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

Contributory Copyright Infringment Can Be Passive

September 14, 2011

As reported in http://blog.ipfactor.co.il/2011/07/04/contributory-copyright-infringement-in-israel/, Israel’s Supreme Court has upheld a judicial tort of contributory copyright infringement, finding Israel’s Labour Party guilty for activities performed to attract students to affiliated student associations. However, the Supreme Court did not find the Hebrew University responsible for infringing copies of textbooks sold by student societies.  Shocken, the publisher, appealed this decision and requested a Further Hearing.

The President of the Supreme Court, Beinish, rejected the request for a further hearing. Contrary to Shocken’s understanding she considers that the ruling does not rule out claiming damages for contributory infringement by failing to act, but that in the circumstances, the Hebrew University’s failure to police copyright on campus did not amount to copyright infringement.

D.N.A. 5004/11 Shocken House Book Publishers vs. The Hebrew University, The Israel Labour Party and Yaakov Cohen

COMMENT

I am a little scared by the concept of contributory copyright infringement by failing to act to prevent infringement. No doubt time will teach when this is to be applied. I do think it is a good thing that universities are not expected to actively police photocopying machines, and to review what is sold in all clubs and societies on campus.

1 Comment | Academia, Copyright, infringement, Intellectual Property, Israel, Israel Copyright, Israel Court Ruling | Permalink
Posted by Dr Michael Factor

Hot off the press…

September 14, 2011

There are two Israel cable TV service providers, Hot and Yes.

AGICOA is an international copyright enforcement organization that was founded in 1981 and collects and distributes royalties that lie beyond the reach of individual rights holders, specifically from rebroadcasting.

Any rebroadcasting that is more than one minute long is considered by AGICOA to be fair game for collection of royalties.

In 2000, Agicoa sued Hot for copyright infringement resulting from the bundling of a number of TV channels from outside Israel by local cable TV providers since bought out by Hot. The cable TV providers accessed the channels by tracking the telecommunication satellites and receiving broadcast signals, and they then piped the channels down the cables to the end users.

The channels bundled were SAT1, SAT3, FRANCE 2, TV5, CANALE 5, METVG (subsequently dropped) and various channels originating in Turkey, Hong Kong and Russia.

It wasn’t the TV channels that sued. Rather, it was the “majors”, a group of seven major content providers, including FOX, Warner, Bueno Vista, MGM, UNIVERSAL, SONY, PARAMOUNT

They alleged some 35,000 programs were infringed since they were broadcast in Israel without paying royalties.

The sum sued for was between NIS 10,000 and NIS 20,000 compulsory damages per infringement, i.e. per program, with the court fee paid allowing a maximum of NIS 20,000,000

This case was filed in 2000 in the overloaded Tel Aviv district court, and was transferred to the new Central District Court in 2007 when it was set up.

The facts were not in dispute. However, counsel for HOT raised some interesting defenses:

  1. Hot was not the correct defendant as it was companies that they had bought that had infringed, if there was infringement
  2. The copyright collection society had no standing to sue without including the producers
  3. The producers weren’t producers at all but distributors and didn’t own the copyright since programs and films were created by smaller companies and only distributed by the bigger players
  4. Since in some cases the producers reserved the right to sue if copyright infringement company was unsuccessful the copyright company was not acting on their behalf
  5. The deal between the producers and the channels included rebroadcasting rights
  6. Having authorized the channel to transmit, the rights in the broadcast films were exhausted
  7.  Agicoa was double dipping since the channels had already paid once
  8. There was an implied license for rebroadcasting
  9. The number of infringing acts was the number of channels not the number of programs
  10. The organization was a cartel and therefore illegal
  11. Royalties claimed were more than those claimed for in other countries
  12. HOT was sued but YES wasn’t.
Judge Esther Shtemer’s position was that the Supreme Court Decision in Tele-Event (sports streaming) provided support that retransmission was copyright infringement, dismissed all arguments and essentially ruled that even though some points had been raised, there was still sufficient infringements to reach when applying the bottom end of the scale, and giving NIS 10,000 per infringement.
Having ruled NIS 20,000,000, she then halved this but slapped on a whopping NIS 500,000 in legal fees. Because of the interest and inflation since 2000 when the case was filed, the actual sum awarded in today’s money is NIS 19,00o,oo0.
The Case: T.A. 4757-08-07 AGICOA – Association for the International Collective Management of Audiovisual works vs. Hot Telecommunication Systems, 4 September 2011 by Esther Shtemer.
Comment
Whilst accepting that some of the legal arguments brought by the defendants were spurious, for example plaintiffs were within their rights to discriminate against HOT and not pursue YES, I think that some of their arguments did deserve serious consideration.
Sometimes, Shtemer does dismiss arguments based on fact. For example, she does point out that the Agicoa style of cartel has been considered by the Israel courts in the past, and, was, for example, allowed for AKUM and other copyright collection societies, due to the costs of collection and general efficiency.
It seems clear that the Judge had decided that there was infringement and was not going to allow any legal technicalities to stop Agicoa from collecting. She was not convinced or swayed by arguments, but there is little substantive analysis in many cases to show why the arguments were invalid.
Where the requirement under the old law with regards to whether or not the so-called rights holders, i.e. the majors needed to be enjoined as co-plaintiffs, to prevent them suing again separately, Shtemer acknowledged that the new law required this, and that US, UK and other foreign laws required it, and that another judge had ruled this in an earlier case, but she considered this as open to interpretation under the old law. She considered that declarations and contracts with the majors achieved this without formal enjoining of them as plaintiffs and she pointed out that she could disagree with her peers and was not bound by foreign law or the 2007 law. Maybe. However arguably the new law should be used to interpret the old law where its correct interpretation is not clear.  What seems certain is that Shtemer was not going to allow Hot to get out on a technicality. She had made her mind up regarding guilt and wasn’t to be swayed by legal arguments.
Judge Shtemer kept pointing out that the defendants had not proven their arguments. Maybe. Nevertheless, I respectfully submit that Israel should follow the common law and Jewish law traditions (Baba Kama 46:2), where the plaintiff is supposed to prove his case, not that the defendant should have to prove his innocence. the assumption that there is copyright and that actions are infringing goes against this.
We note, the defendant suggested that the number of acts would be the number of channels, and the judge dismissed this as being unreasonable. “Why not number of producers? i.e. 7????” But the damages are statutory. Who says they should be reasonable?
That said, since HOT negotiated broadcasting rights of 8 million in 2000, it seems that 20 million for seven years of infringement is reasonable.
It is not clear what the plaintiff’s lawyers did to warrant half a million in legal fees. defendant’s lawyers did put up impressive arguments.
We note that this ruling stands in sharp contrast to  Judge Dr Michal Agmon-Gonen’s position in the Premier League case. See http://blog.ipfactor.co.il/2008/07/17/moving-copyright-goalposts/. Agmon-Gonen went on to explain that her motivation in ruling that streaming technologies were not copying was that free access to films, sport events and the like, was a fundamental human right(!)  Despite acknowledging that viewers rights had no basis in the Law, she felt that they could, nevertheless, be read into the Law.  See http://blog.ipfactor.co.il/2011/02/22/israel-ministry-of-trade-and-industry-hosts-wto-trips-conference/
It seems that there is little consistency in decisions by different judges.

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

Generic Body Warmers

September 4, 2011

S.P.B. Equipment LTD and T.T.L.M. Systems (Israel) LTD, both owned by Shai Popper supplied chemical body warmer packages to the Israel Defense Forces (IDF) and to private customers through survival and camping stores.

The packages have a specific shape, are coloured yellow and show instructions for use and various warnings in Hebrew and English. They also include a Use By Date.

The packages are manufactured in by Tianjin Comfort in China where they are sold as Body Warmers. Popper, however, sells these devices as High Quality Body Warmers.

Apparently, over a 10 year period, during which Popper had a significant market share if not an absolute monopoly, Popper sold some 5,000,000 units.

EliKal LTD. was created by a Mr Eli Even-Chen in 2005 after Even-Chen served as Head of Logistics and Equipment of the IDF over the years 2002 to 2004.

After several failed attempts, EliKal succeeded in winning the army tender.

EliKal’s body warmers were also sold as High Quality Body Warmers, had the same shape, were coloured yellow and had very similar texts printed on them. Furthermore, EliKal used a similar website with similar content to that of Popper’s companies, to advertise his products.

Popper sued, claiming passing off, unjust enrichment, famous mark infringement and copyright infringement, claiming statutory damages of NIS 100,000 and absolute damages of a similar sum.

In analyzing the two cases, Judge Avraham Yaakov noted that the general issue of to what extent suppliers had rights in markets they were dominant and where fair competition allows others to compete. Essentially the issue was one of where lied the public interest. He went on to point out that one could ask for statutory damages or actual damages, but not both in tandem.

Somewhat confusingly, Yaakov rigorously applied the triple test, and related to the sounds of the two names, as well as to the appearance of the products. Ruling that High Quality Body Warmer was simply a laudatory version of Body Warmer, who rejected the complainants allegations that he had somehow acquired rights in the product name through good will and reputation. However, the bottom line was that the term High Quality Body Warmer was simply a laudatory version of Body Warmer, and the shape of the article was not unique to the complainant, since the product was available from Chinese suppliers as an off-the-shelf product.

Since the IDF knew exactly who they purchased goods from, at least as far as the army was concerned, there was no case of passing off to answer for. Regarding the private market, the complainant stated having some 1,000 regular clients, but did not substantiate this claim, so the charges of passing off were also rejected.

Judge Yaakov went on to rule that despite the close similarity in instructions and warnings printed on the two packages, the Hebrew text was largely dictated by the army mil. spec. and the English language version was largely supplied by the manufacturer. For such products, the scope for creativity in instructions and warnings was limited. Consequently, Popper did not have copyright in the instructions.

Judge Yaakov also accepted the argument that the colour yellow was considered a warm colour and was widely used in packaging for products such as matches, lighter fluid and the like.

Having rejected all claims regarding the product itself, Judge Yaakov then considered the websites and, since the defendants site was clearly based on that of the complainant, with similar text, including some creative uses of the packages such as keeping animals warm in transit, he ruled copyright infringement and awarded NIS 70,000 out of the maximum discretionary NIS 100,000 statutory damages and a further NIS 20,000 in costs.

T.A. 15307-11-09 SPB Equipment et al. vs. Elikal LTD. before Judge Abraham Yaakov, 26 August 2011.

COMMENT

When analyzing the different elements like colour, text, name, etc. individually, one comes to the conclusion that Judge Yaakov is correct. However, we note that following the A.Sh.I.R. ruling by the Supreme Court, it is clear that in lieu of other grounds provided by IP legislation, Israel case-law provides the possibility of seeking redress on grounds of Unjust Enrichment, at least where a product design is copied. What is required is some additional element indicating bad faith. Regular readers will no doubt be aware that I am not a great fan of this doctrine, but it is, nevertheless, good case-law which is supposed to be binding on lower courts.

In this instance, the defendant copied the trade dress, including colour, shape and the name of the product. The copying of the website is further indicative that the defendant was copying Popper’s product.

Although the body warmer is a product made in China, it is not generic in the sense that potatoes or plain tee-shirts are generic. There is a peculiarity in Israel’s outdated design law (Patent and Design Ordinance 1925) which requires absolute local novelty to register a design in Israel. It is therefore possible that the product design could have been registered by Popper.  I therefore wonder if the clear indications of EliKal targeting Popper’s market with an identical product in identical packaging shouldn’t be considered unjust enrichment? Even-Chen’s winning the army tender deserves a second look as well. In principle, as a tax-payer, I am in favour of the army purchasing identical products from the cheapest supplier. Did this happen here? I suspect that Even-Chen had extremely good contacts with the decision makers…

Presumably, once damages are awarded for copyright in this specific case,  the point is moot. Nevertheless, it seems to me that the courts are moving away from A.Sh.I.R. and favour free market competition which I see is a good thing.

This decision does illustrate the importance of distinctive names and packaging schemes to develop a reputation for a product. It also indicates that there is no protection for market share or importer’s rights. None of this should be surprising, but we constantly meet clients who want to patent a device they’ve seen abroad that they want to import into Israel, and descriptive and laudatory names are only too common.

The decision relates to a temporary injunction regarding the identical coloured product that was apparently infringed, and this case was firstly wrongly filed in the Magistrate’s Court.

We note that body warmers have been required by Israel’s generals since time immemorial. See Kings I 1:1-3.

Leave a Comment » | Copyright, design, Fair Use, famous marks, infringement, Intellectual Property, Internet, Israel Copyright, Israel Court Ruling, israel design ruling, Israel IP, trademarks | Permalink
Posted by Dr Michael Factor

Israel Supreme Court Rules that Rights Owners Should Bear the Costs of Destroying Infringing Goods Stopped by Customs Where Collecting from the Importer is not Possible

August 4, 2011

Back in January, I reported on a decision by Judge Abraham Yaakov of the Tel Aviv District Court, that ruled that the Israel Customs Authority was wrong to charge the rights owner for storage and / or destruction of imports that infringed copyright or trademarks in cases where the costs can’t be recouped from the defendant. See: http://blog.ipfactor.co.il/2011/01/12/levis-successfully-sues-counterfeit-jean-importer-into-israel-judge-slams-israel-customs-for-billing-levis-for-storage-and-disposal-of-the-jeans/

The Israel Supreme Court has now heard an appeal by the Customs Authority concerning a shipment of fake Christian Dior Couture shoes that were imported by a West Bank Arab that abandoned the shipment and proved impossible to collect from.

In accordance with Section 200A of the Customs Ordinance, which was legislated in 1999 to conform Israeli law with TRIPS, the Customs Authorities detained the shipment and notified Christian Dior, who initiated proceedings and provided bank guarantees of NIS 5000.

Dior claimed that the bank guarantees could only be used to compensate defendants in the event that the Court dismissed the charges of copyright or trademark infringement.  Customs claimed that the money could be used to cover costs of storage and destruction of the goods.

Judge Abraham Yaakov of the District Court (the same judge who ruled in the Levi’s case) ruled that the shipment was to be destroyed by the importer, which would bear the expenses. The District Court held that the Customs Authorities (i.e. the tax payers) should bear the costs of storing and destroying infringing goods should the importer default.

The Supreme Court reversed this judgement and ruled that the rights owners should bear the cost of storage and destruction of infringing goods where Customs cannot collect from the importer. The Court saw no justification to use public funds to cover the costs of protection of private property. It interpreted Section 200A of the Customs Ordinance, which complies with Section 53(1) of the TRIPS Agreement, as allowing the Customs Authorities to use the bank guarantee for that purpose. The decision was given by Judge Asher Gronis. Judge Elyakim Rubinstein concurred but also recommended that the government consider requesting further guarantees from importers to cover the IP rights owner’s expenses or used other means to facilitate collection such as withholding tax rebates.

The Case: 3960/10 Israel Customs Against Christian Dior Couture and Iyad Habas, before Judges Rubinstein, Arbel and Gronis.  June 20, 2011.

COMMENT

Although I enjoyed reading Judge Yaakov’s ruling, I think that the Supreme Court is correct to reverse it.

2 Comments | Copyright, counterfeit, infringement, Intellectual Property, Israel Copyright, Israel Court Ruling, Israel IP, Israel Related, Israel Trademark, World Trade Organization, WTO | Permalink
Posted by Dr Michael Factor

HaTikvah – A Hopeless Copyright Case

August 3, 2011

“Hatikvah” הַתִּקְוָה‎‎,  literally, The Hope is the national Anthem of Israel. Written by Naphtali Herz Imber, a galician Jew, who moved to the Land of Israel in the early 1880s. The anthem’s theme revolves around the nearly 2000-year-old hope of the Jews to be a free and sovereign nation in the Land  of Israel.

Franky Perez, a French singer, producer and songwriter, released a version of Hatikvah, Israel’s National Anthem, in February 2008, for Israel’s 60th Anniverary Celebration in 2008. In May that year, El Al, Israel’s national air carrier, produced a version of the Hatikvah for use as an advertisement.

Perez sent El Al his version before they produced their advertisement. Claiming that El Al had copied his version, Perez claimed copyright infringement and sued for damages and for production of sales receipts.

The similarity, according to the statement of case, lay in a list of elements including, inter alia, the rhythm, beat, tone, use of a black choir, a black soloist, a rap rhythm, the Israel flag, the camera angles, the halos of the singers, the almost identical clothing of the choir, fading to black, various lighting effects including flares, similar clothing worn by the singers, etc.

The plaintiff did acknowledge that the words themselves, and the music, were in the public domain and withdrew charges that the idea was copyright protected.

Perez produced evidence of having given a copy of the clip to an El Al employee, Ms Michelle Richie, who forwarded it to Mr Zacharia, the Head of Marketing at El Al. This was not denied by El Al who admitted having been shown Perez’ clip, but considered it indicative of what they didn’t want. They claimed to have been working on the HaTikvah advert concept prior to receiving the clip, but admitted to only starting filming afterwards.

Presiding Judge Hadas Ovadia listened to the expert witnesses of both sides and also watched and listened to the recordings. She concluded that as would be expected with orchestrations and videos of the same words and melody, there were some common elements, but the recordings, taken as a whole, were substantially different, and dismissed the charges.

She cited extensively from the cross-examination of the expert witness of the complainant, who was apparently inadequately prepped, and admitted that there were a lot of significant differences and who stated that the expert witness of the defendant was an authority.

For good measure, she ruled that the original production was a work for hire produced by Peretz for a company called Blast Production, now defunct, and consequently Perez had failed to establish ownership of the creation and legal standing.

Finally, she related to the clips holistically, and explained that Peretz’ version was a rap, produced by Broadway singers, that featured African-American gospel singers in cassocks, and had a universalist theme. In contradistinction, the El Al advertisement invoked the ingathering of the exiles, and featured Jewish singers from different countries singing in different styles, the Russians in operatic style and Oriental Jews in Mizrachi (Arabesque) style. The black singers in the El Al advert were Ethiopian in traditional white gowns and were featured as a self tribute to EL Al’s role in Operation Moses and Solomon where all records for the number of passengers that could be crammed into a Boeing 747 were broken. Judge Ovadia also noted that El Al had stayed faithful to the words, whereas Perez had included additional lyrics in English and made some other changes.

In addition to dismissing the charges, she ruled NIS 12,000 costs to El Al.

Peretz’ version is found here: http://www.youtube.com/watch?v=Czcqw0gUma4

El Al’s version is found here: http://www.youtube.com/watch?v=iVS1yoZMY9I

There are some similarities and lots of differences. Readers are invited to judge for themselves.

 T.A. 6471/08 Franky vs. El Al Israel Airways LTD.

ת”א 6471-08 פרנקי נ’ אל על נתיבי תעופה לישראל בע”מ

COMMENTS

I think this judgment is correct. I don’t think there is copyright infringement here. I don’t think El Al plagiarized Peretz’ version. I don’t even think it was inspired by it.

I can imagine that those of a politically correct persuasion might be offended by the underlying assumption in comparing Afro-American gospel singers with Ethiopians, that all blacks look the same. Factually this is not true and Peretz’ singers do not look Ethiopian, whereas El Al’s clearly do. One wonders if a similarity between renditions such as Caucasian men would have been claimed.

Personally, I think the Israel Anthem should be Psalm 126 set to Imber’s music, but then again who cares what I think?

Whilst tracking down the links, I ran into various other renditions of the Hatikvah. The most moving was a BBC Radio broadcast from 1945 that includes a rendition of Hatikvah from the end of the first Friday Night Service held at the newly liberated concentration camp Bergen-Belsen. Note the variant words to Hatikvah. The service was conducted by the Late (Great) Reverend Leslie Hardman, then British Army Chaplain.

I have fond memories of Reverend Hardman Zt”l. I was a congregant in Hendon United Synagogue, London where he ministered until his retirement, and where he continued to preside over the Annual Jewish Ex Servicemen Shabbat for many years afterwards, as much an institution as Dame Vera Lynn.

A link to the BBC radio broadcast may be found here: http://www.youtube.com/watch?v=syUSmEbGLs4  Those who knew him will recognize Rev Hardman’s voice at the end of the clip.

2 Comments | Copyright, Intellectual Property, Israel Copyright, Israel Court Ruling, plagiarism | Permalink
Posted by Dr Michael Factor

Super-heroes get statutory damages under the wrong law

August 3, 2011

The new Israel Copyright Law 2007 entered the Statute books on 25 November 2007 and came into effect six months later in May 2008.

Prior to May 2008, the Copyright Ordinance of 1911, inherited from the British Mandate, was the copyright regime in effect in Israel. The Ordinance underwent some amendments over time and there have also been some creative case-law.

Under the Copyright Ordinance of 1911, statutory damages were limited to NIS 10,000 per infringing event. For willful infringement, double damages of NIS 20,000 could be awarded.

Under the new law however, damages of up to NIS 100,000 per infringing event may be awarded. According to the transition provisions (Clauses 78 to 79) the new law may be enforced for creative works predating its entering into effect  if the infringing act took place after the law came into effect. Thus an act that took place in 2005 or 2006 that was the cause of a suit filed in 2009 or 2010 would be tried under the old act. The statutory damages, per infringement are limited to NIS 10,000 to NIS 20,000.

Or so we thought…

Two cases regarding the manufacture of children’s watches were filed in 2008 and combined and tried by the Tel Aviv Magistrate’s Court. The watches feature Marvel and DC Comic Book characters including Spiderman, Superman and Batman. Because the events took place in 2006 the authorized licensees for the characters and the comic book publishers sued for statutory damages of NIS 10,000 to NIS 20,000 under the 1911 copyright ordinance.

(It should be noted that the plaintiffs sued, as an alternative grounds for damages, the statutory damages under fair trading laws, but it is clear that where there is a specific statutory damage, as for copyright infringement, this is the grounds for damages that apply).

In her ruling, Presiding Judge Channa Inon acknowledged that the correct law to apply depends on when the infringing actions took place. What is surprising is that after deciding that there were three infringing events per plaintiff, and not enough evidence to assess actual damages, she awarded damages of 3 x NIS 100,000 under the new copyright law, i.e. NIS 300,000 (almost $87,000) each, to Marvel and to DC Comics.

Perhaps the plaintiffs were awarded Super damages as befits superheroes?

The cases: T.A. 35389/08 DC Comics vs. Polo Publicity and Trade LTD. and T.A. 35390/08 Marvel Comics vs. Polo Publicity and Trade LTD.

Leave a Comment » | Copyright, counterfeit, Israel Copyright, passing off | Permalink
Posted by Dr Michael Factor

Contributory copyright infringement in Israel

July 4, 2011

In an important recent decision, the Israel Supreme Court has recognized contributory infringement in copyright. The specific case relates to pirate textbooks available from a student society on campus that is supported by a political party. The Court of First Instance found the publisher directly guilty of copyright infringement and the political party and the university guilty of contributory infringement; a judicial tort previously available for patent infringement only.

On Appeal, the Israel Supreme Court upheld the concept of contributory copyright infringement and aiding and abetting infringement, but in the specific case, found the university not responsible. The issue of fair use, particularly in academia is also discussed. Although the case in question relates to book publishing, the decision is expected to have repercussions concerning the downloading and reproduction of digital data.

The Israel Labour Party subsidises a student club called “Teh Ofek” (Horizon Cell) at the Mt Scopus Campus of the Hebrew University. As an incentive to get students involved, they provided cheap versions of a course textbook titled “Traditional Japan”. The bootleg copies were sold under the name “Readings” for NIS 10, whereas the official version sold by the publisher, Shocken, retailed at NIS 89. Shocken sued the publisher-distributor – a Yaakov Cohen, the Labour Party and the Hebrew University.

The Court of First Instance applied the judicial doctrine of contributory infringement recognized in Rav Bareach, a patent case where an importer of two parts of a three-part crook lock for the steering wheel of a car was found guilty of contributory infringement. Without this concept, the patentee would have had to sue each and every purchaser for literal infringement. With this doctrine, the importer could be sued, enabling effective enforcement. The court also ruled that there was a breach of legal obligation. There was no proof of how many copies were sold. Instead, NIS 20,000, the maximum statutory damages under the old copyright law was awarded to Shocken. The Court divided this up as 40% to be paid by Mr Cohen, 30% by the Labour Party and 30% by the Hebrew University.

On appeal, both the Hebrew University challenged the doctrine of contributory infringement arguing that it was not in the public interest to rule sweeping liability for universities, Internet Service Providers and forums for copyright infringement that takes place on their real or virtual premises. Furthermore, the University also argued that it did not gain any financial benefit from their ‘contribution’. As to the breach of legal obligation, the University argued that this tort could only be applied where there is no statutory punishment, which is not the case for copyright infringement. Furthermore, the university argued that they were unaware of the specific infringement and therefore could not be held responsible. Finally, they submitted that distributing course material at cost to students was fair use.

The Labour Party agreed with the university’s legal arguments regarding contributory infringement and breach of law and also argued that there was no evidence that the book was published using its photocopiers or with its financial assistance. The publishers argued that the university library held 11 copies of the book which was required reading for some 370 students thereby encouraging them to make illicit copies. They further argued that there was trespass under Section 13a of the law of chattels, claimed that the fair use doctrine invoked by the university was an inadmissible widening of their defense and also pointed out that the use was financial not academic.

The Court of Appeal found some support for the doctrine of contributory copyright infringement with regard to the requirement for venues such as wedding halls and theatres to check that DJs have licenses from copyright societies, explained that the doctrine was well established in the US, and cited a range of Israeli academics including Tony Greenman, Guy Pessach, Neil Netanel and Michael Birnhack who have discussed the issue with reference to the New Copyright Law 2009, and who believe that there is room for this tort. Then the Supreme Court pontificated a little about the balance of interests between the public and private domain and the need to encourage creativity by preventing commercial copying and thereby providing a financial incentive. In so doing, provided there was direct infringement, the court ruled that in the interest of efficiency it was legitimate to sue the conduits of the copying.

In ruling, the Supreme Court found that the Labour Party benefited from this incentive to students to join the club and aided and abetting the infringement and should be punished. With regards to the university, the court did not clarify the boundaries of fair use for study, nor did they rule how much of a book could fairly be copied. However, they did rule that there was no evidence of specific knowledge, that the university was not obligated to police all clubs and societies, the internet and student email accounts. In dismissing the contributory infringement charges against the university, the court saw itself as no longer required to rule on the fair use defense thus avoiding ruling on both the issue of widening the defense and the issue of itself. Thee Court absolved the Hebrew University of Guilt, upheld the 40% liability to Mr Cohen and awarded the remaining 60% to the Labour Party. Shocken were obliged to pay NIS 10,000 to the Hebrew University to cover their legal costs.

The Case: Appeal to the Supreme Court 5977/07 by the Hebrew University of Jerusalem vs. Yaakov Cohen, the Labour Party and Schocken Publishing House against the ruling by Y Shapira in T.A. 6306/04 from 17 May 2007.

The case was heard on 15 November 2010 by Deputy President Rivlin, and Justices Jubran and Danziger, and the ruling issued on 20 June 2011.

1 Comment | Academia, Copyright, Israel Copyright, Israel Court Ruling, Israel IP | Permalink
Posted by Dr Michael Factor

If tattoos are copyright protectable, what about breast reconstructions and what is considered fair use?

May 6, 2011

 The tattoo artist Victor Whitmill who designed and tattooed the left side of former heavyweight champion Mike Tyson back in 2003 has now sued Warner Bros for copyright infringement.

The basis of the claims are allegations that the studio has copied the tattoo design in its upcoming movie, The Hangover Part II. Whitmill has requested an injunction to prevent the film from copying, distributing and publicly displaying the design in the film and promotional marketing of the sequel to the 2009 box-office success, The Hangover.

Whitmill created the tattoo for Tyson in February 2003. The copyright in the tattoo design, is owned by Whitmill and Tyson has additionally signed a release acknowledging that he doesn’t have rights. The complaint argues that Whitmill has never reproduced, authorized or licensed the design to anyone else, making Warner Brothers use of the design “reckless”.

Whitmill claims that the Warner Brother’s film, The Hangover 2, features a “virtually exact reproduction of the Original Tattoo, which appears on the upper left side of the Stu Price character’s face, played by actor Ed Helms.” One complication in this complaint is that Mike Tyson appeared in the first The Hangover movie in 2009. For more information on this case, see The AmeriKat.  

Here’s my question. If a plastic surgeon (he) resculptures a pair of breasts for a client, does he have copyright in them? Is there an implied license that the client’s (her) display of his work in photography and film is acceptable? Would this be considered fair use? I expect that the answer to both questions would be yes. However, even if the assumed license and fair use would cover the magazines and film studios, would the plastic surgeon have standing if such images were reproduced illegally against the bootleg copier? She wouldn’t, but would he?

1 Comment | Copyright | Permalink
Posted by Dr Michael Factor

Is Night-time Electric Illumination for a Water Fountain Copyright Protectable?

April 17, 2011

Nathan Gavish is a landscape architect who specializes in illumination. On walking through Tel Aviv’s Gan Yehoshua park, he had an idea to illuminate the fountain for night-time enjoyment of passersby.

According to Gavish, on 9th March 2008, he set up a meeting with Mr Ronen, the CEO of the Park, and showed him a presentation detailing his idea which, in his words, included angles of illumination, specific alternating colours of magenta, blue and green, and specific intensities.

The meeting finished with Mr Ronen requesting a quotation.

The quotation related to costs for static and for flashing lights and included a section for the work in design and optimization of the illumination scheme. Mr Ronen didn’t bother to acknowledge the quotation and didn’t return Mr Gavish’s calls.

Some months later, on 14 October 2010, Mr Gavish crossed the park once more, and was shocked to see the fountain illuminated in accordance with his creation. He claimed moral rights and copyrights and requested NIS 80,000. When this money wasn’t forthcoming, he sued for NIS 100,000 statutory damages without proof of damage.

Judge Dr Shaul Avinor rejected the charges, ruling that the quotation, which included different options and was laconic, could not create copyright in the idea. Indeed there is no copyright in the idea. He went on to rule that illumination schemes are known and not copyright protectable. A different illumination specialist, Mr Teichmann, implemented the illumination. Even if Gavish had thought of illuminating the fountain, this did not create copyright in what was simply an idea.

COMMENT

It appears that the Judge, Dr Shaul Avinor is a Magistrate Court Judge in Herzliya. Under Israel Law, copyright cases should be heard by the District Court as the Court of First Instance. Avinor did not have Judicial Competence to rule on the case, and should not have heard it. Presumably neither side complained and so the issue is moot.

Judge Avinor is of the opinion that use of regular objects for the purpose intended, specifically outdoor lighting solutions does not have the creativity required for copyright protection.

In copyright for works of art, originality is required, but in contradistinction to Judge Avinor’s ruling, in Israeli Law there is no requirement for non-obviousness. In the US, a design patent does require aesthetic non-obviousness and interestingly, in re Hubry (153 USPQ 61 (CCPA 1967) the US Court accepted that a water fountain patent was acceptable for registration as a design patent, accepting thereby, both novelty and inventiveness in the transient nature of the cascading water. 

It is the appearance of the fountain under illumination that is copyright protectable, not the combination of lighting elements. conventional Sculptures may be created from stone or cast iron. It is not the choise of material or technique that is copyright protected, but the end result. As the present case relates to a one-off illumination project, not intended for mass production, there is no need under Israel Law for Gavish to have filed a design registration. I disagree with the judge, and believe that fountain illuminations can be considered as works of art, thereby being protectable by copyright.

Furthermore, I can quite understand why an artist who optimizes a design would show a simulation but not include the details in a design quotation so as to make it difficult for the potential customer to go elsewhere.

Not having been present in court, I cannot comment on whether the plaintiff presented sufficient evidence to show what his design was and whether the illumination put up was identical or not. However,  it seems to me that were the plaintiff to be able to produce a dated computer presentation of his illumination concept that could be authenticated as predating the order from the parks or from the Tel Aviv Municipality, I think this should be considered copyright infringement.

I don’t find the ruminations of the learned judge regarding TRIPS, his reference to Interlego  – which looked into whether Lego bricks could be considered copyright protected once the design rights expired, and his reference to the Premier League decision – which considers whether copyright resides in computer generated match fixtures, the least bit relevant.

I was also unimpressed with Ronen arguing that the Park was not the correct plaintiff, but that the Tel Aviv Municipality was.

The moral right to be credited as the artist of an illumination project is interesting. Presumably the fountain creator also has moral rights and could complain that illumination changes the appearance of the fountain. 

T.A. 13440-2-08 Ayalon Natan Gavish vs. Ganei Yehoshua LTD (Magistrate’s Court, Shaul Avinor) 12 April 2011. 

2 Comments | Copyright, Intellectual Property, Israel, Israel Copyright, Israel Court Ruling | Permalink
Posted by Dr Michael Factor

« Previous Entries
Next Entries »
Follow

Get every new post delivered to your Inbox.

Join 103 other followers