Vanunu’s hand

April 15, 2015

learned hand

Zoom 77 A. Sh. LTD has sued Buzz Television LTD for copyright infringement in that Buzz Television broadcast the well known photograph of Israeli traitor Mordechai Vanunu’s hand pressed against the van Uno car window, with the information that he was abducted in Rome by Israel’s Secret Service.

Instead of arguing for informational, non-profitable purposes, de minimis fair use, I am not reproducing the offending image here. Those interested in it can type Vanunu hand into their search engines.

Buzz Television LTD included the image (Vanunu’s Hand, not Learned Hand) in a documentary called the Israel Connection that was produced for Israel’s Educational Television channel. They did not receive permission to include the image and Israel’s Education Television was sued and obliged to pay compensation. See Civil Case 9260-09-12 Zoom 77 A. Sh. LTD vs. Israel Educational Television, 16 January 2014.

(ת”א (מחוזי י-ם) 9260-09-12 זום 77 א.ש (2002) בע”מ נ’ הטלוויזיה החינוכית הישראלית (16.1.2014
Buzz Television LTD used a clip including the image on their website as well, also without permission and without indicating the copyright owner. This second usage is the basis of the current law suit in which Zoom 77 claimed 80,000 NIS compulsory compensation without proof of damage under Section 56 of the Israel Copyright Act 2007.
Buzz Television LTD accepted that the image was owned by Zoom and that displaying it on Buzz’ website was an infringing use. The point of contention was the appropriate compensation in the circumstances.

Section 56b of the Law brings various relevant considerations for setting the compensation including the scope of infringement, its longevity, its seriousness, actual damages, profits to the infringer, the defendant’s activities, the relationship between plaintiff and defendant and inequitable behaviour.

In the present instance, Judge Gideon Gidoni of the Jerusalem Magistrate’s Court noted that the photograph has significant journalistic value and was used to market and promote the defendant’s activities. On the other hand, no evidence was given by the plaintiff regarding the traffic to the website in general and the clip in particular. The Defendant claimed that the clip was a minor component on the website and hardly watched.

No evidence was provided as to how long the image was displayed, but one can assume that the defendant was involved in the case against Israel Educational Television 18 months earlier, and could and should have taken down the clip. Buzz Television is a production company working in the media industry and should be aware of copyright issues and should consequently be highly aware of other’s creative rights. The cost of licensed use of the image was 1600 Shekels.

Judge Gidoni noted the damages paid by Israel Educational Television 18,000 Shekels for first infringement and then 50,000 Shekels for a second infringement last year, and that this was a repeat, albeit indirect infringement of the same product.

He also related to third parties reproducing other news images, including Rachmani v. Israel News 2011 (15000 Shekels for an iconic news image)  the learned, but perhaps not very analytic judge ruled compensation of 25000 Shekels. Civil Appeal Basketball League Management vs. Rachmani (the famous Tal Brody lifting the European trophy “we are on the tablecloth map” where 18000 Shekels was ruled and Kfar Blum Kayaks vs. Manara Cliff 2012, where 75000 Shekels was awarded for moral rights infringed by not mentioning the name of the photographer of the tourist attraction.

In another recent case, Zoom sued Tratkover and was awarded 22000 Shekels.

Judge Gidoni ruled 25000 Shekels compensation, 1000 Shekels costs and 3000 Shekels legal fees.

Sh-14-02-30214-730 Zoom 7 vs.Buzz television re Vanunu’s hnad photo, Judge Gidoni, Jerusalem Magistrates Court, 8 April 2015.

COMMENT

Vanunu set up the picture. The handwriting, font and content of the writing on his hand is his copyright. He was also responsible for positioning his hand on the car window and for his posture. Perhaps he deserves royalties as much as he is deserved his jail sentence?  The journalists that caught the image did very little artistic creation, and arguably whoever crops the image for insertion into a newspaper deserves as much credit and name recognition.

There is certainly a value in fidelity of the law, and levels of compensation for similar infringing acts by different parties should, perhaps, be similar. I would, however, like to feel that judges can analyze and reach sophisticated conclusions and not merely bean count.

I believe that there are iconic images, film clips, sound tracks and the like that have a place in any documentary or dramatization of significant history. I think it ridiculous that a birthday party in a film won’t include children singing Happy Birthday. A film of Martin Luther King couldn’t reproduce his “I have a dream” speech.

In Israel, Holocaust Memorial Day starts this evening. When looking for two rapper versions of Israel’s National ANthem, Hatikveh that were the basis of a copyright infringement proceedings, I discovered a BBC radio clip of the first Friday night Kabbalat Shabbat Service from Bergen Belsen after the camp was liberated. After singing the Hatikveh, one clearly hears the then British Chaplain, the Late Reverend Hardman announcing that the people of Israel live. I sent the clip to his grandson, Danny Verbov who thanked me, and told me that he;s sent the clip about one a month. He kindly sent me a copy of Rev Hardman’s sermons that he’d edited. (I am ashamed to say that I used to go out to play during the sermons).

Now, Danny (and presumably the BBC) could have sued me for downloading and copying or linking to copyright material. At one suing a month Danny would solve the problem of spam email and have a nice sideline. Thankfully he is a mensch and has more sense.

I’d like to see standard reproduction royalties for usage of these literary and artistic creations.

I have illustrated this post with a picture of the US judge who detailed the various considerations regarding compensation for patent infringement in Georgia Pacific vs. American Plywood. The reason for referencing this is not just that he found 15 Factors of relevance, which sounds like an extended family seder, or even that the judge is called Learned Hand. I think his analysis is of relevance when calculated copyright royalties as well as patent royalties.

As always, comments and feedback are welcome.


So Israel took his journey with all that he had, and came to Beersheba (Genesis 46)

April 14, 2015

park Carusso

Yesterday I enjoyed a pleasant trip down South to attend the WIPO Roving Seminar in Beer Sheva. The drive was pleasant. Negev is very verdant and the ornithology was good, with a lot of storks and black kites and the odd short-toed eagle in evidence. The event started at 9:30, and, with considerably less congestion getting into Beer Sheva than into Tel Aviv, I arrived at 9:15 am at the Carusso Science Park.

Moshe Lemberg, the Senior Program Officer at WIPO who organized the event introduced himself to me and hoped that I would blog about the refreshments. I thought this was a little surprising as the rogelach and burekas were fairly standard fayre but did make a welcome breakfast. Unfortunately however, the 3 litre hot water urn was inadequate to the task and I was unable to make myself a coffee. That had an adverse affect on my concentration during the first part of the program, and I noted that after Dr Daniel Ben Oliel presented the prize for Excelling Academic thesis in various fields of IP [sic] there were three or four competitors who presented brief talks on their papers for the Israel Patent Office Competition, but have no idea what they talked about. The chairs were too comfortable, I’d left home at 7 am and I was too far away from the screen. My neighbor kept nudging me. I suspect I was snoring a little. I went to the bathroom, washed my face and had a coffee (botz, using water from the now refilled urn), and went back in sitting closer to the front. This was a great improvement and I found the sessions interesting, stimulating and enjoyable.

Those wanting a review of the early sessions are respectfully referred to the IPKAT where the Doyen of IP Bloggers, Professor Jeremy Phillips has some insightful and relevant comments. See here.  For inciteful and irrelevant ones, read on!

Professor Phillips notes that there were 98 registrants. He was sitting in the back corner and was better situated to count heads than I was. I do try to keep tally on these events however, and did a head count on three occasions throughout the day. I noted 60 in the audience. With 5 rovers from WIPO and a large contingent from the patent office, this was less than impressive. I hope that the Haifa event on Tuesday is better attended, and as the program is largely the same, can highly recommend it.

PCT

PC Tea

PC Tea

Mr Matthew Bryan, the director of the PCT Legal Division gave a brief review of the PCT system and recent developments, and the amicable and helpful Dr Michael Bart who heads up the Israel Receiving Office spke about recent changes there. The local Beer Sheva (actually Omer – but who’se counting?) Mukhtar Patent Attorney, Dr Kfir Luzzatto joined Matthew and Michael, and gave some thoughts on the PCT, how Israel joining the system had affected the profession, and how he views International Search Reports from the Israel Patent Office.

Trademarks and Designs

Ms Debbie Roenning, Director of the Legal Division Madrid Register, Brands and Designs Section (BDS) spoke on Madrid system for trademark registration and then on the Hague system for Design Registration.  As well as showing which countries had signed up, she showed which countries were in the process of signing up which was useful. She also had some tips regarding tailoring goods for different jurisdictions, translating the list of goods into Hebrew, adding countries to an existing application and varying classes per country that were very informative.

Ms Anat Levi Sofer spoke briefly about trademarks and Madrid from the perspective of the Israel Patent Office and considered Israel joining Madrid a great success. Ms Ronit Bazik Sofer, head of trademarks at Reinhold Cohn represented the private sector and noted that she had been apprehensive of Israel joining Madrid and indeed, there had been a drop off in work since Israel joined, but with increased prosecution, things had evened out.

Knowing the official figures regarding trademarks filed directly into Israel and via Madrid, and Madrid marks originating in Israel, I think that both Ms Anat Levi Sofer and Ms Ronit Bazik Sofer were being less than objective. (Reinhold Cohn has too large a market segment for their practice not to follow the official statistics). Israel is very good at creating technology, but is less successful at launching international brands. Madrid has not been widely used by Israeli companies. It is possible that with additional prosecution resulting from more trademark applications designating Israel, workers in the trademark office and in private practice feel that they are busy. However, without the lucrative filing and with renewals handled centrally or by bucket shops, the revenues generated are lower that revenues once were. This is true of both patent office revenue and income to IP firms.

There was an opportunity to ask questions. In her first slide, Ms Roenning had shown various recent Israel trademarks filed by Israelis. The slide also included WIPO’s logo. It was tempting to ask why they had chosen what look’s like a roll of toilet paper, but I decided that it would unnecessarily cheapen the event.

Wipe-o

WIPE-O !

WIPO’s Arbitration and Mediation Center

Mr Matthew Bryan gave a presentation regarding WIPO’s arbitration and mediation services.  It was certainly worthwhile reminding those present that there are alternative methods of dispute resolution, and that going to court is not the only option.

Databases

Mr. Yoshiyuki Takagi spoke about WIPO’s databases such as WIPO Green and WIPO Re:Search. This brought some useful online tools to the attention of participants.

Lunch

ravioli

We were pleasantly surprised that WIPO / Patent Office had laid on a sumptuous buffet of ravioli, pizza, macaroni, cheese rolls, garlic bread, quiches, cheeses and salads. Had this been a couple of days after Shavuot (Pentacost) this may have seemed more of the same, but after a week of Pesach, noone passed over the opportunity to dine on hametz.

Copyright 

real life

Mr. Paolo Lanteri, the Legal Officer, Copyright Law Division, Culture and Creative Industries Sector, WIPO spoke about the gaming industry. It seems that I was far from the only participant who wasn’t a gamer. I put this down to a combination of the audience being middle aged nerds.

It was fascinating to learn that the gaming industry is more significant financially than feature films and music combined. Happily people still read.

It seems that protecting IP in games is a complicated issue. The talk was very informative.

Questions were solicited and I made a case for moving over to registration of copyright and shorter periods of protection since I consider the system as broken. Jeremy Phillips took issue with my position and argued that most people in practice can do most of what they want and that the system does give redress for abuses. We continued arguing in the car back to Jerusalem.

Closing session

men in suits

The WIPO representatives and the Commissioner got on stage together as a panel. It was reassuring with INTA coming up, to note that my charcoal suit is apparently in fashion for IP events.

Dr Luzzatto took the opportunity to ask about Arab countries boycotting Israel, giving the example of Jordan that, despite a peace agreement, in practice the legal profession there won’t represent Israelis.

Mr Matthew Bryan first dodged the question by noting that Jordan was not a signatory to the PCT. As Kfir would not let things go at that, he rather sensibly pointed out that WIPO strongly condemns Arab countries discriminating against Israel, and writes strongly worded letters noting that such countries are not living up to their international obligations. He did, however, point out WIPO does not have enforcement police and their influence is very limited.

The Commissioner noted that Israel could theoretically refuse to allow applications originating from countries that don’t accept Israeli trademark or patent applications, but that the Israel Patent Office decided not to adopt this policy.

Retired US patent attorney Bruce Lilling noted that Taiwan, an important industrial nation was kicked out of the PCT mechanism at China’s request.

Recommendation

For those who missed the Beer Sheva event yesterday, I recommend trying to attend the largely parallel but slightly shorter program in Haifa tomorrow. See here.

Gratuitous Political Rambling Digression (its my blog so I can do what I like)

I note that Ms Debbie Roenning (who also wore a trouser suit, but not a tie) is the head of the Brands and Designs Section which shares the unfortunate acronym of BDS, the ‘Boycott, Divestment and Sanctions’ Movement, the allegedly pro Palestinian, but actually notoriously hypocritical and anti-Semitic international movement.

On the way to the conference, I noted Sodastream’s new factory in Beer Sheva. They moved from the Industrial Area by Maale Adumim (a satellite town of Jerusalem on the road towards Jericho) in response to vicious propaganda abroad. In the Maale Adumim factory, Sodastream provided jobs to West Bank Arabs and was a model of co-existence. Forced to relocate, the primary sufferers are the West Bank Arabs.
WIPO is one of the least anti-Israel organs of the UN. I think it might have been very worthwhile for them to have invited Jordanian, Palestinian and Egyptian IP professionals, both government and private, to the event. I am on good terms with professional colleagues in all these jurisdictions, and with others in Lebanon, Saudi Arabia and elsewhere, who read this blog, and chat amicably with me at INTA, AIPPI and other international conferences. Peace is made by trade.

Of course, Israel is not the only country to have been boycotted. To advance U.S. foreign policy and national security objectives, the U.S. maintains laws and regulations that impose economic sanctions against certain countries, individuals, and entities (the “U.S. Sanctions Program”).  31 C.F.R. § 501 et seq.  The Office of Foreign Asset Control (“OFAC”) at the Department of the Treasury manages the U.S. Sanctions Program.  The U.S. Sanctions Program prohibits U.S. nationals and U.S. companies from doing business in embargoed or sanctioned countries and from doing business with individuals or entities subject to U.S. sanctions laws and regulations.  At various times, the US has forbidden their nationals to register trademarks in Cuba and has also failed to uphold Cuban trademarks. Whether or not human rights are more mistreated by Castro’s regime in Cuba or by the US in the Guantanamo Bay prison camp is not clear.


Is Automation A Good Thing?

April 12, 2015

computer compatible

I am aware that as a patent attorney I am  supposed to be technology-savvy. Sometimes however, I think that William Ludd had a point. I hate smart phones and have been trying to downgrade for ages. It apparently doesn’t work like that.

I’ve just received a reminder from the Design Department of the Israel Patent Office today. It opened up nicely on my screen. The only problem is that what opened up nicely in html was the reminder. The automatically filled in details such as the file number and date didn’t show up. I downloaded the file and it corrupted.

I contacted the design department and after a bunch of strange emails from the head of the department to the effect that the document sent to me electronically is exactly the same as that which they used to send manually, and that it opened OK on the Israel Patent Office website, eventually we concluded that my computer is configured differently from that of the Israel Patent Office machines.

I was a little put out when the Examiner asked me if my software was Kosher. I mean as a Patent Attorney who makes a living from IP, is it likely that I would be using a rip off version of Word? Of course my software is Kosher. That said, an eminent Israel IP Law Firm (which I shall not name here) was caught by the Business Software Alliance with one Microsoft Office disk for a dozen or so computers. Very embarrassing.

To send PCT applications electronically, I use Explorer as the electronic sending doesn’t work on Chrome. To update my electronic signature from WIPO I had to install Firefox. I asked the Chief Examiner of the Design Department what the problem is and what the fix is. She told me that most patent attorneys don’t have a problem, but there were a couple of others that do. One has asked for reminders to be sent by snail-mail only. The other managed to update his system.

Now the problem could be my search engine (Chrome, Explorer, Firefox, different versions). It could be the operating system. It could be version of the operating system or the fact that I configure menus in English but have Hebrew support. It could be the version of Word. What I don’t understand is why I should have to work out the problem and solve it? PDF stands for Portable Document Format. A PDF file should open up on an IBM compatible PC or on a Apple Mac computer. It is designed to open on any computer with any system and is a standardized format.

Why should I have to update my system to match the one used by the Israel Patent Office? At present, my office computer works nicely. It multitasks without problems. There is an old adage that “if it is not broken, don’t fix it.”

I have a more up to date configuration on a new computer at home. Unfortunately, it has been nothing but trouble. I am therefore loath to update my office system as it is working smoothly. I have little faith in computer support. I have a neighbour who provides support to my computers at home. Once one tries to solve one problem by updating one component, suddenly the printer stops working, the screen goes blank, Hebrew types from left to right or English from right to left. My fairly new home computer system has never worked and we’ve reinstalled everything.

I think the Israel Patent Office should send PDFs.

Back in the old days when we had to submit PCT applications on disk, the Israel Patent Office (IPO) wanted the ZIG file on a 3 1/2 floppy. Having problems finding the disks and a disk drive, I suggested they move to DVDs. I was told that it was a waste of memory using something with megabytes of storage for a few KB of data. I pointed out that the issue was unit cost of medium not the total storage capacity. I offered to donate a CD ROM reader to the IPO. Eventually they saw reason.

 


Can the appearance of a smartphone be trademarked?

April 12, 2015

We recently reported a circular summing up Israel Patent Office policy regarding 3D trademarks. Whilst radiator caps and the like are clearly registerable, in general, the Israel Patent Office is wary of allowing trademarks for the shape of functional articles or for novel packaging and it is necessary to show that the shape is not merely functional but has acquired distinctiveness.

Smartphone

It seems that the circular was a prequel to a recently published ruling wherein the Israel Patent Office refused to allow the shape of an Apple i-phone to be registered as a trademark. The mark in question is IL 236294 as shown above. The mark covers “Handheld mobile digital electronic devices for use as a mobile phone, digital audio and video player, handheld computer, personal digital assistant, electronic organizer, electronic notepad, electronic calendar, electronic book reader, calculator, and camera, for sending and receiving electronic mail and other digital data, and for accessing the Internet; all included in class 9″. The mark was filed in March 2011 and claims priority from a Hong Kong mark filed in September 2010.

The Examiner considered the requested mark as an image of the good being sold and not a trademark showing the origin of the good and therefore refused it under Section 8a of the Israel Trademark Ordinance 1972, following the guidelines of Circular MN 61 from 2008.

The examiner considered the correct protection for that shown is as a registered design and that in order to register the design as a trademark it is necessary to show that it is neither aesthetic or functional in essence, and has acquired the trademark characteristic of indicating origin through usage.

The Applicant responded that the image was of an I-Phone 4 which was exclusively associated with Apple and was well recognized and respected worldwide, and had successfully been registered as a trademark in many countries, including Australia, the US, Ukraine, turkey, Switzerland, Japan, France, the EU, and Hong Kong. The Applicant further requested that the mark be allowed under Section 16 based on the corresponding US registration no. 3,470,983. (Section 16 allows marks having minimal distinctiveness to be registered based on a registration in Applicant’s home country).
The examiner pointed out that the issue wasn’t minimal distinctiveness or the lack of it, but rather if the requested mark is the appearance of an article that is aesthetic or functional in essence, and so upheld the refusal.

The Applecant Applicant reiterated that the mark had acquired distinctiveness and that it was identified with the applicant and brought an Affidavit from Thomas R. La Perel, Apple’s general legal counsel. In the Affidavit, La Perle stated that “The Application is for the design of Apple’s distinctive iPhone telecommunications device featuring Apple’s unique product configuration and colorful icon display”. La Perle stressed the product’s design and that “Consumers identify the get up with the product and Apple as its source. He noted that Apple had spent vast sums advertising and promoting their product and gave evidence for this.

RULING
In her ruling, Ms Bracha noted that trademarks may be 2 or 3 dimensional and are suppose to be indications by the manufacturer of the origin of the goods. In this case, the mark was not indicated as being a three dimensional mark and it is correct to assume that it is a two dimensional mark, and the applicant argued that it was a two dimensional mark of the face of the i-phone which is rectangular with curved corners, with icons in rows of four, as a feature that can be changed.
In Appeal 11487/03 August Storck KG vs. Alfa Intuit food Products LTD (Toffiffee) the Supreme Court ruled that the appearance of a good (whether 2d or 3d) may serve as a trademark but only if it is very different from that typical of the type of product, such that the consumer comprehends it as an indication of origin. This is eseentuially what the ECJ ruled in C456/01, 457/01 Henkel KGaH v. OHIM (2005) 34-39 http://curia.europa.eu/en/content/juris/index.htm which referred to August Storck KG vs. OHIM sections 25-29 to the effect that the law applies to two dimensional images of the three dimensional product.

Thus whether or not the mark is two or three dimensional, if it is a representation of the product or its wrapping, the issue is whether it is functional or aesthetic in essence, or serves as an indication of origin.

Applicant argued that the image is of the front surface and is flat, so three dimensionality and product appearance is not an issue. The deputy commissioner disagrees.

Here the Deputy Commissioner related to recently issued circular 032/2015 that replaces MN 61 and provides a certain leniency to representations of flagship products.

In this instance, the registration in the US is for the shape of the phone with specific icons in a specific pattern and the application in Israel is very much broader.

In Europe, EC Regulation 207/2009 states that:
“1. The following shall not be registered or, if registered, shall be liable to be declared invalid:

(e) signs which consist exclusively of:
(i) the shape which results from the nature of the goods themselves;
(ii) the shape of goods which is necessary to obtain a technical result;
(iii) the shape which gives substantial value to the goods;”
Regulation 3 continues to state that marks that have an acquired distinctiveness may be registered provided that they are not one of the alternatives in Regulation 1 which is an absolute bar to registration.
Citing T.C. Jehoram, C. van Nispen, T. Huydencoper European Trademark Law, p. 103 (2010(:
“In connection with the fact that the absolute ground for exclusion of Article 3(1)(e) Directive cannot be overcome by acquiring distinctive character through use, it is also relevant to asses whether or not the shape previously gave the product substantive value. The grounds for exclusion may not arise before the shape has acquired a reputation as a distinctive sign. In that case: once affected by the absolute exclusion, this exclusion always applies.
In other words, before considering whether or not the mark has acquired distinctiveness, it is necessary to address whether it is in a class of goods that can not be registered under any circumstances without the company name or the like.
The Applicant argued that the issue is not whether the design is aesthetic or functional, but if it is exclusively aesthetic or functional. Thus in cases like this where the appearance is functional or aesthetic but not exclusively so, and where the consumer would identify the appearance as a source of indication of the product, the appearance should be registerable.
The Supreme Court used the word significant functionality or aesthetic character (ממשי) where as the European court used the word exclusive (בלעדי), to the effect that as far as Israel is concerned, a significant functional / aesthetic characteristic is sufficient to prevent registration, even if the good has acquired distinctiveness.

The applicant tried arguing that since the appearance could vary somewhat, the appearance of a smartphone cannot be considered essentially functional / aesthetic and thus not registerable.

The Deputy Commissioner accepted that function could be attained differently, but considered the design as aesthetic and thus non-registerable as a trademark, though registerable as a design. She was not prepared to allow registration on the grounds that other smartphones were variations on the theme, considering the design aesthetic.

In the State of California, the I-phone was recognized as having “unregistered trade dress” and the applicant considered this fact as indicative that there was something that could be registered as a trademark. The Deputy Commissioner cited IL 169447- IL 16949 Ein Gedi Cosmetics to the effect that even in the US trade-dress is relevant to unfair competition but to trademark registerability:

Restatement of Unfair Competition (3rd):
“The term ‘trade dress’ is often used to describe the overall appearance or image of goods or services as offered for sale in the marketplace. ‘Trade dress’ traditionally includes the appearance of labels, wrappers, and containers used in packaging a product as well as displays and other materials used in presenting the product to prospective purchasers […]”
Furthermore, in the US, as far as trade dress of a product and not its packaging is concerned, one requires acquired distinctiveness.
The Deputy Commissioner considered arguments by the Applicant as beign the first to launch a product with this appearance as of relevance to the issue of design registerability but irrelevant to trademark registerability per se.
As far as the graphic user interface GUI is concerned, the Deputy Commissioner cited Rachel Stigler, Ooey GUI: The Messy Protection of Graphical User Interfaces, 12 Nw. J. Tech. & Intell. Prop. 215 (2014).http://scholarlycommons.law.northwestern.edu/njtip/vol12/iss3/3 to the effect that:
“…trade dress right only attach once the GUI becomes so distinctive that it is recognizable by a majority of consumers (i.e., achieves near-famous status)…”

In general,design registration is preferable to copyright or trade dress:

“While at least one commentator suggests that design patents should be eliminated, arguing that protection afforded by copyright and trade dress is enough, design patents provide a more clearly-defined scope of GUI protection than copyright or trade dress (individually or combined), are gaining momentum in the courts and in the software industry, and are becoming faster and cheaper to obtain.”

In conclusion, Ms Bracha considers that since Toffiffee, the Israel Court has departed from the US and considers that not only does a product shape not have inherent distinctiveness but to be registered, it cannot have a significant inherent functionality or aesthetic character.

As to the trade dress issues, Ms Bracha noted that Israel law was not sufficiently clear if this is to be considered passing off, but did not consider that the design could be registered as a trademark due to its functional and aesthetic aspects.
Ms Bracha considered the acquired distinctiveness issue moot, but nevertheless argued that in this instance, the i-phone does not have acquired distinctiveness as a trademark. She did not consider Section 16 relevant.

Ruling re IL 236294 by Deputy Commissioner Ms Jacqueline Bracha, 19 March 2015.

COMMENT

apple suaceThe issue is whether the design is used to indicate Apple as the sauce source.

The problem remains that the design is identified with Apple, and is a design and should be treated as such. It cannot fairly be registered as a trademark. In my opinion, after A.Sh.I.R. torts of unjust enrichment and passing up could be brought if there is a case of passing off. Once competitor clearly writes Samsung or similar on the front of the case, I am not sure that they can’t copy the design unless it is registered.

This case is reminiscent of Interlego where Lego tried to obtain copyright for their distinctive brick design. Lego is a design and not a copyright. The appearance of the i-phone is a design and not a trademark.

The Israel Patent Office does not generally allow marks for functional or aesthetic elements, but only if they are used as an indication of origin, i.e. as a trademark. If the above image is shown on the outside of a box, is a graphic label of what is inside, or is it an image of what is inside?

The Israel Patent Office is applying its policy fairly in what is perhaps a difficult case. We understand that Apple may appeal this decision to the courts. That is the correct procedure with regards to patent office policy.


Professor Phillips Elected to the IP Hall of Fame

April 12, 2015

Top cat

This year the IP Hall of Fame welcomes leading US copyright scholar, lawyer and author Paul Goldstein; past president of the INTA and former chief IP counsel of Richemont Frederick Mostert; influential IP blogger and academic Jeremy Phillips; leading Australian IP lawyer Des Ryan; and, prolific inventor Nikola Tesla.

The IP Hal of Fame is an initiative of IAM (Intellectual Property Management), a magazine that I used to have a regular column in covering Israel IP developments, and still occasionally write for. I am delighted that Professor Phillips is being inducted into the hall of fame. I think it is very appropriate.

Tesla is presumably induced into the hall of fame. He died in 1943.

Professor Jeremy Phillips and his flagship IP KAT is an inspiration to fellow bloggers. He is also involved in a dozen other blogs and is very generous with his time and experience. Jeremy has spoken at a number of events I’ve organized in the past, and is always thought provoking and entertaining.

I think this is an appropriate tribute to one of the most prolific IP authors and trademark experts.


Israel Ranked 3rd in US Patent Filings

April 2, 2015

us patent3rd place

Israel originating patents filed in the US jumped 21 percent in 2014, according to a study by BdiCoface.

The study found that 3,555 Israel-based patents were filed in the US during 2014,which is nearly 389 patents per million Israeli inhabitants. Only Japan, with 445.6 patents per million, and Taiwan, with 524.4 patents per million, outranked Israel, which was ahead of South Korea, Switzerland, Sweden and Finland.

From 2009 to 2013, the companies filing the most US patents for Israeli inventions were IBM (674 patents), followed by Intel (435), Marvell (281), Sandisk (261) and HP (197). The top educational institutions in Israel filing US patents were Tel Aviv University (161), the Weizmann Institute (158), the Technion (137) and the Hebrew University of Jerusalem (116). These statistics are high compared to other universities abroad and is seems that Israel’s tech transfer policy is working.

Probably due to the relatively high cost, there has been a drop in European Patent Applications for Israeli inventions.

We note that the US is a preferred location for Israel inventors who may not bother filing in Israel. For fast moving industries such as telecommunications, it may make sense only filing in the US. For methods of medical treatments or after the inventor has published or presented his invention in public, there may be no alternatives. Nevertheless, we consider not filing in Israel may be a costly mistake. Often Israel has more than one company in the same technology area. Current employees may become competitors. Enforcing a patent in Israel is much cheaper than enforcement in the US and the costs of also filing and prosecuting in Israel may be minimal. Finally, with the PPH (Patent Prosecution Highway) first filing in Israel may speed up the process of obtaining a patent in the US.

We also note that patents and patent applications are not apples and oranges. The absolute numbers and even numbers per capita are statistics of doubtful value as some patents are worth billions and most aren’t worth the cost of obtaining them. That is true even if they are exceptionally well written, simply because some technologies are implemented and others are obsolete when filed.

I do recommend that my Israel based clients seriously consider filing in Israel. Apart from odd Judaica related inventions and other niche products, most file in the US.  China is taking over from Europe as a primary destination, but Europe, Korea and Japan are all popular. Australia and India are also on the patent map.

The correct strategy of where to file and indeed of what to file is very case specific and depends on a number of variables including but not limited to budget, business plan, technology field, the centrality of the patent to the company, the size of potential and actual markets and where competitors are domiciled.

 


PCT Direct

March 31, 2015

DIrect

The Israel Patent Office has announces an experimental service called “PCT Direct”.

PCT Direct is intended to make the process more efficient and to increase the value of the International Search Report (ISR) and International Preliminary Examination Report (IPER) that the Israel Patent Office produces as a Searching and Examining Authority of the PCT (Patent Convention Treaty).

The service is aimed at PCT applications claiming priority from an Israel Application and the system is designed to help respond to the Notice Prior to Examination of the Priority Application

The Applicant will be able to relate to all issues in the Notice Prior to Examination. The response is, however, not part of the PCT request. It seems that the idea is to file a PCT request as a response to a Notice Prior to Examination, submitting a marked up and clean copy, details of other prior art known to examiner and details of first publication.

If the art cited by the Applicant is of value, half the search fees will be refunded.

The PCT response and interaction will be considered as a response to the prosecution of the priority document if not yet allowed.

Apparently the Israel Patent Office is only the second authority, after the EPO, to offer this exciting new service.

 

COMMENT

I am confused as to the point and purpose of this development.

abbreviation

I have an aversion to abbreviations.  PCT, IPER, ISEA, ISR – at least the Talmudists had the excuse that scribes wrote by hand and parchment was expensive. Nevertheless, WIPO (World Intellectual Property Organization) uses them, so I suppose we must conform.

The EPO’s description of the PCT Direct service may be found here.

More substantively, The PCT application should be filed within 12 months of priority. Israel Applications publish automatically at 18 months, so one wonders what first publication is being considered here.

I think that this initiative is designed for applications that are made special and examined immediately, either due to them being green applications that are environmentally friendly, or due to applicant petitioning based on age, suspected infringement and the like. It is possible that this has ramifications for a PCT application claiming priority from an earlier PCT application.

It also seems that the applicant need not actively file PCT responses in the parent file but can rely on the system doing so automatically.

Not too long ago, the search report of the PCT was considered as something of little value and was often ignored by examiners who examined to grant patents.  Then came the Patent Prosecution Highway, and then the Superhighway. I think this further development is designed to demonstrate that the Israel Search and Examining Authority, is willing to grant patents based on their PCT work, as is, apparently, the EPO and to create additional trust in the system. Hopefully this will translate into less duplication and a faster, more efficient, high quality service.

This is, however, speculation.

Readers who can briefly summarize what PCT Direct is all are about are cordially invited to do so.


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