Copyright
Case Note: Canon Kabushiki
Kaisha v Green Cartridge Co. (Hong Kong) Ltd
Jane Lambert
Feb 2000
This case note first appeared on the Old Colony House website
In
Canon KK v Green,
the Privy Council allowed an appeal from the Hong Kong Court of
Appeal which had reversed the trial judge's finding that the defendant's
manufacture of replacement toner cartridges to fit the plaintiff's
photocopiers and laser printers had infringed the plaintiff's copyrights
in the drawings of 48 parts of its own toner cartridges. In Hong Kong
and before the Board the defendant had relied on the decision of the
House of Lords in British Leyland Motor Corporation Ltd. v Armstrong
Patents Co. Ltd. [1986] AC 577. After analysing the speeches of Lord
Bridge and Lord Templeman, the Privy Council concluded that the
British Leyland spare parts exception was "an expression of what the
House perceived as an overriding public policy, namely the need to
prevent a manufacturer from using copyright (as opposed to patents or
design right) in order to control the market in spare parts."
Recognizing that it is a strong
thing, if not constitutionally questionable, for a judicially declared
head of public policy to be treated as overriding or qualifying an
express statutory right, the Board thought that the prospect of
extending British Leyland should be treated with some caution.
The question whether it is contrary to public policy for a customer to
control his after-market usually requires some inquiry into the relevant
market. The exercise of the copyrights in the design drawings of the
exhaust pipes which prevented a motorist from repairing his car at a
reasonable cost had appeared to the House of Lords to be unfair and
anti-competitive. In this case the opposite was true. The exclusive
rights afforded by the artistic copyrights in the drawings of toner
cartridges might be pro-competitive as copier manufacturers can compete
not only on quality and price but also on the way they allocate the
lifetime cost of their products between initial outlay and consumables.
That is particularly apt in countries where consumables are tax
deductible. Moreover, there was evidence of a vigorous market in
refilling used toner cartridges in Hong Kong. There was no reason to
extend the "repair" exception to consumables.
