Copyright

Case Note: Biotrading & Financing OY v Biohit Ltd

Jane Lambert
April 1998

This article formerly appeared on the Lancaster Buildings website

The Court of Appeal was asked to consider whether the owner of English artistic copyrights should be allowed to rely on such rights to prevent the importation of goods containing components that infringe those copyrights from another member state in Biotrading & Financing OY v Biohit Ltd [1998] FSR 109,  [1997] EWCA Civ 2429.     

The Court upheld the trial judge's findings that

	copyright subsisted in design drawings for various pipette components;
	those copyrights belonged to a the first plaintiff which was a Finnish company
	the Finnish company had granted exclusive licences in respect of those drawings to the second plaintiff which was a British company, and
	the copyrights subsisting in those drawings had been infringed by the defendants' importing pipettes containing infringing copies of the design drawings into the United Kingdom.

The defendants had argued that the enforcement of the copyright against the defendants' imported parts could not be justified under art 36 (now art 30) of the Treaty of Rome and that such enforcement amounted to a disguised restriction on trade between member states and arbitrary discrimination.     They invited the Court of Appeal to refer the following question to the ECJ:

"Is it compatible with Articles 30 and 36 of the EEC Treaty (sic) to award damages for infringement of copyrights in drawings of functional parts inside a pipette, where the infringement consists of the importation from Finland to England of pipettes incorporating parts which are, according to the English law of copyright, to be regarded as indirect reproductions of such drawings?"

Similar submissions had been made unsuccessfully to the Court of Appeal in British Leyland Motor Corporation Ltd. v Armstrong Patents Ltd. [1984] FSR 591.

The defendants submitted that British Leyland was no longer good law in view of the ECJ's finding in Re McGill, Radio Telefis Eireann v Commission [1995] I-00743. [1995] 4 CMLR 718.  Relying on paragraph 71 of the ECJ's judgment that the exercise of a copyright can be an abuse of art 86 of the Treaty if it is exercised in such ways and circumstances as in fact to pursue an aim manifestly contrary to the objectives of art 86, the defendants argued that the essential feature or subject matter of a copyright in drawings is to prevent their being copied and not to prevent the importation of parts of industrial apparatus.  

Aldous LJ disposed of that submission at page 133 concisely and elegantly:

"I do not believe that the McGill case throws any doubt on the correctness of the judgment of the Court of Appeal in British Leyland.  In this case, as in the British Leyland case, the law is not discriminatory. It has not been suggested that the exercise by the plaintiffs of their copyright amounts to an abuse of that right, let alone an abuse of a dominant position. Further it cannot be doubted that, until harmonisation of the law of copyright, the national law determines what rights can be enforced. Further the enforcement of such a right cannot by itself be an abuse.  If, as it does, the United Kingdom law provides an intellectual property right which prevents copying of industrial drawings by production of three-dimensional or two-dimensional copies, there can be no reason to suggest that its enforcement does not fall within the specific subject matter of the right. The McGill case was concerned with an abusive use of a right, namely use of the right to prevent competition in articles not the subject of the right. The judgments of the Court of First Instance and the Full Court make that clear and do not suggest any qualification of the earlier case law."
 

Concluding that British Leyland was still good law that had stood the test of time and had fortified by the decisions of the ECJ in Thetford Corporation v Foam spa and AB Volvo v Erik Venn (UK) Ltd.[1988] ECR 0-3585 [1989] CMLR 122, the Court of Appeal held to the issue to be acte clair..

 

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