Israel Supreme Court Reverses Eve – Eva Trademark Decision

October 10, 2011

Back in May 2010, we reported that the then Deputy Commissioner of Patents and Trademarks, Noah Shalev Shlomovits ruled that the Aktsionerno Droujestvo Bulgartabac Holding’s  cigarette brand Eva was not confusingly similar to the Philip Morris brand Eve. See  here  for more details.

Essentially, Shlomovits ruled that the fact that the marks had different graphical elements was less important than the sound of the mark since cigarettes are bought by requesting a brand from a salesperson.  He went on to rule that since the Bulgartabac Holdings cigarette was pronounced Eva (rhyming with Never), it was very different from Eve (rhyming with weave). I was less than confused, as I would typically pronounce Eva as EEva rhyming with Beaver. I did a small survey of IP professionals and others, and am certainly not the only one to pronounce the name differently than Shmulovitz.

Anyway, Philip Morris wasn’t happy either and appealed the decision to the Supreme Court.

Counsel for Philip Morris claimed that the name Eve would be pronounced EEV in the UK, EV in France, and Eva or Yeva in  Russia. Also, cigarettes are sometimes purchased from vending machines so placing all the evidence on the sound of the name exaggerated the audible aspects of the name.

In their defense, Bulgartabac Holdings relied on Shmulovitz’ ruling and also pointed out that the name is not Eva, but rather an ‘E’ followed by a heart followed by an ‘a’  and should not necessary be assumed as being a ‘v’, although they admitted that the cigarettes are sometimes labelled Eva in Hungary. Whilst acknowledging that both cigarettes were aimed at female smokers, Bulgartabac Holdings argued that the price difference to indicate that the Philip Morris cigarette was aimed at connoisseur market, whereas their fag was more aimed at the mass market. Because both cigarettes were somewhat established, even were it argued that there was perhaps a possibility of confusion once upon a time, this was certainly no longer the case.

Somewhat refreshingly, the Israel Supreme Court quoted Maimonides, acquisition, Laws of Sale 18: 1, that passing off is forbidden, and went on to refer (perhaps somewhat irrelevantly to a responsa of Rabbi Moshe Isserles (the Rema) concerning an Edition of the Maimonides Code published by MaHaRam Padua, and also to Talmud Babli, Baba Batra 21:2, all quoted by Rabbi Navon in his article Copyright in Jewish Law, Tsohar 7:35.

Then the decision related to Article 11 of the Trademark Ordinance 1972, to prevent confusingly similar marks from issuing.  After acknowledging that an appeal is not supposed to be a retrial, the judges noted that in this case, it is not witnesses that are being reconsidered but the nature of objects. They went on to point out that analyzing the likelihood of confusion by a pedestrian application of the triple test was insufficient, and that as well as analysis, one should synthesize the evidence and come to a decision based on the total picture. With this perspective, the judges ruled that the marks were indeed confusingly similar and overturned the deputy commissioner’s ruling, preventing the marks from issuing.

The upshot of this is that Aktsionerno Droujestvo Bulgartabac Holding’s Eva brand was not allowed to be registered, and legal costs of NIS 45,000 (more than $12,000) were awarded.

Civil Appeal 3975/10 Philip Morris Products S.A. vs. Akisionerno Droujestvo, Supreme Court (Judges Handel, Hayot and Amit) 2 October 2011.

COMMENT

I am very pleased with this decision, not least becuase the judges ruled in accordance with my comments last year! We hope that more weight will be given to common sense in the ‘any other considerations’ strand of the triple test. We also applaud the reference to Jewish Civil Law in the Supreme Court decision.

Leave a Comment » | Fair Use, infringement, Israel Court Ruling, trademarks, Uncategorized | Permalink
Posted by Dr Michael Factor

Cheap Versions of Bakugan Game Imported From Far East

October 10, 2011

Spinmaster have a popular game called Bakugan that is apparently not just popular with the kids, but also with importers and judges – see here and here.

The authorized distributors and trademark rights holders have been back in court. This time against a Mr Chai Omra who imported some 40,512 sets of Bakugan from China. The sets were impounded by Customs and the rights owner sued for their destruction and NIS 100,000 for copyright infringement. He also claimed trademark infringement, passing off and unjust enrichment.

Mr Omra claimed that these were legitimate sets and was parallel importing, so there was no copyright infringement or at least that he had a defense of not knowing that these were not authorized sets.

The rights owner noted that the ball was a different size, that there were Chinese instruction cards in the box, which are not provided in original sets intended for the Western market, and the bar codes were wrong, thereby proving that the sets did not originate with an authorized manufacturer.

In his ruling, Judge Zerankin dismissed the ignorance defense, noting that Omra had bee in court before for importing toys manufactured in the Far East, and had previously shipped 15,000 Bakuga sets as well.

The Judge ruled to rule NIS 20,000 for trademark infringement, NIS 40,000 for copyright infringement and NIS 40,000 for passing off. As there was no enrichment from this shipment, he rejected the unjust enrichment claim. In addition, he ruled a further NIS 40,000 legal fees.

The Case:  T.A. 43006-08/10 Spinmaster vs. Hai Omra LTD and Israel Customs Authority,  Judge Adi Zerankin, Haifa District Court, 22 September 2011

COMMENT

The applicant requested statutory damages of NIS 100,000 for copyright infringement. Importing copyright material is indeed copyright infringement. He is entitled to statutory damages for passing off or for copyright infringement, but I don’t believe is entitled to additive statutory damages for both. Once the total damage is NIS 100,000, it hardly matters. Still I would have expected damages of NIS 100,000 for copyright infringement and NIS 100,000 for passing off, then capped at NIS 100,000 as one cannot receive more than NIS 100,000 for a single infringing event.

I am also not sure where the statutory damages for trademark infringement come from.

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

Copyright in photographic images reproduced on websites – fair use

October 6, 2011

Roman Kriman is an accomplished photographer with some 5000 images on the Jerusalem Shot website here.

Newsru is a Russian language news portal that is apparently the most popular Russian news website in Israel. The website is to be found here.

Kriman’s site indicates that his images may be used free of charge, but that the photographer must be acknowledged and a link from the picture is required to lead to the Jerusalem shot website.

Kriman sued Newsru for copyright infringement for failing to comply with the licensing conditions. Kriman requested 200,000 Shekels.

I assume the sum sued for covers both statutory damages for copyright infringement and for moral rights infringement. It is not clear if this is for multiple statutory damages under the old law or for a single offence under the new copyright law, but the ruling does relate to some dozen cases and applies the old copyright law despite apparently being filed in 2010 and relating to recent events.

That as may be, in her ruling Judge Chana Yinon of the Jerusalem Magistrate’s Court applied the old copyright law, accepted that there is copyright in original photographic images but was satisfied that the defendant attempted to comply with the licensing terms by crediting images in a page of credits, and that clicking on an image opened a hyperlink to source information. She considered the licensing terms sufficiently unclear that she found this practice a genuine attempt to comply.

Where images were wrongfully attributed to sources from which Newru had obtained them, but not to the photographer, she found Newsru not at fault. In this regard, during cross-examination, Kriman indicated that in his opinion it was wrong to reproduce an image without knowing and attributing the original source, whereas the judge preferred the defendant’s understanding that third parties can reproduce an unattributed image.

Somewhat confusingly, Judge Yinon cited Civil Appeal 2312/02 Druk vs. Danziger and also Tony Greenman’s work, Copyright in the Digital Age, to indicate that it is not enough to not know who the rights owner is, if the defendant has reason to believe that there is copyright in an image.

Deciding that there was no damage, the case was dismissed.

T.A. 10587-01-10 Roman Kriman vs. Newsru LTD. before Judge Chana Yinon, 12 September 2011

COMMENTS

I think Newsru’s behavior appears to be within the ambit of fair use. There is a problem though. Any photographic image of an identifiable person or scene or that shows clothes or cars or other items that clearly date the picture within the past 50 years, or indeed any colour photographic image is copyright protected unless the photographer actively puts it in the public domain. However, in such circumstances it is impossible to identify the rights owner. Internet sites, particularly non-commercial ones should be able to use images for illustrative purposes, acknowledging the rights owner if they know it, and certainly should not remove copyright notices. Where an image is not protected with a watermark or similar, one often cannot tell who owns the copyright and the image is therefore effectively in the public domain. I don’t think it is reasonable to prevent reproduction under such circumstances.

It seems to me that correct policy is to allow non-commercial websites to reproduce such content but to require them to take down the images if requested to do so. giving statutory damages without proof of damage seems unreasonable.

Nevertheless, the judge cites case-law and an Israel authority to the effect that one may have grounds to assume that an image is copyright protected even where the owner is not identified. It seems to me that any colour photo must be copyright protected since the law does not require a copyright notice. But this is not in the public interest. It does not serve the photographer or the wider public.  The boundaries of fair use are not clear.

I’ve discussed my use of images on this blog with world leading IP experts who concur that it is fair use. Is someone with a claim to copyright in an image requests that I remove a photograph or other image, I will do so immediately. Eventually technology may result in images being readily traceable so permission from the rights holder can be requested. We are not there yet. Copyright Law does seem to need an overhaul.

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

Contributory Copyright Infringment Can Be Passive

September 14, 2011

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

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

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

COMMENT

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

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

Hot off the press…

September 14, 2011

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

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

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

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

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

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

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

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

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

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

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

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

Generic Body Warmers

September 4, 2011

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

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

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

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

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

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

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

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

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

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

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

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

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

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

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

COMMENT

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

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

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

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

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

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

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

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

Beanbag baby bath supporter design narrowly construed

August 31, 2011

Michal Ferst, a graduate of the Bezalel School of Art and Design created a baby supporter for aiding bathing a baby.

The device is an oval-shaped beanbag filled with polystyrene beans and covered with a stretch fabric.

A second company, Reem, Import and Marketing LTD., imported a competing product called Softeeze that is manufactured by Jagabon, a British Company.

Ferst sued Reem, claiming that her registered design was being infringed, and that they were passing off and guilty of unjust enrichment.

Noting that there were visual differences between the two designs and that the similarities that there were, could fairly be attributed to the purpose, and the fairly standard size and shapes of bathtubs and babies, Judge Varda Meroz dismissed all charges.

T.A. 41704-112-09 Ferst vs. Roem Import and Marketing LTD. before Judge Varda Meroz, Tel Aviv Central District Court.

COMMENTS

It is fairly rare for design infringement cases to be decided by the Israeli courts. In this instance, the ruling is a correct one. If the product is conceptually inventive, it should be protectable as a patent. The designs are sufficiently dissimilar that there is no registered design infringement or passing off.

I am in two minds concerning these type of devices. They may help support a baby and prevent drowning, but then again, may result in leaving the baby unattended. When our eldest was born we invested in a baby bath and a plastic support thingy for the baby. Never used it.

Reminds me of the grim old music hall song…

The mother turned round for a minute,
to get the soap from the rack…
She only turned round for a minute,
 but o-oh when she turned back..

her baby had gone
 and in anguish she cried
Oh where is my babe?
and the angels replied

Your baby has gone down the plughole
 Gone down the hole for the plug
 she was far too small
to be bathed at all,
 and should have been washed in a jug…

your baby is perfectly happy
he won’t need a bath any more
he’s floating away down the drainpipe
 not lost but gone before

Leave a Comment » | design, infringement, Intellectual Property, IPO, Israel Court Ruling, israel design ruling, Israel IP, Uncategorized | Permalink
Posted by Dr Michael Factor

Can ISPs be Held Guilty of Contributory Copyright Infringement for Linking to Bootleg Movies?

August 22, 2011

Recently, in a case relating to copied textbooks supplied by a student society, the Israel Supreme Court recognized, i.e. legislated by case-law, the doctrine of contributory copyright infringement. In my posting on that decision, See http://blog.ipfactor.co.il/2011/07/04/contributory-copyright-infringement-in-israel/ I predicted that the ruling would have ramifications for Internet service providers, and the predicted ruling has not been long coming.

The Association for Protecting Cinematographic Creations (1993) which represents 20th Century Fox, Disney, Warner, Paramount, Dream Works et al. sued Rotternet Ltd. claiming that forums on Rotter.net provided links to movies that were copyright protected, thereby aiding and abetting their downloading.

Rotternet argued that “everyone does it” and that they removed any link or infringing copy if specifically asked to by the rights owner, but were under no obligation to police their sites.

The complainants argued that the removal on request provision was only effective against innocent acts of infringement but totally ineffective against wholesale intentional actions.

Judge Ofer Grosskopf noted that although there had been some Knesset bills relating to the culpability or otherwise of ISPs, these were never passed by the legislature and thus the issue remains open to judicial ruling, and he has a duty to rule on it. In a well-reasoned argument, he has dismissed the charges and ruled that supporting and displaying lists of links to movies was not in and of itself a culpable act of infringement and that so long as the internet service provider (ISP) had a ‘remove if requested to’ policy, they were not culpable for acts of infringement resulting from such links, so long as the sites were not dedicated to making pirate films available.

Movies are copyright protected for 70 years. Making movies available for downloading without the rights holder’s permission is copyright infringement. The movie must be hosted before it can be linked to. However, since films can be uploaded and stored anywhere, it is the internet service providers (ISPs) which link to the pirate films that provide a more effective target to sue to prevent such linking and thereby to minimize downloading. Despite enabling infringement by facilitating downloading, the linking to pirate films is not infringement per se. and the ISP is not responsible.

The wounded parties can request individual links to be removed and can attack the sites hosting the films. They can also take action against those uploading pirate videos. The service providers are, however, not legally responsible.

The decision relates to the relevant Israeli case-law and the big cases abroad, such as Perfect 10 vs. Google, etc.

Notably, at the beginning of the ruling there seems to be an implication that the act of downloading pirate movies is infringing. Towards the end of the reading it appears that Judge Grosskopf’s position on this issue has changed and downloading without making a copy, i.e. streaming and watching directly is not infringing.

Grosskopf congratulated Rotternet on providing a spirited defense in this matter, which involves other internet service providers and is an important matter of principle and awarded them NIS 50,000 in costs.

T.A. 567-08-09 A. L. I. S. – the Association for Protecting Cinematographic Creations (1993) vs. Rotter.net Ltd. by Judge Ofer Grosskopf, 8 August 2011.

COMMENTS

An interesting defense that is clearly not a legal defence but nevertheless cannot be rejected out of hand, is that “everybody else does it”. There are also some other statements in the ruling that appear correct, if largely irrelevant to the issue. For example, creating a link is not creating a work of literature that is copyright protectable.

This ruling may have international ramifications as the US is demanding that Israel does make ISPs culpable. This, together with Israel’s position on patent term extensions are the main reasons for Israel appearing in the Watch List of the Special 301 Report.

One issue of interest is that Rotternet provides internet forums for the ‘religious’, i.e. halakhically observant community. If linking to movies is not copyright infringement but nevertheless enables the free dissemination of movies without compensating the rights holders and is thus morally reprehensible, shouldn’t the self-described religious strive for higher than minimum standards?   Perhaps rotter is a good name…

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

Mobileye Obtains injunction for AWACS

August 21, 2011

Awacs Safety Systems, General partnership is an Israel company that was set up by Morgan (Capital) Israel Ltd. and L .D. Israel Auto Equipment investments Ltd. that distributes systems for installation in automobiles, to provide warning of nearby vehicles, pedestrians, deviations from traffic lanes and the like.

Awacs Safety Systems has a trademark for Awacs.

Mobileye Technology Ltd. is a developer of automobile mounted systems and Awacs had an exclusive licensing arrangement to distribute systems manufactured by Mobileye in Israel.  Over time, there were a number of disagreements between Mobileye and Awacs Safety Systems and Mobileye gave Awacs Safety Systems notice that they would no longer give them exclusive distribution rights in March 2007, and in January of this year, they terminated the relationship completely.

Just before a trade fair in Israel where Awacs Safety Systems launched a system manufactured by Safe Drive Systems that was to have been sold under the name Awacs Radar 140 RD, Mobileye filed and obtained a temporary injunction against Awacs Safety System selling Safe Drive System‘s equipment under the name Awacs.

The grounds for the injunction were passing off. The judge justified this since the name Awacs was chosen for marketing Mobileye’s system and had only ever been used for marketing Mobileye’s products. In his opinion, sales under the name Awacs could adversely affect Mobileye, but since Awacs Safety Systems had not sold the new products under this name and could still distribute under another name, Awacs Safety Systems would hardly be harmed by the interim ruling. Mobileye were also required to post NIS 100,000 to cover Awacs Safety Systems legal fees and loss of income in the event that they would lose the main case.

COMMENTS

By way of full and candid disclosure:  Although not handling their trademark issues and not involved in this case, JMB, Factor & Co. does handle Mobileye‘s patent portfolio so I am declining to comment substantively on this development.

We note that the court issue here may be at least partly in the contractual relationship between the parties and these were not published in the interim decision.

We note that AWACS is an acronym for Airborne Warning and Control System, and may refer to:

  • E-3 Sentry, the aircraft developed under the USAF’s “Airborne Warning and Control System” program
  • Airborne Early Warning and Control (AEW&C), a more modern term for the general type of aircraft used in this role
We also note that Israel Defence Forces are deploying the phalcon AWACs system, see http://www.ocnus.net/cgi-bin/exec/view.cgi?archive=102&num=26121,
It appears that the choice of name is somewhat misleading, whether deliberate or otherwise, and implies a connection with a vastly more sophisticated system used in national defense systems.
We await developments with interest.
The Case: T. A. 44802-03-11 Mobileye Technology Ltd. vs. L. D. Israel Auto Equipment Investments Ltd. et al., interim judgement given on 28 March 2011.

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

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

August 4, 2011

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

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

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

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

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

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

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

COMMENT

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

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

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