Israeli Photographer Wins Copyright Damages from AlJazeera

February 24, 2014

AljazeeraAl JazeeraDalal

Shmuel Rachmani photographed a bus destroyed on the coastal road in a terrorist attack in April 1978, including photographs of the terrorist, Dalal Mugrabia, and one of a victim. At the time, the photographs were printed in Maariv, then Israel’s evening newspaper, now a weekly.

On 15 March 2010, Israel’s Channel 10 broadcast an item about Dalal Mugrabi during which, the two images were aired together with the Al Jazeera icon, thereby alerting the photographer that Aljazeera had infringed his rights. In the Maariv paper from where the photographs were taken, the name of the photographer was displayed, so Shmuel Rachmani alleged that in addition to copyright infringement, his moral rights were trampled on.

Rachmani sued for a total of 80,000 Shekels, consisting of two counts of willful copyright infringement and two counts of willful moral rights infringement. Under the 2011 Copyright Ordinance, the maximum damages is 10,000 Shekels, but for willful infringement, this may be doubled.

Rachmani also requested an injunction against Aljazeera, but dropped this demand. In separate proceedings Rachmani sued Channel 10 and came to an out of court settlement.

Attempts to mediate a settlement were in vain. During preliminary stages of the trial, 7,000 Shekels in legal fees were awarded to the plaintiff.

THE RULING

Judge Raphael Jacoby of the Jerusalem District Court rejected arguments regarding Jurisdiction under International Law, standing and the like, and considered them damaging to the defendant. He noted that Aljazeera is broadcast on local cable television under license, so the company has local presence.

Jacoby went on to rule that the pictures were creative works that were protected by copyright and dismissed the hot news defense, noting that the images related to a historic event from 36 years ago. He did not consider the usage incidental. He acknowledged that the photographer could not produce the negatives and prove ownership or produce proof that the copyright was not transferred to Maariv, but accepted evidence of the archivist of Maariv that this was the standard work terms between the parties, and the acknowledgment of the photographer in the original newspaper as proof that Rachmani was the copyright owner.

Noting that under the new law, Rachmani could sue for 100,000 Shekels a time, Judge Raphael Jacoby ruled that the damages sought were proportional and ordered that Aljazeera should compensate Rachmani a total of 50,000 NIS for the infringements and should pay a further 15000 Shekels in legal fees.

T.A, 45542-12-11 Rachmani vs. Aljazeera International LTD, Jerusalem District Court, by Raphael Jacoby, 19 February 2014.


Israel Newspaper to Pay Compensation for not correctly attributing photographs to photographer

February 6, 2014

Israel_Post

Israel Post is a Hebrew Language free paper distributed via supermarkets and the like. It is published by Jerusalem Post Publication Media LTD who publish the Jerusalem Post, an established Israel daily newspaper in the English language.

Ariel Yeruzolimsky was a photographer that was employed by the Jerusalem Post over 11 year period up until 2010. The work contracted established that the Jerusalem Post owned the pictures. On 32 occasions, his photographs were printed in the Israel Post. Due to the work contract, there was no case of copyright infringement. However, the pictures were accredited to a different photographer and Yeruzolimsky claimed 32 statutory awards of 10,000 Shekels in statutory moral damages, arguing that each and every photograph published was a separate infringement, a further 200,000 shekels for damages to his reputation and 150,000 Shekels for suffering caused, but the fee paid entitled him to a maximum total of 420,000 Shekels.

Judge Michael Tamir of the Tel Aviv-Jaffa Magistrate’s Court accepted that each and every photograph published was a separate infringement but ruled that in the circumstances, and where the same photograph was used more than once, there was no justification to award maximum statutory damages.

The judge noted that the photographer had requested accreditation over and over again, but the Post continued to publish his photographs without proper accreditation. On the other hand, he considered the photographs fairly run of the mill images that were not of major historical significance ,lacking in particular artistic merit and which had not endangered the photographer’s life to obtain. He dismissed the defence of an unintentional mistake made without inequitable beahviour, and also the newspaper’s rights to publish the news, noting that the paper was aware that there was copyright in the photographs, and should have correctly attributed the pictures. The error was an unintentional mistake, but it was avoidable had the Jerusalem Post taken its obligations seriously. However, the judge did not consider that the photographer was actually harmed by the publication of his photos. Nor did he believe that the photos had resulted in a profit to the Post, i.e. had helped sell papers. He noted that the law gave him wide latitude in ruling damages. He awarded 77,500 Shekels in statutory damages, a further 10,000 Shekels for the suffering caused, 3000 Shekels in legal expenses and 12,500 Shekels for legal costs.

T.A. 19977-03-11 Tel Aviv Magistrate’s Court: Ariel Yeruzolimsky vs. Jerusalem Post Publication Media LTD. by Michael Tamir, 20 January 2014.


An Israeli Approach to Author’s Rights

January 30, 2014

price control

On February 6, 2014 the Law for the Protection of Literature and Authors in Israel (Temporary Provision), 5773-2013 will come into effect.

This Act is expected to revolutionize the Israeli book market by introducing new regulatory requirements with respect to publishing, distribution, sales and profit allocation across the book supply chain.

The act is a protectionist measure to protect authors from market forces in a dysfunctional market dominated be a cartel of two main chains of bookshops that control over 80% of the Israel market.

Protecting authors from having their work discounted will, of course, increase costs of books. The Law is interesting in that it is an attempt to address a perceived problem. The period over which the Law will affect book prices is 18 months.

What is refreshing about this law is that it aims to regulate the first 18 months of sales. I think that this sort of time span is relevant. This contracts strongly with Copyright, which, in Israel, is called, more accurately, ‘Creator’s Rights’. Copyright lasts life of author + 50, 70 or 95 years. This is an area where reform is needed since if there is still an interest in a work 10 or 20 years later, the author will invariably have been financially compensated.

Main Provisions of the new act

Under the Authors Act, book prices will be ‘protected’ for 18 months from the date of first publication. During the Protection Period publishers must set a retail price for each book, which must be marked on the book. The retail price for printed books may be different from that of e-books. The publisher may not change the retail price during the Protection Period.

During the Protection Period, bookstores may not sell books at a different price from the retail price set by the publishers. Not only regular discounts are illegal, but also special offers of the type common by Israel bookstores, such as “buy one get one free” and promotions such as “four for 100 Shekels” are not allowed.

The ‘no discounts’ and ‘no bundling’ has some exceptions:

  • A discount of up to 20% of the retail price may be granted during the annual Hebrew Book Week. A discount of no more than 10% of the retail price may be granted by an online bookstore, and a discount of no more than 20% of the retail price is allowed for a single entity not allowed to return the books.
  • During the Protection Period a publisher must pay an author no less than 8% of the retail price for each of the 6,000 first copies sold, and 10% of the retail price for each copy sold over 6,000 copies. However, for his/her first book, an author will only be entitled to minimum payments equal to 80% of these percentages. During the seven years following the Protection Period, a publisher will pay an author no less than 16% of the actual payment received by the publisher for the books sold.
  • Once a year, publishers and bookstores will enter into a written agreement setting the discount at which the books will be sold by the publisher to the stores during the relevant year. Bookstores are prohibited from requesting, and publishers are prohibited from granting, any further discounts beyond the margins set in the annual agreement.

The Authors Act will be in force for a trial period of three years at the end of which its impact will be assessed and the Act will be re-examined.

The Authors Act contains other provisions, such as a prohibition on remunerating salespersons for recommending a specific book or a specific author; allocation of shelf space and display space between books published by different publishers, oversight, enforcement and sanctions.

COMMENTS

The goals of the Authors Act, as stated in Section 1 of the Act are:

“to ensure Israeli authors proper pay for their creations, to promote literature in Israel, to preserve cultural diversity in publication and distribution of books… to provide readers an opportunity to choose among a wide range of books according to their wishes and tastes and enable competition between publishers and bookstores with respect to quantity, variety and the quality of books offered to the consumer.”

In the notes accompanying the proposal we learn that

“Books and literature are regarded as products of a definitive cultural value that many countries in the western world recognize the need to preserve. These countries rejected the approach pursuant to which a book is a commodity that should be subject to free market conditions. In the State of Israel there exists a unique situation in which the conduct of the book market is dictated by a cartel composed of two chains of bookstores that controls 80% of the market. One of these chains is controlled by a book publishing company. This situation causes serious harm to the principle of free competition… a serious failure in the book market was caused…”

The main aim of this legislation is to help authors, making it possible for them to profit from their creative output. It has been argued that without this additional protection, there will not be sufficient incentive for them to write.

I dispute this. I don’t think that the size of the market has any effect on quality literature. I don’t think that a law of this nature is required to make authoring books sustainable. I note that Iceland has a population of 300,000 of which 10% are authors. The profitability of writing has little effect on the amount of books written and less effect still on the quality of the literature and its cultural contribution.

If the problem is that two chains dominate the market, then perhaps the chains should be split up? If a publisher controls one chain, then it seems difficult to follow the argument that the chains are in a too strong negotiating position with respect to publishers.

Nowadays anyone can self-publish, and with two chains controlling the market, presumably the authors and publishing houses can choose to work with one chain only and can create contracts regarding discounting, so it is difficult to see how this law provides leverage hitherto unavailable.

Any protectionist measures that help authors will invitably be at the expense of the consumers, i.e. the reading public.

It is, of course true that the people who bundle books in the “buy one get one free” or “4 for 100” promotions are not literature experts and their decisions on such promotions derive mostly from business considerations. It is, however, not true that such promotions force high-quality literary works out of the public eye.

People may be encouraged to buy certain books by price, but quality literature will never sell at the rate of trashy romances.

It has been argued that if the large chain bookstores are not allowed to give discounts and new books will be sold for a fixed price, independent bookstores will have a better chance of competing with large bookstores. This argument can be extended to other areas. Perhaps fixed prices across industries is a good thing. Adam Smith and Milton Freedman would disagree, but perhaps Carl Marx would approve.

It is expected that book prices will increase and, as a result, book sales will decrease. This may adversely affect the variety of books available and it may become more difficult for new authors to get published.


Claims for Statutory Copyright for Screening Euro-League Matches Thrown Out by Israel Court

January 10, 2014

Euroleague

Charlton LTD has the franchise to screen Euro League football matches in Israel, and does so via cable television networks HOT and YES.

Charlton sued Sachar Abu Saah for screening the matches without permission, claiming statutory  copyright damages of NIS 100,000.

Judge Hadassa Asif of the Hadera Magistrate’s Court threw the case out since Charlton only attached some pages of their contract, and not all of it, and the defendant successfully argued that by not submitting the contract in its entirety the plaintiff had failed to establish that they owned the copyright allegedly infringed.

ת”א 18812-01-13 צ’רלטון בע”מ נ’ אבו סאח

T.A. 18812-01-13 Charlton LTD vs Abu Saah, Judge Hadassa Asif of the Hadera Magistrate’s Court, 22 December 2013


Dr Ilan Sadeh’s Appeal to Supreme Court Rejected

December 29, 2013

boundary condition

Dr Ilan Sadeh is a mathematician, computer scientist and electrical engineer who claims that back in 1992 he developed some boundary condition theory concerning search engines and databases, thereby solving a problem which was not addressed for over 40 years. He was put out that his name wasn’t mentioned and his contribution wasn’t acknowledged in a review paper written by a Stanford academic – Professor Amir Dumbo, together with a student, and published in an IEEE journal edited by Professor Shlomo Shitz-Shamai. Professor Neri Merhav and Professor Ram Zamir also published articles in the IEEE journal, which failed to mentioned Sadeh’s contribution.

Sadeh sued the four academics and the IEEE for NIS 800,000 for copyright infringement, moral right infringement, malpractice by failure to exhibit due care and unjust enrichment.

The defendants requested for the case to be thrown out.

In the ruling, the court of first instance ruled that failure to reference or acknowledge an earlier researcher is not actionable under copyright law. Since there is no copyright in an idea, there is no moral right either. Charges of Unjust Enrichment and failure to take due care were also dismissed.  The court further ruled that the first three defendants hadn’t done anything actionable.  As for the US academic and the publisher, the court ruled that the charges were not properly served to the Stamford academic or to the publishers (IEEE – Institute of Electrical and Electronic Engineers). Since Professor Amir Dumbo emigrated to the United States in 1989 and was domiciled there, the Court of First Instance accepted that Israeli courts were not the correct forum. Furthermore, the court ruled that since Sadeh claimed that some 9 academic publications has wronged him in a similar way, the addition of two Israeli defendants was simply to try to create territorial jurisdiction in Israel for something where the US was clearly the proper jurisdiction to hear the case. The court also accepted Professor Dumbo’s contention that the case had been heard by a committee of academics appointed by the IEEE and again on appeal.

158219-09 Dr Ilan Sadeh vs. Professor Shlomo Shitz-Shamai, Professor Neri Merhav, Professor Ram Zamir, Profesor Amir Dumbo and the IEEE., Tel Aviv Magistrate’s Court 7 July 2010

On 12 November 2013, the Tel Aviv District Court rejected the appeal, upholding the magistrate’s court ruling. It awarded costs of NIS 11,800 to the Israeli academics (defendants 1-3 together, and to the US academic and the journal independently.

Civil Action 11416-09-10 Dr Ilan Sadeh vs. Professor Shlomo Shitz-Shamai, Professor Neri Merhav, Professor Ram Zamir, Profesor Amir Dumbo and the IEEE, Tel Aviv District Court 

Dr Sadeh then appealed to the Supreme Court. Judge Amnon Rubinstein refused to reopen the case, and was dismissive of arguments brought by Dr Sadeh. From his comments, it would appear that Dr Sadeh did not address the issues raised and his legal pleadings were lacking in format and style.

COMMENTS

It appears that Dr Sadeh has sued Ben Gurion University, Tel Hai academic college and the State of Israel in the past.  Since he has so much hands on experience of litigation, I feel it is perhaps inappropriate of me to criticize. Nevertheless, I would respectfully point out that whilst one does not have to retain the services of an attorney to sue in Israel, it is generally strongly advised for anyone planning on litigation, particularly appealing to the Supreme Court, to use an attorney. There are approximately 55,000 of them in Israel.

The District Court cited the Petach Tikveh Doggy DNA case and Angel vs. Berman. Also cited were the Adidas case. I found the legalese unnecessary and tiring. The cited cases were not really relevant and, in my opinion, are best forgotten.

We note that there is a distinction between copyright and Jewish Law in this matter. In Jewish Law, there is an obligation to credit sources, but copying of ideas and using them is not considered wrong or inappropriate. They are in the public domain automatically, but the authors deserve credit. In Copyright Law, crediting sources is not a legal requirement, but quoting a significant amount is an actionable.

 


Advertising Slogans and Other Elements of Advertising Campaign Covered by Copyright

December 29, 2013

cemetary

Alei Shalechet, which literally means, ‘Autumn Leaves’, provides burial services. Actually, services is perhaps the wrong word, because their specialty is burials without a service, i.e. secular funerals.

Lifetime events in Israel are managed by the clergy. Most Israelis, even those who are ambivalent towards religion, want a traditional funeral. However, there is a minority who want a civil burial. Then again, not everyone who passes on is eligible for a Jewish, Christian or Muslim burial. Nevertheless, this is a dead-end business that has little appeal to me.

Presumably to drum up business, since few clients want burying more than once, Alei Shalechet ordered an advertising campaign from an advertising agency called  Kav HaOfek Maarechot Shivuck V’tadmit LTD. (Horizon Marketing and Image LTD). This included a Power Point presentation and a slogan. Alei Shalechet eventually used a different publicity firm, but used the slogan provided by Kav HaOfek.

The Kav HaOfek firm sued for Copyright infringement and Unjust Enrichment, and eventually were awarded NIS 75,000 in damages. Notably, the CEO of Alei Shalechet, Alon Netiv, was found personally guilty.

Civil Case 7357-09-10 Kav HaOfek Maarechot Shivuck V’tadmit LTD. vs. Alei Shalechet and others, Petach Tikveh Magistrates Court

COMMENTS

The Jewish content at a funeral is fairly minimal and I’ve never seen strong opposition to playing the deceased favorite music. For those wanting cremation, it may be a little more difficult. There are a couple of griffon vulture colonies in Israel, and food is put out to feed the birds. I suppose this offers the opportunity for Nepalese style sky burials. Maybe those not wanting a traditional funeral could donate themselves or their nearest and dearest to medical schools? Many rabbis are against this practice, but it does seem sensible for wannabee surgeons to cut their  teeth hone their skills on the already deceased.


We All Make Mistakes, Dr Cohen…

November 19, 2013

In earlier blog posts, I reported on two rulings by the Deputy Commissioner, Ms Jacqueline Bracha concerning a late submission of a trademark opposition.  In the first blog post I reported the Original Decision wherein she refused to grant a retroactive extension on the grounds that under her understanding of the Law, she doesn’t have legal competence to do so (ultra vires), and, in the second blog post, I reported on a Second Decision  concerning a Request for Reconsideration which she also dismissed out of hand.

I was somewhat surprised to receive a rather heavy handed and threatening email from Dr Shlomo Cohen  (mis-addressed as Mr, instead of Dr, but common courtesy doesn’t seem to be Dr Cohen’s strong point).

Dr Cohen’s email is reported, verbatim, as follows:

Without Prejudice
For Immediate Action
November 11, 2013
Re: A Further Tortuous Publication
Mr. Factor,
In your recent “IP Factor” publication you have once again provided misleading wrongful information, again with a clear intent to harm us.
I refer specifically to the text in your recent publication “but apparently due to a human error by their representatives, Dr. Shlomo Cohen & Partners, Law Offices, the opposition was submitted on 2 October 2013, missing the three month deadline of 30 September 2013 by a couple of days”. This language is wrong, misleading and intentionally harmful.
As you well know this is not the first time you have acted maliciously in an attempt to twist facts and injure this firm.
This time we will enforce our rights in full!
We demand that you:
a. Immediately (by Tuesday November 12, 2013 at 10:00am) remove this language from your publication.
b. Within three days (by Thursday November 14, 2013 at 2:00pm) publish an apology and retraction for this wrongful language with a text to be approved by us no later than Wednesday November 13 at noon.
c. Pay us statutory damages of NIS 100,000, by Sunday November 17, 2013
d. We will then follow up on your previous injurious malicious publications and demand full compensation for them as well, as we have warned you in the past
If you do not comply with these demands, at the times stated, we will take all necessary legal action to enforce our rights
No further warning will be sent.
Shlomo Cohen
Dr. Shlomo Cohen & Co.
Century Tower
124 Ibn Gvirol
Tel-Aviv 6203854, Israel
Phone: (972-3) 527 1919
Fax: (972-3) 527 2666
E mail: cohens@shlomocohen.co.il
Web: http://www.shlomocohen.co.il
IMPORTANT: The contents of this email and attachments are confidential and may be subject to legal privilege and copyright. Copying or communicating any part of it to others is prohibited and may be unlawful. If you are not the intended recipient, please delete it immediately and notify us by telephone. Thank you.

I was somewhat surprised to receive this notification, since Ms Bracha had clearly reported the grounds for the request for the extension in her decision. accusations of publishing misleading wrongful information should not be taken lightly.  I wondered if I had misunderstood the ruling.  I rang the Israel Patent & Trademarks Office to try to obtain clarification. After all, in a previous report concerning a missed deadline, due to poor phrasing, I’d erroneously attributed an action of the client’s representative (meaning CEO) to their legal representative. Mistakes do happen. Unfortunately, but not surprisingly, Ms Bracha’s secretary referred me to the legal aids who informed me that they don’t clarify decisions. Very helpfully however, they forwarded me the correspondence in the file which is all public domain. This is a link to the Original Submission by Dr Shlomo Cohen, Law Offices. Here is a Notarized Translation.

I was bemused. I really could not see what Dr Cohen was objecting to. I decided to ask him. Here is my email to him:

Dear Dr Cohen,

I apologize for not responding to you earlier.  I wished to first review the decision and also the appeal wherein you tried various creative interpretations of the Law which were dismissed out of hand by the deputy commissioner. I don’t see how my report may fairly be considered wrong, misleading and intentionally harmful. In case, the Deputy Commissioner had made a mistake or I had misinterpreted her ruling I have now obtained and reviewed the file. I am at a total loss to understand what you are objecting to. Please clarify and I will consider correcting. If after clarification, it appears that an apology is called for, I have no problem apologizing. I did, indeed, make a mistake regarding an action wrongfully attributed to a different IP firm due to poor wording of the decision, and I immediately published a retraction and apologized. In this case, however, I don’t see that there is anything to apologize about. I report decisions of the Israel Patent Office and of the course. I try to do it fairly and objectively. If you have a genuine grievance, you are invited to come over to my office and we’ll talk about it over lunch.
If you prefer, simply answer the following questions:

1. Did someone in your office miss the three month deadline for filing a trademark opposition?

2. Was this due to human error?

3. Was the human error that of someone in your office?

4. Was my decision an unfair summary of the patent office ruling as published?

5. Did the original decision by Ms Bracha, or the second one following the creative if somewhat strange reconsideration request report that someone in your office had made a mistake?

6. Was this a mistake by the Deputy Commissioner Ms Bracha?

7. If my report was wrong and misleading, how do you understand the third paragraph of the letter from your firm and line 5 of the appended affidavit of Adv. Liron Cohen of Dr Shlomo Cohen – Law Offices?8. If my report was wrong and misleading, presumably the affidavit of Adv. Liron Cohen of Dr Shlomo Cohen – Law Offices was inaccurate or misleading. In this case, why did Adv. Robert Doriano of your firm sign it?

Wishing you a Shabbat Shalom,
Dr Michael Factor

The response was somewhat abrupt, but hardly enlightening as to the grounds of his complaint:

Mr Factor,
I have no intention of engaging in your haggling.
Remove your falsehoods by noon Friday or face the consequences.

I find Dr Cohen’s attitude distressing. I try to fairly and objectively report on all decisions of the patent office and the courts. Where the identity of the legal representatives is pertinent, I think it is fair to report this. In this case, I believe it is fair and relevant.

Readers will note that Dr Cohen’s letter is titled “A further tortuous publication”. It refers to ‘once again’. For interested readers, in an earlier post, I referred to the Omrix case where Dr Cohen & Partners Law Offices represented the State of Israel against a company benefiting from a technology that the State of Israel considers to be based on service inventions.

I take exception to Dr Shlomo Cohen stating that his is not the first time I have acted maliciously in an attempt to twist facts and injure his firm. I try to report facts accurately.

Regarding lies, slander and defamation, it is pertinent to note that back in 2005 and 2007, Dr Shlomo Cohen filed suit in the Israel Magistrates Court, against Globes, an Israel business newspaper, making similar allegations. In her ruling, the Honorable Judge Oshri Frust-Frankel noted that “we are dealing with repeating a publication that benefits from complete and total defence, since that published was the content of a court ruling, that issued during legal proceedings…“. In her review of similar decisions, the Judge also noted that the “reporting should reflect that said or written in the proceedings being reported, and should be fair.” The second article, which published prior to the first case being ruled on, fairly reflected the decision of the court and was thus a permitted publication.

Of course, I can’t stop Dr Cohen from suing me if he feels injured. However, I have given him every opportunity to explain what his grievances are.  I suppose it would be churlish to point out that in a decision last week,  NIS 60,000 in legal fees were awarded against Dr Cohen when he lost an appeal for a frivolous lawsuit filed against Bezeq and Netvision that was thrown out by the court of first instance.  See ע”א 3407-09-12, שלמה כהן נ’ נטוויז’ן ואח’ / פס”ד.


Intellectual Property Law in Israel – Book Review

October 31, 2013

RCIP Kukick

Intellectual Property Law in Israel is a 256 page soft back book published by Wolters Kluwer that was originally published as a monograph in the International Encyclopaedia of Laws/Intellectual Property Law.

The book has a general introduction consisting of a general background to Israel, and a historical background. It then has seven chapters, devoted respectively to Copyright and Neighboring Rights, Patents, Trademarks, Industrial Designs, Plant Variety Protection, Chip Protection and Unjust Enrichment. The layout of each chapter is well organized.

Partly reflecting the subject matter and the fact that this is a reference book not designed to be read from cover to cover, but also because the authors are not native English speakers and the grammar constructions used are both incorrect and arduous, the volume is as dry as a hand-baked matzo.  It is, nevertheless, a convenient and easy to use reference book to note the coverage and main points of Intellectual Property law in Israel, and its title is thus appropriate.

The background is a background to Israel and Israeli law. It is not a background to IP in Israel. If it were, as I believe it should have been, it could usefully have included some statistics regarding publishing of books in Israel and the numbers of patents and trademarks filed in Israel, and worldwide by Israeli applicants. There is brief mention elsewhere of the enforceability of Israeli trademarks in the Palestinian semi-autonomous territories, but the background could have dealt with intellectual property in these areas more thoroughly, not least because there is significant counterfeiting going on these areas. The background does note that Israel has peace treaties with Egypt and Jordan. It does not refer to the informal boycott of Israeli companies that Jordan lawyers participate in. A brief discussion of intellectual property in Jewish Law would also have been welcome. Indeed, this has impacted Israel court decisions on occasion.

 The sections on the different types of intellectual property law are comprehensive and well organized. Each chapter presents a portion that is short enough to be digestible. Nevertheless, the book is peppered with statements that are confusing. For example, and following the Israel Patent Law, we are informed that patent applications need titles in both Hebrew and English. There is, however, no statement to the effect that patent applications may be filed with the Israel patent office in English or Hebrew. One assumes that foreign applicants and their local counsel may be interested to know that patent applications may be filed in English and need not be translated into Hebrew. There is also a confusing statement that the fictitious man-of-the-art who knows everything but lacks creativity may actually be a group of fictitious persons. One wonders what this additional fiction adds. In the chapter on Trademark Law, after a general overview and a section on specific legislation, there is a section titled Trademark Jurisprudence. This section explains that Supreme Court decisions are binding precedent on the lower courts. It also explains that District courts are the court of first instance for trademark infringement and have appellate jurisdiction over the decisions of the registrar. Then we are informed that district court decisions have suggestive but not precedential value, which guide the magistrate’s courts. What is not explained however, is how magistrate courts, which don’t hear trademark disputes, are guided. It would be both useful and informative to note that despite the precedential or guiding nature of trademark decisions, since every case is considered on its merits, the caselaw provides arguments to each side, but it is next to impossible to anticipate how a specific case will be ruled.

Regarding Designs, as a quirk of the fact that Israel is still using the relevant section of the Patents and Design Law 1924, only local novelty is required. In 2008, the former registrar Dr Meir Noam interpreted this to include Internet publications whether viewed in Israel or not, to prevent parties from registering designs that are published in databases of foreign patent offices. The book takes the position that this is now the law, without noting that the relevant patent office circular is more akin to legislation by the registrar and is thus ultra vires and might well not stand up if challenged in court. In other cases, the authors note that various interpretations seem clear, despite never having been ruled on by the courts. I would agree with the authors that industrial designs are territorial, but former Jerusalem District Judge and current State Comptroller Shapira issued a worldwide injunction concerning unregistered designs for ceremonial challah cloths, and, given the dirth of design law from the courts, might have warranted a footnote. Actually, without specialist IP courts, there are a number of weird and wonderful rulings from the Israel District Courts that could be discussed to make the book more entertaining.

This volume is a four author publication written by an academic called Afiori and by attorneys at Gilat Bareket, one also being an Afiori, rasing the suspicion that two of the authors are probably related. The other two authors and Gilat and Bareket, the named partners of the litigation arm of the Reinhold Cohn group. The book is published by Wolters Kluwer. The entire volume, including index and selected bibliography is a mere 256 pages.

Noticeable in absentia is any reference in the selected bibliography to a volume with an almost identical title – Intellectual Property Law and Practice in Israel here  that was written by Eran Liss and Dan Adin of a competing firm of litigators that was published last year by Oxford University Press.  The Liss – Adin book is 632 pages with 50 pages of appendices, and is thus thicker and more impressive on the shelf, if a little bulkier and heavy to carry around. Both books contain typos, unnecessary verbosity, wrong long words and poor grammar, but the Kluwer volume is, nevertheless, in better English.

The focus on practice in the Liss – Adin book has lead to their copyright section relating to TV game-show formats which look as though they are a lawsuit waiting to happen. The Gilat, Bareket Anfori volume does not cover this area, possibly because thee are no relevant decisions.

As a reference work for foreign practitioners and as a revision tool for wannabee Israel Patent Attorneys prior to sitting the oral exam, this volume is preferable, since it is not burdened down with as much case-law. For reading on a plane to Israel, the fact that this volume weighs in at 386 g whereas the other book is over a kilogram, makes this more attractive. This book is also cheaper, although the Liss – Adin book works out more economical per page. As a reference to caselaw for academics or for Israel practitioners involved in prosecution or litigation, the Liss – Adin book is better.  Their cover also includes flaps life fly-leaves extending from the front and back boards which can be used as pagemarks.  Very few people need both volumes, which raises questions as to whether this book is necessary, following the recent publication of the other one.

Intellectual Property Law in Israel, by Orit Fischman Afori, David Gilat, Eran Bareket and tamir Afori, Wolters Kluwer, 2013, ISBN 978-90-411-4859-9 List price: £ 84,00 (GBP); $ 141,75 (USD)


Should the Shape of Rubik’s Cube be Protectable as a Trademark?

June 17, 2013

Cube

I received an email from an Israeli Patent Attorney last week with the rather inflammatory heading “is the Rasham [Israel Registrar of Patents and Trademarks MF] an idiot or was he bribed?”

Somewhat intrigued, as the patent attorney in question is one of the most intelligent people I know, I opened the email to see what was bothering him.  The email contained a link to an article in the business newsletter “Calcalist” to the effect that a company called Seven Towns had received trademark protection for the Rubik’s Cube, and an Israel IP law firm was sending out Cease & Desist letters to various toy shops with requests for damages. The article in question is to be found here.

From Wikipedia:

Rubik’s_Cube is a 3-D combination puzzle invented in 1974[1] by Hungarian sculptor andprofessor of architecture Ernő Rubik. Originally called the “Magic Cube”,[2] the puzzle was licensed by Rubik to be sold by Ideal Toy Corp. in 1980[3] via German businessman Tibor Laczi and Seven Towns founder Tom Kremer,[4] and won the German Game of the Yearspecial award for Best Puzzle that year. As of January 2009, 350 million cubes had been sold worldwide[5][6] making it the world’s top-selling puzzle game.[7][8] It is widely considered to be the world’s best-selling toy.[9]

Reading the article, and reading between the lines, it appears that the patent attorney in question (i) believed that the Israel Registrar had granted a three dimensional trademark for Rubik’s Cube, and (ii) considered this ridiculous.

In an earlier article I discussed a recent decision by the patent office to grant a three dimensional trademark for the Crocs  beach clog, and so could see how my colleague was envisioning a product that had not been patented or registered as a design back in  when it was invented, could somehow, after decades of being considered in the public domain, become private property, enabling a trademark registrant to sue third parties. (The Interlego decision makes it clear that 3D Lego bricks are not protectable by copyright, so we can assume that Rubik’s Cube isn’t either).

However, before assuming that the Israel Trademark Office had got it wrong, I checked the database. There are actually two trademark entries owned by Seven Towns, both covering the same mark, but in different classes. The mark in question  IL 228232 is reproduced below.

IL 228232

The mark covers three dimensional puzzles in class 28, but is not a three dimensional mark. It is a 2D visual representation of a cube. Of course, to be drawn on paper it has to be, but there are accepted ways of showing three dimensional designs on a flat piece of paper. One can show top, bottom, left, right, front and back elevations, with a perspective view. That is how design applications are filed. That was not done here. More importantly, there is no indication in the certificate that the trademark is for a three dimensional object.

We note however, that the mark issued under Section 16 on the basis of a foreign registration (European Community Trade Mark No. 162784), which arguably is for a three dimensional cube. That mark is under cancellation proceedings.

If the mark, whether 3 dimensional or flat, is used as an indication of origin, it may be what could be considered as trademark infringement.

According to the Calcalist the lawyers who are going after toy vendors include Adv. Noe Shalev Slyomovics, (pronounced Noach Shmulovits, and usually spelled that way in this blog, but I have copied his preferred Hungarian spelling from his business card).

Noe Shalev Slyomovics is the former Israel Deputy Commissioner of Patents & Trademarks. He returned to private practice after Adv. Assa Kling replaced Dr Meir Noam as Commissioner.

I sent Adv. Noe Slyomovics an email, and it transpires that he was able to convince the trademark office that making cubical shaped “Rubik’s Cubes” is arbitrary, since there are a number of other options that use the same mechanism and achieve the same result. Some examples of alternative “Rubik’s Cubes”, courtesy of Adv. Slyomovics are depicted below:

dsc02227 (1)dsc02349

There are also a number of similar sliding puzzles that are not actually 3×3 cubes, but use different mechanisms.

Adv. Slyomovics considers Rubik’s 3×3 cube choice as arbitrary and equivalent to the others, and successfully argued that like the Toffiffee candy or the Ferrero Roche praline, Rubik’s cube was entitled to trademark protection, and there are legitimate grounds to badger other toy manufacturers.

I disagree. I consider the fact that all the equivalent puzzles are generically referred to as spherical cubes and similar oxymora, is indicative that the cube is the natural shape and the variations are inferior. As with Crocs-  , I believe that the puzzle should be in the public domain as it was not protected.

Apropos, I also have problems reconciling Gronis’ Toffiffee decision with the Apropo-(bugles)  decision.


Israel Supreme Court Overturns Doggy DNA Ruling

May 24, 2013

pooperscooper

Back in February 2011, Judge Stumer of the Petach Tikveh District Court ruled that the implementation of an idea to collect DNA of dogs to enable prosecution of their owners who have fallen foul of the law by their pets fouling pavements (sidewalks) was copyright infringement. My original posting on the decision, together with an analysis of what was wrong with it, may be found here.

Judge Noam Solberg has no issue with the factual finding of the District Court that the idea originated with Zisso, the original plaintiff and defendant on appeal, but on a matter of Law confirms that implementation of an idea is not copyright infringement.  the implementation of the idea, if protectable at all, might be protectable by a patent if considered novel, inventive and useful, but as Zisso didn’t file a patent application, the issue is moot and the idea is now in the public domain. Attempting to claim that there is unjust enrichment or an assumed contract is an illegitimate attempt to widen the charges on appeal. Similarly, attempts to claim infringement of the original PowerPoint presentation by the Petach Tikveh Municipality using a similar presentation is widening the original claim.

Judges Naor and Jubran concurred with Solberg. The Petach Tikveh Municipility was awarded NIS 25000 in legal costs.

The Case: Civil Appeal 2682/11 Petach Tikveh municipality vs. Harry? Hairy? Hurry? Zisso

COMMENT

Readers will be pleased to learn that the Israel Supreme Court has reversed what may be the worst IP related decision that an Israel Court has ever issued.

Neil Wilcoff has recently been blogging about various courts getting patent law wrong. It seems that Judge Stumer isn’t the only Judge to make an embarrassing mistake.  Nevertheless, one wonders if there isn’t a case to be made for specialist IP courts?


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