The IP Factor

Today’s offering is a decision that someone cruder than me would describe as being, well shitty. It also concerns the shitty behaviour of the Petach Tikva Municipality. The subject matter was an idea to create a DNA database for dogs and to use it to isolate the source of a dog’s excrement found on sidewalks and the like.

After the Mayor of Petach Tikva claimed that the idea was his, Hary Zisso who claims to have first thought of the idea, applied to the Magistrate’s Court for a declaratory judgment that he has copyright in the idea. The judge referred the question to the Central District Court, claiming lack of jurisdictional competence.

Technically speaking, Copyright should indeed go to the District Court to judge. In this case, the judge handling the case may have had jurisdictional competence, but it is long time since I’ve seen a Decision that showed so little understanding of IP Law. Apparently, despite the plaintiff only asking for a declaratory ruling, he managed to obtain a temporary injunction that was overturned on appeal. It is not clear what the injunction covered.

Judge Esther Shtumer ascertained from the evidence that the idea was novel and was Zisso’s. On the basis of this factual determination, then went on to claim that the idea was fixed in a tangible medium by being put into a Power-Point presentation and into various documents and then went on to conclude that in so doing, the idea was not merely an idea or a method or process, thereby being not copyrightable, but was now a copyright protectable idea! She awarded the declaratory judgment and also costs of NIS 10,000.

The case: 1052-1-08 Zisso vs. Petach Tikva Municipality

COMMENTS

It is difficult to know where to begin in explaining what went wrong in this case. Without wishing to sound faecesious, the mistakes pile up excrementally.

1. Copyright does not protect ideas, only their representations.
2. Actually ideas cannot be protected. Only their expression and their implementation may be protected, by copyright and patents, respectively.
3. The slides, letters and any and all documentation written by Zisso are copyright protected (and the affixing of the copyright symbol was not actually necessary). The words “all rights reserved” on these documents is useless and meaningless.
4. An idea is not a creative work. Zisso’s original documentation is indeed copyright protected, but the idea is still not subject to copyright.
5. The copyright protection in the slides, correspondence, and other documentation merely makes it an offence for a third-party to copy these documents. What it does not do, is provide protection for the idea expressed in the documents. The idea was not patented, and therefore is in the public domain.
6. The idea may also have been inventive and it may have been reduced to practice in the various documents, but this is not enough to create patent rights either. To obtain a patent, it is necessary to file a patent application for an idea that is novel, inventive and useful. There are no unregistered patent rights (inter alia, the judge did discuss novelty and the utility may be assumed, nevertheless, I am NOT convinced that the idea was inventive over the two documents alluded to in the decision – this is all academic however. Zisso did not file a patent application, and by publishing the idea, it is no longer patentable in Israel where absolute novelty is required).
7. Actually, the fact that Zisso appears, on the balance of the evidence, to have had the idea, does not prevent a third party from having independently reached the same idea.
8. I do not know who invented calculus, Newton or Leibnitz, however, I truly believe that both mathematicians were great enough to have independently created the idea. The special theory of relativity was also an idea whose time had come. Maybe this stupid idea of DNA for dogs as well? – Incidentally, I expect the animal rights champions to complain about this blatant invasion of the dog’s privacy, and the human rights activists to relate to the slippery slope –  מסדרות החלקלק.
9. The correct way to protect an invention of this nature is either by contract law or by patent law.
10. Contract law gives in personam rights. If a contractual arrangement between the municipality and Zusso can be shown to exist, breach of contract could be claimed. The contract may be verbal. Contract rights are well within the bailiwick of the Magistrate’s Court. However, they weren’t claimed in time.
11. IP rights, on the other hand, are in rem. IP issues are correctly referred to the District Court whose judges are ‘legally’ competent, if sometimes, through ignorance of the law or it’s interpretation, factually incompetent, to rule on such issues.
12. Were Zisso to have filed a patent application, he might have created an IP right in the implementation of the idea. However, he failed to do so. The idea, once disclosed without filing a patent therefore, entered the public domain and was available for anyone not contractually obligated otherwise to use.
13. There may have been a case of issue of Unjust Enrichment following the Supreme Court decision of A.Sh.I.R., although A.Sh.I.R. dealt with non-registered design rights. I don’t like this judicially created extra-IP tort – and hope the proposed amendment to the Israel Patent Law closes this loophole. (In comparison to what will probably go down in history as the Shit Decision, A.Sh.I.R. begins to look quite attractive). As with contract law, Unjust Enrichment also wasn’t claimed early enough.
14. The judge should, therefore, have simply concluded that implementation of the idea is not and cannot be considered copyright infringement because it is not a literary, artistic, dramatic or other type of creative work, and thrown the case out.
15. Zisso should have sought timely legal advice from a competent IP practitioner or a competent contract lawyer. He didn’t, and blew his rights.
16. The judge could simply have made a declaratory judgment of historical fact and a legal ruling that implementation of the idea is not copyright infringement.
17. The real problem with this decision is that it upsets the delicate balance between intellectual property and the public domain. It is no less dangerous than Judge Dr Michal Agmon-Gonen’s decision not to recognize streaming of sports events as copyright infringement.
18. The ramification of Judge Stumer’s ruling is that patents are no longer required. Until the district court of Petach Tikva  made Israel Patent Attorneys redundant there was a need for an invention to not merely be novel and useful, but also inventive. This is no longer the case. In such cases, where the inventor filed a patent application before publishing his idea, on examination by a technical expert, it was possible to obtain a monopoly with fairly clearly defined technical boundaries and clearly defined geographical boundaries. Now, simply writing out an idea gives protection for life of inventor + 50 years and the protection probably extends to all countries having a common copyright treaty with Israel. If this idea is implemented in, say, the US, no doubt Judge Stumer will be willing to grant fines of NIS 100,000 for infringements without showing judgment. Presumably in the case of literature, a book or play similar to an idea expressed in a document by a third-party is now copyright infringement.
19. Different judges will each interpret the law slightly differently. Nevertheless, there is a need for fidelity. The informed public should be able to determine if an action is illegal or not. IP experts should have a fair idea of what the Law is. The positions of Dr Michal Agmon-Gonen on the one hand, who knows the black letter law, binding decisions and international treaties that relate to IP, but chooses to ignore them, contrasts starkly with the position of Judge Stumer who apparently has no idea of what the Laws relating to IP rights  mean.
20. Until the courts are reformed, and preferably, specialist IP courts are created, or at least, the judges are given specialist training, the best advice I can give to clients is forum shopping!