England and Wales Court of Appeal (Civil Division) Decisions

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)

		Royal Courts of Justice Strand, London, WC2A 2LL
		11 July 2003

Lord Justice Chadwick :

1. 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

2. 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.
3. 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.
4. 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.
5. 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.
6. 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.
7. 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.
8. 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.

9. 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

10. 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.
11. 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.
12. Nevertheless, the order which he made on 13 December 2002 was an interim order restraining the appellant "until after judgment in this action" from offering for sale, selling, distributing or issuing to the public any album, sticker collection or stickers bearing any copy of the whole or any part of the Premier League logo or of any club badges of the eleven clubs listed in the schedule to that order. He accepted that, in respect of the other three clubs, ownership of copyright in the individual club badges had not been made out on the material before him and raised issues which should go to trial. The judge gave liberty to the parties to apply for substitution of a final order. He refused permission to appeal to this Court.
13. Permission to appeal was granted by this Court (Lady Justice Arden) on 31 December 2002. When granting that permission she ordered a stay on the substitution of a final order for the interim order which the judge had made. So it is that the appeal now before this Court is, in form, an appeal against an interim order. Nonetheless, the appeal has been argued on the basis that the Court can and should decide the issue whether section 31 of the 1988 Act provides a defence to the claims to infringement of copyright in this case as if the order under appeal were a final order.
14. The probability must be that, with the passage of time, there is now little or no market for the 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

15. The 1988 Act was enacted for the purpose, amongst others, of amending and restating the law of copyright, formerly set out in the Copyright Act 1956. Section 1(1) of the 1988 Act provides that copyright is a property right, subsisting in accordance with the provisions in Part I of the Act in work within the following descriptions (so far as material): (a) original literary, dramatic, musical or artistic works, and (b) sound recordings, films, broadcasts or cable programmes. In that context "literary work" means any work, other than a dramatic or musical work, which is written, spoken or sung (and, in particular, includes a table or compilation) – see section 3(1)(a) of the 1988 Act – and "artistic work" includes "a graphic work, photograph, . . . , irrespective of artistic quality" – section 4(1)(a) of the Act. The author of a literary or artistic work is the first owner of any copyright in it – save that, where the work is made by an employee in the course of his employment, his employer is the first owner, subject to any agreement to the contrary – section 11 of the Act. Ownership of copyright may, of course, be transferred to another by the first owner, or by any succeeding owner.
16. Chapter II in Part I of the 1988 Act sets out the rights of the copyright owner. In particular, section 16(1) of the Act gives to the owner of the copyright in a work the exclusive right to copy the work and to issue copies of the work to the public. Those acts (and others, not material in the present case) are "acts restricted by the copyright". Subject to the following provisions in Chapter II, Part I, copyright in a work is infringed by a person who, without the licence of the copyright owner does, or authorises another to do, any of the acts restricted by the copyright. "Copying", in relation to a literary or artistic work, means reproducing the work in any material form – section 17(2) of the Act. An article is "an infringing copy" if its making constituted an infringement of the copyright in the work in question – section 27(2) of the Act – or if it has been or is proposed to be imported into the United Kingdom and its making in the United Kingdom would have constituted an infringement of the copyright in the work in question – section 27(3).
17. Sections 22 to 26 of the Act are directed to what is described as "secondary infringement". Copyright in a work is infringed by a person who, without the licence of the copyright owner, imports into the United Kingdom (otherwise than for his private and domestic use) an article which is, and which he knows or has reason to believe is, an infringing copy of the work – section 22 of the Act. Copyright is also infringed by a person who, without the licence of the copyright owner, (a) possesses in the course of business, (b) sells or offers for sale, or (c) in the course of a business distributes, an article which is, and which he knows or has reason to believe is, an infringing copy of the work – section 23.
18. Chapter III in Part I of the 1988 Act contains provisions which "specify acts which may be done in relation to copyright works notwithstanding the subsistence of copyright" – section 28(1). Those provisions include section 31, which (so far as material) is in these terms:

"(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 "

19. The provisions now found in Chapter III, Part I, of the 1988 Act were previously contained (in part and in a different form) in section 9 of the 1956 Act. Section 9(5) of the 1956 Act was in these terms:

". . . 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".

20. That common feature is relied upon both in support of a submission that the concept of "incidental inclusion", for the purposes of section 31 of the 1988 Act, is essentially the same as the concept described by the rather fuller expression in section 9(5) of the 1956 Act – "by way of background or . . . otherwise only incidental to the principal matters represented in . . ."; and in support of a submission that the change in language should lead to the conclusion that, in the context of section 31 of the 1988 Act, the concept of "incidental inclusion" is wider than merely "by way of background". For my part, I doubt whether the difference in language would lead to a difference of result in a case (which is not this case) in which the two sections would, successively, have been in point. In that context it would be pertinent to have in mind section 172(2) of the 1988 Act:

"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

21. The judge directed himself, correctly, that the issue before him turned on whether the inclusion of the FAPL emblem and the individual club badges in the photographic images on the 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.

22. At paragraph 19 of his judgment the judge said this:

"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

23. The appellant submits that the judge was wrong in the conclusion which he reached for one or more of the following reasons: (i) that there is no true dichotomy between "integral" and "incidental" – the emblem and badges could be "an integral part of the artistic work", as the judge held, and yet be incidental to that work; (ii) that the test whether the inclusion of the emblems and badges is incidental must be answered in the light of the circumstances at the time when the "photograph in issue is made" – the judge should not have taken into account the characteristics of a notional customer of 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.
24. The fourth of those grounds can be disposed of shortly. The Copyright, Designs and Patents Bill was introduced in the House of Lords. We were taken to the debate on the second reading in that House. It is plain that the decision to leave the word "incidental" undefined was intentional. As the minister responsible for the progress of the Bill (Lord Beaverbrook) put it (Hansard, 8 December 1987, page 123 lhc): "What is incidental will depend on all the circumstances of each case and it would be impossible to provide a satisfactory definition for all circumstances." It is plain, also, that "incidental" was not intended to mean "unintentional". That is clear, not only from the debate in the House of Lords but also from the explanation which was given to the House of Commons (Hansard, 19 May 1988, 218) in respect of the provision which has become section 31(3) of the 1988 Act. But it is unnecessary to have resort to proceedings in Parliament in order to reach that conclusion. It is obvious, when subsections (1) and (3) of section 31 of the Act are read together, that "incidental", in the context of subsection (1), is not confined to unintentional, or non-deliberate, inclusion. If it were, subsection (3) – which deals with the particular case of incidental, or background, music in (say) a film or broadcast – would be unnecessary. There is, in my view, nothing else in the material which we were shown which throws light upon what Parliament meant by the word "incidental"; and, for my part, I doubt whether there was any proper basis upon which that material could have been put before the judge. Be that as it may, we may, perhaps, take some comfort from the evident intention of the promoter of the Bill that "What is incidental will depend on all the circumstances of each case . . ."; and his recognition that "it would be impossible to provide a satisfactory definition for all circumstances." The relevant question, as the judge pointed out, is whether, in the circumstances of this case, the inclusion on the stickers and in the album of the FAPL emblem and the individual club badges is or is not incidental.
25. Nor, as it seems to me, is there any substance in the submission that the test whether the inclusion of the emblems and badges is incidental must be answered in the light of the circumstances at the time when the "photograph in issue is made" – if, by that, it is intended to refer to the time at which the image is impressed upon the photographic film or plate, or (in the case of a digital camera) encoded. The work, or "thing", of which copies are issued to the public, for the purposes of section 31(2) of the 1988 Act, is the image of the player as it appears on the sticker or in the album. On the basis that the image of the player as it appears on the sticker is an "artistic work" for the purposes of the 1988 Act (which is not, I think, contentious) – and assuming, but without deciding, that the fact that the album, taken as a whole, is a compilation (and so a literary work) does not lead to the conclusion that the image of the player as it appears in the album is not, itself, also an artistic work - the effect of section 31(2) is that the issue of copies of that image to the public – by the distribution of stickers and the album – does not infringe copyright in the FAPL emblem or the individual club badges if, but only if, the making of the image, as it appears on the sticker or in the album, was not itself an infringement of that copyright. The relevant question is whether the making of the image as it appears on the sticker or in the album was, by virtue of section 31(1) of the Act, no infringement of the copyright in the FAPL emblem or the individual club badge. That question is not to be answered by considering what might have been in the mind of the photographer at the time when he took the photograph from which the image of the player, as it appears on the sticker or in the album, has been derived. It is to be answered by considering the circumstances in which the relevant artistic work - the image of the player as it appears on the sticker or in the album – was created.
26. I would accept that, in principle, there is no necessary dichotomy between "integral" and "incidental". Where an artistic work in which copyright subsists appears in a photograph because it is part of the setting in which the photographer finds his subject it can properly be said to be an integral part of the photograph: if it is part of the setting in which the photographer finds his subject, it will, necessarily, appear in the photograph unless edited out. In that sense the work in relation to which copyright is said to be infringed (work 'A') is integral to the photograph (work 'B') which is said to constitute the infringement. But that does not lead to the conclusion that the inclusion of work 'A' in work 'B' is, or is not, "incidental" for the purposes of section 31(1) of the Act. That, as it seems to me, turns on the question: why – having regard to the circumstances in which work 'B' was created – has work 'A' been included in work 'B'? And, in addressing that question, I can see no reason why, if the circumstances so require, consideration should not be given as well to the commercial reason why work 'A' has been included in work 'B' as to any aesthetic reason. In particular, in a case (such as the present) where work 'B' is created, primarily if not exclusively, to serve a commercial purpose, it seems to me wholly artificial to test the "incidentality" of the inclusion of work 'A' by reference (or primarily by reference) to artistic considerations – if, by that is meant aesthetic considerations. It is, I think, pertinent to keep in mind that, for the purposes of the 1988 Act, 'artistic works' are not confined to works of artistic quality – section 4(1)(a) of the Act.
27. If, as I would hold, the relevant question, for the purposes of testing "incidentality" in the context of section 31(1) of the 1988 Act, is why has work 'A' been included in work 'B', the answer, in the present case, is indeed (as the judge thought) self-evident. The objective, when creating the image of the player as it appears on the sticker or in the album, was to produce something which would be attractive to a collector. That conclusion does not depend on any inquiry into the subjective intent of the individual employee who created the image – or (as I have said) of the photographer who took the photograph from which that image was derived. It depends on an objective assessment of the circumstances in which the image was created. It is not, I think, a matter about which there can be any doubt. Nor can there be any doubt that it was of importance, in order to achieve that objective, that the player should appear in the appropriate club strip; and that the club strip be authentic. An image of a player in strip which an informed collector would recognise as not authentic would not achieve that objective. But if the strip were to be authentic it must include the club badge and (where appropriate) the FAPL emblem. That, as it seems to me, is what the judge had in mind when he described the inclusion of the badge as "an integral part of the artistic work comprised of the photograph of the professional footballer in his present-day kit". 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 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.

Conclusion

28. I would dismiss this appeal.

Lord Justice Mummery :

29. I agree with Chadwick LJ that this appeal should be dismissed. I wish to add a few comments on a point of construction, which arose in the course of the hearing.
30. I questioned whether the incidental inclusion defence could apply to the albums, in respect of which an injunction is claimed. The unlicensed and unofficial "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.
31. Each football sticker album consists of 64 pages. Each page contains photographic action shots of players in their club strips, as well as the blank spaces to which the appropriate individual photographic stickers are to be affixed by the collectors. Each page of the albums also contains a considerable amount of printed tabulated information about the different football clubs and individual players.
32. The claim for infringement of artistic copyright in the club crests and the Premier League badge appearing on the playing kit worn by the football players is made in respect of the sticker albums themselves, not just in respect of each individual sticker. My provisional view is that, although each individual sticker is a distinct artistic work, being a photograph within section 4(1)(a), the albums, into which the stickers are to be affixed, are compilations of material and are properly treated as literary works for the purposes of the 1988 Act. If that is correct, inclusion of copies of the club crests and the Premier League badge in the albums falls outside the acts permitted by section 31(1). I should explain that works are properly treated as compilations and therefore as literary works, even though the material compiled is largely artistic in character. Atlases, books of street maps, catalogues and art gallery and exhibition guides are obvious examples of artistic materials assembled in the material form of a compilation.
33. In the court below and in the skeleton arguments submitted to this court the submissions on both sides assumed that all the relevant works in which the club crests and Premier League badge have been reproduced are artistic works. The argument has focused on the question whether the inclusion of the copyright club crests and the badge in the stickers was incidental or not. If, however, the albums, which include many instances of infringing artistic material quite apart from the stickers, are literary works, the only defence to liability for infringement raised by 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.
34. My views on this point must remain provisional for two reasons: first, the court has not had the benefit of any detailed legal argument on the point from either side; and, secondly, it is possible to dispose of the appeal without deciding the point, as the defence under section 31(1) fails in any event. The inclusion of the infringing material in the stickers and the albums is not "incidental" for the reasons given by Chadwick LJ.
35. When invited by the court to make submissions on the "literary work" point Mr Mark Platts-Mills QC, who appeared on behalf of the FAPL, said that he was instructed not to run that point, adding that it was, in any event, a bad point. Without venturing into detail, which might violate his instructions, he indicated that the suggested construction was incorrect, because it would produce the startling result that a defence available under section 31(1) in respect of the making of the individual photographic stickers would cease to be available when they were affixed in the album.
36. Mr Martin Howe QC, who appeared for 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.
37. The position is far from satisfactory. The only substantial point raised for decision in the proceedings is a question of law on the scope of section 31(1). In the absence of full argument to assist it, the court cannot confidently offer a full opinion on the scope of the section. For their own undisclosed reasons the parties wish to limit the scope of the court's decision.
38. In my judgment, it is right to identify the point of construction, even though it must be left unresolved in this case, in order to bring it to the attention of the profession and of the courts, which may have to decide it on a future occasion. I would add that I am by no means satisfied that the response of Mr Platts-Mills QC to the literary work point is correct. In considering any defence raised to an allegation of copyright infringement it is always necessary to identify the particular infringing act in respect of which the defence is raised and the circumstances in which the infringing act was committed. Even if section 31(1) were available in respect of the individual photographic stickers made in Italy, so that they were not infringing copies when imported into the United Kingdom for distribution here, it by no means follows that the defence would also be available in respect of the distribution of the albums, which contain on each page photographic action shots of the players wearing their club strips.
39. As to the "incidental inclusion" point I agree with Chadwick LJ's full judgment on it. The question whether the inclusion of copyright material in an artistic work is "incidental" is not answered by rushing to dictionaries or by searching the internet for substitute words and expressions; or by inquiring into the subjective intentions, motives, views or states of mind of the makers, distributors or collectors of the stickers and albums; or by the use of a non-statutory check list of possible indicators; or by recourse to the Copyright Act 1956 (s 9(5)) or to Hansard reports of the Parliamentary debates preceding the enactment of the 1988 legislation; or by working conscientiously through the range of hypothetical situations ingeniously devised by Mr Howe QC. "Incidental" is an ordinary descriptive English word. Parliament chose not to give it any special meaning. There is no need for the courts to define it. The range of circumstances in which the word "incidental" is commonly used to describe a state of affairs is sufficiently clear to enable the courts to apply it to the ascertainable objective context of the particular infringing act in question. For the reasons given by Chadwick LJ the circumstances of this case (in particular, the commercial context and purpose of the marketing of the stickers and the albums reproducing the club crests and the Premier League badge and the relationship between those copyright works and the subject matter of the stickers and albums) justify the overall assessment of the judge that it was self evident that the inclusion of them in the stickers and in the albums is not incidental. I see no reason to differ from his conclusion.

Lord Justice Brooke:

40. I agree that this appeal should be dismissed for the reasons given by Chadwick LJ.
Order: Appeal dismissed with a payment of £30,000 to be paid within 14 days on account of costs and remainder subject to detailed assessment. Permission to appeal was refused. (Order does not form part of the approved judgment)