Retrospective - Incidental Inclusion of Copyright Protected Material

Not all infringement is necessarily wilful or intended, whether it is accidentally sharing a copyright protected image to a wider audience when it was intended to be shared to simply a small audience (albeit still, arguably, infringing copyright) or including works in your own that were not duly licensed as a matter of omission. As such the law does exclude liability for potential accidental inclusion, protecting those who have not intended to infringe copyright, but nevertheless have done so. How the law protects those who've incidentally included material in their works has been unclear due to the ambiguity of the provision in the Copyright, Designs and Patents Act 1988, but more clarity was shed on the provision in the early 2000s by the Court of Appeal.

The case dealing with incidental inclusion was Football Association Premier League Ltd & Ors v Panini UK Ltd, which dealt with collectible football stickers; a staple in many persons' youths (although this writer was more of the ice hockey disposition). Panini sold stickers, along with an album that you could collect them into, within the UK. The sticker collection comprised of nearly 400 football players from the English Premier League and other leagues, and the images used in the stickers contained the player wearing their respective club shirt. In many pictures the clubs' logos are fully visible, also sometimes including the Premier League logo on the sleeve of the football shirt. After a licence was issued to Topps Europe Limited (a tendering process that Panini was involved with) they created a similar sticker collection and accompanying album, and the Premier League too Panini to court for copyright infringement in relation to the club logos and the Premier League logo.

The main focus of the case was on whether Panini's inclusion of the logos in their stickers was copyright infringement, or whether it was protected under section 31 of the Copyright, Designs and Patents Act 1988. The provision allows for a finding of non-infringement in the event of a work's "...incidental inclusion in an artistic work, sound recording, film or broadcast"; however, what exactly amounted to an 'incidental' inclusion was uncertain.

Several draft stickers were rejected for good reason

Lord Justice Chadwick saw that the determination of whether a work does or does not infringe copyright has to be made "...considering the circumstances in which the relevant artistic work... was created". The circumstances would involve the relevant artist's mindset and potential reasons for the inclusion of a potentially infringing work in their work, as well as both commercial and aesthetic reasons for its inclusion. Emphasis is placed on the why, which undoubtedly will take into account any inclusions that are done merely feigning an incidental inclusion, when the true reason was to benefit from its inclusion.

In concluding the case Lord Justice Chadwick saw that, as the reason for the inclusion of the relevant club shirt was to make the images, and therefore the stickers, the most attractive to a would-be collector, it would be important for the shirts to be authentic and contain all logos. Due to this their inclusion could not have been purely incidental, as the objective of the images was to display the logos, although not prominently, but visibly enough for an informed collector to note them. His promptly then dismissed the appeal by Panini.

As can be seen incidental inclusion is by no means a straightforward assessment using bright line rules, but involves a more nuanced, objective assessment of a potentially infringing work's inclusion. Should the Premier League logo just have been present in an on-field advertising board in the background, or on a truck outside, arguably its inclusion would have been incidental. The reason why they were in the image was to give an aura of legitimacy, value and to effectively identify each player, team and league in the sticker set. Incidental inclusion doesn't come up often in IP, and this writer would love to see it applied in an Internet context somehow.

Retrospective - Inventive Step in Patents

Improvements on older inventions is arguably the cornerstone of technological advancement, and more often than not can be equally or even more important than the original invention. This however has to be balanced between what is truly an improvement and what is merely something presented under the guise of an improvement only to be able to control currently or formerly patented subject matter. Under the Patents Act 1977 this is a matter of assessing whether the improvement in question is an 'inventive step' under the Act. The provisions defines this as being such if "...it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art". Although the section is clear in its intent, the test in how this would be assessed was left to the courts to further specify on.

The case in question which tackled the inventive step, laying down the modern application of this requirement was Windsurfing International v Tabur Marine (Great Britain), decided in 1985 in the Court of Appeal. It concerned a patent which protected the design of a wind surfboard, owned by Windsurfing International. The patent essentially consisted of a surfboard to which a triangular sail was attached, providing wind propulsion for the board, and a joint allowing for the sail to move according to where the wind was coming from. The defendant was licensee of the patent, operating in the UK. The two parties subsequently fell into a dispute, after which Windsurfing International sued the defendant for patent infringement. Although the case related to the old Patents Act 1949, the principle of inventive step still applies to the current 1977 Act even though the two pieces of legislation differ.

Cowabunga, dude!

The defendant challenged the patent through their argument that there was nothing new or novel about the patent where a sail is attached to a surfboard, asserting that the patent did not involve an inventive step, therefore allowing the Court to revoke the patent. Similar designs have been published in the US and the UK in related magazines in the late 1960s, and the defendant also presented evidence where a 12-year-old boy had made a similar craft as early as 1958 in the UK, predating the patent by over a decade.

Respective of all evidence presented in the case the Court was still faced with the question of whether the patent included anything which was new, and therefore involved an inventive step, protecting it from revocation. The question was aptly answered by Justice Oliver, who subsequently postulated the test for obviousness in relation to the inventive step:

 "...[the question] has to be answered, not by looking with the benefit of hindsight at what is known now and what was known at the priority date and asking whether the former flows naturally and obviously from the latter, but by hypothesizing what would have been obvious at the priority date to a person skilled in the art to which the patent suit relates, who is assumed to have access to what was known of the art in the [UK] immediately before the priority date".

The test, in other words, is an assessment of what the new idea or concept is which is protected; who would be a skilled person in the related art and what would his knowledge be based on commonly available information in the art be at the time; what are the differences between any pre-existing art which is used in comparison; and whether the differences or improvements in the new patent would have been obvious to the aforementioned person skilled in the art. The Windsurfing test has since been further clarified in the case of Pozzoli Spa v BDMO SA, but still remains quite relevant in deciding whether a patent truly involves an inventive step or not. In the case the patent was revoked, as prior art clearly showed the patent did not involve any steps which were not obvious to a skilled person in the art, with the Court heavily relying on the evidence provided where a 12-year-old boy had preempted the design, making the creation of such a craft quite obvious to anyone even remotely skilled in the area.

Similar considerations are made under other common law jurisdictions, such as under the Canadian Patents Act or in the United States; however the North Americans often refer to this as non-obviousness rather than an inventive step. Bar the different wording the substantial considerations are very much alike. This only shows how important true inventiveness is under patent legislation.