "literary work." The section 31(1) defence does not apply in any circumstances to the inclusion of copyright material in literary works.
Panini
would not apply.
Panini
would be infringing the artistic copyright by committing acts of indirect infringement, with the requisite knowledge and without the appropriate consents i.e. by importing into the United Kingdom and supplying, or offering to supply, to distributors infringing copies for them to issue to the public, and by authorising the distributors to commit infringing acts. It should be noted that the claims against
Panini
are not for acts of direct infringement by (a) photographing the football players wearing their club strips or (b) reproducing and editing the action photographs on the stickers.
Panini UK, simply said that the point had not been raised by the FAPL below or in this court. Naturally he agreed with Mr Platts-Mills's adverse reaction to it.
Lord Justice Brooke: