Jerusalem Court Issues Temporary Injunction Against Copycat Challah Cover Manufacturers

December 31, 2009

Karashi is a leading manufacturer of mass-produced Judaica with some 1800 product lines, and 200-300 new products a year. One successful line they do is a series of challah and matzah cloths, for ritual leavened and unleavened bread, that have the words Shabbat and Yom Tov (Sabbath and Festivals) embroidered on a translucent material, within a contrasting and opaque framework.

One of their clients decided that this style was so successful that they ordered a large quantity to be made directly for them in China. Understandably Karashi was somewhat annoyed by this and sued for IP infringement.

Since the products were conceived for mass production, they are not protected by copyright. They could have been protected by filing for registered designs but Karashi failed to do this. The main grounds for filing charges were thus Unjust Enrichment and Passing Off.

Judge Yosef Shapira of the Jerusalem District Court reviewed the various decisions he considered relevant and issued a temporary injunction against the defendants, forbidding them from marketing illicit challah covers with the words Shabbat and Yom Tov on a translucent material surrounded with opaque borders.

Comment

After the Supreme Court upheld the A.Sh.I.R. decision back in 1994, there are unregistered intellectual property rights available in Israel under the doctrine of unjust enrichment, at least where the court is convinced that the copying was with intent.  Since Shapira is supposed to follow legal precedent, it is not unreasonable to rule unjust enrichment. That said, though resplendent with references to the case-law, the decision appears to apply tests for the likelihood of confusion regarding trademarks to other areas of IP and in general shows little understanding of basic IP issues. Personally, I cannot see the unique design contribution of the words Shabbat and Yom Tov embroidered on a challah cloth. This seems to me to be totally generic to products of this nature. 

Shapira relates to property rights and infringement when there is no property and no infringement. It may be that there is unjust enrichment, but maybe not. Perhaps after a full trial, the defendants will find pre Karashi examples of challah cloths of similar designs. Whilst accepting that the A.Sh.I.R. Ruling is a relevant legal precedent, I was never happy with the decision. Registered rights last for a specific period of time and follow various rules. Unjust Enrichment is too vague both with regard to scope and with regard to duration. The interaction between Unjust Enrichment and the Basic Law, freedom of business activity, is not clear.

Granting a temporary injunction is particularly problematic on the basis of unjust enrichment, as there are no prima facie rights infringed, and temporary injunctions are by their nature, issued before weighing up the evidence, so the defendants should be considered guiltless until the plaintiffs rights to a monopoly are established. Competition that drives the price down is generally public interest and monopolies are not. If one can get preliminary injunctions under the laws of unjust enrichment, then why bother registering designs at all? Why limit oneself to something objectively new, why pay registration fees and why limit one’s protection to 15 years if you can sue under unjust enrichment without any of these limitations?

What is really missing, of course, is an up-to-date Israel Design Law rather than an out-dated ordinance. There should be limited period unregistered design protection, and probably a grace period. Novelty should be universal and not local.

The temporary injunction prohibits the defendants from manufacturing or selling their made-in-China challah cloths to third parties, directly or indirectly.  Somewhat surprisingly, in this intermediate ruling Judge Shapira has forbidden the defendants from directly or indirectly selling similar challah cloths in Israel or abroad. Thus these non-registered design rights are extra-territorial! I think this is a little beyond Judge Shapira’s jurisdiction.

The range of Karashi designs are found on their website. See

http://www.karshi.co.il/shop/retail/store/listCategoriesAndProducts.asp?idCategory=70

The intermediate ruling relates to rectangular cloths with opaque borders, translucent centers and the word Shabbat and Yom Tov embroidered thereon, with additional decoration being possible.  Not that difficult to have filed a design for that. In most things there are trends. Should the first person to introduce low slung jeans or some other clothing variation to be able to prevent others from doing similar designs? I can’t see why they should be able to without registration. It leaves too much at the discretion of the judge.  

Intermediate Ruling 8858/09 in 3402/09 (Jerusalem District Court)  Karashi International LTD., vs. Gift Center 2006 LTD., Ezer Deker, Ami decorative Products LTD. and Shlomi Nahisi.

2 Comments | design, infringement, Intellectual Property, Israel, Israel Court Ruling, israel design ruling, Israel IP | Tagged: , | Permalink
Posted by Dr Michael Factor

Israel Court Issues Stiff Sentence to Fake Viagra Distributors

December 31, 2009

The Tel Aviv Public Prosecution has successfully tried a ring of counterfeit impotent pill distributors under the Criminal Code.

In a plea bargain the first two defendants admitted importing fake Viagra over the Internet and selling it as genuine Pfizer impotence pills.

 Judge Hadassa Naor over-ruled an opinion from the Assessment Service that recommended rehabilitation, and sentenced them to 16 months in prison, with a further 8 months suspended on condition that they do not repeat their crimes for 3 years. In addition, they were fined of 50,000 NIS (about $14,000).

Naor considered the public interest to put the perpetrators behind bars as over-riding rehabilitation considerations since she considered fake Viagra, taken without a prescription, potentially life threateningly dangerous. The defendants have 45 days to appeal.

Leave a Comment » | drugs, Intellectual Property, Internet, Israel IP, pharmaceuticals | Permalink
Posted by Dr Michael Factor

Filtron Trademark Rejected as Confusing to Public

December 30, 2009

Israel Trademark Applications 19740 and 19741 relate to Filtron (text and graphic logo) for filters. During prosecution, Israel Trademark 164042 and 164043 for Filtran, also for filters.

The trademark examiner rejected the new applications as being confusingly similar to the previously registered marks, and the applicant appealed, pointing out that there were differences and that in the UK, apparently both marks are registered.  Commenting that she wasn’t able to establish whether there had been equitable behavior or not, Judicial Review Officer, Yaara Shoshani Caspi went on to rule that this was irrelevant as the marks were similar enough to confuse the public and refused to allow their registration.

Comment
I think decision is correct and we are pleased that she has ignored the “XO” decision by Deputy Commissioner Shalev Shmulovits who decided that where there is no issue of equitable behavior, there is no problem for two nearly identicval products (i.e. energy drinks) to share the same name see http://blog.ipfactor.co.il/2009/05/06/israel-patent-office-allows-two-companies-to-register-same-trademark/ 

Clearly, Filtron and Filtran are problematic in that they are almost generic. This may explain their co-existence abroad. Still if clients choose inherently distinctive marks, there would be little for trademark attorneys to do! We are pleased that the trademark office is filtering out these confusingly similar marks.

Leave a Comment » | trademarks | Permalink
Posted by Dr Michael Factor

Vanessa Hudgens Claims Copyright in Décolletée Images of Herself

December 28, 2009


Generally speaking, the subject of a photograph does not have copyrights therein. These accrue to the photographer, unless there is a contract to the contrary.

Actress Vanessa Hudgens has apparently been shocked to find full frontal, nude images of herself on the Internet, specifically on the site of moejackson.com, but as tends to happen with such things, the images are already available more widely.

Sometimes, such pictures are the result of paparazzi voyeurs and can be taken down by court order as being an invasion of privacy. In this case, it looks suspiciously like the actress is posing.

In an interesting move, Ms. Hudgens has claimed that she took the pictures herself and thus owns the copyright, which she has registered with the US Copyright Office. However, there is no indication that she was actively controlling the camera since there is no indication of a remote control, for example.

If the camera was operating automatically and filming everything, then arguably there is no copyright in the images. Perhaps it would be like a sports event. On the other hand, shouldn’t a model or actress who sets up a picture and then gets into the frame to be part of the image be considered as the photographer? Come to that, should it matter if someone else presses the shutter?

OK! magazine speculated that she would be dropped from High School Musical 3 when, in September 6, 2007, a photo of Hudgens appeared online, showing her nude. A statement from her publicist claims that the photo was taken privately and it was unfortunate that they were released on the Internet. Hudgens later apologized, saying that she was “embarrassed over the situation” and regretted having “taken [those] photos.” naked photos of Hudgens surfaced the Internet in late 2007. The Walt Disney Company denied the reports, saying, “Vanessa has apologized for what was obviously a lapse in judgment. We hope she’s learned a valuable lesson.”
A link to the article is here:

http://www.nydailynews.com/gossip/2009/12/24/2009-12-24_vanessa_hudgens_sues_over_nude_pics.html

As the subject matter is not part of the claim for copyright protection, but only the identity of the photographer, I am not posting the images. Despite not being convinced that Ms Hudgens took the compromising pictures of herself, herself.

3 Comments | Copyright, Intellectual Property, Internet, News | Permalink
Posted by Dr Michael Factor

State of Israel Sues Omrix for half a Billion, claiming that their IP is based on service inventions, belonging to the State

December 24, 2009

In a major development, the State of Israel has filed a law suit in the Tel Aviv District court against Omrix, a company that has commercialized medical adhesives for use by hemophiliacs, for 500 Million NIS, claiming that the company had defrauded the State and stolen Intellectual Property belonging to the State.

Omrix sold their IP to Johnson & Johnson last year. The case is interesting as the State is basing their claims on both testimony and documents submitted by a Professor Martinowitz, who they claim is the real inventor, as a state witness.

The charges are based on the following:

  1. Martinowitz was the true inventor
  2. Under Israel Law, the invention can fairly be considered as being a Service Invention since Professor Martinowitz was an employee of the army and then of Sheba Hospital, making him a civil servant
  3. Martinowitz could and should have reported the invention to his employer (govt. agencies)
  4. The employer would have taken the appropriate measures and could have come to a fair and equitable arrangement with Dr Martinowitz and with Omrix
  5.  The legal opinions re ownership that Omrix obtained from their IP counsel were tailored to order and therefore worthless
  6. Fraud was committed when Omrix removed Martinowitz’ name from one of the earliest patents of the US patents, to not acknowledge him as an inventor in an attempt to intentionally defraud the government

I have a number of reservations regarding this suit, which is the first time that the State of Israel has addressed the issue.

In September this year, the University of Western Australia v Gray, the Australian Full Federal Court upheld a decision that a medical doctor affiliated to the university and to a hospital behaved reasonably when he filed patent applications in his own name. The ruling was based on academic researchers not being employed to invent. Israel has similar common law origins to Australia. Furthermore, since 1980, arguably the Basic Laws may provide an additional basis for defense.

Friend and colleague, Dr. Shlomit Yanisky Ravid was awarded a Ph.D. from the Hebrew University for her thesis on employee rights and she believes that the Israel Law can be creatively read to show that employees do have rights.

I will be publishing a fuller article shortly.

Leave a Comment » | Academia, Intellectual Property, Israel, Israel Related, News, Patents | Permalink
Posted by Dr Michael Factor

Federated Institute for Patent and Trademark Registry is a Scam

December 23, 2009

We regret to inform readers that there is yet another SCAM service offering registration of IP rights.  This new one, the Federated Institute for Patent and Trademark Registry (FIPTR) has actually had an injunction served against them by the Florida Attorney General. See:  http://www.wipo.int/pressroom/en/articles/2009/article_0062.html

We are providing this information as a service for clients and readers.

Leave a Comment » | Uncategorized | Tagged: , , | Permalink
Posted by Dr Michael Factor

Supreme Court Rules that Usage of “Shemesh” by Competing Restaurant is Kosher

December 20, 2009


The term Shemesh means sun. A Ramat Gan restaurantier called Menashe Naama has built up a reputation for quality shwarma (grilled meat shaved off a rotating grill) using the name Shemesh. TM 182114 issued for Shwarma Shemesh, and TM 129756 issued for a graphic logo including the word Shemesh, and TM 69183 for Mitamei  Shemesh (taste of the sun). 

The word mark disclaims the term Shwarma but appears to convey exclusive rights to the term Shemesh for class 43.  So thought Justice Yehuda Zaft of the Tel Aviv District Court, who noted that Naama had built up a reputation and issued an injunction against a competitor in Tel Aviv who changed his sign to read “Tasty Grill Shemesh Restaurant”.  

Surprisingly, Justice Asher Grunis of the Israel Supreme Court thinks that this is reasonable, and does not think that the trademark family with 20 years of use provides rights for shemesh that prevent it being used with terms like grill and restaurant that are certainly generic. The case has been referred back to the District Court.

Leave a Comment » | Israel, Israel Court Ruling, Israel IP, Israel Trademark, Opinion, passing off | Permalink
Posted by Dr Michael Factor

Vatican City Claims Unique Copyright

December 20, 2009

The world’s smallest nation, the Vatican City, has a population of about 900.  They country is, however, a member of WIPO. Their copyright laws are available here: http://www.copyright-watch.org/state/va

Concerned with commercialization of the Pontifical character, the Vatican has decided to pass a special copyright law to prevent others from referring to goods and services as being Papal. They apparently seek to establish and safeguard the name, image and any symbols of the Pope as being expressly for official use of the Holy See unless otherwise authorized.

See http://www.catholicnewsagency.com/news/holy_see_declares_unique_copyright_on_papal_figure/

We find this development interesting. A lex specialis is always interesting. I’d have thought a trademark would be more appropriate.  For some reason however, the Holy See is not a member of the Madrid protocol.

There were a couple of trademark registrations for Pope in Israel, but the files are closed.  I couldn’t find any registrations including the words pontifical or papal however. That said, despite rules governing ordre public, the mark Jesus Boat was considered allowable for a cruise ship on the Sea of Galilee. 

I suspect that anything going beyond standard trademark rules that is introduced by the Holy See will not be enforceable elsewhere. We note that attempts to trademark Bobover Rebbe and Admor miBobov (lehavdil) in the US and Israel caused some controversy. Meanwhile, the Orthodox Union have successfully enforced the OU symbol against a petrol station using Trademark Law.

Leave a Comment » | appellation of origin, Copyright, infringement, Intellectual Property | Permalink
Posted by Dr Michael Factor

USPTO provides a Chanucka present to other patent offices

December 19, 2009

Patently-O has reported an interesting development. the USPTO have published a spreadsheet that uses historical data regarding the number of examiners, backlogs of pending applications and the like, to simulate the effects of hiring and firing and new filings on USPTO backlogs.  

See http://www.patentlyo.com/patent/2009/12/play-the-patent-office-director-game.html

The Israel Patent Office has been hit by the world-wide recession with a large drop in new filings. However, to reach the magic 100 examiner number to become an International Search Authority for the PCT, has recruited new examiners and is still looking for more.

Unfortunately, due to a complicated geopolitical reality, Israel cannot join forces with her neighbors and set up a regional examination group.

I suppose cutting the number of new filings by 99% to adjusting the USPTO model to the Israeli reality and making similar adjustments for the number of examiners was a little unfair, but it does have interesting repercussions. The model needs some tweaking, but it is one way to examine if applicants are likely to be issued a Notice Before Examination prior to filing their applications, for example.

This is not that far-fetched. The EPO issues a European number to PCT applications on the off-chance that the applicant will file in Europe. Israel could perhaps do the same, and maybe inform potential applicants that if they file their ‘green’ applications and invoke Section 17c, the patent could issue prior to being drafted or something. 

Unfortunately, like all modelling software, there are bugs that need ironing out. For example, there is no RCE in Israel. Nevertheless, the program does offer some fascinating insights into what goes into running a patent office. With the head of the USPTO blogging, I see no reason why I can’t use his software to make predictions. Of course, none of us predicted the world-wide recession even as late as June 2008, and we don’t know how the soon-to-announced Bilski ruling will shuffle the deck. Perhaps I’ll stick to the tea-leaves…

Leave a Comment » | Intellectual Property, Israel Patent, Israel Patent Office, PCT, USPTO | Permalink
Posted by Dr Michael Factor

Laboratoire Remede and Remede Spa Considered Generic

December 19, 2009

Ruling the French names simply generic combinations of common distinctive words, the Deputy Patent Commissioner, Noach Shalev Shmulovits of the Israel Patent and Trademark Office has refused to allow Laboratoire Remede, (Healing Laboratory) for creams, gels, shampoos, conditioners and the like in class 3, and Remede Spa (healing spa) for class 44, covering spas and massages.

The term Remede Spa was graphically rendered, but since it had not been in commercial use in Israel, was not considered as having acquired distinction by virtue of the graphics.

I suspect unhelpfully to the applicants,   Remede Spa was allowed for cosmetics not intended for use at spas and Laboratoire Remede was allowed for spa services.

 I am not personally familiar with the products, but from the description on the website, they could no doubt improve my complexion. See www.remede.com/spa.html and http://www.remede.com/home.html

The decision is in line with the recent American Apparel decision, also dissallowed as being descriptive. I wonder though; why can’t a generic name in a foreign language become distinctive through usage?

Leave a Comment » | IPO, Israel Trademark, trademarks | Permalink
Posted by Dr Michael Factor

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