Football Association Premier League Ltd and Others v Panini UK Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice Chadwick,Lord Justice Mummery,Lord Justice Brooke |
| Judgment Date | 11 July 2003 |
| Neutral Citation | [2003] EWCA Civ 995 |
| Docket Number | Case No: A3/2002/2748 |
| Court | Court of Appeal (Civil Division) |
| Date | 11 July 2003 |
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
(MR JUSTICE PETER SMITH)
Lord Justice Brooke
Lord Justice Mummery and
Lord Justice Chadwick
Case No: A3/2002/2748
Mr Martin Howe Qc And Miss Iona Berkeley (instructed By Dechert Of 2 Sergeant's Inn, London Ec4y 1lt) For The Appellant
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
This is an appeal from an order made on 13 December 2002 by Mr Justice Peter Smith in copyright proceedings brought against the appellant, 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.
The sticker collections for which 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.
The sticker collection (excluding World Superstars and Hotshots) comprises 312 club players. If World Superstars (78) and Hotshots (6) are included, the number rises to 396. Each sticker is about 2.5 inches by 2 inches in size and has, on its face, a photographic image of one player and his name. On the reverse there is a distinctive number, corresponding to a numbered space in the album. For the most part the players are shown in action and in club "strip". There are exceptions to that general rule —for example, two of the Aston Villa players are shown in their international strip – but those exceptions are few. It is plain that the stickers have been produced on the basis that one of the attractions to the collector will be that players are pictured in the appropriate club strip. That is emphasised by the fact that the club strip – or "colours" —is described in each of the relevant sections of the album; and that the photographs in the album itself are also of players in their club strip.
Each of the premier league clubs has a distinctive strip – shirt, shorts and socks – in its own colours. Typically the shirts include the name or logo of the manufacturer and the team sponsor – for example, the Chelsea strip includes the well-known "Umbro" logo and the words "Fly Emirates". Those are likely to be trademarks, but no complaint is made about that. The probability is that the owners of the marks are content that their name or logo should be displayed in the context in which it appears in the 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.
Each premier league club has its own distinctive badge or crest. These range from the club's initials in the form of a logo (Chelsea, Fulham), to quasi-heraldic devices (Liverpool, Manchester City, Newcastle United). Typically the badge appears on the shirt over the left breast; but there are cases (Bolton Wanderers, Charlton Athletic, Liverpool) where it appears in the centre of the chest. A photographic image of a player in action in club strip will almost invariably include the club badge. It must do so unless the badge is obscured (say, by the player's hand or arm) or the angle of the photograph is such that it does not show a clear front view of the player. The overwhelming majority of the stickers in the Panini 2003 collection do show the club badge; as do almost all the photographs in the album itself.
The premier league emblem is an heraldic lion passant with one foot or paw on a football. A number of the premier league clubs include that emblem on their strip, in addition to the individual club badge. It can be seen plainly on both sleeves of the Everton, Liverpool, Manchester City and West Ham shirts. It appears also on the captains' armbands. In those cases where the premier league emblem is a part of the club strip, it is as likely as not that a photographic image of a player in action in club strip will include that emblem as well as the individual club badge. Whether it does turns on the angle from which the photograph has been taken.
The premier league was instituted in 1992. The league is organised by The Football Association Premier League Limited ("FAPL") under agreements with the participating clubs. In each season since the inception of the league, FAPL has licensed the production of an official sticker and album collection. In a witness statement made by the company secretary of FAPL it is explained that the licensed product is aimed mainly at children, and that it is important that the players appear in authentic club strip:
"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.
In each year since 1994 the licensee has been Topps Europe Limited (formerly known as Merlin Publishing International Limited). When these proceedings were commenced the current licence was that granted on 28 February 2001, following a competitive tendering process in which 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
These proceedings were brought by FAPL, Topps and fourteen of the twenty clubs that are members of the premier league. FAPL and the clubs claimed to be owners of the copyright in the FAPL emblem and the individual club badges; Topps claimed as exclusive licensee. The relief sought in the proceedings was an injunction restraining infringement of the claimants' copyright by the inclusion of copies on stickers and in the album published and distributed by 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.
That application came before Mr Justice Peter Smith on 12 December 2002. He took the view that the issue raised by the application could be resolved, under the provisions of CPR Part 24, without the need for a trial; and he approached the application on that basis. It is clear from the judgment which he gave on the following day that he did not see this as a case for an interim remedy – to be granted or withheld by reference to considerations of uncompensatable disadvantage or, as it is commonly put, on the balance of convenience. He thought that this was a case in which the appropriate remedy was a final order.
Nevertheless, the order which he made on 13 December 2002 was an interim order...
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