19 December 2002

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INCIDENTAL INCLUSION DEFENCE FAILS FOR CLUB BADGES IN UNOFFICIAL FOOTBALL STICKERS

Club badges on players' shirts as reproduced in football stickers were an
integral part of the photographs and the defence of incidental inclusion did
not apply.

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In an increasingly branded world it can often be difficult to photograph
people, objects and buildings without including logos. Later publication of
the photograph will in some cases infringe a trade mark, if the logo has
been registered. In many cases the logo will also be protected by copyright
as an artistic work and copyright may also be infringed by taking the
photograph.

The balance struck by copyright law is to allow works to be included in
other works if their inclusion is merely "incidental". This is often a
difficult concept to apply in practice, but the High Court last week
provided further guidance in a case concerning football stickers.

Panini Ltd produced unofficial Premier League sticker albums. Children
collect the stickers in vast quantities on an annual basis, paying great
attention to details such as the players' up to date kit and subtle changes
in badges. Unofficial album producers have been following an informal
practice of including only head and shoulders photographs of players, to
avoid complaints about the inclusion of club badges. These are less
attractive than shots showing the badges and Panini, one of the leading
players in this market, started to include the Premier League's lion logo
and the badges of individual clubs in their photographs.

The Premier League, their exclusive sticker album producer Topps Ltd and
various Premier League football clubs sued Panini for copyright
infringement. Panini's defence was incidental inclusion.

Mr Justice Peter Smith decided that the club badges included in Panini's
photographs of players were "an integral part of the artistic work comprised
of the photograph of the professional footballer in his present-day kit &
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." An
injunction was granted forbidding the sale of Panini's Football 2003 Album
with stickers including the Premier League lion logo or the club badges.

Many of the club badges are likely to have been registered trade marks, but
the claim in this case was only for copyright infringement. If the
claimants had tried to enforce their trade mark rights they may well have
suffered a similar defeat to that suffered by the Football Association in
1997. The FA sued Trebor Bassett in respect of candy sticks in packets
containing cards bearing photographs of famous footballers, which in some
cases included reproductions of the England three lion logo on their shirts.
This was held not to infringe the FA's registered trade mark because Trebor
Bassett had not in any real sense of the word "used" the trade mark.

Incidental inclusion will continue to give rise to difficult practical
judgement calls, but this latest decision emphasises the importance of
looking at the intention behind the inclusion of the one work in the other.

Charlie Swan
19 December 2002
145

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