Canon Kabushiki Kaisha v Green Cartridge Company (Hong Kong) Ltd

JurisdictionUK Non-devolved
CourtPrivy Council
Judgment Date30 Apr 1997

Judicial Committee of the Privy Council

Before Lord Browne-Wilkinson, Lord Lloyd of Berwick, Lord Hoffmann, Lord Hope of Craighead and Lord Hutton

Canon Kabushiki Kaisha
and
Green Cartridge Co (Hong Kong) Ltd

Privy Council - Hong Kong - copyright - 'spare parts' exception

Exception must be treated with caution

The spare parts exception propounded by the House of Lords in British Leyland Motor Corporation Ltd v Armstrong Patents Co LtdELR ([1986] AC 577) should be treated with some caution.

The Judicial Committee of the Privy Council so stated when allowing an appeal by the plaintiff, Canon Kabushiki Kaisha, from the judgment of the Court of Appeal of Hong Kong which by a majority on the copyright issue had allowed an appeal by the defendant, Green Cartridge Co (Hong Kong) Ltd from the judgment in the High Court of Hong Kong of Mr Justice Rogers, who had been granted the plaintiff an injunction restraining the defendant from infringing the plaintiff's copyright in certain drawings.

Mr David Kitchin, QC and Mr Paul Shieh, of the Hong Kong Bar, for the plaintiff; Mr Simon Thorley, QC and Mr Stewart Wong, of the Hong Kong Bar, for the defendant.

LORD HOFFMANN said that the question was whether the spare parts doctrine recognised in the British Leyland case entitled the defendant to infringe the plaintiff's copyright in drawings of parts of the cartridges used with its photocopiers and laser printers.

During the lifetime of the plaintiff's machines various of the components would need to be replaced and the supply of toner renewed. The plaintiff decided to include a supply of toner and those parts in a single disposable plastic cartridge to be inserted by the owner of the machine when the toner gave out.

The aftermarket, as it was called, in cartridges contributed significantly to the plaintiff's profits. In 1990 the initial cost of one of its typical laser printers was US$1,700, and during a projected life of five years or 200,000 copies the owner would need about 62 cartridges at $120 each, involving a further expenditure of $7,500.

Although the aftermarket was dominated by the plaintiff's sales of new cartridges, there was also in Hong Kong a cottage industry of refilling used cartridges comprising 40 per cent of the market there.

The defendant manufactured new cartridges and sold them in Hong Kong and for export in competition with those of the plaintiff. The plaintiff commenced proceedings, inter alia, for infringement of copyright in the...

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