Israeli Leisure Promoting Website Sues competing site for Copyright Enfringement

March 25, 2010

An organized leisure activity session is called a Hoog in Hebrew. the sound H is a gutteral sound made at the back of the throat., as in Hanukkah. This is sometime  transliterated as Ch. The vowel is like the u in Chanuckah / Hanukkah and so the word Hoog could also be transliterated at Chug.

Why is the important?

The developers of “Hoogle” or “hoogel” a search engine for extra curricular and leisure activities http://www.hoogel.co.il/ sued a competing site http://www.hug.co.il/ that is accessible via hug.co.il or chug.co.il or hoog.co.il, claiming passing off, unjust enrichment, copyright infringement, etc.

The hoogle website claimed that adverts placed with them were copied by the competing site, and that this was copyright infringement.

Judge Eitan Orenstein dismissed all claims and awarded damages to the defendants, ruling that:

  1.  the name was generic so there was no passing off, cybersquatting or copyright enfringment.
  2. the sites were similar to each other, but also were similar to other resource directory sites. There were differences, so there was no passing off or misleading. 
  3. Factual data of the type in the listings was not copyright protected.
  4. None of the features allegedly plagiarized were sufficiently novel to be protectable

Justice Orenstein dismissed the claims and awarded NIS 50,000 costs to the plaintiffs.

case: 1379/06 (Tel Aviv) Hoogle LTD. and others vs. Eran Raviv, Eran and others 

Comment

the judge is correct to see freedom of competition as more important than claims of unjust enrichment. Likewise the domain names are indeed generic.

Interestingly, there are hints that the judge saw discrepancies in the defendants version of affairs. It seems that the competing website was inspired by hoogle, but there is no grounds to give hoogle a monopoly.

I think the decision is correct.

2 Comments | Copyright, Domain Names, Fair Use, Israel Copyright, Israel Court Ruling, passing off | Permalink
Posted by Dr Michael Factor

Lundbeck Loses Again – this time in the Supreme Court

March 25, 2010

After losing at the Patent Office – see http://blog.ipfactor.co.il/2009/03/05/israel-patent-…n-for-cipralex/ and then again on appeal to the District Court -s ee http://blog.ipfactor.co.il/2009/08/06/lundbeck-loses-appeal-for-patent-term-extension-for-cipralex-in-jerusalem-district-court-and-requests-to-appeal-to-supreme-court-patent/ Lundbeck, represented by Adv. Richard Luthi, appealed to the Supreme Court who have affirmed the original ruling and the appeal.

The issue is whether S-citaloparm, the active ingredient and the left handed stereoantomer of an anti-depressive Cipralex including both the left handed stereoantomer and the right handed molecule can be considered a new material warranting patent term extension.

Under Israel Law, the requirement for patentability is novelty, inventive step and utility. For patent term extension, the patent must be for the first patent protecting a material.

The Commissioner of Patents ruled that the S-citaloparm was a patentable invention, but, due to the earlier patent for Cipralex, could not be considered the first patent as far as patent term extensions are concerned. On appeal, the decision was upheld. At this second opinion, Supreme Court Judge Edna Arbel refused to allow the Israel Pharma Organization represented by David  Gilat to join as co-appelant or amicus brief, ruling that the issue in question was factual rather than legal - i.e. both sides accepted that first use of a new material was required, and the dissagreement was whether this is indeed a new material or not.

Arbel went on to accept Adi Levit’s argument on behalf of the opposer, Unipharm, that subsequent to the original appeal and before filing for a second appeal to the Supreme Court, the patent had lapsed, rendering the question academic.

She was critical of Lundbeck and their attorney, Luthie, for filing new arguments and contradicting statements made in the original request for extension. Although the case could be dismissed on a technicality that the patent had lapsed, she went on to point out that since the issue at stake was factual rather than legal, there was no reason to review the decision by the Commissioner of Patents, who had clearly weighed up the evidence and was the competent authority to do so. 

She noted that the Dutch patent on whcih extension was granted had meanwhile been voided. Finally, she was critical of attempts to persuade the court that they should conform to US and European decisions on the issue, as the Israel court was independent, and the UK court had already dismissed the Israel decision as being based on a different legal system.

The other two judges on the panel accepted her analysis and the Appeal was dismissed, with NIS 30,00o awarded to Unipharm in costs, and a further NIS 10,000 to the industrial society.   

Comment

Although with Adv. Tal Band representing the industrial manufacturers – i.e. the generic industry as a whole, backing Unipharm, it seems fair for Bareket of the RCIP group to support Lundbeck and Richard Luthi, Justice Arbel is correct. All generic manufacturers have an interest in a patent term not being extended as they can all then compete in a free market, so they are naturaly sides to the debate. The Israel Pharma Association were not a side and had no real interest, since the court is supposed to interpret and apply the Law, and lobbying shoudl be done at the Knesset, not at the court.

The decision is a correct one. There were no legal grounds for further appeal, merely financial ones. This is a case of evergreening.

Appeal to Supreme Court  5267/09 Lindbeck vs. Unuipharm, Association of Israel Industrialists (pharmaceuticals) with Pharma Israel – the umbrella group respresenting Drug Developers in Israel requesting to join or to file amicus brief. 

 

1 Comment | Israel Patent, Patents, pharmaceuticals, pharmaceuticals and Biotechnology, Uncategorized | Permalink
Posted by Dr Michael Factor

English and Scottish Football Leagues Sue Israel Score Draw Competition

March 24, 2010

Winner-Toto runs the Israel national football pools and is entrusted with the management of sports betting in Israel. It is an organization with a clear business orientation. 

In recent months, Winner-Toto has undergone a marketing revolution with the intention to reposition itself as a major business player in the market, which makes a significant contribution to the community by promoting recreational and sports activities, as well as improve the people’s quality of life. Over the past decade, Winner-Toto has placed about NIS 3 billion at the disposal of Israel Sports.

The Winner Toto website has been redesigned and constitutes 8% of total income.  Winner Toto have signed marketing and business agreements with basketball and football bodies. Winner Toto is a member of the EFP – European Football Pool for promoting sports activities in cooperation with the Union of European Football Associations (UEFA). Winner-Toto’s CEO is a member of EFP’s Managing Committee.

Under legislation from 1967, Winner-Toto has sole rights to organize sports betting in Israel, and the profits earned are dedicated to the advancement of sport.  There are, however, not enough matches played locally through the year for Winner Toto to rely on local fixtures. Instead, they select fixtures from the English and Scottish leagues.

The football pools are big business, bringing in huge revenues. Via their marketing subsidiary, the UK leagues sued Council for Organizing Gambling on Sports” (Winner Toto) for revenues, claiming Copyright Infringement and Unjust Enrichment. Losing in the District Court, they appealed to the Supreme Court.

On 14 March 2010, in Appeal 8485/08 the Supreme Court found in favor of the Council for Organizing Gambling on Sports against the FA Premier League LTD., the Football League LTD. the Scottish Premier League LTD., the Scottish Football League and Football DataCo. their licensing company, ruling that since the fixtures were the result of a fairly simple algorithm and matches are presented in chronological order of play-offs, with consecutive matches arranged alphabetically, the data is not copyright protected, since it lacks minimal creativity, although there is no doubt that arranging the league and the fixtures does require a large amount of work.

Having established that there is no copyright protection, the Court went on to rule that there is no basis for a remedy under the doctrine of unjust enrichment. Citing Justice Englard in the infamous A.Sh.I.R. decision 5768/94 , the Court held that in cases where there are no Intellectual Property rights, unjust enrichment is only applicable if there is a clear case of bad faith. Here, since by Law Winner Toto has a monopoly, there is no grounds to see unfair competition as there is no competition.  

I believe the Court’s logic here is fundamentally flawed. the doctrine of Unjust Enrichment is supposed to cover cases of free-riding where there are no statutory IP rights.  In the A.Sh.I.R. decision, the Supreme Court upheld a Tel Aviv District Court decision to provide a remedy where the plaintiffs had not registered their IP rights. Though failing to register their designs and obtain statutory protection, because of blatant inequitable behavior by the defendants, the plaintiffs were, nevertheless, awarded damages.

In the present case, the Supreme Court have established that there is no copyright in the fixtures, so there is no IP infringement. However, the football leagues were not negligent in registering their IP rights, since copyright does not require registration and the fixtures are anyway not copyright protected since the Supreme Court considers that the playoffs are the result of an algorithm applied to data from a database.  In such a scenario, there is unjust enrichment since organizations such as Winner Toto free-ride on the leagues, who spend a fortune organizing and promoting the matches, which is big business.

The fact raised by the defendants and upheld by the court, that the Winner Toto score draws raise interest in the UK league and thereby increases TV broadcasting revenue is not relevant. It is up to the league to decide whether to allow their fixtures to be exploited in this way, regardless of whether third parties feel that their activities are positive to the league. Similarly, statements by the court that providing revenue to the UK leagues without them doing anything to merit it, would be unjust enrichment on their part is not the case.

Winner Toto can bet on anything not predictable, certainly any sport and any league, from little league basket-ball in the Galillee to camel racing in Dubai. They choose to bet on British football matches. They should, therefore, cut the UK leagues into the profits.

The court made a big issue out of the fact that Toto had a statutory monopoly, claiming that there is therefore no competition, and thus no unfair competition. Whereas there may be justification for a nanny state to regulate gambling industries, there is no real justification other than purely financial to maintain a legal monopoly, and this should be sufficient inequitable behavior to grant damages to the fixture arrangers, were that required for unjust enrichment. Toto awards about 50% of income in prizes. It will be appreciated that bookmakers in a competitive market, make rather less.

In the current situation, Toto has a legalized monopoly for sports gambling and advertises itself on Channel One which is allegedly advertising free, and supported with licenses. Profits raised are ploughed into supporting sports facilities in Israel.

Founded in 1923, the Littlewoods Pool had some 10,000,000 players prior to the launch of the National Lottery in the UK. By 2008, the number had dropped to a mere 700,000. then the pools went onto the Internet and attracted worldwide interest. The New Football Pools are available online on the Internet and can be played from Israel.  See http://www.footballpools.com The pools are partners with the English and Scottish leagues.

Winner Toto partners other leagues but not the Scottish and English football leagues. They do, however bet on results of UK games. This drives gamblers from betting on the football pools on-line, and thus adversely affects football league revenue. This is unfair competition and is inequitable behaviour since Winner Toto uses UK fixtures to raise interest in sport gambling and invests the winnings in supporting local sports and not British Football.  This is unjust enrichment. Allowing advertising for Winner Toto and only for Winner Toto on State television and radio is a further example of unjust enrichment. Although occasionally, UK football benefits from Israeli players, is there not unjust enrichment by gambling on a league arranged by one entity in one country to raise funds for another country?

Since the Basic Law of Freedom of Occupation was passed in 1980 and the Supreme Court interpreted it as providing fundamental rights to allow anyone to engage in any business, preventing Vernons, Littlewoods, William Hill or Ladbrokes or other UK bookmakers from offering gambling services in Israel is in itself illegal discrimination. Whilst accepting the public interest in regulating the betting industry, that does not mean that the government should have a monopoly to that industry.

8 Comments | infringement, Intellectual Property, Israel, Israel Copyright, Israel Court Ruling, News | Permalink
Posted by Dr Michael Factor

Reduction in PCT Search Fees at the EPO

March 22, 2010

As of 1 April 2010, the search fees payable to the EPO as an International Search Authority of the PCT will be $US 2485 instead of $US 2515, as previously.

This is not an April fools day joke.  I suspect that the reduction reflects the relative strengths of the Euro and the US Dollar, and possibly the fact that the USPTO is actually performing searches and not merely accepting payment for same.

Leave a Comment » | EPO, patent search, PCT, WIPO | Permalink
Posted by Dr Michael Factor

Minyan at INTA – be the 10th Man!

March 21, 2010

As my partner Jeremy Ben David is saying Kaddish, as is Professor Jeremy Philips, we are trying to ensure a minyan (quorum) at the Boston INTA conference headquarters. With three from our firm, and a few friends and colleagues, it is looking good.

We are interested in organizing Shacharit, Mincha and Maariv (morning, afternoon and evening prayers).

Please send me an email to mfactor@israel-patents.co.il if we can count you in.

Drop by JMB, Fa(c)tor & Co.’s stand no. 146 for up-to-the-minute details of when and where the prayers will take place.

(although generally taking a pluralistic, mutli-racial, egalitarian and equal opportunity approach, this posting is aimed primarily at male Jews; however everyone welcome!).

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

Madrid Trademark Filings Down 16% on 2009

March 21, 2010

According to the World Intellectual Property Organisation (WIPO), new trademark application filings dropped by 16% with some 35,195 applications for trademarks received in 2009, compared to 42,075 in 2008.

In Japan, trademark filings were up a modest 2.7 percent, despite patent filings there being significantly down. In Singapore, trademark filings are up 20% and in South Korea, they are up by a third. It seems that the Far East was less badly hit than Europe or the US by the recent recession.

Israel has not yet implemented the Madrid Protocol. I suspect it will do so in June. We’ll see.

Leave a Comment » | Madrid Protocol, trademarks, WIPO | Permalink
Posted by Dr Michael Factor

Teva comes to agreement with Barr and Schering Regarding Temodar

March 21, 2010

Temodar® is an anti-cancer chemotherapy drug used for treatment of anaplastic astrocytoma and glioblastoma multiforme (GBM) brain tumors. The drug was patented by Schering and is known generically as temozolomide.

Teva have announced that the parties to the patent litigation regarding Barr’s U.S. generic version of Schering’s Temodar(R) have entered into an agreement pending resolution of Schering’s appeal to the Federal Circuit of the U.S. District Court’s decision holding the ’291 Patent unenforceable. Under the terms of the agreement, subject to limited exceptions, Teva will only market a generic product should the Federal Circuit uphold the District Court’s decision. Furthermore, the agreement grants Teva the right to commence selling its generic product as of August 2013, during the period of Schering’s pediatric exclusivity.

1 Comment | Opinion, Patents, pharmaceuticals, pharmaceuticals and Biotechnology, Teva | Permalink
Posted by Dr Michael Factor

Israel Patent Authority Refuses Revival of a Design Four Years’ After it Lapses

March 21, 2010

In Israel, registered designs are registered for 5 years. This period may be extended for two additional periods of 5 years each. i.e. up to 15 years. The renewal should be paid during the period that the design is registered, and the Israel Patent Office sends reminders to the registrants. If the design is not renewed in time, the applicant may renew retroactively during a grace period of up to six months, on paying extension fees.

In this case, design number 34297 lapsed on 26 April 2004 due to failure by the applicant to pay the renewal. It appears that during the grace-period, the original renewal was paid, but it is not clear that details were sent to the Patent Office. Also, the extension fees were apparently not paid.

The company, represented by its patent attorney, Matti Barzam, attempted to revive the application some 4 years later. The Review Officer and arbitrator of Intellectual Property, Ms. Shoshani Caspi rejected the revival application, stating that procedurally there was no basis in law for revival at such a late stage,  and that additionally, the applicant for revival did not have a case. She also noted that the fact that the design had lapsed was published in the Patent Journal, and third parties could rely on this to manufacture competing products.   

Leave a Comment » | design, Intellectual Property, Israel, israel design ruling, Israel IP, Israel Patent Office, Israel Patent Office Rulings | Permalink
Posted by Dr Michael Factor

Angiomax, Last minute reprieve rejected – a day too late costs billions

March 21, 2010


Angiomax, also known as bivalirudin, is an anti-clotting drug given to patients undergoing angioplasty, a procedure to open clogged arteries. The drug was patented by the Medicines Company and had 2009 sales of $401.2 million, nearly $383 million of which were in the United States.
The Medicines Company, which is unprofitable, also sells another drug, but Angiomax accounts for virtually all of its revenue. Back in 2001, the Medicines Company just missed the deadline to apply for a patent extension at the United States Patent and Trademark Office (USPTO).

The company appealed twice to the USPTO, and then sued when the appeals were rejected. It also hired lobbyists to try to win passage of federal legislation referred to, by critics, as “The Dog Ate My Homework Act” — that would retroactively allow the patent office to accept the company’s tardy application.

As a result, their US patent is due to expire on Tuesday 23, March 2010. Had they filed in time, they would have had a patent monopoly until December 2014. Generic versions of the drug are now expected by September 2010, costing the company and saving patients hundreds of millions of dollars.

Last Tuesday, a week before expiry, a federal judge granted a last-minute stay of execution, ordering the patent office to reconsider its rejection of Medicines’ 2001 filing. The ruling, by Judge Claude M. Hilton of the United States District Court in Alexandria, Va., also ordered the patent office to ensure that the Angiomax patent did not expire during the reconsideration period.

Under the Hatch-Waxman Act,a company has 60 days to file for patent term extension from receiving Notice that a drug has received FDA approval. The company’s position is that because the F.D.A. approval came after the close of business, the 60-day period for should not have started ticking until the next business day — the following Monday. The patent office rejected that argument, saying the law gave it no leeway.

Judge Hilton considered the office had been too inflexible. If the F.D.A. receives an application for approval of a drug after 5 p.m., he said, it records the application as having been received the next business day. So the office’s interpretation, the judge wrote, “plainly conflicts with the F.D.A.’s interpretation of the same word in the same statute.”

“It’s a draconian penalty for an administrative mistake,” said Clive A. Meanwell, the chief executive.

“For me to conduct the big Phase 3 trials, which I’d love to do, I need time and exclusivity,” Mr. Meanwell said. “I could not do these trials on behalf of Teva,” he said, referring to the big generic drug manufacturer.

In the meantime, the Medicines Company has sued three companies that are moving to sell generic versions of Angiomax: Teva, Pliva, also now owned by Teva, and APP.

By Friday, however, the USPTO had already concluded its review. In a 15-page decision, accompanied by more than 300 pages of attachments, it defended its decision. It said Medicines had waited until the last minute to file the fairly simple patent extension application. It also said the company did not sue the patent office until the patent had nearly expired, instead spending years lobbying Congress. “MDCO’s dire situation is therefore exclusively of its own making,” it said.

Angiomax had about $400 million in sales last year, of which $383 million were in the United States. Sales of the drug account for virtually all the company’s revenue. Medicines Company shares dropped 15 percent on Friday, to $7.88.

The patent office did, however, honor Judge Hilton’s order to grant an interim patent extension while it deliberated. So the patent will now expire at the end of the day on May 23, instead of next Tuesday, March 23.

With poetic justice, the USPTO described this as a 60-day extension on Thursday, although it is actually 61 days, i.e. a similar mistake to that which the company made nine years ago. However, the patent office corrected its mistake the next day.

Leave a Comment » | drugs, Intellectual Property, Patents, pharmaceuticals, pharmaceuticals and Biotechnology, Teva | Permalink
Posted by Dr Michael Factor

The International Patents and Trademarks Database ands similar scams!

March 21, 2010

As the agent of record, I have just received three invitations, on behalf of separate clients, to register their details in the International Patents and Trademark Database. It is my considered professional opinion that the benefit derived from so doing is totally outweighed by the charge of $US 2717.

Were I to report this invitation to my clients, I would advise them not to take advantage of the offer. Do any readers consider that I have any fiduciary, assumed contractual or other obligation to report the invitation to them? Can I simply bin it on my own initiative?

For an official WIPO list of similar scams – see http://www.wipo.int/pct/en/warning/pct_warning.htm

1 Comment | Intellectual Property, Opinion, passing off, Patents, PCT | Permalink
Posted by Dr Michael Factor

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