Copyright in Photographs from Old Newspapers Shown in History Programs

October 30, 2011

Shmuel Rachmani is a photographer who was affiliated with the Ma’ariv newspaper. Some of the time he was a freelance photographer and some of the time he was an employee. Rachmani’s contract with Ma’ariv left the copyright in all the photos with him.

In a documentary series called “This week previously,” The Israel News Company Ltd. related to important events that had occurred in the same seven-day period in previous years. Included in their coverage were images from the archives of the Ma’ariv newspaper at Bet Ariela.

Rachmani claimed copyright in 11 such images, of which 10 credited the archives rather than him.

The TV channel claimed the defences of no copyright in images of events,  and that where a newspaper has cropped an image, the copyright is lost. They also claimed defences of fair use, education and newspaper exception and incidental inclusion of the images in the program.

Judge Arnon Darel dismissed the claim of no copyright outright, and also the cropped image argument.

Having established that there was copyright in the image, Judge Darel would have contemplated the various fair use arguments if the identity of the photographer had been acknowledged, thereby preserving his moral right, but ruled that the channel could and should have clarified and acknowledged the identity of the photographer. Since they didn’t he ruled 7 separate counts of copyright infringement, ruling NIS 15,000 a time, as a compromise between the minimum and maximum statutory damages under the old law, and a further NIS 20,000 for moral rights.

The 7 counts were arrived at by dismissing one case where the identity of the photographer was acknowledged and treating two cases where more than one photograph of the same event was shown as being single infringements.

He went on to rule NIS 25,000 legal costs.

The Case: T.A. 7036/09 Rachmani vs. The News Company LTD., Judge Arnon Darel, Jerusalem Magistrate’s Court, 9 October 2011.

Leave a Comment » | Copyright, Intellectual Property, Israel, Israel Copyright, Israel Court Ruling | Permalink
Posted by Dr Michael Factor

Health Club Wars

October 30, 2011

Hadas Guvrin is a former aerobics champion and trainer of physical trainers. Now having reached the age of 40 she runs a couple of fitness clubs called PhysiKal (Kal mean easy in Hebrew) in the Hod Hasharon and Ramat Gan regions. The clubs have some 30,000 members.

A second fitness club called Switch, based in Netanya used her picture to promote their club. The photo was run in 4 or 5 editions of the local paper and one street hoarding.  Guvrin and PhysiKal sent a cease and desist letter and requested that Switch stopped using the picture and pay NIS 590,000 damages.

Switch took the picture down immediately and agreed to pay statutory damages of NIS 20,000 for copyright infringement.

A year later, Guvrin and PhysiKal sued Switch and owners Shermeister and Frankel for copyright infringement, moral rights infringement,  unjust enrichment, passing off, and damage to Guvrin’s privacy. They also requested a public apology from the defendants and an injunction against further usage of the picture.

Judge Amiram Binyamini accepted that there was copyright infringement, but ruled that the advertising campaign should be considered as a single incident and awarded maximum statutory damages of NIS 20,000 under the Old Law (pre 2007). He accepted that the copyright in the picture was indeed owned by the client, i.e. the fitness club, but ruled that the moral rights were owned by photographer who wasn’t a plaintiff, therefore dismissed the moral rights claim.

As to the tort of Passing Off, although damages of up to NIS 100,000 could be awarded, Judge Binyamini ruled that the plaintiff was entitled to damages under either Copyright Infringement or Passing Off, but not both. In view of the short time period that the campaign ran and the different geographical location of the two clubs,  he saw no reason to increase the damages for Passing Off beyond the NIS 20,000 already awarded for Copyright Infringement.

As to Unjust Enrichment, Binyamini ruled that the plaintiffs had failed to show that the defendants had attracted members as a result of the activity. At best, they had saved themselves the cost of a stock photo under terms of non-exclusive use, which was a saving of perhaps tens of dollars, and thus negligible in light of the NIS 20,000 already awarded.

Since Hadas Guvrin had used her picture to promote fitness clubs herself, privacy wasn’t an issue either.

As four years had passed since the infringement, Judge Binyamini declined to order a public apology. He also felt the permanent injunction was unneccessary since the defendants had stopped using the picture immediately, and considered it requested merely to send the case to the District Court, but saw no reason not to issue it.

He noted that the defendants had offered NIS 20,000 at the outset, and taken down the picture immediately, so there was really no reason for the case to go to court. Furthermore, the defendants had offered to allow the case to be decided under Section 79a of the civil procedures, without evidence being heard, but the plaintiffs had insisted otherwise. Nevertheless, since the defendants had offered some fairly ridiculous defences as to why there was no copyright infringement and had insulted Ms Guvrin in one of the newspapers, he awarded a further NIS 10,000 legal fees.

the case: T. A. 1637/08 Hadas Guvrin and PhysiKal Events LTD. vs. Switch Fitness Club, Roei Shreimester and Israel Frankel before Judge Dr Amiram Binyamini, Tel Aviv District Court, 9 October 2011.

COMMENT

This seems to be a balanced ruling and Judge Binyamini is correct, the case was a waste of the court’s time. With a lot of daily commuters from Netanya to Ramat Gan, I am not convinced that the different geographical locations is important, but the judge is correct, that there was no evidence of actual damage.

Leave a Comment » | Copyright, Intellectual Property, Israel, Israel Copyright, Israel Court Ruling, Israel IP, passing off | Tagged: | Permalink
Posted by Dr Michael Factor

Israel Commissioner Meets Representatives of the Professional Organizations

October 27, 2011

Following a practice initiated by his predecessor, Commissioner of Patents and Trademarks, Assa Kling, met with representatives of the Israel Association of Patent Attorneys, the Israel Branch of the AIPPI, the IP group of the Israel Bar, the Licensing Executive Society (LES) and the International Federation of Intellectual Property Attorneys (FICPI) in a round table discussion.

Several issues were dealt with and minutes of the meeting  were made available by Adv. Tal Band, the head of the AIPPI. This reprot is based on those minutes.

Appropriately, the tragic and sudden loss  of the Head of the Trademark Department, the late Ms Nurit Maoz was the first issue raised. Her achievements were acknowledged and patience was requested from the profession for the invitable delays that have and will occur until the department is able to reorganize itself and move forward.

I discovered that the Israel Association of Patent Attorneys is no longer headed by Ms Michal Hackmey alone, but now has a co-chairperson, Ronny Shutrut. Despite being a member of good standing in the organization, I didn’t hear about this decision from the organization itself. His appointment doesn’t seem to have been an election. At the last general election, several of the large firms voted on behalf of all workers by proxy, despite there being nothing in the constitution to allow this, and despite those voting in absentia not knowing who would be standing for office. There was, however, a facade of democracy. this appointment seems to have been made without even directly informing the members, which is less than satisfactory.

Another unsatisfactory aspect of this is that both co-chairpeople work for the same firm. Funnily enough, the chairperson of the FICPI (Ina Pugasch) is a further employee of the Reinhold Cohn IP group.

We assume that RCIP, as Israel’s largest IP practice (excluding the patent office and TEVA) is big enough to take care of its interests. Since the Commissioner himself, worked there until his appointment earlier this year, I suspect that the firm is reasonably capable of getting his ear if necessary.

The question is whether the present set up serves the interests of practitioners not working for RCIP, including the very large number of sole-practitioners whose needs and perhaps that of their client base may be very different to that of the Reinhold Cohen group.

Ms Michal Hackmey did request that members submit issues to her, for raising at these important meetings. Unfortunately, however, her priorities in deciding which issues to raise, will invariably reflect her perspective and practice.  I raised two issues with her and asked them to be brought up. I requested that the current practice of examination of independent claims only be raised as it extends prosecution and incurs unneccessary expense to clients. I also raised the issue of apparent illegality of the committees that orally examine candidate patent attorneys.  The first issue was apparently not raised but the second issue was discussed, but after the furore raised in responses to this blog and the like, presumably could not be ignored.

If all the people representing the private sector at these round tables come from 2 or 3 large firms, does this promote the interests of the profession as a whole? Not sure.  We wonder, therefore, whether the roundtable really serves its purpose to provide a channel of communication between the profession (as a whole), and the Patent Office.

One interesting insight was that the Commissioner of Patents noted that various issues including amending the law regarding examining patent attorneys was not within his bailiwick and he had no authority in such matters. We note that this more humble approach contrasts to that taken by his predecessor, who sometimes exceeded his authority when trying to straighten out archaic practices. Substantively, if not formally, Dr Noam’s reforms were generally both correct and filled needs, despite the rap he took from the Knesset committee for exceeding his authority and ignoring the letter of the law.

It seems from the sentiments reported in the summary of this first round table, that Commissioner Kling will be conservative in how he pursues his reforms.

2 Comments | Intellectual Property, IPO, Israel IP, Israel Patent, Israel Patent Office, Israel Trademark, Uncategorized | Permalink
Posted by Dr Michael Factor

Israel Hosts International Conference on Traditional Knowledge

October 26, 2011

The Ono Academic College in Israel, together with WIPO, the World Intellectual Property Organization brought representatives from a large number of developing countries and sympathetic US academics together in a three-day conference on traditional knowledge.

We applaud Li Maor who sits at the WIPO desk handling Israel, for pushing to host the event in Israel and for the work she must have done behind the scenes in persuading WIPO to fund the program. Bringing academics and civil servants to Israel is good for Israel’s image, and good for tourism.

WIPO sponsored the flights and hotels, and also a reception for the participants. Ono provided the venue and refreshments, and raised additional funding for some touring. The Israel Patent Office also chipped in, hosting a final session in Jerusalem, with a second reception.

Part of the program, consisted of closed sessions where official delegates debated how to advance the agenda of an international treaty on traditional knowledge. The first day and a half were open to the public.

After speeches by WIPO and Ono representatives, Prof. Braverman, an economist who is a member of the Labour Party gave a nice welcoming speech, slightly marred by him acknowledging that he wasn’t really sure what the event was about or what he was doing there.

The main program was opened by Prof. Shuba Ghosh of the University of Wisconsin gave the keynote address, explaining what Traditional Knowledge is. Dr. Shlomit Ravid, the coordinator of the event from Ono gave a second general lecture, posing questions rather than providing answers. She illustrated her position with examples from local culture and concluded that traditional knowledge cannot be considered as property per se. but can perhaps be considered as being a type of quasi-IP. We note that Intellectual Property is itself only a quasi property right, and feel that an explanation of what she meant by a quasi-IP right and the ramifications thereof would have been useful.

Each speaker was followed by a respondent. One Russian representative actually attempted to respond to points raised, but was handicapped by poor English. Other respondents simply presented their work to protect or capitalize on their national traditional knowledge resources.

What was unfortunate is that the program lacked balance. There was a clear agenda to create rights for indigenous peoples in their traditional knowledge (or TKs). Wend Wendland, the Director of the Traditional Knowledge Division at WIPO, went so far as to explain that there is a timeframe to create a treaty within the next 12 months and that the event is perhaps the most significant IP development since TRIPS.

There was, however, no rigorous philosophical underpinning presented to justify the new right. The traditional IP rights attempt to strike a balance between the creator and the public domain with the patent system and copyright both being designed to reward creativity, thereby providing an incentive to create and to expand human knowledge and cultural expression. The rationale for rights in traditional knowledge was not adequately explained and I suspect, is not there.

Rigorous academic analysis was most conspicuous by its absence.  For example, Dr. Nicholas Bramble of Yale University noted that Vincristine, extracted from the Madagascan Periwinkle is used to treat Hodgkin’s disease. Though the plant’s beneficial properties were known in folk medicine for hundreds of years, the Madagascans never received anything from the development of the drug by Eli Lilly resulting in them doing significant ecological damage to their environment to generate income.  Bramble’s position is based on an assumption that the natives of Madagascar have rights to financial compensation for research into plants that were used in traditional Madagascan folk medicine and a further assumption that there is a causative link between the lack of compensation and ecological damage to Madagascar. Eli Lilly discovered the bone marrow suppressive properties in experiments on mice with leukemia. One can assume that the Madagascan population had no traditional knowledge of  leukemia or of the function of bone marrow. I suspect that the same ecological damage over the past 50 years since this discovery would have occurred regardless of whether the indigenous population would have received some type of royalty, since having one source of income does little to deter exploitation of other sources.

I found myself wondering why no one had thought to extract some payment from Disney on behalf of the indigenous population, subsequent to their depicting the fauna, flora and beaches of the island in the animated movie Madagascar?

One of the clearest and most interesting presentations was by Dr. Sheila Foster of Fordham University who gave some insights into land use decisions in an urban context. She admitted that she had no background in IP, but felt that her field of research could provide some insights. Unfortunately this is not the case. The insights learned from her field of research relate to maximizing usage of limited resources, and to the value of providing property rights to such resources so that they are managed properly. Knowledge is, however, not a limited resource.

There is value in conserving biodiversity and cultural expressions of all sorts to enrich the human experience. This could place a responsibility on countries and populations, but is not a justification for their having commercial rights to their traditional knowledge. I think the mandate for so doing is not WIPO’s but really belongs to UNESCO.

It’s not merely that knowledge is not a limited resource and that present day indigenous people have not created their traditional knowledge and providing rights over it does not encourage the creation of additional traditional knowledge, although could certainly encourage the classification of more knowledge as such.  No one addressed the issue that the flow of knowledge and wealth occurs in both directions. The third world can access vast amounts of knowledge created in the developed world and published in patent literature and academic journals without contributing substantively to its creation. This knowledge is paid for using Western taxpayer’s money. The developed world also contributes to health in the developing world via the World Health Organization, via charities such as Medicines Sans Frontiers (Doctors Without Borders) and Oxfam. The great capitalists like Bill Gates often donate vast sums to philanthropic works. I suspect that the funding for this conference originated in the developed countries as well…

The program was advertised in the Israel press.  WIPO also sent direct emails to Israeli IP practitioners and ONO contacted their graduate lists. Unfortunately, the attendance on the first morning was, by my count, around 50, which dropped to 30 after lunch. (One of the orgnaizers from ONO claims 65 dropping to 40, but I was counting people in the room). WIPO provided a reception on the first day, catering for some 200 participants. Apparently less than 30 people stayed for this. Due to a family Bar Mitzva celebration, I couldn’t stay for the WIPO reception, but attended the academic program, or at least as much of it as I could, since everything was running appallingly late.  The second day also attracted a mere 30-40 participants. In other words, apart from speakers, organizers and guests flown in by WIPO, the event was patronized by two other patent attorneys, one of whom left at lunch time on the first day, and one professional from a tech transfer company.

I think that there a number of reasons for the poor turnout by local practitioners. These included a clear political agenda to the event, rather than a proper academic inquiry. This was evident from the adverts in the press, linking the event to social justice demonstrations, through the invitation to a Labor Party parliamentarian to open the event, to the lack of balance in the program without any presentations suggesting that traditional knowledge is not a commercial property.  The topic of traditional knowledge is also fairly esoteric and of less practical relevance to practitioners than, say, the recent patent reform in the US.

In the wrap up session on the second day before adjourning to tour the sites of Jerusalem, patent examiners and Dr. Moshe Tritel, who heads the life sciences division of our firm, related to where patent law is with regards to medical treatments and traditional knowledge. Moshe spoke excellently, clearly and with authority, but, as would be expected from a patent attorney rather than a political activist or academic, described the rationale for the current system and explained how the patent issues for the contribution over that previously known if not previously revealed, and doesn’t award all previous contributions. He suggested that IP law wasn’t the place to address third world grievances. Not surprisingly, the representatives of Ecuador and Tanzania, found his position a little unpalatable.

Adv. Eliamani Laltaika of Tanzania gave an excellent and impassioned response. One point he raised was that the geographic source of plants of animals whose tissues were used in a product should be acknowledged in the patent specification. This idea was rejected by Dr. Tritel as placing additional burdens on inventors.

It occurs to me that it should be hardly more difficult from the duties of disclosure of prior art existing in Israel and the US, and on the practice of the EPO and other offices to require certain information such as closest publications, referenced in the background of the patent specification. Judaism  has a long tradition of recognizing the moral rights of sources of traditions, knowledge, intelligence and sayings, to be named. Occasionally, where individuals are not known, the nationality or ethnic source of knowledge is recognized. The academic community references sources of ideas. Where something is traditional knowledge or where a plant comes from a geographic location, I see no reason not to reference this.

Academics who should have known better, pointed to the success of various developing countries in amending their IP laws to require incorporation of such sources.  Many Western corporations don’t bother filing in such countries, due to the lack of commercial justification for so doing.

I suspect that the lack of involvement by patent attorneys and IP lawyers in the development of the program contributed to the lack of interest by the profession in the end result. Of course, if an international treaty having more substance than the vacuous drafts currently available from WIPO does get wide ratification, this could change the IP world significantly and lawyers and patent attorneys may be surprised.

2 Comments | Academia, Intellectual Property, Israel, traditional knowledge, WIPO | Permalink
Posted by Dr Michael Factor

Israel Patent Office denies authority to retroactively restore the priority period for design registration

October 16, 2011

If an Israel design application is filed within six months of an identical application filed abroad in a Paris Convention country, the Israel application is entitled to the effective filing date of the foreign application.

In Design Application No. 51361 to Serti, the application was filed more than six months after the corresponding foreign application was filed and the applicant petitioned for a retroactive extension of time. Yaara Shoshani Kaspi, the adjudicator at the Israel Patent Office refused the request ruling that the Israel Patent Office had no authority to consider such requests. Consequently, she didn’t relate to the grounds brought.

COMMENT

Shoshani Kaspi is correct. In this instance, there is no indication what the design is, whether the attorney was at fault for missing the date, or if there was an oversight due to something attributable to an Act of God, like an earthquake, or something more mundane like technology failure. Was this a last-minute mistake wrongly assuming the Israel Patent Office was closed on a Sunday, or something similar?

There is no indication what the design in question is, so it is not clear if all is lost or whether the design could be protected by copyright, trademark law or unjust enrichment.

 

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

Israel Supreme Court Reverses Eve – Eva Trademark Decision

October 10, 2011

Back in May 2010, we reported that the then Deputy Commissioner of Patents and Trademarks, Noah Shalev Shlomovits ruled that the Aktsionerno Droujestvo Bulgartabac Holding’s  cigarette brand Eva was not confusingly similar to the Philip Morris brand Eve. See  here  for more details.

Essentially, Shlomovits ruled that the fact that the marks had different graphical elements was less important than the sound of the mark since cigarettes are bought by requesting a brand from a salesperson.  He went on to rule that since the Bulgartabac Holdings cigarette was pronounced Eva (rhyming with Never), it was very different from Eve (rhyming with weave). I was less than confused, as I would typically pronounce Eva as EEva rhyming with Beaver. I did a small survey of IP professionals and others, and am certainly not the only one to pronounce the name differently than Shmulovitz.

Anyway, Philip Morris wasn’t happy either and appealed the decision to the Supreme Court.

Counsel for Philip Morris claimed that the name Eve would be pronounced EEV in the UK, EV in France, and Eva or Yeva in  Russia. Also, cigarettes are sometimes purchased from vending machines so placing all the evidence on the sound of the name exaggerated the audible aspects of the name.

In their defense, Bulgartabac Holdings relied on Shmulovitz’ ruling and also pointed out that the name is not Eva, but rather an ‘E’ followed by a heart followed by an ‘a’  and should not necessary be assumed as being a ‘v’, although they admitted that the cigarettes are sometimes labelled Eva in Hungary. Whilst acknowledging that both cigarettes were aimed at female smokers, Bulgartabac Holdings argued that the price difference to indicate that the Philip Morris cigarette was aimed at connoisseur market, whereas their fag was more aimed at the mass market. Because both cigarettes were somewhat established, even were it argued that there was perhaps a possibility of confusion once upon a time, this was certainly no longer the case.

Somewhat refreshingly, the Israel Supreme Court quoted Maimonides, acquisition, Laws of Sale 18: 1, that passing off is forbidden, and went on to refer (perhaps somewhat irrelevantly to a responsa of Rabbi Moshe Isserles (the Rema) concerning an Edition of the Maimonides Code published by MaHaRam Padua, and also to Talmud Babli, Baba Batra 21:2, all quoted by Rabbi Navon in his article Copyright in Jewish Law, Tsohar 7:35.

Then the decision related to Article 11 of the Trademark Ordinance 1972, to prevent confusingly similar marks from issuing.  After acknowledging that an appeal is not supposed to be a retrial, the judges noted that in this case, it is not witnesses that are being reconsidered but the nature of objects. They went on to point out that analyzing the likelihood of confusion by a pedestrian application of the triple test was insufficient, and that as well as analysis, one should synthesize the evidence and come to a decision based on the total picture. With this perspective, the judges ruled that the marks were indeed confusingly similar and overturned the deputy commissioner’s ruling, preventing the marks from issuing.

The upshot of this is that Aktsionerno Droujestvo Bulgartabac Holding’s Eva brand was not allowed to be registered, and legal costs of NIS 45,000 (more than $12,000) were awarded.

Civil Appeal 3975/10 Philip Morris Products S.A. vs. Akisionerno Droujestvo, Supreme Court (Judges Handel, Hayot and Amit) 2 October 2011.

COMMENT

I am very pleased with this decision, not least becuase the judges ruled in accordance with my comments last year! We hope that more weight will be given to common sense in the ‘any other considerations’ strand of the triple test. We also applaud the reference to Jewish Civil Law in the Supreme Court decision.

Leave a Comment » | Fair Use, infringement, Israel Court Ruling, trademarks, Uncategorized | Permalink
Posted by Dr Michael Factor

Cheap Versions of Bakugan Game Imported From Far East

October 10, 2011

Spinmaster have a popular game called Bakugan that is apparently not just popular with the kids, but also with importers and judges – see here and here.

The authorized distributors and trademark rights holders have been back in court. This time against a Mr Chai Omra who imported some 40,512 sets of Bakugan from China. The sets were impounded by Customs and the rights owner sued for their destruction and NIS 100,000 for copyright infringement. He also claimed trademark infringement, passing off and unjust enrichment.

Mr Omra claimed that these were legitimate sets and was parallel importing, so there was no copyright infringement or at least that he had a defense of not knowing that these were not authorized sets.

The rights owner noted that the ball was a different size, that there were Chinese instruction cards in the box, which are not provided in original sets intended for the Western market, and the bar codes were wrong, thereby proving that the sets did not originate with an authorized manufacturer.

In his ruling, Judge Zerankin dismissed the ignorance defense, noting that Omra had bee in court before for importing toys manufactured in the Far East, and had previously shipped 15,000 Bakuga sets as well.

The Judge ruled to rule NIS 20,000 for trademark infringement, NIS 40,000 for copyright infringement and NIS 40,000 for passing off. As there was no enrichment from this shipment, he rejected the unjust enrichment claim. In addition, he ruled a further NIS 40,000 legal fees.

The Case:  T.A. 43006-08/10 Spinmaster vs. Hai Omra LTD and Israel Customs Authority,  Judge Adi Zerankin, Haifa District Court, 22 September 2011

COMMENT

The applicant requested statutory damages of NIS 100,000 for copyright infringement. Importing copyright material is indeed copyright infringement. He is entitled to statutory damages for passing off or for copyright infringement, but I don’t believe is entitled to additive statutory damages for both. Once the total damage is NIS 100,000, it hardly matters. Still I would have expected damages of NIS 100,000 for copyright infringement and NIS 100,000 for passing off, then capped at NIS 100,000 as one cannot receive more than NIS 100,000 for a single infringing event.

I am also not sure where the statutory damages for trademark infringement come from.

Leave a Comment » | Copyright, infringement, Intellectual Property, Israel, Israel Copyright, Israel Court Ruling, Israel Trademark, trademarks | Permalink
Posted by Dr Michael Factor

Copyright in photographic images reproduced on websites – fair use

October 6, 2011

Roman Kriman is an accomplished photographer with some 5000 images on the Jerusalem Shot website here.

Newsru is a Russian language news portal that is apparently the most popular Russian news website in Israel. The website is to be found here.

Kriman’s site indicates that his images may be used free of charge, but that the photographer must be acknowledged and a link from the picture is required to lead to the Jerusalem shot website.

Kriman sued Newsru for copyright infringement for failing to comply with the licensing conditions. Kriman requested 200,000 Shekels.

I assume the sum sued for covers both statutory damages for copyright infringement and for moral rights infringement. It is not clear if this is for multiple statutory damages under the old law or for a single offence under the new copyright law, but the ruling does relate to some dozen cases and applies the old copyright law despite apparently being filed in 2010 and relating to recent events.

That as may be, in her ruling Judge Chana Yinon of the Jerusalem Magistrate’s Court applied the old copyright law, accepted that there is copyright in original photographic images but was satisfied that the defendant attempted to comply with the licensing terms by crediting images in a page of credits, and that clicking on an image opened a hyperlink to source information. She considered the licensing terms sufficiently unclear that she found this practice a genuine attempt to comply.

Where images were wrongfully attributed to sources from which Newru had obtained them, but not to the photographer, she found Newsru not at fault. In this regard, during cross-examination, Kriman indicated that in his opinion it was wrong to reproduce an image without knowing and attributing the original source, whereas the judge preferred the defendant’s understanding that third parties can reproduce an unattributed image.

Somewhat confusingly, Judge Yinon cited Civil Appeal 2312/02 Druk vs. Danziger and also Tony Greenman’s work, Copyright in the Digital Age, to indicate that it is not enough to not know who the rights owner is, if the defendant has reason to believe that there is copyright in an image.

Deciding that there was no damage, the case was dismissed.

T.A. 10587-01-10 Roman Kriman vs. Newsru LTD. before Judge Chana Yinon, 12 September 2011

COMMENTS

I think Newsru’s behavior appears to be within the ambit of fair use. There is a problem though. Any photographic image of an identifiable person or scene or that shows clothes or cars or other items that clearly date the picture within the past 50 years, or indeed any colour photographic image is copyright protected unless the photographer actively puts it in the public domain. However, in such circumstances it is impossible to identify the rights owner. Internet sites, particularly non-commercial ones should be able to use images for illustrative purposes, acknowledging the rights owner if they know it, and certainly should not remove copyright notices. Where an image is not protected with a watermark or similar, one often cannot tell who owns the copyright and the image is therefore effectively in the public domain. I don’t think it is reasonable to prevent reproduction under such circumstances.

It seems to me that correct policy is to allow non-commercial websites to reproduce such content but to require them to take down the images if requested to do so. giving statutory damages without proof of damage seems unreasonable.

Nevertheless, the judge cites case-law and an Israel authority to the effect that one may have grounds to assume that an image is copyright protected even where the owner is not identified. It seems to me that any colour photo must be copyright protected since the law does not require a copyright notice. But this is not in the public interest. It does not serve the photographer or the wider public.  The boundaries of fair use are not clear.

I’ve discussed my use of images on this blog with world leading IP experts who concur that it is fair use. Is someone with a claim to copyright in an image requests that I remove a photograph or other image, I will do so immediately. Eventually technology may result in images being readily traceable so permission from the rights holder can be requested. We are not there yet. Copyright Law does seem to need an overhaul.

Leave a Comment » | Copyright, Intellectual Property, Internet, Israel, Israel Copyright, Israel Court Ruling, Israel IP, Uncategorized | Permalink
Posted by Dr Michael Factor

Hebrew University Does Deal with General Motors giving them first right of refusal

October 5, 2011

Yissum, the technology transfer company of the Hebrew University, have done a deal with General Motors by which GM will sponsor applied research and have the first right of refusal for licensing any resulting inventions.  See press release here

Apparently, the first research project which was chosen as part of this research collaboration focuses on forecasting car sales. Researchers from the Hebrew University will develop accurate mathematical models that will take into account not only sales data, but also data on people who have decided against buying. The research will be led by Prof. Jacob Goldenberg, and Keren Hadad from the School of Business Administration, Marketing Department, at the Hebrew University.

We await to see how the results of this research can be published in an academic journal whilst retaining commercial rights, and if this can be patented.

Leave a Comment » | Academia, Israel, Israel IP, Patents | Permalink
Posted by Dr Michael Factor

Wrangler Takes Crocker to the Cleaners

October 4, 2011

Wrangler Apparel Corp. is one of the leading jeans manufacturers. For the past half century, Wranglers has been using a W-shaped stitched pattern on the back pockets. The W shaped double stitching is a registered trademark.

Wranglers has billions of dollars worth of sales worldwide, and tens of millions of sheckels worth of sales in Israel, and television adverts including the sewn W on jeans are receivable via satellite in Israel. Unfortunately, however, the sewn W symbol is only registered in Israel for overalls, short coats, and shirts having a Western style (see Israel Trademark 50,909). However,

Crocker, an Israeli jeans manufacturer, decorates the back pockets of their jeans with a  sewn decoration that is arguably a W shape.

Noting that Wrangler had filed previous aggressive actions against other jeans manufacturers Lucky and Kenvelo,  and that a similar mark was used in a similar place, counsel for Wrangler claimed trademark infringement, passing off, unjust enrichment and confusing the public.

The plaintiff sued on grounds of:

  • registered trademark infringement
  • well-known mark infringement
  • passing off
  • dilution
  • unjust enrichment

In their defense, Crocker pointed out that their jeans were on sale since 1984 and  that their stitched pocket design is different.  Furthermore, Crocker obtained trademarks (nos. 101,601  and 118,244) for their stitching designs. They argued that Wrangler were estopelled from claiming trademark infringement since they had not taken advantage of their opportunity to oppose the mark.

Wrangler conducted a survey of the jeans wearing public aged 18 to 70 in face to face interviews, and then a control group on the internet. Crocker’s counsel brought Dr Mina Tzemach, a recognized Israel authority on consumer surveys to try to demonstrate that the survey was meaningless since the survey and the control group were conducted differently. Furthermore, the results, though impressive, made no reference to standard deviation. Crocker’s counsel wanted the survey to be given minimal weight.

In ruling, Judge Shaham found:

  • registered trademark infringement
  • well-known mark infringement
  • passing off
  • unjust enrichment

and decided that there was no need to go into the issue of dilution.

He also found the owner of Crocker, a co-defendant called Mr Levy directly and personally responsible since he was intimately involved in the business.

In the ruling, Judge Shaham first recited the basic law, philosophy and case-law of the various torts, then applied his analysis of the specific case and went on to issue an injunction against Crocker using a W symbol, to order Crocker turn over their books for inspection to Wrangler, NIS 250,000 damages and NIS 100,000 legal costs.

The Case: T.A. 1999/05 Wrangler Apparel vs. Crocker 1991 et al. before Judge Ori Shaham, 11 September 2011

COMMENTS

Wrangler’s registered trademark in Israel did not cover trousers in general nor jeans in particular. There was, therefore, no registered trademark infringement.

If a mark is sufficiently well-known to be considered a well-known mark under the Paris convention, it cannot be used in complementary classes and for other goods. The question here, which the judge seems to have missed, is whether Wrangler can have rights to different W signs or only to those confusingly similar to their registered mark.

In his testimony, the main marketer of Wrangler in Europe and the Middle East considered the W used by Crocker would be viewed by the public as an evolution of the mark. This is a problem. Well known, or iconic marks don’t evolve. Think of Nike, Coca Cola, etc.

It is perhaps worth noting that jeans giant Levi Strauss owns several USPTO registered trademarks for its arcuate stitching design, initially used in 1873, over 70 years before Wrangler. Indeed Levi Strauss alleges that their mark is the oldest known clothing trademark in the United States. It seems to me that Wrangler’s design is at least conceptually inspired by Levi’s as, no doubt is Crocker’s. The problem is that conceptual inspiration in fashion is what drives fashion.

In the interest of pure IP research, I’ve done a little surveying of denim pockets tautly stretched accross rear buttocks and find that there are a large number of wavy / curly / pointy stitching designs. I would argue that a pair of jeans requires back pockets with ornamental stitching and rivets at strain points to be considered a pair of jeans. These are established design features with a long history, preceeding Wrangler.

I don’t think Wrangler deserves a monopoly on all letters W in all fonts and forms. This is not sufficiently distinctive to be indicative of a particular designer.

Wrangler’s mark should be interpreted narrowly. That is what the Israel Trademark Office did when allowing Crocker’s mark.

Crocker do have a question to answer on why they chose a W sign. One answer is that they didn’t. They chose a curved, bumpy stitching design that in retrospect could be considered as being a W.

The control group of the survey that found the Wrangler mark well-known and which the judge (wrongly) used to establish a case of passing off were shown a G design stitched on a rear pocket, not a W. I suggest that comparison to an omega or an M is more appropriate than a G. The W or Wrangler is not as dissimilar to a G as other widely used jean pocket stitch designs, including the older, better known and more iconic Strauss curved V.

Unjust enrichment should not be considered where there are registered trademarks. It is not an issue where there are torts or passing off or trademark infringement. The A.Sh.I.R. decision, widely discussed elsewhere in this blog, recognised unregistered design rights in cases of bad faith, but this was for exact copies not conceptual similarities. Recent case-law also seems to limit application of A.Sh.I.R.

In the tort of passing off, the issue is not one of passing off of a design feature or trademark, nor of passing off pocket stitching, but should relate to attempts to pass off the product as a whole. Crocker labeled their products Crocker which implies that they were not passing off. I therefore consider it highly unlikely that anyone purchasing the jeans thought they were Wranglers.

The issue of third parties seeing the W on the rear pocket of someone elses jeans thinking that the wearer was wearing Wrangler is, as counsel for the plaintiff pointed out, not the traditional understanding of passing off. This may be the basis for an interesting widening of the tort, but the judge ignored this issue.

In the 4 stripe Adidas case, Dr Michal Agmon-Gonen a fellow judge in the Tel Aviv court, ruled that design features inspired by those of others were not infringing. See http://blog.ipfactor.co.il/2011/01/12/west-bank-arab-prevails-against-adidas-four-stripe-cheap-training-shoes-do-not-infringe/. It does seem that there is little consistency in these rulings.

In the exchange of letters between Wrangler and Crocker, it appears that Crocker claims their pocket stitching to be different. Wrangler suggests alternative grounds of passing off; not that the purchaser would be confused, but that the public would at least temporarily confuse the brand.

In my opinion, the most promising grounds for finding Crocker at fault is dilution. Unfortunately the judge did not bother relating to this.

Wrangler requested and were awarded the right to receive details of the sales figures for Crocker’s jeans. In my opinion, this is their business only as long as they are claiming and entitled to damages based on calculation. The judge ruled an arbitrary NIS 250,000 damages so the issue is moot. In my opinion, Wrangler is therefore not entitled to the sales figures.

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Posted by Dr Michael Factor

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