Sotah – Naomi Ragen drinks the bitter waters of plagiarism

January 9, 2012

Naomi Ragen, Israel’s best-selling writer was accused of plagiarism by three separate authors. She was vindicated by the Israel Supreme Court last week regarding her book The Ghost of Hanna Mendes and it’s alleged similarity to The Lion and the Cross. Ragen was, however, found guilty by Judge Yosef Shapira of the Jerusalem District Court concerning the similarity of some dialogue in her novel Sotah, to a book Growing With My Children: A Jewish Mother’s Diary by Sara Shapiro. Plagiarism is not a crime on the statute books. Ragen was found guilty of Copyright Infringement, Unjust Enrichment, Negligence and Theft.

The Case

Shapiro published a non-fiction, largely autobiographical work, called Growing With My Children: A Jewish Mother’s Diary which was published in 1990 by Targum Press. The book was a daily journal from the years 1986 to 1989, focusing on the author’s participation in an ongoing parenting workshop, and the ups and downs she experienced along the way to becoming a more skilled and patient parent.

There is one conversation, between the author and her mentor, Rabbi Simcha, that is closely paralleled by a conversation in Ragen’s  novel Sotah between the central character, Dina, and her husband, Yaakov. Furthermore, Shapiro takes on a secular home-help, Sonia, and Ragen’s protagonist gets exiled from her extreme ultra-orthodox community and sent to America to work as a home-help for a secular woman, Joan.

Ragen has argued that she had indeed read Shapiro’s book, and subconsciously may have used elements as inspiration for her novel. Simply groats for her mill. It is difficult to prove otherwise. The similarities are sufficient to raise questions, but there are differences as well. The dialogue is rewritten. It is not identical.

Ragen’s attorneys pointed out that the conversation attributed to Rabbi Simcha by Shapiro were not her creation and not her copyright. The authoress’ response in the dialogue are less insightful, less memorable and weaken the case of copyright infringement still further.

To find Ragen guilty, Judge Joseph Shapira performed legal gymnastics to have the case admitted at all, since there were strong grounds for dismissing the case altogether under the Statute of Limitations, as seven years had passed since Shapiro became aware of the similarity. He took the position that the ongoing sale of Ragen’s book made copyright infringement an actionable tort on an ongoing basis. Such a position makes some sense if Ragen was selling bootleg copies of Shapiro’s book, but that is not the case here.

Shapira’s opening paragraphs establishing the facts of the case refer to the Ragen as having copied sections of Shapiro’s book, indicating that he had prejudged the issue. He also relates to the Michal Tal case mentioned above, which he also heard. But this should have been inadmissible since it was not the case under trial. That said, since some witnesses were heard simultaneously in both cases, with consent of both parties, it may be considered admissible. That as may be, as noted above, Ragen was subsequently vindicated in the Tal case.

Where there is copyright infringement, there are no grounds to rule on grounds of Unjust Enrichment, which is applicable only where there is no statutory tort, such as in the A.Sh.I.R. case. Thus finding under both counts seems wrong. Finally, what’s theft? Since when is literary theft a separate tort?

Shapiro’s book is a non-fictional, somewhat autobiographical guide to making a marriage work, about adjusting oneself to one’s surroundings. Ragen’s story is about getting out of a situation that’s wrong, about taking control of one’s life. I think that a fair use defense is appropriate. Furthermore, to the extent that Ragen’s work was inspired by Shapiro’s I think that a satire defence is possible –  although difficult under Israel Law. We also note that Shapiro did not create the idea of employing a home- help. These have been employed by countless young mothers under stress. (I believe that my mother employed an au-pair when I was a baby. That wasn’t plagiarism either).

I accept that copyright covers all literary work, regardless of quality.  A couple of pages of dialogue may therefore by covered by copyright law. Nevertheless, the text in question is not memorable in its own right. We are not discussing a witty aphorism but simply a conversation. My main criticism of the ruling is that it places the bar for literary novelty simply too high. It is bad policy to consider copyright infringement in a case where two pages of dialogue in one book bear a similarity to a couple of pages of dialogue in a different book. This is counter-productive to the aim of copyright law which is to enrich by promoting creativity, not to stifle authors. Koheleth son of David (Ecclesiastes) was right on one level that there is nothing new under the sun.  The similarities between Shapiro’s book and Ragen’s novel warrant a footnote in a critical edition of Ragen’s book or an academic paper. Nothing more.

For those interested, the concept in Jewish Law (Halacha) analogous to fair use is “זה נהנה וזה לא חסר ”  lit. “this one benefits but that one does not lose out.” (T. B. Baba Kama 20:1 – 21:1, Shulhan Aruckh, Hoshen Mishpat Chap. 363: 1).

The plaintiff sued for NIS 1,000,000. Although the judgement finds Ragen guilty of copyright infringement, unjust enrichment negligence and theft, it does not award damages but gives the parties an opportunity to negotiate a settlement. It seems highly unlikely that the conversation in question helped Ragen sell books, or that Ragen’s novel adversely affected Ms Shapiro’s sales. Under the relevant copyright law which is the old 1922 Copyright Ordinance, not the new 2007 Copyright Law, the statutory damages are limited at NIS 10,000.  A fair settlement would seem, therefore to be loose change. Indeed, from a financial perspective it is difficult to see how any award that will stand legal scrutiny can possibly recover legal costs.  but what both sides are looking for seems to be moral vindication rather than damages.

The case: 9430/07 Sarah Shapiro vs. Naomi Ragen, by Judge Yosef Shapira, Jerusalem District Court 11 December 2011

Comments

The ruling is a 92 page whopper, which is why this took me a month to post.

Shapiro’s account in her own words was published in Cross-Currents, an ultra-orthodox discussion group here.

I first covered the Michal Tal case here. See also naomi-ragen-fights-back for details of all three plagiarism suits against Ragen, and Naomi Ragen Accused of Plagiarism – Again for details of a third case filed by Cynthia Rosengarten concerning the Sacrifice of Tamar.

An account of the Supreme Court Ruling concerning dismissal of the case brought by Michal Tal is to be found here: haAretz version and Jerusalem Post version. Ragen’s reporting is here.

For newspaper accounts of the District Court decision against Ragen see haaretz

Additional Comments

In Jephte’s Daughter, another novel by Ragen, the story relates to the daughter of a Rabbi growing up in New York. When I read it, I was reminded of Chaim Potok’s novel The Chosen. There was a scene where the girl and two of her friends experimented with make up in the girl’s bedroom. This reminded me of a scene in the 1980 hit movie Grease. I have no doubt that Ragen has read the Chosen and seen Grease. Whether these influenced her consciously or not, there is no case of copyright infringement or plagiarism.  (Note, I also believe that the Warner Bros character Bugs Bunny was inspired by Groucho Marx, although I’ve never seen any reference to this in print).

It is worth noting that the plagiarism cases against Ragen were filed around the time that Naomi Ragen challenged segregated seating on bus routes serving the ultra-Orthodox community by filing a suit to the Supreme Court on grounds of gender discrimination. A lot of the flack Ragen’s been under for alleged plagiarism seems to be driven by ultra-Orthodox opposition to the position she has taken on this issue which some see as threatening their life-style.  Many of her books are sympathetic to some aspects of the ultra-Orthodox lifestyle and critical of other aspects of the same. Some members of the Ultra-Orthodox do not take kindly to criticism, and may find her novels offensive.

Personally, I see social criticism as positive and believe that Ragen has raised issues that should be addressed. I think that every Jabotinsky was correct in his analysis published in “the War and the Jew”, that every nation needs its Jews; a visible, different looking population to hate. Unfortunately, in Israel, the Ultra Orthodox seem to fill this position for some secular Israelis. (The secular Israelis fulfill a need for the ultra-Orthodox that goyim fulfilled in Eastern Europe, so everyone benefits from the situation, but it keeps the Messiah from coming). However, Ragen has not written the sort of anti-ultra-Orthodox diatribe that the mainstream (secular) papers sometimes publish; where one can substitute the word black, ultra-Orthodox or Hareidi with the word Jew, Kike or Yid, and the piece looks like something that could have been published in Nazi Germany. Rather, Ragen has criticized anti-social behavior exhibited by some members of the ultra-Orthodox camp and cultural norms in some circles that she sees as having negative ramifications. She hasn’t attacked the population. In this regard, she is like Bruria admonishing her husband Rabbi Meir to pray for sin to be removed by sinners repenting, not for sinners to be removed (Talmud Babli Brakhot 11).

In my opinion, as outlined above, this ruling established the facts of the case, but gets the law wrong. I believe it should be reversed on appeal.

The Biblical Sotah from which Ragen plagiarized her title,  is discussed in Numbers 5: 11-31. She is a woman accused by her husband of having been inpregnated by another. In a trial by ordeal, the sotah drinks bitter waters, and, if guilty, swells up, and dies. If innocent, she and her husband are able to put this issue behind them and she is blessed with offspring.  Ragen may have been impregnated by exposure to Shapiro’s book, but her work is an original literary creation, and is admitted as such by Judge Shapiro. I believe that she deserves to be blessed with (literary) fruit for being wrongfully accused.

16 Comments | book review, Copyright, Fair Use, infringement, Intellectual Property, Israel, Israel Copyright, plagiarism, Uncategorized | Permalink
Posted by Dr Michael Factor

Book Review: The Essentials of Patent Claim Drafting

January 8, 2012

The Essentials of Patent Claim Drafting by Morgan D. Rosenberg is a straightforward practical guide to drafting claims, aimed at the beginner. To the extent that one can learn to draft claims from a book, this is not a bad tutorial.

As with many such works however, it is strongly biased to mechanical type drafting. Software and physics are covered to some extent, but the focus is heavily on the predictable arts. The claim style is a little long-winded and pedantic for my taste. The focus is on USPTO requirements, but nevertheless, in my opinion, a chapter dedicated to the differences in US approach, from say, that of the EPO, would be a valuable addition.

The thrust is on drafting claims for obtaining patents. System, Method, product-by-process, Jepson, Markush and Beauregard  claim styles are discussed and illustrated, as are means+function, which are discouraged. Free Beer claims are not mentioned unfortunately. Nor are other claim styles disallowed in the US such as omnibus claims.  Since ultimately a patent might be litigated, there should perhaps be some discussion on claim construing in Marksman hearings and the need to make sure that terms cannot be misinterpreted.  Nevertheless, a useful guide for beginners.

  • Paperback: 224 pages
  • Publisher: Oxford University Press, USA (November 17, 2011)
  • Language: English
  • ISBN-10: 0199856354
  • ISBN-13: 978-0199856350
  • $125

Leave a Comment » | book review, Patents, US, US Patent Office, USPTO | Permalink
Posted by Dr Michael Factor

Rules for Patent Drafting

January 8, 2012

There are many books that relate to claim drafting. Rules of Patent Drafting by Joseph Root is different in that it relates to drafting patent specifications, not merely the claims. Its premise is that when a patent is litigated, terms not mentioned in the claims but used in the specification may be read into the claims by the court during claim construction in the so-called Marksman Hearings, so it is important to carefully consider the specification as a whole when drafting applications, and not merely the claims. The book implicitly rejects the idea propagated by do-it-yourself patent guides, that the inventor can write his own application and simply have a patent agent or attorney draft the claims.

Instead of moaning about what the courts do to patent claim interpretation in Marksman hearings, the book suggests internalizing the court’s approach and reconsidering one’s patent drafting, and provides rules for so doing. In particular, the book suggests writing longer and more detailed disclosures, while taking care not to describe optional features as necessary ones, of course.

One interesting insight about the claims is that since an independent claim has to be construed as being broader than its dependencies, a purpose served by claiming seemingly trivial elements in dependent claims is not to provide a fall back position, but rather to prevent these elements being construed as essential to the invention.

The contents and insights are refreshingly different from the type of thing that seems to be rehashed in books aimed at beginners. Furthermore, the author, Joseph Root,  supports his contentions and illustrates his approach with reference to Federal Circuit Court of Appeal decisions.

Unlike most books on claim drafting that seem to focus on mechanical or electronic systems, the author relates to both the predictable and the unpredictable arts, and instead of simply saying that they are no longer popular, doesn’t shy from tackling means claiming in a thorough manner.

What is particularly refreshing though, is the style. The author emphasizes his points with similes and metaphors taken from an impressive range of books, films, and TV series. Despite thoroughly addressing weighty subject matter, the book is not a heavy read.

ISBN13: 9780199734924
ISBN: 0199734925
Published: February 2011
Publisher: Oxford University Press USA
Country of Publication: USA
Format: Paperback
Price: £135.00

Leave a Comment » | book review, Patents, US Patent Office, USPTO | Permalink
Posted by Dr Michael Factor

Kiss but don’t tell

December 4, 2011

In a case referred to as Plonit vs Ploni and Almonit (from Ruth 4:1), the Jerusalem District Court has issued an injunction to recall a book written by a student “Ploni” (i.e.  John Doe), that documented his relationship with a second student “Plonit”  (i.e.  Jane Doe) that he had previously enjoyed a romantic liaison with.  The relationship was originally kept discreet as Ploni was married and the student was living with her “Significant Other”, but eventually their circle of friends knew about the relationship, and, after Ploni separated from his wife, he was known to be living with the student.

A temporary injunction to recall unsold books and to prevent their circulation and further publication was obtained fairly quickly and upheld by the Judge Gronis of the Supreme Court. This ruling concerns making the temporary restraining order permanent and alleged damages to the plaintiff.

The plaintiff claimed that her private and public world were described in graphic detail, including her body, emotions, weaknesses, conscience, activities and preferences for sexual stimulation. She alleged that the publication damaged her privacy, good name, and cruelly exposed, shamed and insulted her. Furthermore, since extracts of some of Plonit’s letters were published, and her final college project was described, there were charges of copyright infringement in addition to invasion of privacy.

The publisher claimed ignorance of the biographical aspects of the book and that they were under the impression that the work was pure fiction. On the suit being filed, they recalled the unsold books pending judgement. However, nearly one thousand copies were already sold by then.

The defendant led a spirited defense to allow publication, and brought expert opinions of literature professors Ariel Hershfeld, Hanan Hever and Mira Magen to substantiate his claims that the style of the work was that of fiction. He claimed a free speech defense, alleging that allowing the plaintiff to prevent publication of a fictitious work based on alleged similarity would prevent the publication of fiction in general, since the author invariably draws on his/her life experiences.  He further asserted that the public interest was to allow publication, in that the subject matter of broken families and relationships are of clear public interest.

In her ruling, Judge Kanfei-Steinitz found the publishers claim of ignorance convincing and dismissed the charges against them.

Though recognizing the value of free speech, she ruled that free speech is not absolutely protected and a balance needs to be struck between free speech and other rights, including the right to privacy, noting that both are fundamental rights, with right to privacy being protected by the Basic Laws. In addition to the case-law, she quoted from the ruling by Supreme Court Judge Gronis, concerning the appeal to the temporary restriction order in this case, where he pointed out that one of a couple in an intimate relationship is entitled to prevent the other party from publishing details of that relationship as this is fundamental to society.

The plaintiff’s case was strengthened by the defendant’s ex-wife’s attempts to prevent damaging details about her and the children being published and by a recording of a conversation between herself and the author where she asked him how he could publish all the details of their relationship.

Due to the nature of the final year project of the heroine of the book, her place of study, the area where she lived and where her parents lived, her physical description including build, hair and eye colour and tattoos, and the clear identity of the author who wrote in the first person without a pseudonym and was known to have lived with the plaintiff, Judge Kanfei-Steinitz ruled that whether or not the work was categorized as fiction, there was a clear and compelling case that there was an invasion of privacy and that the balance between literary freedom and right of privacy justified preventing the book from being published.

In addition to ordering the books recalled, the court ordered that Ploni pay NIS 700,000 in damages for invasion of privacy according to the abstract (NIS 200,000 according to the end of the ruling – so the actual sum is unclear) and a further NIS 50,000 costs.

T.A. 3213/09 Plonit vs. Ploni and Almonit, Judge Gila Kanfei-Shteinitz, Jerusalem District Court, 11 October 2011.

COMMENT

The copyright issues in this squalid case are actually quite interesting since the author can claim a moral right to his work, in addition to freedom of expression. Nevertheless, I think this judgement was correct to focus on the privacy issues.

One wonders how much the good name of a known adulteress and family breaker is actually worth. then again, I don’t know whether the damages awarded were NIS 200,000 which seems rather low and NIS 700,000 which seems a little high. I concur with the judge that the plaintiff is entitled to prevent her ex-partner from publishing intimate details of their relationship in the guise of fiction. Sadly, I suspect that the nearly a thousand copies sold before the recall and following excerpts published in the weekend papers and described in television interviews, were no doubt largely snapped up by acquaintances of the litigants.

The decision is a good one, and seems very thorough and well-reasoned.

As to the public interest, a distinction should be made between what the public is interested in knowing and what is fairly considered as public interest.

Ayn Rand: “The idea that ‘the public interest‘ supersedes private interests and rights can have but one meaning: that the interests and rights of some individuals take precedence over the interests and rights of others.“

James Wilson: In the long run, the public interest depends on private virtue.

 

2 Comments | book review, Copyright, Israel, Israel Copyright, Israel Court Ruling, Uncategorized | Permalink
Posted by Dr Michael Factor

Thesaurus of Claim Construction – a book review

March 4, 2011

I was very excited when Stuart Soffer, a Non-Resident Fellow, Stanford Law School Center for Internet and Society informed me of his forthcoming book, “Thesaurus of Claim Construction” which is co-authored with Robert C. Kahrl, a long term partner at Jones Day. Such a book is long overdue.

The nice people at Oxford University Press kindly sent me a copy.

The work is mostly an alphabetic arrangement of words and phrases that have been construed in the course of patent litigation and includes over 7000 entries. Since such constructions are, by definition, rulings regarding the meaning of the word or phrase in the specific context. Consequently such constructions are not binding precedents and aren’t even much use as an indication of what a phrase would be interpreted to mean in another claim construction. Nevertheless, the definitions do show what the words could be taken to mean.

The range of words and phrases that have been the subject of claim construction may be surprising to some. Chief Judge Markey in Senmed vs. Richard Allan Medical Industries, Inc 888 F.2d 8215, 819 n. 8 (1989) commented on a construction of the word ‘on’ in a claim, that;

 ”lawyers may create a dispute about any word”.

Chapter 1, ‘How to use this book’ is well worth reading, but I rarely bother with user manuals and certainly have no intention to review a user manual for a book, so will move on.

Chapter 2, titled ‘Outline of the Law of Claim Construction’ is a must read for litigators and is valuable reading for practitioners drafting claims. Personally, I believe that expensive disputes could be avoided by using words more carefully, preferably in accordance with their regular meanings and with definitions in the specification. Nevertheless, it is valuable to review the hierarchy between dictionary definitions, the specification, extraneous sources and the file wrapper. There are also differences in how the preamble, transitional phrases and limiting clauses are interpreted. It is useful to remember that the correct construction is what the word meant at the time of filing, apart from the cases where limitations crept in during prosecution.

The lion’s share of the book is devoted to Chapter 3, an alphabetical list of “Simple terms” that have been construed at some time or other, with indications of which definition and which party prevailed and which constructions were rejected. The entries are referenced with the details of the court dockets for further reference.

The list starts with a construction of the symbol %, and reminds us that compositions should be given as weight percent, or volume percent, and that it should be clear if the percentage is of the total composition, or of only part. The next words to be examined are ‘a’ and ‘the’. One can understand why a term like ‘AC energy’ required construction as it is ambiguous, since current is measured in amps and energy in joules, but who would have the foresight to define whether ‘AC wave’ implies the wave created by a varying current over time, or whether the direction of the current has to keep reversing? Likewise the effect of adding words like ‘about’ in a claimed range becomes clearer on reviewing the way such claims are construed.

It will be appreciated that words beginning with letters B through Z have also been construed and this review is not intended to comment comprehensively on all the entries. One can amuse oneself by opening randomly and seeing what terms have been discussed though. For instance, in a particularly adolescent moment I discovered how the court interpreted the term nipple cover.

 In Allure Home Creations vs. Zak, the term ‘second vessel’ was interpreted to mean ‘a preformed sealed vessel enclosing a first liquid and an insoluble structure floating on the first liquid. One presumes, therefore, that the context had nothing to do with first and second vessels relating to reheating foodstuffs on the Jewish Sabbath without violating the Biblical prohibition of cooking – tha is unless the claimed invention related to chicken soup with kneidlach (matzo balls).

One of my esteemed Israeli competitors has the endearing habit of defining the word plurality to mean ‘one or more’ in his specifications. Native English speakers working for him have been unable to convince him that this is simply wrong. I was pleased, therefore to see that the many constructions of the word plurality all take the word to mean at least two. Nevertheless, one wonders how his claims would be construed.

The book relates to litigation in the US, but, since the US is an important market, and because judges everywhere seem to have little scientific aptitude and lawyers everywhere play semantic games, the book will appeal to an international audience. 

In addition to giving the history of Marksman there is also a valuable chapter on ‘means + function’ claims and how they are construed.  Apart from guiding litigators, the book may help claim drafting, should help designing around, and will prove invaluable to practitioners required to express opinions about the work of others. It is also an impressive addition to one’s shelf of dictionaries and reference books, since it has approximately similar dimensions to standard editions of Roget’s prior art.

Thesaurus of Claim Construction, Robert C Kahrl and Stuart B. Soffer, Oxford University Press 2011. Well worth the $295 asking price.

Leave a Comment » | book review, Patents, US | Permalink
Posted by Dr Michael Factor

Innovation, Intellectual Property, and Economic Growth

January 20, 2011

Innovation, Intellectual Property, and Economic Growth by Christine Greenhalgh and Mark Rogers (Jan 24, 2010)

I reviewed this book for the Oxford Journal of Intellectual Property Law and Practice.  doi: 10.1093/jiplp/jpq211

The knife-edge on which the intellectual property law tries to balance is that of defining enough private property rights to preserve adequate incentives for innovation while avoiding the gift of excessive monopoly power, which will lead to socially inefficient exploitation of that creation. This book analyses the effect of intellectual property rights (IPRs) on the market. While certainly capitalists, the authors view Milton’s free market as a system that is inherently inefficient at wealth maximization and prone to duplication of effort and wastage. The market thus needs intervention and regulation to optimize the usage of resources and to maximize progress. The book takes the position that IPRs, by granting property rights over intangible assets, moderate the forces of the market and promote progress. The optimal periods of protection for patents and copyright are those that find the correct balance between the creator’s rights and the public domain or the free market, to encourage development and progress. The difference between the protection given by ……[Full Text of this Article]

Full Text (PDF)

Leave a Comment » | book review, Business Method, Intellectual Property | Permalink
Posted by Dr Michael Factor

Copyright in Jewish Law – a book review

December 13, 2010

The Hebrew title of the book is titled creator’s rights (or privileges) in Jewish Law, using the term Zechuyot haYotzer. The English version renders the term as copyright. Although the book focuses on copyright issues, it does also relate, albeit briefly, to patents, trademarks and to the moral right of an author to be recognized as such. All these are referred to as copyright. This is somewhat confusing as they are different types of intellectual property that serve different purposes, protect different types of subject matter and for different time periods. Thus the term intellectual property right or IPR would perhaps be a more useful term.

The book raises more questions than answers. In the forward the book defines copyright as the restriction against duplicating an idea or an object. It is however axiomatic to secular copyright law that ideas per se are not protectable, but rather they need to be fixed in some manner, and objects are usually protected by design rights or patents.

The introduction and overview explain that the majority of Rabbinic authorities consider ownership over intangibles as being of Biblical origin. However no reference to chapter and verse is made. There are other authorities, termed the minority view, that base the prohibition on copying on secular law, custom of upstanding citizens or encroaching (confusingly referred to in the text as infringing) the livelihood of others. By understanding the majority view as natural law or inherent rights and the minority view as utilitarian law designed to promote progress, the so-called majority position is not far from that of civil law systems such as those of France and Germany, and the minority position is similar to the common law approach of the Britain and the USA.

There are a number of factual errors regarding civil law. Copyright does not require a formal act of registration, and there is no need to label material as copyright, but the book seems unaware of these facts. The current volume, despite being published this year, is out of date. The period of copyright for printed material is stated as being life + 50 years (se e.g. 1:59, quoting the Encyclopedia Britannica) whereas it is generally, for example, life + 70 years in Europe, the US and numerous other jurisdictions. Civil Law provides for copyright material to enter the public domain after a set period. The book takes the position that in halacha, a work never enters the public domain. From the acknowledgements, it seems that the book was apparently translated by one couple and edited by a third person. It is thus not clear whether the author, the translator or the editor is responsible for choices of words in the English book.

The flyleaf from the publisher implies that this work is the first systematic treatise on the subject. There are, however, a number of works published over the past couple of decades, in Hebrew or English, that cover Intellectual Property in Jewish Law, whether from the perspective of Mishpat Ivri, i.e. an attempt to distill principles of Jewish Civil Law from the Rabbinic literature for use by the Israel Courts, or that of Halacha, i.e. practical guidance for observant Jewish believers.

The first chapter relates to publisher’s rights and this section is about ten times as long as the section on author’s rights. It seems that the halachic responsa from the early period of printing were mostly concerned with guaranteeing a return on investment, making classical works available and advancing knowledge than in compensating authors for their toils. Also, the earlier sources generally don’t provide commercial rights for authors in Torah related works.

The book does find moral rights of authors to be cited in classical Jewish sources, such as the Ethics of the Fathers, and ideas should be attributed.

Many copyright laws have some fair use exceptions. These are notably broad in the US and in the Israel Copyright Law 2007, I would have been grateful for a comprehensive detailed treatment of a halachic position on this.

Despite the book having been published in 2010, the author seems unaware of the new Israel Copyright Law legislated in 2007 and the American Digital Millennium Copyright Act. We suspect that most potential readers are based in Israel or the US, and these provide a more practical guide to what is and is not allowed in various jurisdictions.

A 1996 law under which the State of Israel was to apply a tax to blank cassettes to compensate creators of material copied onto those cassettes is referred to a number of times as the basis for allowing Israeli songs to be copied for private use. However, this law was never implemented and the subsequent TRIPS agreement of the WTO, which was accepted in Israel, stipulates a basic level of copyright protection for films and songs and supersedes it. Finally, cassettes are no longer in use, having been replaced by optical and flash memory technologies, so the discussion is largely irrelevant.

The term majority and minority opinion are used throughout, regardless of who the minority opinion is. Thus, widely respected, significant halachic authorities such as Rabbi S.Z. Auerbach, are related to in the same manner as the author of a recent work, “Not All Rights Are Reserved”, whose position on some practical aspect of copyright are analogous, in my opinion, to ritual immersion whilst holding a dead rat.

There are some statements in parentheses that are not attributed to other authorities. I am not sure if they reflect the musings of the author or the translator/editor/publisher. Some of these are clearly wrong. A glaring example is the case of international copyright treaties, where according to the author, an infringing act simultaneously infringes the law in each country that is signatory to a treaty. This is not how international copyright treaties work, which simply address enforcing rights in one jurisdiction for material created elsewhere.

It will be noted that copying some creations may, of course, infringe the rights of more than one creator in more than one jurisdiction. Although according to the author, there is no copyright in translations, in simple photographs or in type-setting, this is not, in fact, the case.

Paragraph 5:3, found in the chapter on copyright states:

The classification of a “new invention” is conferred by experts in the field who verify whether the item is, in fact, original.

The statement is not referenced so seems to be a novella of the author. Whilst correct, is nevertheless misleading and problematic. If the term new invention refers to patentable inventions, it implies that the criterion of examination is novelty. Modern patent protection requires non-obviousness or an inventive step, not merely originality. It is also available for methods and processes not just for items. If by “new invention”, the author intends “registered design protection”, the statement is more accurate, at least as far as Israel and the US are concerned, where designs are examined. In Europe, for example, such designs may simply be registered, and there is also non-registered design protection. The originality is only an issue on litigation and then there is no need for an expert, a judge will make the determination of whether the design registration should have issued, i.e. whether the design is indeed an original creation. The statement appears in a chapter entitled copyright that relates largely to copyright issues. Copyright is not examined unless litigated. Copyright is generally not available for items other than works of art such as sculptures. The original contribution required for copyright protection is very low, and there is no classification of copyright material.

Amongst other material, Chapter 11 relates to trademarks and rules that infringement is forbidden because of Civil law. The unfortunately common problem of philanthropic organizations using confusingly similar names is addressed. Another point of interest that is covered is a ruling that the heir of a Chassidic dynasty does not automatically inherit the name of the group even if the original members now follow him. However the development in Bobov where one faction has filed a series of trademarks for Bobov, Admor from Bobov, etc. in both the USPTO and in the Israel Patent Office is not discussed.

At the beginning of Chapter 12, entitled “Imitating Creativity” there is the following paragraph:

 Important Note A distinction is made between copying an innovative idea or creation, and copying a style of workmanship; a patent is given for an original idea, whilst a style, which is a unique shaping or enhancement of a product is not considered a creation nor an independent idea unless it is very unique and original, and therefore, it is not, and cannot possess a copyright over it.

This type of muddle, is, unfortunately, symptomatic of the book. Patents are not given for original ideas, only for articles and methods – indeed ideas per se cannot be protected, only their expressions. The author is apparently unfamiliar with registered designs (in the US, design patents). In some countries such as Europe, and under the doctrine of unjust enrichment in Israel, there are also unregistered design rights. There protect unique shaping and enhancements of products. Unique implies one of a kind, and so there are no degrees of uniqueness. Copyright does not require something to be very unique or original. A small degree of creativeness is sufficient.

When discussing products created using pirated software, the author draws a distinction between graphic products and text products. The use of graphic products created with pirated software, according to Rabbi Elyashiv, is forbidden (7:6); according to the author this is the majority opinion. In contrast regarding text products created with pirated software, the author maintains it is apparently permissible to use according to all opinions (7:7). There is no explanation given for the basis of this distinction.

There is a fascinating discussion in the Talmud of an instance where a rabbi promised to respect a trade secret for a medical cure and then, on learning the secret, went back on his word and published it for the common good. Surprisingly, this is cited as a practical halachic ruling, derived from the Talmud directly 12:27. To this blogger, it is not clear that the story is meant to be taken as guidance for normative behavior, and could be considered anecdotal (aggada).  Somewhat disturbingly, the author goes on to rule that one cannot divulge a trade secret even in life and death situations.

It was interesting to learn that in 1519, i.e. well before the Statute of Anne of 1709, the semiautonomous Jewish community of Europe instituted a 10 year exclusion right against republishing a book. See 2:3.

Another treat was details of where pseudoepigraphy, where a work is falsely attributable to an earlier author, is considered acceptable in Jewish law. Unfortunately, the conclusion I draw from this is that not only where something is stated as being Biblical, but even where it is attributed to a Rabbi of generations past, one cannot take such statements seriously unless fully referenced. For this reviewer, the theory that Shimon Bar Yochai authored the Zohar is no longer tenable.

Copying software, videos and the like are discussed in detail. Some opinions cited are more authoritative than others. In Jewish law, apparently photographs and vocal recordings are considered not protected, but the author makes it clear that civil copyright law is binding 17:17. The sources of rulings are not given in the main text, but generally appear in the footnotes.

Responsa are generally specific practical rulings that issue in a given set of circumstances at a specific time and place, against a particular political backdrop. A good example of this is the prohibition or otherwise of competing with an edition of a Jewish religious text published by a non-Jew. Such cases are fascinating from a scholarly perspective, but the book does not provide enough details for this purpose. In terms of how to act in the modern world, the value of such rulings is strictly limited.

Confusingly, the book considers applying different words to a known melody is forbidden as long as there is civil copyright in the melody. This implies that after that period, it is permitted to sing different words to the tune. Singing the words of a song to the original tune is, however, apparently never permitted, which is most confusing. (It also does not square with common practice such as singing Dror Yikra or Adon Olam (famous Shabbat hymns) to Ron Eliran’s Sharm el Sheikh or to one of the Beachboy’s hits). The big controversy worldwide involves downloading music from the Internet. However digital music files are not discussed within the book.

Relating to a 1996 law concerning cassettes is not the same, not least because analogue copies are of a lower quality, whereas digital files may be identical to the original. Punitive fines are not discussed. Restitution appears to be the generally prescribed method of making amends. This is clearly adequate for basically moral people who respect the property rights of others, but may occasionally err.

A legal system that provides protection from the less moral may need punitive fines and not just restitution. Furthermore, the types of restitution suggested in the book, is sometimes a little eccentric. For example, if someone subscribes to a listing of flats available for rent / purchase, where there is a contractual obligation not to disseminate the information, the restitution suggested, apparently by the author, is to pay a second subscription from when the first, voided subscription was taken out. This links the fine to the length of subscription. I’d have thought a daily or weekly subscription for every person with whom the information was shared would be more appropriate.

At the end of the book, some rulings of contemporary halachic authorities are given. The range of authorities chosen is somewhat sectarian Ashkenazi of the Lithuanian school. Since the subject matter relates to moral and property rights and should be equally binding on religious Jews of different persuasions, I would have preferred a presentation of the views of a wider selection of leading figures of different flavours, at least including Sephardic authorities, halachically observant academics and jurists and Centrist Orthodox Rabbis.

We found the present volume disappointing. Nevertheless, we applaud the author and publisher on the initiative. There is certainly a need for an up to date work on Intellectual Property in Halachah / Mishpat Ivri. Note: Professor Jeremy Phillips has also reviewed the book. See: http://the1709blog.blogspot.com/2010/03/copyright-in-jewish-law.html

 Copyright in Jewish Law, by Rabbi Nachum Menashe Weisfish published by Feldheim 2010. ISBN 978-1-59826-442-5

Feedback on this review would be extremely welcome.

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

Book Review: Patents for Chemicals, Pharmaceuticals, and Biotechnology, fundamentals of Global Law, Practice and Strategy

November 17, 2010

Written by senior IP counsel at Novartis, Philip Grubb and Peter Thomsen, both also lecturers in academia, this book is a well-written authoritative overview of patent protection for pharmaceuticals, chemistry and genetics that is a “must read” for practitioners and industrialists in this area.

Whilst it is clear that the authors are biased towards the drug development industry, the genetic viewpoint is covered as well and there is an attempt to be fair. The authors acknowledge that most genetic challenges are aimed at secondary patents that attempt to prolong the period of protection and there is even an admission that sometimes patent applications are filed where it is difficult to argue inventive step or even novelty, and the pejorative term evergreening is used to condemn such activities that bring the drug development industry into disrepute.

The book covers the legislative development and main case-law, comparing and contrasting between the practice in the UK, US, Japan and Continental Europe, particularly Germany and the Netherlands. The book is very strong on historical development of the patent system, both for the main regimes, and their former colonies. Thus, where the problems of protection in the developing world is discussed, particularly Latin America, it is pointed out that Spain and Portugal lacked protection for pharmaceuticals until joining the EEC in 1980, which does put things into perspective.

The book has five parts.

Part 1 provides an introduction and background to the Modern Patent System, discussing the nature and origins of patent rights and follows the early history and the historic development over two centuries in the UK and the USA. The evolution of the law in other industrial countries is covered, albeit less thoroughly, and the state of affairs in developing countries is discussed as well. Trends towards harmonization of patent law are discussed at length, particularly the state of affairs in Europe and TRIPS, and criticisms of TRIPS are related to.

In part 2, substantive patent law and procedure is reviewed. The range of patentable inventions is discussed, followed by an overview of what should be filed, when and where. This leads into a discussion of filing abroad, the Paris Convention, European patent applications and the PCT system, and follows with a discussion of petty patents. The examination procedure, allowance, oppositions and maintenance are discussed, followed by the requirement to work the patent and forced licenses. This naturally leads into chapters covering enforcement and invalidity and post grant amendments. Although this section is not specific to the chemical, pharma and biotech industries, it is written from this angle and an overview of patent term extensions and supplementary certificates is included.

One of the strongest sections is Part 3, which discusses the patentability of inventions in specific technical fields. The chapter on chemical inventions includes selection inventions and disclaimers, protecting compounds of unknown structure and synthesis and new uses. Pharmaceutical inventions are covered broadly, including secondary pharmaceutical uses. Supplementary Protection Certificates are discussed together with other exclusivity periods. The chapter on biotechnical inventions managed to concisely various developments including recombinant DNA and Monoclonal Antibodies. The chapter was a well written introduction to the science. The question of patenting life, and transgenic animals and plants is covered, and the morality aspects were covered, albeit largely dismissively. Surprisingly, there was a chapter on software and business methods. This was justified as these fields are often of importance to chemistry and life science players, and case law in one controversial field, may have a knock on effect elsewhere.

The fourth section covers patenting in practice. The difference between US patent agents and patent attorneys is explained, as are licensing requirements in Europe. The expected formal education, general perspectives and areas of competence of newly qualified practitioners in different jurisdictions are compared and contrasted. The application itself is systematically discussed, in terms of the purpose and scope of the background, sufficiency of disclosure, length of text, purpose of claims and the various forms. In addition to Markush, Jephson and Swiss type claims, ‘free beer’ claims – i.e. claiming a desirable result without adequate disclosure and ‘pickled onion’ claims, i.e. the danger of being overly broad in claim drafting, and including well established prior art, were also discussed.

The fifth section covers commercial exploitation. The issue of inventorship is discussed, together with the rights of the inventor in various jurisdictions. The various patenting strategies of different players, such as start-ups, established companies, individual inventors, universities and patent trolls is compared, and the use of patents by pharmaceutical companies is contrasted with the use by microelectronic industries. Infringement and licensing are covered from the perspectives of the patentee and the user, and the various considerations concerning licenses, contracts and agreements between different types of entities is discussed in a manner that makes it clear that the authors have considerable practical experience. The final chapter looks at competition law in Europe and the US, and here the authors are refreshingly sarcastic about probes and position papers written by well-meaning, but ignorant quangos and government committees. A useful glossary and index are also included.

Despite being impressed by and generally enjoying the volume which is well written and well-organized, I do have a number of criticisms regarding personal opinions of the authors regarding preferred practice:

  1.  The authors suggest formulating a policy of where to file, and adopting this as company policy, to be revisited only if the nature of the invention indicates consideration of different markets.
  2. The authors also advocate developing and managing IP in-house IP, pointing out that the general trend to outsource peripheral activities should not be extended to IP which, unlike IT support, etc., is of central importance to the health and business of the company. As a handbook written by experts, I would expect IP managers to look for and be influenced by such practical advice.

The problem is that for pharmaceuticals, as with other technologies, the IP strategy is built on the dual considerations of protecting potential markets and thwarting competitors. The importance and capabilities of difference countries varies over time in accordance with their economic development and with political change, both international treaties and changes of internal government. It is difficult enough to make decisions that will have an effect in several years time, with continuous monitoring of the situation and rethinking strategy. Deciding that historic practice should become policy that does not generally require revisiting is indeed a way to avoid protracted meetings, but it makes it increasingly likely that expensive patent portfolios will not provide adequate protection.

To this reviewer, a glaring lacuna is that the IP regime in Israel is ignored. Indeed, the only Israel link, was in the discussion on the doctrine of equivalents, where the Epilady case was discussed, and the workings of the German and UK courts was contrasted. Israel is a relatively small market of only some 7 million people, but Israel industry includes some major players. Teva is the world’s most successful generic drug manufacture and currently the fourth largest pharmaceutical group. Makhteshim is the largest generic specialist chemical manufacturer. Compugen has developed a computer gene analysis platform and is leading player is gene discovery and classification. In the past 5 years there have been many changes and the Israel patent office is one of a handful authorized to provide International Search Reports and written opinions for PCT applications. There are however, no specialist IP courts. Whether after due consideration, a chemistry, genetic or pharma company decides to file and prosecute patents in Israel or decides not to, this should be a decision. Israel is too important to be ignored. Although a single volume work cannot be comprehensive, I suspect that other jurisdictions are not given sufficient discussion either.

List price $175 – but already available for less on the Internet. Well worth the money.

Patents for Chemicals, Pharmaceuticals, and Biotechnology, fundamentals of Global Law, Practice and Strategy, fifth edition, by Philip Grubb and Peter Thomsen, ISBN 978-0-19-957523-7 Oxford University Press 2010, 537 pages in hardback.

1 Comment | book review, Intellectual Property, Israel, Patents, pharmaceuticals, pharmaceuticals and Biotechnology | Permalink
Posted by Dr Michael Factor

Invention Analysis and Claiming, a Patent Lawyer’s Guide

June 3, 2010

This book was written by a patent attorney in private practice who had previously worked for over 30 years as a patent attorney in-house at Bell Laboratories (AT&T and then Lucent).

The book tackles the problem of abstracting the inventive concept from a technology and claiming it as widely as possible, with minimal limitations. It is not a guide to passing the US Patent Bar, but is rather aimed at practicing attorneys wishing to hone their skills.

There is a good analysis of the pros and cons of means-plus-function claiming as a pose to claiming structural components. The book demonstrates how claims can be tightened, and how to avoid unnecessary limitations like descriptive labels in claims, modifiers, unnecessary elements that are part of an embodiment but not part of the invention, advantages and uses – i.e. material that belongs in the description and perhaps has a place in dependent claims.

The need for the claims to define the invention, not to explain it is stressed, and why words such as for… are best avoided in claims. One valuable point is that the author stresses the need to claim proactively not reactively. In other words, not to draft claims that examiners are comfortable with, but rather those that best serve the interests of the applicant.

Like any book of this nature, it is easy to pick holes and to find its limitations. Most examples are related to simple mechanical inventions and the tools provided may be somewhat limited for claiming biotechnology and chemistry type inventions, particularly gene sequences and the like. Also, it is focused on US practice, and increasingly, practitioners are required to consider all jurisdictions when drafting claims.

Although focused on claim drafting, there are further sections that relate to the background, summary and descriptions as well. I think the work is valuable for experienced practitioners, since all too often, patent attorneys get into a drafting style that blinkers their perspective of alternative ways to do things, and may not reconsider the theory after obtaining their licenses. Furthermore, to get licensed, one tends to be conservative in claim drafting, which is not necessarily to the client’s advantage.

The book is a mere 284 pages long and is very well written. I read it over a couple of days. More to the point, I gave it to a trainee, and she read it over a week and found it useful.

Invention Analysis and Claiming a Patent Lawyer’s Guide, by Ronald Slusky American Bar Association 2007;  ISBN 978-1-59031-818-8. Price $79.95.

Leave a Comment » | book review, Patents | Permalink
Posted by Dr Michael Factor

Intellectual Property Culture – A Guide for Corporate IP Managers

March 2, 2010

 

Intellectual Property Culture by Eric M. Dobrusin and Ronald A. Krasnow, is a kind of handbook for actual and aspiring in-house IP managers. Although it does not assume knowledge of IP, and defines trade secrets, patents, and other basic concepts, the book is not merely for new-comers, but includes much that licensed patent agents or patent attorneys will find interesting, particularly those that switch from working for service providing law firms to becoming in-house counsel.

Rather than to teach how to draft patents, the book teaches how to create an IP culture for a corporation. Infringement and competitors IP is discussed before how to plan a patent portfolio. Trade secrets and confidentiality are discussed before patents. 

There are some very useful tips regarding attorney-client privilege in the US. In some cases, directors are advised to create personal privilege by consulting with IP Lawyers directly instead of as representatives of the firm.

Outside Counsel will be ambivalent about the book. On the one hand, there is a frank and revealing description of how many IP law firms operate, and a non-polemic but nevertheless implied criticism  of common leveraging practices where the less experienced personnel do the billable work. On the other hand, in a table of avoidable causes of large legal bills is “trying to do the job of IP counsel to save a few bucks.”

There is a particularly good chapter on claim reconstruction that includes a table of patent terms that companies have spent millions in litigation based on what words like ‘and’, ‘about’, ‘composition’ and ’one’ mean.  

I am unaware of any other book that is directed at the corporate niche in this mannerand suspect that the conscientious CTO, internal legal counsel, CEO or Vice President responsible for IP matters will read the book systematically and then refer to it regularly. 

Intellectual Property Culture by Eric M. Dobrusin and Ronald A. Krasnow, Oxford University Press, 2008. 382 pages, including some useful appendices, boiler-plate contracts, NDAs, etc.

3 Comments | book review, Patents, US | Permalink
Posted by Dr Michael Factor

« Previous Entries
Follow

Get every new post delivered to your Inbox.

Join 93 other followers