December 2002
Panini's sticky situation following FA Premiership court victory.
Football Association Premier League (FAPL) & Others v. Panini UK Limited
(2002) Chancery Division.
There has long been debate over what constitutes a trade mark infringement when a photograph or camera shot incorporates a logo or name that is protected.
The general conclusion that courts came to was that so long as the use is "incidental" it will be permitted. Therefore, for example, a holiday snap that you take of a friend that happens to have an advertising board in the background is not (quite sensibly) a copyright infringement.
Panini have produced unofficial football sticker collectors albums for years and have always managed to claim incidental use of the trademarks shown on the players' kits. The Premier League, along with their official sticker supplier Topps Inc. and several Premiership teams tired of this use and sued Panini for copyright infringement.
The case revolved upon whether the use of a team badge or logo could be deemed to be vital to the value of goods produced by the defendant.
HELD: The meaning attributed to incidental was deemed by Justice Peter Smith to be that given in the Shorter Oxford Dictionary i.e. "casual, inessential, subordinate or merely background". It was therefore felt that, as children tend to carefully follow specific teams and note the most up to date kits, the use was not casual or inessential. Without the badges being present the stickers would not have had the same value to Panini or their collectors. An injunction was granted preventing Panini from selling any 2003 collectors books or stickers showing the Lion Logo or the badge of any club. Any damages due to the claimants will be decided at a later hearing.
This is not the first time that Panini have been in trouble for producing unauthorised stickers, back in 1999 Geri Halliwell took them to court for unauthorised production of Spice Girls stickers.
BRIFFA Comment:
This action was launched solely on the grounds of copyright infringement. Had the FA Premiership aimed to enforce their trade mark rights they may not have been so successful as a strong precedent was set in the case of FAPL v. Trebor Bassett where The FA lost their action to prevent Trebor from including picture cards in packets of candy sticks. Although this copyright case has altered the perspective of the situation to a degree, it is likely that the issue of parameters of incidental use will be brought into question again in the near future.