Onnuri and Sujuk – Bifurcation!

December 9, 2015

Divide and Conquer

Yoad Potrimelach owns Israel Trademark Nos. 183243 and 190290 for Onnuri and Sujuk. Zvi Alfisher filed a request to cancel the registrations on the grounds of inequitable conduct under Section 39(1a).

Israel Trademark Nos. 183243 and 190290 for Onnuri was filed on 22 August 2005 in class 16, and were registered in May 2007.  On 29 June 2015, the Israel Trademark Department sent a reminder for renewal of Israel Trademark No. 183243 for Onnuri but it wasn’t renewed. The request to cancel the mark was submitted on 9 July 2015.

Israel Trademark No. 190290 for Sujuk was submitted on 18 May 2005 and issued on 9 March 2008 in class 44. The request to cancel the mark was submitted on 18 June 2015.

On 23 August 2015, Yoad Potrimelach requested that the cancellation proceedings be suspended as there was an ongoing court case between the parties before Judge Dr Avnieli (Civil Complaint 25921-02-14 Yagil et al. vs Alfisher. The proceeding was filed against Zvi Alfisher in February 2015 and relates to IP infringement regarding these marks. The plaintiffs claim to have sole Israel rights from the Intenational Sujuk Association and have the sole rights to distribute and teach Sujuk in Israel.

In the hearing before Dr Dafna Avnieli regarding this case, it was ruled that the statement of defense does not undermine the validity of the registrations, and the Court offered the defense the opportunity to correct their statement of defense to raise this issue, however Alfisher declined to claim this and the validity of the marks is not an issue before the District Court.

Alfisher considers the two cases separate and different and does not see a reason to suspend the case before the patent office until the District Court issues its ruling. Alfisher considers that the Patent Office has sole authority to cancel marks and the correct approach is bifurcated attack, challenging the validity in the Israel Patent Office. Support for this understanding is found in 667-01-13 Financial House Y. C. LTD vs. Itzchak Yaakov.

On 28 October 2015, the trademark owner filed his response to the opposition. The mark owner claims that the cancellation request was filed to circumvent the court’s order that the statement of defense be corrected. The court case is at the evidence stage. Although the case before the court is one of infringement, the court may rule on validity of the marks in such cases, and having two courts ruling on the same issues is ineffective and may lead to contrary conclusions.

RULING
The Israel Trademark Office has sole discretion whether or not to suspend proceedings when there is a related case in the courts. The purpose of suspending proceedings is to protect parties and the courts from managing parallel proceedings and efficiency. See 3765/01 Pheonix vs. Alexander Kaplan.

The main issue is to prevent identical factual or legal issues being addressed in two courts which is inefficient and could lead to contrary rulings.

In the District Court, the issues are copyright and trademark infringement, and the Alfisher’s defense is based on tardiness in filing suit and on a contractual arrangement between the parties. Alfisher considers that the Court will have to address validity issues but this is not ideal.  The fact that a mark was registered is indicative of it being valid and raises a high level of proof on him. The Patent Office is better equipped to address this issue.

Alfisher considers the trademark registration was in bad faith and should be canceled under Section 39(1a). This is a different legal and factual issue from the infringement question which is before the courts. Consequently, there is no reason for the cancellation proceeding not to continue. Since the parties are relating to the two marks together and the issues are identical, the two cases are combined. The mark owners are given three months to submit their response to the cancellation request.

Costs of 1500 Shekels are awarded against the mark owners!


Satire and Right to Privacy

December 3, 2015

hallakha

This case concerns use of a private person’s image in a satirical newspaper column. Rabbi Israel Sheinfeld is the Hassid in the image. The picture appeared in a satirical weekend supplement of Yidiot Achronot, Israel’s largest circulation newspaper.

The picture is a photo-montage. It satirized a mobile phone provider’s advertising campaign. In context, the joke is not harmful and the Rabbi Sheinfeld was not even the target of the joke. He was, however, offended, and believes that the joke made him the subject of ridicule, might have resulted in being sacked, and could affect his career as a Rabbinic Judge. He sued the paper for 200,000 Shekels in statutory damage on grounds of invasion of privacy, slander and libel.

Background and Historical Background

The photograph of Rabbi Sheinfeld appeared close to Lag B’Omer 2009. Lag B’Omer is a minor Jewish festival linked to the Bar Cochba Rebellion against the Romans and is apparently the anniversary of the death of Rabbi Shimon Bar Yochai, a Rabbi who went into hiding from the Romans in a cave and lived on a diet of Carobs and water, continuing studying Jewish texts. There is a custom of not having hair-cuts during the 4 1/2 week period from Pessach (Passover) to Lag B’Omer as a sign of mourning for the a a large number of disciples of Rabbi Akiva who backed the Bar Cochba rebellion and were put to death (Responsa of Rabbi Sheririya Gaon). There is an alternative tradition that as a punishment for needless hatred they succumbed to a plague resulting in a choking death. In all probability, the disciples were active fighters in the rebellion which failed due to lack of unity. For obscure reasons, some Jews postpone giving their male sons a haircut until this date after the child’s 3rd birthday, when the haircut turns into a Joyous right of passage.  Rabbi Shimon Bar Yochai is (falsely) attributed with authoring the Zohar – the most central Kabbalistic text.

Just previous to Lag B’Omer in 2009, Cellcom, a leading Israeli telecommunication company had a company for Cellcom Family, a package deal of mobile phone communication aimed at families. This advertising campaign  features a female punk returning home to her Religious family,  where she is welcomed with open arms, under the slogan “the family is the most important thing”.

Statement of Case

  1. The complainant is Ultra Orthodox, married and a father of children. He is known to be modest and unassuming and observant of the religious commandments and practices of the his community. He is an ordained Rabbi who is studying to be a Religious judge.
  2. In 2004, the plaintiff took his son to Mount Meiron for the traditional haircut at aged 3.During the ceremony Mr Gil Nehustan, photographed the plaintiff whilst holding his child during the hair cut, and the picture appeared in Yediot Aharonot that year.
  3. In 2009, the plaintiff learned that the newspaper had recycled the image but this time, instead of holding his son, Rabbi Steinman is shown holding a provocative female model.
  4. Rabbi Steinman alleges that the photo-montage damaged his reputation and his privacy, particularly as the photograph was contrary to his Ultra-Orthodox values. As a Rabbi and a candidate judge the picture could prevent his appointment and make him an object of fun instead of a character commanding respect as a man of the cloth.
  5. On 29 September 2009, the plaintiff approached the newspaper and requested compensation and a public apology, but the paper chose to ignore him.
  6. The plaintiff considers that making him an object of mockery is libelous. There is nothing in artistic freedom or freedom of speech to allow the fabrication of degrading and insulting pictures and the insulting of his entire community by making fun of himself, a private individual. The plaintiff notes that he was a private individual and not a public figure who exposes himself to satire.
  7. The picture was intentionally degrading or at least its creators ignored its degrading potential in a manner that was equivalent to intent to libel and damage his privacy. Citing Section 30a of the Law of Privacy, he was entitled to sue the editors and the publisher. In practice, he suffered real damage, but it was impossible to value and so he requested 200,000 Shekels in statutory damages; 100,000 Shekels or invasion of privacy and 100,000 Shekels for libel and slander.

The Statement of Defense

  1. The picture appeared in the satirical column and didn’t relate to the plaintiff or make any claims about him.
  2. The picture is neither libelous nor invasive of privacy.
  3.  The picture appeared prior to Lag B’Omer with its customary ritual haircuts on Mount Meiron. The item satirized the “Cellcom Family” advert which features a punk girl with a spiky haircut who returns to her religious family which accepts her with open arms.
  4. The advertisement played on the family ties and the conflicts between secularity and tradition. It was widely broadcast on commercial television and was thus a target for satire and criticism.
  5. The picture appeared in the satire column and was a joke, in that the punk girl went one stage further towards her traditional religious family and decided to undergo a ritual haircut on Meiron. This joke did not relate to the plaintiff
  6. The photo-montage applied Cellcom’s punk girl to a consensual picture of the plaintiff taken at a hair-cutting ceremony five years earlier.
  7. The picture is clearly faked and not a real photograph and its appearance in a satirical column clarifies that it is satirical as does the title “after returning to the bosom of the family, the punk from the Cellcom Campaign has a ritual haircut in Meiron”. No reader would consider this as being an authentic picture of a ritual haircut ceremony and it is clear that it is fictitious. The hair-cutting ceremony is a well known custom, certainly among religious and Ultra-Orthodox and it is well known that it involves three year old boys and not teenage girls.
  8. The satirical column is clearly just that. The adjacent picture shows the Pope apparently claiming that Jews crucified him, and it is clear that the items are made up.
  9. The plaintiff is upset about his picture being used in a satirical column but this is a baseless complaint since the original picture was taken in public or with his consent. The photo-montage is clearly that; the plaintiff is indirect to the item, his name is not mentioned, his picture is small, out-of-date and unclear. The item does not relate to him. In this instance, the picture is not damaging to the plaintiff.
  10. There is nothing in the item that can be taken as offensive or degrading to the individual or to the Ultra-Orthodox, and all claims to the contrary are taking the publication out of context.
  11. The editor of Efes, the third defendant is himself a son of the Ultra-Orthodox community. The Efes column was originally founded by Ultra-Orthodox journalists and covers issues relating to the conflict between religious and secular in Israel. The item in question is not insulting to the Ultra Orthodox in general or to the plaintiff in particular.
  12.  The picture is clearly photo-montage but is not a provocative photo-montage. It satirizes the Cellcom family oriented campaign.
  13. The plaintiff is trying to create a picture that the Ultra-Orthodox world has no sense of humour and no understanding, and what is clearly a satirical image created for a satirical column will be understood by them as authentic.
  14. There is no room to conclude that the defendants intended to harm the plaintiff. The article is related to Cellcom, not the plaintiff and not Ultra-Orthodox. The defendants did not know the plaintiff and his name is not mentioned.
  15.   When the plaintiff contacted the paper, the defendant’s representative attempted to contact him in vain, and sent him a fax inviting him to make contact.
  16. The publication is not an invasion of privacy as defined in the Law of Privacy 1981, and is not Libelous as defined in the Law of Libel 1965.
  17. Since no reasonable reader would consider the picture as relating to an authentic situation but merely to a satirical situation this cannot be considered either libelous or an invasion of privacy.
  18. The picture appeared in a satirical column and satirized Cellcom who used the conflict between secularism and tradition for a commercial advertisement. The item was tongue-in-cheek and the plaintiff is taking it out of context in a baseless attempt to collect legal damages.
  19. The defendants are entitled to all statutory defenses for libel and invasion of privacy. They deny damages in general and the claimed damage in particular and claim that the plaintiff is attempting to claim twice for the same action.

Discussion

  1. The plaintiff agreed to be photographed but did not know that the photographer was a journalist and that the image would be published in a newspaper.
  2. He considers that the photo-montage creates an image of closeness to  a teenage punk girl and his affection for his son  is portrayed as his affection for her.
  3. As soon as it was published, his friend Ephraim Moskovitz contacted him and asked if he knew about the picture. The plaintiff is religious and doesn’t allow the paper into his house, he only saw the image sometime later when another friend, Moshe Appel, brought him a copy, and he imagined the embarrassment were the picture to reach his family of friends. He kept it private and didn’t show anyone. Such was the state of affairs until another friend, Moshe Fried gave the picture to his brother Yechiel, and this resulted in the picture being circulated in the family and the resultant embarrassment and suffering.
  4. The picture damaged his good name and his families feelings.
  5.  As a teacher, the picture was damaging for him, and he lived in constant fear of it reaching his pupils and his supervisors, which could prevent his career progressing or even result in him being made redundant. Despite his good reputation he was recently made redundant without explanation and he considers that the image might have been embarrassing to the institution.
  6. As a candidate Rabbinical court judge he dedicated his days and nights to studying the material, yet this publication could prevent his appointment to the Rabbinic courts since such an appointment required total cleanliness from any hint of impropriety.
  7. From comments from his friends and colleagues he understood that this image was distributed across the country and could come back to haunt him at any time, preventing him being appointed to a court.
  8.  Mr Moskowitz testified that he was a Hassidic resident of Bet Shemesh who worked as a Kashrut supervisor. He knew the plaintiff as he visited his Rabbi, they prayed in the same Synagogue and he knew some of his family. He testified that a secular friend brought him the paper one Friday and showed him the image saying “See how the ultra-Orthodox behave”. He told the friend that he knew the person who then said that “this is how you and your friends behave.” Mr Moskowitz asked for the cutting but was refused. Mr Moskowitz then looked for the  plaintiff’s number and reached it via a relative. He rang him and told him about the image. The plaintiff asked him to obtain the paper, but since he didn’t read it, he couldn’t obtain a copy.
  9. Mr Moskowitz further testified that in his society such a picture is insulting and one doesn’t even show a photograph of one with one’s wife to strangers but only to family. As Rabbi Sheinfeld appears to be hugging a provocatively dressed stranger, the picture is particularly insulting.
  10.  Finally, Moskowitz testified that one day he met the editor of the satirical column and asked him about how he could publish such a picture. The Editor acknowledged that he knew about the image but denied responsibility.
  11. In his statement, Mr Fried stated he knew the plaintiff and his family. Rabbi Sheinfeld’s father had been Mr Fried’s headmaster, and he knew Rabbi Sheinfeld from their Hassidic cult community. He testified that he’d bought the weekend Yediot Aharonot paper and suddenly noticed the picture of Rabbi Sheinfeld in close proximity with the provocatively dressed female. He considered the picture exceptional and insulting and cut it out to pass on to the plaintiff. He  only saw the plaintiff’s brother, Yechiel Sheinfeld about six months later and gave him the picture to pass on. He testified that in their community such a picture made the person depicted an object of ridicule and was damaging and insulting. To give substance to the ramifications of such a picture, he recounted how a photograph of an ultra-orthodox person standing with someone elses wife resulted in the children of both families being withdrawn from their school and one of the families emigrating.
  12. The editor of Efes explained that it was a satirical column that was originally written by Ultra-Orthodox staff and that it looked at religious – secular current affairs from an Ultra Orthodox perspective. The column was originally published in the Eretz paper and for four years was published in Yediot Aharonot.
  13. He noted that most Ultra Orthodox do not read Yediot Aharonot and were not exposed to its content.
  14. The Editor stated that the image was not offensive to the Ultra Orthodox and alleged that Rabbi Sheinfeld’s dismissal 2 1/2 years later was nothing to do with the photo-montage. He further alleged that the law suit was based on stigmas about the Ultra Orthodox community and that it was the lack of real grounds for complaint that resulted in the case against him being brought in a civil court and not in a Rabbinical Court.

The Ruling

  1.  Someone seeing the satirical image could not fail to understand that it was a satirical take off of the Celcom campaign. This was emphasized by the accompanying text which made the joke clear.
  2. The other jokes in the same issue related to other large companies and to public personages including the then President Katzav, the Pope, the Chief of Staff and others. The subjects of the column were not private individuals.
  3. Additionally, the viewer of such a picture could not fail to notice that the picture was a photo-montage and that there was no connection between the Hassidic barber and the punk girl. The girl, though provocatively dressed (punk) was not immodestly dressed (i.e. undressed) and, contrary to the plaintiff’s allegations, the picture does not show contact between the parties, and the punk is not shown sitting in the plaintiff’s lap.
  4. The judge noted that the plaintiff himself had testified that none of his acquaintances suspected him of improper behaviour and had admitted that the Halakha ceremony is performed on three year old boys, not teenage girls.
  5. The standard for libel and slander was not whether the plaintiff or his witnesses felt that there was slander or libel but whether objectively there was something improper with the image. In this instance, the fact that the plaintiff would not want to appear in such an image is not sufficient grounds to conclude that the plaintiff was insulted or ridiculed in the public eye.
  6. Satire is, by nature, exaggeration to the point of ridicule therefore it is necessary to understand things in context from the perspective of the reasonable person. See Appeal 4352/02 Shoco LTD ve. Herzikowits PD 55 (3) 558. 
  7. The rules of Libel and Slander strike a balance between the basic right of a good name on one side and freedom of speech on the other. The scales are tipped towards freedom of speech where the issue is satire designed to create controversy and not to present a factual truth and censorship would be particularly damaging to the market place of ideas that is the heart of democracy.
  8. As to the right of privacy, the plaintiff claims that the picture was an innocent picture of the ritual hair-cutting ceremony. However, this is not the case. The picture wasn’t a snapshot of the action, but had the plaintiff’s full consent.  In fact it was staged to the extent that the plaintiff allowed the photographer to take several pictures and requested that he be sent them. He also had no problem to the photos being used in the original newspaper article commemorating the ritual hair-cutting rite.
  9. Since the picture was taken in the public domain with consent of the subject, there was no invasion of privacy.
  10.  Allegations that the plaintiff did not know that the photographer was a press-photographer are denied by the photographer who was not a party to the case. Such allegations are widening the statement of case and are thrown out.
  11.  Since the plaintiff did not limit his consent to be photographed in any way, such as to non-commercial uses, there is no limitation to the picture being used in a photo-montage and doing so is not an invasion of privacy.
  12. Finally, the judge noted that the plaintiff was a certified teacher, a trainee Rabbinic court judge and an author of a substantive book on the prohibition of interest in Jewish Law that had received wide approbation. Nothing in his life was damaged by the satirical publication. He himself noted that his community is particularly closed and Yediot Aharonot does no enter it. It was his brother who showed the image to the family and none of them suspected him. The plaintiff notes his good name. The allegations that he was filed as a result of the publication are unsubstantiated, and apparently he still has his good name.

 

Based on the above analysis, the case is thrown out. The Plaintiff will pay 7500 Shekels legal costs to Yediot Aharonot.

Case 45143/02-10 Israel Sheinfeld vs. Yediot Aharonto, the Editor in Chief and the Editor of the Satirical Supplement. by Ronit Pinchock Alt, Tel Aviv Magistrate’s Court, 15 November 2015

 

COMMENT

As far as I am aware, there is no family connection between Sheinfeld and the American comedian Seinfeld.

I think it is ironic that Yediot Aharonot are complaining that ‘the plaintiff is taking their image out of context’ and that he is ‘trying to create a picture’. This is exactly what they did.

The photographer was not a defendant because there was no invasion of privacy or problem with the original photograph. The consent given was for use of the images taken or what the camera sees. The second usage of the picture was a fabrication. It was not malicious and the intended subject matter of the satire was not Rabbi Sheinfeld. Had the image been created using an actor, no-one would have been hurt and no-one sued. Yediot Aharonot’s Weekend Edition has a large circulation. The paper is a cheap tabloid with a focus on tittle tattle of celebrities – i.e. television personalities, sportsmen and models. The paper is not widely read by Ultra Orthodox Jews leading a narrow lifestyle. However, despite rabbinic disapproval,  both television and secular papers do have some viewers and readership in the Ultra Orthodox world.  In context, the image is a satire of a telecommunications campaign. The problem is that just as Yediot Aharonot took Rabbi Sheinfeld’s image out of context, so might members of the public viewing the image after a time or without the caption. Images, once created, may assume a life of their own. It was not for nothing that the Baal Shem Tov considers a statement once made, like tearing a feather pillow on a hillside on a windy day and shaking. The problem here is that Yediot Aharonot were blase about the subject of the original picture, assuming that all viewers would be familiar with the Cellcom advert and would understand the joke. The problem is that not all readers watch television. There are families that do not allow Yediot Aharonot into their houses, but there are more families that don’t have television but do have weekend papers.

Is the photo-montage clearly that? If it is scanned or photocopied will it remain clearly a photo-montage?

Rabbi Sheinberg has indeed failed to show damage but I am not sure that he should have to when hundreds of thousands of images of him in a compromised position are distributed. In context, both the original picture and the photo-montage relate to the ritual hair-cutting ceremony.  Is it clear to all viewers that he wasn’t in proximity with a teenage girl who was clearly not a member of his community? Having a daughter who is no longer religious could affect the  marriage prospects of other children. There are Ultra Orthodox men who frequent prostitutes. They have the same libido issues that other men do.  There are other ways of interpreting the image than the caption given. Could such an image be harmful? I think the answer is ‘yes’. Newspapers are aware of the power of images and that pictures may be taken out of context. I am aware that Ultra Orthodox papers regularly edit photos to remove women. I am not sure if Ultra Orthodox readers are aware of the editing. I think that the image could be damaging and though not malicious, the paper was less than concerned about possible harm to the individual. As the paper is not an Ultra Orthodox publication and the Editor in Chief is not Ultra Orthodox, there is no reason for Rabbi Sheinfeld to have gone to a Rabbinic Court to air his issues. If the state law provides statutory damages without proof, Rabbi Sheinfeld is entitled to sue in a secular court.

As the image is central to this article, I have reproduced it. I have named it as a photo-montage to do my bit to prevent it being taken out of context.

 

 

 

 

 

 


Amad Arabiyah Wins Injunction and Damages from 13 Bootleg Distributors.

June 24, 2015

Arab Music

Amad Arabiyah Music Management and Distribution LTD sued 13 different shops in the Nazareth District Court. The shops had sold Music CDs and had stocks of pirate compact disks and were accused of contributory copyright infringement. Due to the similarity of the cases and the common plaintiff, the cases were combined into one case.

The original production of the albums was by Digital Sound LTD and Aalem en-Fan LTD, both Egyptian companies, who transferred the rights to the plaintiff. The logos and names of the Egyptian production companies appeared all over the compact disks and their packaging. In the original case as filed, the Egyptian production companies appeared as formal complainants, but the judge ruled that their names could be deleted from the statement of case since Amad Arabiyah Music Management and Distribution LTD had an exclusive license to distribute the compact disks and to sue for copyright infringement.

Amad Arabiyah Music Management and Distribution LTD sent a couple of investigators who purchased fraudulent disks in each shop and testified that the shops had stocks of such disks. They claimed 100,000 Shekels in statutory damages against each shop.

Amad Arabiyah Music Management and Distribution LTD considered that the full statutory damages should be awarded as the infringement was widespread knowing commercial infringement over a 35 year period that was profitable for the defendants. The shops considered the charges trivial and unsubstantiated and denied the standing of the plaintiff.

The court found the defendants guilty ruling that the recording company that produces music disks enjoys copyrights independently of the singers and composers. In this instance, the recording company transferred its rights to the plaintiff. The defendants sold copies of these compact disks from a company that was not authorized to distribute them, and so the disks are infringing copies. In the circumstances, the defendants knew or should have known that the disks infringed copyright, or at least should have made inquiries. Consequently an injunction was awarded against the defendants that requires them to destroy and forbids them from selling these compact disks. Each of the thirteen defendants has been fined 10,000 Shekels and has to pay 7500 Shekels in legal fees.

Civil Action 33968-05-11 Amad Arabiyah Music Management and Distribution LTD vs. Ahmed son of Mustafa Anbatawi et al., 13 Judge Atrash, 6 May 2015.             

COMMENT
I can see the sums awarded being appealed but the fact that there is infringement is clear. Although this particular proceeding relates to Egyptian music sold in Arab shops, I think that similar offenses occur in the Jewish sector, including Hassidic music traded in ultra-Orthodox areas. I am publishing this ruling in the hope that it will encourage others to enforce their rights and that those who do not see this as a kind of stealing because they are not sophisticated enough to understand the concept of rights in the abstract, should think again.


Israel Court Issues Injunction against ISPs and Recognizes Contributory Copyright Infringement

June 1, 2015

ISP

NMV Entertainments LTD (formerly NMC Music LTD) et al. records Israel music and represents some of the larger foreign music canneries. They have sued Bloomberg Inc. and various Internet Service Providers (ISPs) including Bezeq International, Partner, 013 Netvision, 012 Smile Telecom, Hot-Net Internet LTD and Aharon Perfori (then the owner of Unidown, which was subsequently transferred to Bloomberg).

Unidown is a limited company incorporated in the Seychelles. The issue in question is access to the Unidown and Downsong websites as found at http://www.unidown.co.il and http://www.downsong.net which serve as a supermarket of music that enable the public to download songs without any royalties being paid to the rights holders.

The plaintiffs applied for the websites to be closed down, 150,000 Shekels in statutory compensation without proof of damages (the amount limited to minimize the court fees), and legal fees to be carried by the defendant, and most significantly, that the various internet service providers (ISPs) block access to the websites.

The plaintiffs alleged that the primary infringing permitting website was a straw company and that closing it down would not stop the service being provided. For reasons of utility, the ISPs were a legitimate target. In addition to legally constructing cases of indirect infringement, the plaintiffs accused them of Unjust Enrichment.

Bloomberg Inc argued that the website was merely a search engine that operated worldwide in seven languages and that offered four features: (i) searching and direct listening to musical content from YOUTUBE, (ii) Finding relevant information from Wikipedia, (iii) Creating a playlist and (iv) searching for musical content and allowing consumers to locate and download such content from third party websites. Since three of the four features were not under challenge, they felt that the attack on their website was excessive.

Judge Gidon Ginat of the Tel Aviv District Court acknowledged that the infringer who accesses copyright infringing material via a website and downloads it to his computer is the actual infringer, but considered that the website owners are responsible for contributory infringement in that they enable end users creating copies and reproducing copyright material.

In this instance, the copyright owners have pursued the internet service provides arguing that where infringement is being conducted on two separate websites, the Internet Service Provider is responsible for encouraging or at least aiding abetting copyright infringement.

The Court ruled that website UNIDOWN is nothing more than a platform for downloading copyright infringing copies that are discovered by search engines. Unidown converts YOUTUBE playable content into media that can be downloaded and saved as MP3 format files. Whilst it is certainly the case that the downloaders themselves are the primary infringers, the website owners that allow the links are contributory infringers in that they facilitate the downloads.

The Court concentrated on Unidown, also available as .com and with other parallel sites, after the plaintiffs abandoned Downsong after failing to show a link between them and Unidown. Additionally, the court was willing to act against the ISPs where the identity of the site owner was concealed, but with Downsong this wasn’t the case. Consequently Judge Ginat did not rule regarding blocking access to Downsong but did note that this ruling did not affect the plaintiff’s rights to take legal steps against that company.

As to Unidown, Judge Ginat ruled that the site should be taken down and that Bloomberg should pay 100,000 Shekels in statutory compensation.

Judge Ginat relied on UK precedents, including Judge Arnold’s rulings in Paramount Home Entertainment International Ltd & Others v British Sky Broadcasting Ltd & Others [2013] EWHC 3479 (Ch); Twentieth Century Fox and others v British Telecommunications plc [2011] EWHC 1981 (Ch);Dramatico Entertainment Ltd v British Sky Broadcasting Ltd [2012] EWHC 268 (Ch); EMI Records Ltd v British Sky Broadcasting Ltd [2013] EWHC 379 (Ch); Football Association Premier League Ltd v British Sky Broadcasting Ltd [2013] EWHC 2058 (Ch) and Justice Birss’ ruling in Twentieth Century Fox Film Corporation v. Sky UK Ltd [2015] EWHC 1082 (Ch).

Judge Ginat noted that in an Appeal to the Israel Supreme Court, (Appeal 447/07 Mor vs. Barak ITTT (1995) and Bezeq Benleumi P.D. 63 (3) 664 (2010)) the Supreme Court refused to fulfill the lacuna in the Law and to grant an injunction but called on the Knesset to legislate. However, since that case related to the rights of anonymity, it was different and wasn’t binding case-law, and since five years had passed without the Knesset addressing the issue, Ginat did not see fit to wait for the legislative to do their job. In addition, Bloomberg should bear legal costs of 50.000 Shekels, and, in an interesting wrinkle, it seems that as Partner argued that it was unjust to award legal costs against the defendants, Judge Ginat ruled that they alone should bear the legal costs of 34,000 Shekels, and the other defendants were not required to bear legal costs. However, should Partner choose to present coherent legal arguments, they would not be penalized for so doing and might even prevail.

Civil Ruling 33227-11-13 NMC United Entertainment LTD et al. vs. Bloomberg et al. Tel Aviv District Court by Judge Ginat, 12 May 2015

 

COMMENT

The responsibility or otherwise of ISPs to police the Internet is a hot issue. However, it seems reasonable to issue injunctions against them on a case specific basis.

Personally, I am in favor of a shorter and more liberal copyright regime, but think that Israel does have an obligation to uphold international standards. I am not sure, however, that Judge Ginat is correct that there is a lacuna for the Israeli legislative to address and their failure to do so authorizes him to judicially create contributory copyright infringement or aiding and abetting copyright infringement. The Israeli legislature passed a brand new copyright law in 2008. Even back then, the issue of ISPs was established and there was US pressure on Israel. See here for example. Israel was not and is not a signatory to the treaties that require forcing ISPs to police the web.  It seems that the Knesset intentionally decided not to include this lacuna in their legislation. Since CBS vs, Amstrad, providing the technology for infringing (back then, it was a tape to tape double cassette deck) has not been considered culpable in the UK.

Is this ruling a case of judicial legislation? It seems to be.  I am against judicial activism preferring that judges leave legislation to the democratically elected parliament. I note that even in the US, recent decisions have overturned the judicial doctrine of incitement to infringe or contributory infringement of patents.


Sony Strikes Again

May 31, 2015

need for speed

After recent successes against an Arab computer dealer,Kabushiki Kaisha Sony Computer Entertainment Inc, the manufacturers of Sony Play Stations are continuing to fight copyright infringement in the form of retailers of computer equipment selling rip off DVDs. Using the services of Gershuni Slymovezh, the partnership that includes former Deputy Patent Commissioner Noah Slymovezh, Sony has sued Einat Anu Rokahn (S.A.R. Electronics).

Sony sent a private investigator to S.A.R. Electronics, who bought four games for Playstation 2 selected from a wall display of disks. The four games cost a total of 50 Shekels, and the investigator was issued with tax invoice number 0898 which listed four Sony 2 games burned onto disks.

For those interested, the disks in question were:

  • Need for Speed Most Wanted
  • World Super Police
  • Stuntman
  • Sagan Om De TVA Tomen

(I can make a wild guess what the first four games are about, and suspect that the name of the fourth game is corrupted. This probably indicates that I am not a gamer).

In addition to accusing the store of contributory copyright infringement (with maximum statutory damages without proof) of 100,000 Shekels, Sony accused the store of infringing their trademarks, and Unjust Enrichment. Despite claiming years of infringement with tens if not hundreds of sales of fake disks, Sony capped their claim at 150,000 Shekels.

The store owner claimed that there was one shelf with maybe 15-20 disks and further claimed he was innocent of all knowledge that the disks weren’t genuine.

The Haifa District Court ruled that computer programs are protected by copyright and that Sony owns the copyright. Although knowledge of the copyright is required, the burden of proof need only establish a legal construct of knowledge and not actual knowledge. The argument that the owner of a commercial retailer does not know what he is selling is unreasonable. The combination of the defendant being a seller of computers and electronics that sells disks at a greatly reduced price and the source of the disks being unclear is indicative that they did not originate from a licensed dealer; the fact that the disks were programmable disks written with the program rather than punched disks, when it was clear that the vendor had seen the disks prior to their sale, leads to the inescapable conclusion that the defendant either knew or at least should have known that the disks were not originals. Consequently, the vendor is guilty of indirect copyright infringement of the copyrights in the Sony Playstation software.

After taking into account the various legal and subjective considerations, Judge Orit Weinstein of the Haifa District Court ruled that the defendant knew or at least should have known that the DVDs with Playstation games thereon were not originals and that their sale was copyright infringement. Consequently, the defendants have to compensate Sony 16,000 Shekels in statutory damages, plus 1000 Shekels in legal expenses and 4000 Shekels in lawyers’ fees.  Furthermore, an injunction was issued against Einat Anu Rokahn (S.A.R. Electronics) to refrain from selling fraudulent CDs.

Civil Case Number 14-11-23739-28 Kabushiki Kaisha Sony Computer Entertainment Inc vs. Enat Abu Rokan, S.A.R. Electronics) Haifa District Court, Orit Weinstein, 26 April 2015


Software Rewrites

May 11, 2015

medical software

ICM is a software program designed for doctors, clinics and hospitals. A Mr Yehuda Ungar had the requisite skill set and experience to develop the program and signed a founders agreement with Yaakov Cashdi and others, the result of which was ICM Links Technologies and Information LTD, a company dedicated to creation of the ICM software for managing a medical database.

Cashdi, the other founders and ICM LTD claim that Yehuda Ungar copied and marketed the program to Bircon LTD, infringing their rights and becoming enriched at their expense.

The plaintiffs have sued for a declarative judgment that Ungar has infringed the founders agreement; an accounting regarding Bircon LTD’s use of the program and 750,000 Shekels compensation.

Statement of Case

The plaintiffs, Yaakov, Eli and Milik are shareholders of Ordan Computers and Data Systems which is a software developer that specializes in administrative software for clinics and medical chains.

Yehuda Ungar developed his ICM system that is complimentary to Ordan’s program and Ungar approached Yaakov, Eli and Milik to create a business partnership for the continued development, marketing and sales of ICM in Israel and abroad. Yaakov, Eli and Milik agreed and ICM Links Technologies and Information LTD was established.

Under the agreement, Ungar was to transfer all rights, source code and documentation to the company and to make his experience and medical file management available to the company.

Yaakov, Eli and Milik were to dedicate their resources, knowledge and experience to the program and eventually to market it.
The contract also included a non-complete clause for a minimum of three years and at least six months longer than any of the founders were serving as director, employee or shareholder in the company. The shares were divvied up and all share holders were to serve as directors for at least 24 months.

In 2003, Yehuda Unger met with a Mr Tenne, the manager of a chain of clinics who agreed that the chain could serve as a beta site for the software. The plaintiffs thought that the beta testing was going well, but in March 2004, Unger informed them that Mr Tenne had given notice to stop the trials. The plaintiffs failed to raise investment capital and further development stopped, freezing the company.

Yehuda Unger offered to resign and find alternative employment until a further opportunity would present itself. As a severage package Unger requested the right to compete, and to use ICM’s program whilst remaining a director and shareholder. Yaakov, Eli and Milik refused these conditions and contact between the parties was lost. In July 2008, Yaakov, Eli and Milik discovered that despite being an employee and shareholder, Unger had continued to develop the software together with Mr Tenne through Mr Tenne’s company Bircon LTD, which had marketed the product, earning money for both Unger and Tenne.

Yaakov, Eli and Milik considered Unger’s behavior as breach of contract, unjust enrichment and fraud. They further considered Bircon LTD as guilty of unjust enrichment and copyright infringement and sued for:

  • A declaratory judgment that the program was the property of ICM that Yehuda Unger was in breach of contract and breach of trust as a shareholder and director
  • Copies of accounts regarding the software
  • An injunction against further use
  • 100,000 Shekels in statutory damages and
  • 750,000 Shekels in lost earnings resulting from the breach of contract.

Statement for the Defense
Yehuda Unger is a systems analyst with 30 years of experience in managing software projects. Via his wholly owned company Irit Model, he has been working since 1995 at developing the ICM medical record database platform.

Unger alleges that Yaakov, Eli and Milik approached him in 2002 and suggested that Ordan would market the ICM platform either as stand-alone software or together with their ‘Clinica’ program.

Following this approach, a marketing and joint venture agreement was signed in July 2002. Six months later, Yaakov approached Yuhuda Unger and offered that Yaakov, Eli and Milik would purchase his shares via Ordan.

Under the agreement, via Ordan, Yaakov, Eli and Milik would transfer 40,000 Shekels a month. However, they did not meet this, and in September 2003, they informed Unger that they did not have the resources to fund ICM.

According to Unger, at Bircon, he programmed from scratch using public domain code and his personal knowledge, without using ICM, its source code or other resources. Unger even filed a counter-claim but subsequently retracted it.

The subsequent case relied on testimony from the parties, software engineers of both Ordan and Bircon and Dr Matthew Golani as an expert witness to the court.

Ruling
Ordan marketed Clinica and Irit marketed an early version of ICM to the Eynayim chain of clinics that was under the management of a Dr Levinger. The sides realized that they each had complementary software products that were half a solution and they discussed working together. After negotiations, in July 2002, the parties signed a marketing agreement under which Ordan would market ICM. About six months later, at the beginning of 2003, the sides discussed Ordan purchasing ICM and a framework agreement was signed. Following this, Unger continued working on ICM, but as an employee of Ordan and the code was transferred to Ordan which allocated a programmer to the project and Milik undertook the marketing.

In parallel with the ongoing development work, the parties negotiated a full contract, under which Unger was to be paid “consultancy fees” and a new company was to be set up. The contract was signed in July 2003.

Judge Shwartz summarized the agreement and interpreted the lacuna. and the various parties’ actions in following signing of the agreement.
He found Unger’s programming for Bircon was unjust enrichment, breach of copyright and brach of contract, but held Tenne and Bircon innocent of wrong doing.In Conclusion, Judge Swartz ruled that:

ICM LTD was the right holder in the software.

  • Unger breached the founder’s agreement
  • Unger is forbidden to make any use of the software without permission from ICM LTD.
  • Unger has to pay ICM LTD 100,000 Shekels statutory damages.
  • Unger has to pay costs of 4500 Shekels and 25,000 Shekels legal fees.

47761-11-11 Cashdi et al. vs. Under et al., ruling by Judge Shwartz, 26 April 2015.

COMMENTS
To a large extent, the issue is factual rather than legal. Judge Shwartz has to rely on the agreement as signed to work out what the parties intended.


Vanunu’s hand

April 15, 2015

learned hand

Zoom 77 A. Sh. LTD has sued Buzz Television LTD for copyright infringement in that Buzz Television broadcast the well known photograph of Israeli traitor Mordechai Vanunu’s hand pressed against the van Uno car window, with the information that he was abducted in Rome by Israel’s Secret Service.

Instead of arguing for informational, non-profitable purposes, de minimis fair use, I am not reproducing the offending image here. Those interested in it can type Vanunu hand into their search engines.

Buzz Television LTD included the image (Vanunu’s Hand, not Learned Hand) in a documentary called the Israel Connection that was produced for Israel’s Educational Television channel. They did not receive permission to include the image and Israel’s Education Television was sued and obliged to pay compensation. See Civil Case 9260-09-12 Zoom 77 A. Sh. LTD vs. Israel Educational Television, 16 January 2014.

(ת”א (מחוזי י-ם) 9260-09-12 זום 77 א.ש (2002) בע”מ נ’ הטלוויזיה החינוכית הישראלית (16.1.2014
Buzz Television LTD used a clip including the image on their website as well, also without permission and without indicating the copyright owner. This second usage is the basis of the current law suit in which Zoom 77 claimed 80,000 NIS compulsory compensation without proof of damage under Section 56 of the Israel Copyright Act 2007.
Buzz Television LTD accepted that the image was owned by Zoom and that displaying it on Buzz’ website was an infringing use. The point of contention was the appropriate compensation in the circumstances.

Section 56b of the Law brings various relevant considerations for setting the compensation including the scope of infringement, its longevity, its seriousness, actual damages, profits to the infringer, the defendant’s activities, the relationship between plaintiff and defendant and inequitable behaviour.

In the present instance, Judge Gideon Gidoni of the Jerusalem Magistrate’s Court noted that the photograph has significant journalistic value and was used to market and promote the defendant’s activities. On the other hand, no evidence was given by the plaintiff regarding the traffic to the website in general and the clip in particular. The Defendant claimed that the clip was a minor component on the website and hardly watched.

No evidence was provided as to how long the image was displayed, but one can assume that the defendant was involved in the case against Israel Educational Television 18 months earlier, and could and should have taken down the clip. Buzz Television is a production company working in the media industry and should be aware of copyright issues and should consequently be highly aware of other’s creative rights. The cost of licensed use of the image was 1600 Shekels.

Judge Gidoni noted the damages paid by Israel Educational Television 18,000 Shekels for first infringement and then 50,000 Shekels for a second infringement last year, and that this was a repeat, albeit indirect infringement of the same product.

He also related to third parties reproducing other news images, including Rachmani v. Israel News 2011 (15000 Shekels for an iconic news image)  the learned, but perhaps not very analytic judge ruled compensation of 25000 Shekels. Civil Appeal Basketball League Management vs. Rachmani (the famous Tal Brody lifting the European trophy “we are on the tablecloth map” where 18000 Shekels was ruled and Kfar Blum Kayaks vs. Manara Cliff 2012, where 75000 Shekels was awarded for moral rights infringed by not mentioning the name of the photographer of the tourist attraction.

In another recent case, Zoom sued Tratkover and was awarded 22000 Shekels.

Judge Gidoni ruled 25000 Shekels compensation, 1000 Shekels costs and 3000 Shekels legal fees.

Sh-14-02-30214-730 Zoom 7 vs.Buzz television re Vanunu’s hnad photo, Judge Gidoni, Jerusalem Magistrates Court, 8 April 2015.

COMMENT

Vanunu set up the picture. The handwriting, font and content of the writing on his hand is his copyright. He was also responsible for positioning his hand on the car window and for his posture. Perhaps he deserves royalties as much as he is deserved his jail sentence?  The journalists that caught the image did very little artistic creation, and arguably whoever crops the image for insertion into a newspaper deserves as much credit and name recognition.

There is certainly a value in fidelity of the law, and levels of compensation for similar infringing acts by different parties should, perhaps, be similar. I would, however, like to feel that judges can analyze and reach sophisticated conclusions and not merely bean count.

I believe that there are iconic images, film clips, sound tracks and the like that have a place in any documentary or dramatization of significant history. I think it ridiculous that a birthday party in a film won’t include children singing Happy Birthday. A film of Martin Luther King couldn’t reproduce his “I have a dream” speech.

In Israel, Holocaust Memorial Day starts this evening. When looking for two rapper versions of Israel’s National ANthem, Hatikveh that were the basis of a copyright infringement proceedings, I discovered a BBC radio clip of the first Friday night Kabbalat Shabbat Service from Bergen Belsen after the camp was liberated. After singing the Hatikveh, one clearly hears the then British Chaplain, the Late Reverend Hardman announcing that the people of Israel live. I sent the clip to his grandson, Danny Verbov who thanked me, and told me that he;s sent the clip about one a month. He kindly sent me a copy of Rev Hardman’s sermons that he’d edited. (I am ashamed to say that I used to go out to play during the sermons).

Now, Danny (and presumably the BBC) could have sued me for downloading and copying or linking to copyright material. At one suing a month Danny would solve the problem of spam email and have a nice sideline. Thankfully he is a mensch and has more sense.

I’d like to see standard reproduction royalties for usage of these literary and artistic creations.

I have illustrated this post with a picture of the US judge who detailed the various considerations regarding compensation for patent infringement in Georgia Pacific vs. American Plywood. The reason for referencing this is not just that he found 15 Factors of relevance, which sounds like an extended family seder, or even that the judge is called Learned Hand. I think his analysis is of relevance when calculated copyright royalties as well as patent royalties.

As always, comments and feedback are welcome.


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