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.

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.

Bulletins are for general guidance only. Legal advice should be sought before taking action in relation to specific matters. Where reference is made to Court decisions facts referred to are those reported as found by the Court. Please note that past bulletins included in the Archive have not been updated by any subsequent changes in statute or case law.