Asa Kling Selected as Israel Commissioner of Patents & Trademarks

March 13, 2011

Asa Kling

According to the Mekor Rishon newspaper, Adv. Asa Kling has been selected as the next Israel Commissioner of Patents and Trademarks. Kling has an LL.B, from Tel Aviv University from 1997; and a B.Sc. in Aerospace Engineering from the Technion, Israel Institute of Technology. Kling is currently a partner of Gilat Bareket, the legal side of the Reinhold Cohn Group, where, according to their website, he handles various aspects of intellectual property law, antitrust law, commercial law, company law and international transactions.

He has litigation experience relating to patents, copyright and trademarks and cross-border intellectual property enforcement. Assuming the Minister of Justice Yaakov Neeman confirms the appointment, we wish Adv. Kling success in his new position.

COMMENT

We note with approval that Adv. Kling has both legal and engineering qualifications, with IP experience as both a patent attorney and an attorney-at-law. Interestingly, Kling’s Patent Attorney license, No. 280, is only from 2006. It is odd to find myself licensed as a patent attorney for longer than the incoming Commissioner.

Then again, Kling does have the three years post licensing experience to train budding patent attorneys, and there is no legal requirement for a commissioner to be a patent attorney at all. Kling does, however, have the 10 years post licensing experience required for a district court judge, which is the equivalent position.

Some may consider it not ideal for an Israel Commissioner of Patents and Trademarks to have been a partner in the largest IP Group. If Kling disqualifies himself from handling cases where Reinhold Cohn is a party, he may find himself unable to rule on a large number of cases. Since the Deputy Commissioner and other adjudicators are subservient to him, there is a problem even if he disqualifies himself. There is also a danger of Kling taking a strong line against RCIP clients so as to appear balanced.

In my opinion, because of the possibility of appeal to the courts, the problem is not overly serious in practice. Since decisions are published, third parties such as me can freely criticize what we consider to be misinterpretations and poor decisions. Indeed, way back when then Acting Commissioner Yisrael Axelrod found in favor of RCIP’s clients when interpreting the law regarding pharmaceutical patent term extensions in a ruling where only RCIP’s clients were involved, the Knesset amended the Law to make his interpretation untenable.

We hope that Kling, if his appointment is affirmed, will either not patronize any IP events organized by firms in the private sector, will patronize them all or will publish guidelines for participation of patent office staff. Dr Noam had a strong policy of not attending events organized by IP firms and also prevented heads of departments from actively participating. However, on occasion, he did take an active part in events sponsored by the RCIP group, such as a reception held in honor of the visiting Chinese Commissioner of Patents and Trademarks. This Orwellian equality was a little grating, not least because Noam had sold his practice to RCIP before taking up his appointment as Commissioner.

In the small and close knit Israel IP world, most practitioners have come through one of two or three established firms. It is difficult to imagine that anyone with IP experience and knowledge, who hasn’t come through the patent office, won’t have worked for one or other large IP firm. It would be more problematic if someone from Israel industry, say, an in-house IP counsel of Teva, Orbotech or Comverse was appointed commissioner. We do, however, note that the make-up of the committee who considered candidates for the job has not been published. This does not seem a desirable state of affairs for open government.

6 Comments | design, Intellectual Property, Israel IP, Israel Patent, Israel Patent Office, Israel Patent Office Rulings, Israel Related, Israel Trademark | Permalink
Posted by Dr Michael Factor

Alice in Diaper Land

February 13, 2011

Tal Children’s furniture LTD supplied their baby changing table to Shilav, Israel’s leading chain of baby furniture, clothes and accessories.

In the course of time, Shilav found a supplier, Texture Furniture LTD,  who could supply the identical design at a quarter of the price. Not surprisingly, Shilav switched suppliers. Tal Children’s Furniture LTD accused the second supplier of ‘passing off’ their product and also infringed on their IP rights.

Since any association of the goods by the public was with Shilav, not the manufacturers, and since there were no registered IP rights, the case was dismissed and the complainant was ordered to pay NIS 10,000 costs to each defendant. 

COMMENT

The furniture in question apparently had two small drawers opened by inserting fingers and a couple of larger draws with two handles. The figure taken from Shilav’s current catalogue is thus not identical to the design in question, but is fairly indicative of the type of design masterpiece in question. Also known as Dressing table 57, the unit, together with bed 17 and polka-dot sheets was fancifully marketed as the Alice in Wonderland Set.

The decision is correct, but the mental gymnastics performed by Judge Chana Yinon, the citing of irrelevant case-law and the general write-up of the decision makes for tiring reading. This ruling could have been as short as this summary. 5 pages of discussion was quite unneccessary. 

T.A. 35573-07 Tal Children’s Furniture LTD vs. Texture Furniture LTD

Leave a Comment » | design, Israel Court Ruling, israel design ruling, Israel IP, passing off | Permalink
Posted by Dr Michael Factor

Holocaust Sculpture Battle Settled

February 10, 2011

 

In September 2010, I reported on a case filed in July 2010, by the New Jersey artist David Ascalon, in the U.S. District Court for the Middle District of Pennsylvania. See The moral rights of a sculptor to be identified with his work.  The following report is based on a press release sent to me by Ascalon.

Essentially Ascalon  asserted that his rights under the federal Visual Artists Rights Act of 1990 (VARA) had been violated with respect to a sculpture he created for the Jewish Federation of Greater Harrisburg: a Holocaust Memorial on the banks of the Susquehanna River in Pennsylvania’s state capital, which was installed in 1994.

The complaint alleged that Ascalon’s rights under VARA, which limits how an artwork may be altered or disposed of, were violated by restoration of a decaying element of the original sculpture in which a rust-colored “barbed wire” serpentine element was replaced with shiny stainless steel.

Since the filing of the lawsuit, the Jewish Federation of Greater Harrisburg, who undertook the restoration, and the artist have sought constructive solutions to resolving the dispute in a manner that would help preserve this important memorial for the generations while incurring minimal cost to the parties.

After several months of amicable negotiations among the parties, the parties are pleased to announce that a mutually-agreeable settlement has been reached. The substance of the settlement provides the sculpture will be retrofitted in a manner that upholds the artist’s original intent at minimal costs to the defendants. The original artist shall be provided access to the sculpture to remake the “barbed wire” serpentine element in a highly durable rust-colored steel, and the original artist’s name shall be restored to the sculpture. The parties are pleased that future generations will be able to view the restored Memorial and remember and pay proper respect to the 12 million souls that perished at the hands of agents of intolerance, the Nazi Regime.

The attorney for David Ascalon is Jason B. Schaeffer, Esq. of J.B. Schaeffer Law, LLC of Cherry Hill, New Jersey. The attorney for the Federation is Harvey Freedenberg of McNees Wallace & Nurick LLC of Harrisburg.

Leave a Comment » | Copyright, design, infringement, Intellectual Property | Permalink
Posted by Dr Michael Factor

Israel Patent Office Refuses to Reinstate Lapsed Design – Claims no Authority to do so

February 7, 2011

In a decision concerning Israel Registered Design Number 40394 to Ran Gorenstein, the arbitrator of Intellectual Property at the Israel Patent Office, Ms Yaara Shoshani-Caspi, refused to reinstate a lapsed design.

Counsel for the registrant of the lapsed design argued that the design had lapsed due to an administrative error, suggested that this was little more than a scribal error in the register, and requested a retroactive extension of the six month grace period for late payment of the renewal fees.

Shoshani-Caspi refused the request, arguing that Section 54 of the design regulations of 1925 only gave the Commissioner of Patents and Trademarks authority to extend time periods detailed in the regulations, and gave no authority to extend time periods in the ordinance itself. She was not impressed with the suggestion that the change was merely scribal, but ruled that this was irrelevant anyway, since according to Section 44 of the Ordinance, the only body with authority to amend the register to include a design no longer listed, was the District Court.

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

Jeff Koons Files Twisted Infringement Suit

January 20, 2011

Jeff Koons is a talented pop artist. One of his brilliant sculptures is a 10 m representation of a balloon dog that sits on top of the New York Metropolitan Museum. I saw the sculpture when in New York on the way to Boston for an AIPPI Conference a couple of years ago.

I am a balloonologist myself, and have made literally thousands of one balloon dog sculptures at birthday parties, children’s wards in hospitals, busking on Jerusalem’s Ben Yehuda Pedestrian Precinct, as a student, in St Marco’s Square, Venice, and thanks to Lord Greville Janner, then MP, QC, and a fellow magician, in a conference room at the British Houses of Parliament.

None of my sculptures will ever be as famous as Jeff Koons’. I can, however, claim to inflate my regular sized versions made from a standard Qualatex 2 x 60 balloon, in the traditional way, by lung power, and due to also playing the trombone, can generally manage about 200 balloons in one session.

In what appears to me to be a total hutzpa, Koons has sent cease-and-desist letters to Park Life, a San Francisco gallery and store that sells the bookends, and Imm-Livinga distributor of balloon sculpture bookends. See  http://www.nytimes.com/2011/01/20/arts/design/20suit.html?_r=1

Unfortunately, Park Life‘s owner, Alexander has taken the bookends off sale and removed from his website.

In this instance, I am not impressed with Peter D. Vogl, the partner of Jones Day who sent the cease-and-desist letters.  We are all Intellectual Prostitutes, but some of us have standards! If the case was fought in Israel, I’d be honored to represent the bookend distributor pro bono myself.

If it will help Alexander’s cause, I am willing to sign an affidavit that his bookends are faithful copies of my sculptures, and to provide him with a non-exclusive license to continue manufacturing them. After all, the size and look are close to my models. The fee? a couple of bookends would be nice!

Apparently, lawyer Jed Wakefield of Fenwick and West LLP has now picked up the condom and asked for a declaratory judgement against Koons.

“It could bring freedom to balloon animals everywhere,” Wakefield said.

2 Comments | Copyright, counterfeit, design, infringement, Intellectual Property, Magic, News, Opinion, passing off | Permalink
Posted by Dr Michael Factor

West Bank Arab Prevails Against Adidas – Four Stripe Cheap Training Shoes Do not Infringe

January 12, 2011

In one of the more compelling Israel court rulings on an IP issue I’ve seen in a while, Judge Michal Agmon-Gonen dismissed claims by Adidas against Galel Yassin, a West Bank Arab who imported cheap training shoes from China.

Yassin imported trainers for retailing by market traders at NIS 20-30 (about $6-9). The shoes included four parallel diagonal stripes on each side and Adidas claimed that this infringed their famous three-stripe logo.

Judge Agmon-Gonen ruled that there was neither an objective nor a subjective likelihood of confusion. Customers was aware that the shoes were cheap substitutes and not the brand leaders.  The importer clearly marked the shoes with the brand ‘Sydney’ in three places and did not write Adidas or use the three-leaf symbol. 

The importer had tried to negotiate a compromise with Adidas, and had offered to add a line crossing through the four stripes, or to add a big cross on top, either solution to be implemented before release from the docks, but to no avail.

The gist of the ruling is that Agmon-Gonen is not enamoured with recent trends that see brands and trademarks as property themselves, and believes that trademarks should simply be an indication of the supplier or manufacturer of the goods thus marked. With such a narrow interpretation of trademark law, the legal issue is simply one of likelihood of confusion. Whilst prepared to acknowledge that the inspiration of the four stripe mark may well have been Adidas’ product line, there was, nevertheless, no likelihood of confusion. Rather Yassin was providing a cheap alternative for the financially deprived. 

Yassin provided evidence that other shoe manufacturers, notably Skechers, also used a four stripe decoration. Adidas cited previous rulings in their favour, both in Israel and abroad. Agmon-Gonen suggested that Adidas was aggressively throwing its weight against weak competitors, generally unable to suffer the financial strain of defending themselves and saw this as trademark abuse. Freedom of Occupation allows others to import footware and the public interest is for competition. In addition to leading brands, there is a market for unbranded, generic products, and the 4-striped trainer was such a generic alternative for those unable to pay for the brand leaders’ products.  

Whilst accepting the existence of various legal doctrines such as dilution of famous marks, Agmon-Gonen considered these trends an issue of policy, and generally considered the public good and competition of more importance.

Although some Israeli case-law was cited, the 46 page ruling is more notable for referring to both recent and classical journal articles and textbooks, and for quoting the minority opinion in the A.Sh.I.R. case. 

In conclusion, Adidas’ case was dismissed, Yassin is able to continue importing generic, non-branded training shoes and was awarded NIS 85,000 (about $23,600).

T. A. 2177/05 Adidas-Salomon vs Galel Yassin and others. 

COMMENTS
This ruling reminds me of a tweet put out by http://twitter.com/AntiIsraelPorn – a tongue-in-cheek satirical propaganda forum:

Israel refuses to lift the ban on left footed shoes into Gaza. Forces Gazans to walk uncomfortably.
Posted 8:19 PM Dec 28th, 2010 via Twitter for iPhone

Three stripes is a registered trademark of Adidas since 1949 and is well known worldwide.

For a general overview of other litigation on the subject, see http://en.wikipedia.org/wiki/Three_stripes

The ruling appears to be a departure from current trends. Although the job of setting legal policy should best be left to the Supreme Court, I suspect that Judge Agmon-Gonen’s ruling will be upheld if challenged on appeal, and even if not appealed, will be influencial since it makes a compelling case. Indeed, if she continues like this, I suspect she will be promoted to the Supreme Court eventually.

10 February 2011 – An appeal has been filed.

There is also a new decision from Italy that maintains that there is infringement  - see http://www.internationallawoffice.com/newsletters/detail.aspx?g=26e8f27a-005b-4861-949f-d422b1fa7ee9

1 Comment | counterfeit, design, famous marks, infringement, Intellectual Property, Israel, Israel Court Ruling, Israel Trademark | Permalink
Posted by Dr Michael Factor

Design Ruling for a Quick-fit Electrical Plug registration Provides Insight into Spare Parts Protection in Israel

December 15, 2010

In Europe, one can register designs for automobile parts. However, as a matter of policy the European courts will not enforce car manufacturer’s claims against suppliers of generic parts, considering that the public interest is served by enabling them to repair their cars cheaply. This decision clarifies the situation in Israel.

 E. Fetaya LTD. Electro Mechanical products. http://www.fetaya.com applied to register a design for an AC power plug, i.e. an electrical power connector.

Their novel plug consists of three elements which can be assembled without a screwdriver or other tool.  The original application as filed showed the separate elements from all sides. The elements are reproduced below:

Technical readers will have little problem seeing how the three-piece puzzle fits together. The design is somewhat different from standard plugs, but in the main is dictated by functional conisderations such as compatibility with flexes and standard Israel sockets.

In a first office action, the Examiner decided that there were two separate elements: (a) the complex construction of the plug, and (b) the locking element. The Applicant was requested to choose one element and to supply replacement figures (line drawings), and if protection for the second element was desired, the applicant could file additional design applications that would bear the original filing date.

In a first response (and not unreasonably), the Applicant pointed out that the two elements were complimentary parts of an integral whole, and were not to be considered separate entities; this being the design concept.

A couple of months later, the Applicant submitted a new figure showing the assembled power plug.

In response, in a second Office Action, the Examiner alleged a lack of similarity between the original figures as filed and the new figures. Additionally, the separate figures of the components were not acceptable.

The Applicant tried in vain to explain that the parts were sold as a complete unit, and not as the separate components and if the separate parts were unnecessary, why require submission of replacement figures for them?

Three months later, following a telephone conversation discussion with the Head of the Design Division, it was agreed to split the application into three separate applications: one for each component – front, back and locking element.

In a third Office Action, 28 months after the original filing, the Design Department ruled that the items shown in the application were not protectable as a design at all, and issued a final rejection.

A month later, the Applicant appealed to the Commissioner to consider the case based on the file-wrapper and pointed out that the Design Ordinance of 1926 (still in force) allows disassembled views of devices to be filed.

Additionally, the applicant pointed out that design registrations for various parts such as rubber gaskets and seals and profiles of aluminium extrusions for window frames were regularly applied for and issued by the israel Patent Office. In a creative argument, the applicant claimed that at that stage, the parts were also sold separately. The Applicant requested that the final rejection be reconsidered rather than the appeal to the Commissioner being considered an Appeal, which would incur unjustified expense. Finally, the Applicant suggested that the parts could be considered a set under the Section 5 of the Design Regulations of 1925.

The commissioner allowed the assembled plug design to issue as the original application, since the parts were all included. The logic being that despite most of the unique design being functional and internal and therefore irrelevant, the assembled construction did differ slightly from other plugs on the market and these differences were partially aesthetic and therefore registerable.

The divisional applications for the individual components were refused as even if now sold separately, they are simply replacement parts and not registerable since parts required to fit into a space as part of a machine were not registerable. The Commissioner cited an English language text-book: On Industrial Designs by Russell-Clarke and Howe, Sweet and Maxwell (2005).

 The two passages quoted follow:

“A design right shall not subsist in features of appearance of a product which must necessarily be reproduced in their exact form and dimensions in order to permit the product in which the design is incorporated or to which it is applied to be mechanically connected to or placed in, around or against another product so that either product may perform its function”  Chapter 2-23. This is actually section 7(2) of the European directive:and is based on the UK Design Law CDPA 1988  Section 213(3)(b)(i). 

“One purpose of this “must fit” exclusion would appear to be to prevent monopolization of replacement parts by a maker of original equipment. Replacement parts may be needed to repair a machine by replacing a part which is worn out or broken…”. Chap 4-16.

As to the set argument, the Commissioner suggested that the regulation related to something like a set of artificial fingernails. 

COMMENTS

The Case and the Decision

The examiner and the Agent for the Applicant could have handled things better. The final ruling was correct, but the time delays and aggravation involved in getting the design allowed were unfortunate and unjustified.

I have had similar experiences with trying to get designs for clock hands registered, and sweated blood trying to explain why I showed the parts separately and assembled on a clock face (disclaimed) at different times, and had various inane requests thrown at me like showing the hands from all six-sided and in isometric projection, followed by a request to show the hands opened and closed. I tried citing the regulations and received the response from the Examiner that she didn’t know there were regulations for designs as well [as for patents and trademarks]!!

Wider Implications

The significance of the decision is, as often is the case, in the obiter and between the lines.

  1. The Commissioner refers to a European textbook and the European directive.
  2. Israel case-law is not cited.

I have tried in vain to find Israel court decisions in cases brought by original automobile and printer manufacturers against importers of generic spare parts.  Grounds for such actions may include registered design infringement and unjust enrichment.  It seems that the Commissioner couldn’t find any Israel decisions either…

In Europe, designs are registered without substantive examination, so one can register automobile parts. However, the courts will not grant injunctions or damages to the car manufacturers. This is a matter of policy. They consider that the public interest is to enable cars to be repaired cheaply and efficiently, and they therefore prefer to prevent the manufacturer from selling the car twice by awarding monopoly rights that enable extortion of locked in consumers.  

It appears that the commissioner is taking this position, at least as far as registering internal functional parts are concerned.  Possibly, repalcement wing mirrors and headlamps might be considered differently. (Since my driving and parking skills are inferior to my IP acumen, I am aware how expensive the suppliers parts can be).

At least until now, it has been possible to register designs for ink and toner cartridges in Israel. In previous discussions with the head of the Design Section at the Israel Patent Office, it transpires that at least prior to this decision, he had no qualms about registering car parts.

As to the fingernail example of the meaning of a set for design purposes, this seems to be an overly narrow interpretation. Until now, it has generally been considered that the various elements in a set of cutlery (flatware / silverware), the various chessmen, and other elements sold together would be considered as a set that can be filed in a single application.

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

Are fonts registerable designs or creations that are automatically protectable by Copyright?

October 12, 2010

 When Hebrew versions of Microsoft Windows and Office applications were released, a number of Hebrew fonts were part of the package. These included Narkisim, a serif font created by the late Zvi Narkis, and the Koren Publishers Jerusalem Ltd’s Koren font, which was specially developed for use in the first Hebrew Bible to be typeset and printed in Israel.

The estate of Zvi Narkis and Koren Publishers Jerusalem Ltd, together with Masterfont Ltd. filed suit against Microsoft Israel and Microsoft Corporation, claiming copyright infringement. Microsoft’s defense was that the correct form of protection for typefaces is design registration. Since copyright and design are mutually exclusive, typefaces are not copyright protected. No design registrations were filed and even if they had been, they would have lapsed 15 years after filing. Consequently, the fonts are in the public domain.

The moral right of the creators is acknowledged as the fonts bear their names. If copyright protected, the protection would last for life of creator plus 70 years, and the owners could prevent Microsoft from using the proprietary fonts, or could demand royalties. Since there is an issue of pure law at stake – the correct kind of protection for fonts and typefaces — with the complainants’ agreement, Judge Ofer Gruschkopf combined the two proceedings as far as the legal question of the correct form of protection is concerned and his ruling follows.

Copyright protection for typefaces

A typeface is designed for reproduction and multiple reuses but as something that merely marks the paper, is it an article of manufacture at all? Does the shape of letters provide the minimal requirements of creative expression to be protected by copyright?

Judge Gruschkopf’s ruling starts by defining a typeface. The 1976 US Copyright Act defines typefaces using the term “repeating design elements.” The Vienna Agreement for the Protection of Type – which was never implemented — also refers to sets of designs of letters and alphabets, with accents, numerals, punctuation marks, symbols, etc. The essential feature of a typeface is that it is not purely functional.

Microfont and Zvi Rosenberg, the co-plaintiffs with Narkis Estate and Koren Publishers Jerusalem Ltd, digitized the fonts for modern use. Judge Gruschkopf noted that both sides agreed that typefaces per se are protectable and merely argued as to the correct form of protection to apply.

Citing the New Copyright Law 2007, Judge Gruschkopf ruled that legislation in Israel Law prevents something registerable as a design from also being protected by copyright. Essentially Section 4 of the New Copyright Law extends copyright to original artistic works and Section 7 excludes designs as covered by the Patents and Designs Ordinance, unless not intended as objects of manufacture.

I find this a little strange. The fonts and Microsoft’s use thereof predates the 2007 Law and I think the old law is the one that should be used. The judge does relate to this issue in footnote 10 – a piece of Talmudic erudition. In the Interlego case, where the issue of copyright protection for Lego pieces was discussed, Supreme Court President Shamgar ruled that the protections are mutually exclusive and where something is protectable as a design, it should not be entitled to copyright protection. The judge also points out that passing off and unjust enrichment could be relevant grounds for suing.

Apparently, the only time the issue came before the Israel Courts in the past was in a 1949 decision by Judge Isaac Kister regarding a font called Aharoni. In that case, Kister ruled that fonts could be registered as designs, but as the present ruling notes, at that time the term “fonts” meant the article of manufacture used for printing rather than the marks they leave on the paper.

Fonts are no longer articles of manufacture in the same way. Kister’s ruling from another district court is not binding as the two courts are of the same competence in terms of judicial hierarchy. Furthermore, only the abstract of Kister’s ruling appears to be available because district court decisions were not always published in full.

Other “relevant” rulings include the Peleg decision, where ritual calligraphy (STaM) is seen as being protected by copyright. However, by nature, calligraphy is a hand-drawn artistic work that is not intended to be reproduced. In a June 2010 decision regarding a temporary injunction, Jerusalem District Judge Noam Solberg stated that study of the case -law teaches that computer fonts are creative works protected by Israel Copyright Law.

Here I have a problem. Either Judge Solberg is correct and there are other relevant rulings other than Kister’s, or else his ruling is baseless. Why didn’t Judge Gruschkopf pick up the phone to him?

Regarding Comparative Foreign Law, the US has declined to allow the design of typefaces in the 1976 Copyright Act and in the subsequent 1978 Eltra Corp vs. Ringer 579 F.2d decision, apparently to the dismay of the Nimmers (Nimmer on Copyright 2.15). It seems that the decision implies that a physical separation between function and creativity is required, whereas arguably a theoretical separation should suffice. Nevertheless, it appears that in the US, a design patent is the way to protect fonts.

The UK 1988 Copyright, Designs and Patents Act defines copyright in fonts including typefaces but limits protection to 25 years for reproducing and distributing the fonts, but not for typing with them. Judge Gruschkopf sees this as indicative that they are protectable by copyright.

I tend to view that this indicates that hard fonts in type metal are protected as designs. I agree that this isn’t of cutting relevance to the protection in question. 

The judge seems to get hung up over the design law relating to designs for different articles whereas a printed letter is not an industrial article. There is a little ramble through other non-design protected articles and quoting Terrence J. Carroll on Protection for Typeface Designs. He rules that a typeface design is no more a design for a font than a photograph for a book cover is a design for a book cover. Where we are left is some creative linguistic definitions and an understanding that a mold or die is the opposite of that molded or printed and that modern printing is different.Judge Gruschkopf goes on to quote Judge Cheshin’s musings in the Tele-Event decision that extended copyright to live broadcasting. In this decision Cheshin  points out that the old and good Copyright Law dating to the British at the turn of the 20th century is anachronistic and does not adequately relate to modern issues like the Internet, satellite broadcasting etc.

After deciding that he can choose between the forms of protection and is not bound by either, the judge decided that copyright is more appropriate for protecting fonts and prefers to avoid the mental gymnastics required to read fonts into design law. Not entirely happy with 70 years of protection, he suggests that the Knesset should enact  special legislation for fonts since he can only choose between the protections available.

Comment

We note with approval but the published decision – which in all probability was written in MS Word® — did not use either font in question.

The Koren Publishers Jerusalem Ltd themselves only use the font for the Bible. Even in their prayer books they reserve the original biblical font for psalms and other biblical passages. Other prayers are in a variant font. We suspect that obtaining an injunction against Microsoft to prevent the font being usable by all and sundry for all purposes may be an aim of the litigation. 

Philosophically, as a materials scientist and engineer I find the question a little like discussing the macro-properties of materials in the context of atoms and molecules or the chemistry of subatomic particles. It is really getting down to the nuts and bolts of creativity and manufacturing. 

Despite the Former Supreme Court President Shamgar’s ruling in Interlego and the position of the current Commissioner of Patents which is mentioned in the present decision in an aside relating to an academic paper regarding copyright for architectural creations. I do not agree that the doctrine against double IP protection should prevent the aspects of a creation that are manufactured objects from being protected as objects of manufacture – registered designs – and the creative aspects of their footprint being awarded copyright protection.  Therefore I don’t agree with Microsoft’s position that design protection should rule out copyright protection.  I believe that the design protection would cover the typeset in type metal as an object of manufacture and the printed typeface on the paper, if considered sufficiently creative should be protectable as copyright.

If the doctrine of double protection is correctly applied in this case, I would argue that Narkis and Koren could have gotten design protection for the cast metal typeset and thus the print thereof is not copyright protectable. If so, the fonts were in the public domain by virtue of being produced using traditional printing and I do not see why the mere act of digitization should create a copyright in something already in the public domain.

One could argue that awarding design protection to traditional typesets and copyright protection to post-digitization modern True Type fonts is problematic. Is it really? Isn’t this the opposite of copyright protection for one-off creations but design protection for objects of manufacture?    

I am happy to consider digital printing as a form of manufacturing and I see no reason why a letter cannot be the building block of an industrial printing process and should be protectable as a design. I prefer that line of reasoning rather than to see fonts as creative works in a copyright sense. Then again, conceptually I believe that software inventions should be patentable and consider life plus 70 year copyright protection for the code to be inappropriate.  

The idea of lex specialis copyright for fonts to provide a shortened term but not requiring registration does seem reasonable. Certainly if chip circuitry is protected by copyright, why not fonts? However, I am not sure why chip design should not be design protected. After all, they are objects of manufacture.

Judge Cheshin’s obiter regarding copyright limitations is not overly relevant as fonts existed when the design ordinance was drafted. Therefore, in my opinion, there is a 1949 Israel ruling that fonts are designs and so the current ruling is an about face. This should at least minimize the damages that Microsoft should pay in the future ruling.

The real question seems to be whether digital printing should change the protection of fonts from design to copyright. I think not, as this simply extends protection from 15 years to life plus 70 years following digitization.

T.A. 5311-04-08 Narkis and Others vs. Microsoft.

T.A. 5311-04-08 Koren and others vs. Microsoft.

1 Comment | Copyright, design, Israel Copyright, Israel Court Ruling, israel design ruling, Israel IP | Permalink
Posted by Dr Michael Factor

Lego Loses Trademark Appeal at the European Court of Justice

September 14, 2010

Lego, the Danish toy maker that is Europe’s biggest toy manufacturer have failed to overturn the OHIM decision to revoke trademark rights for its plastic building blocks.

After losing in the OHIM and again in 2008 in the general court, Lego appealed to the European Union Court of Justice (ECJ).

The ECJ has now ruled that “the Lego brick is not registerable as a Community trade mark. It is a sign consisting exclusively of the shape of goods necessary to obtain a technical result”.

The court went on to rule that “Undertakings may not use trade mark law in order to perpetuate, indefinitely, exclusive rights relating to technical solutions”.

Lego had argued that the bricks were eligible for trademark rights as the studs on the top of the bricks made them highly distinctive. Megablocks and various Chinese companies make similar blocks, that are compatible with Lego bricks.

We note that the Israel Supreme Court came to a similar ruling in Interlego, where the toy maker tried to get copyright protection for the brick.  See 513/89 Interlego S/N vs. exin-lines bros (1994) 48(4) 133

It seems reasonable that such objects should be protected for up to 20 years as patents, or for 15 -28 years as designs, but not indefinately as trademarks, or for 50-90 years as copyright.

Leave a Comment » | Copyright, design, trademarks | Permalink
Posted by Dr Michael Factor

The moral rights of a sculptor to be identified with his work

September 12, 2010

David Ascalon, an Israeli-born sculptor living in New Jersey whose grandparents were murdered in the Holocaust, was commissioned to create a Holocaust memorial in 1993 by the Jewish Federation of Greater Harrisburg.

His design consists of a stainless-steel Star of David base in which a series of stainless-steel poles are mounted. These are bound up by a dark, rusty-looking metal “spiral serpent” that resembles barbed wire.

The 15-foot-tall sculpture was placed in a park, and Ascalon was paid $35,000 for the work.

Apparently, the stainless steel core represents the Jewish people because stainless steel has an eternal look. The decayed serpentine rusting shape on the other hand, symbolizes the Nazis.

However, Within 10 years, the Holocaust sculpture needed repairs, because the barbed-wire serpent had become overly rusted. Mr. Ascalon volunteered to do the restoration, asking only to be reimbursed for the costs.

In 2006, the Parks and Recreation Department of Harrisburg chose a restorer who replaced the original barbed-wire motif with a shining stainless steel replica and scratched out Mr. Ascalon’s name from the memorial’s base, replacing it with his own.  It now says “Restored by David Grindle 2006” and lists the names of the “Restoration Advisors.”

What’s more, a lawyer for the Jewish Federation demanded that Mr. Ascalon stop claiming to be the memorial’s artist.

In July, Mr. Ascalon filed a lawsuit in U.S. District Court against the parks department, the Jewish Federation and the restorer for violating his moral rights.

According to the Statement of Claim

“The modification of the sculpture has changed it so that now the same shiny stainless steel that represents the enduring Jewish people is also used to depict the Nazi regime and atrocities of the Holocaust. This alteration is abhorrent, and runs completely contrary to the core vision of the Memorial, which was based on the notion of creating a striking and stark visual contrast between the Jewish people and their Nazi oppressors. The sculpture as modified now creates a visual equivalency between good and evil, which is a mutilation and bastardization of the artwork and its purpose.”

The case is an interesting one. The choice of materials, including the rusting barbed wire, was done intentionally. Changing these arguably compromises the artists moral rights. On the other hand, shouldn’t the purchaser of a piece of art be able to make improvements, like stopping it disintegrating away?

The restorer may have the moral right to be accredited, but surely the original artist has rights as well?

Once the sculpture is changed and the name of the original artist is no longer mentioned, arguably his moral rights are no longer compromised.

According to Visual Artists Rights Act 1990 (VARA), incorporated into the Copyright Act as  § 106A(a)(2) of the Visual Arts , the author of a work of visual art  “shall have the right to prevent the use of his or her name as the author of the work of visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation.”

If the adapting of the original art is done concurrently with removing the name of the artist, arguably his moral rights are not compromised.

I think the original artist deserves credit for his creation, but the purchaser should have the right to make such alterations as are required for practical reasons, and perhaps for aesthetic ones as well, but these should be clearly documented on site. Thus attributing the restorer with details of his restoration is legitimate but this should flag the fact that the integrity of the original creation was compromised and that the work on display has been modified.

Such a solution may not be acceptable to all parties. The sculpture is large and imposing. Any documentation on site will, of necessity, be less so. 

I suppose if those that daub graffiti on holocaust memorials, such as that in Hyde Park London, would have the integrity to identify themselves for prosecution purposes, that would be a good thing as well.

It is a shame that such cases are not settled amicably.

1 Comment | Copyright, design, US | Permalink
Posted by Dr Michael Factor

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