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.


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.

Professor Phillips Elected to the IP Hall of Fame

April 12, 2015

Top cat

This year the IP Hall of Fame welcomes leading US copyright scholar, lawyer and author Paul Goldstein; past president of the INTA and former chief IP counsel of Richemont Frederick Mostert; influential IP blogger and academic Jeremy Phillips; leading Australian IP lawyer Des Ryan; and, prolific inventor Nikola Tesla.

The IP Hal of Fame is an initiative of IAM (Intellectual Property Management), a magazine that I used to have a regular column in covering Israel IP developments, and still occasionally write for. I am delighted that Professor Phillips is being inducted into the hall of fame. I think it is very appropriate.

Tesla is presumably induced into the hall of fame. He died in 1943.

Professor Jeremy Phillips and his flagship IP KAT is an inspiration to fellow bloggers. He is also involved in a dozen other blogs and is very generous with his time and experience. Jeremy has spoken at a number of events I’ve organized in the past, and is always thought provoking and entertaining.

I think this is an appropriate tribute to one of the most prolific IP authors and trademark experts.

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.


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.

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:
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.

Copyrights and Wrongs – One Israel Newspaper Receives Damages for Acredited References to Another

October 21, 2012

As reported by Yona Jeremy Bob of the Jerusalem Post, here,  the Israel Central District Court recently awarded approximately NIS 6 million to Ma’ariv, holding that certain affiliates of The Marker, Haaretz’s business-focused publication, infringed Ma’ariv’s copyright by using some of Ma’ariv’s material on its website during the years 2000-2002.

Ma’ariv sued for 15 Million, so the damages received are less than those sought. Also, not all defendants were found liable. The issue relates to The Marker including a round-up of what other papers were saying, where Maariv as a paper was accredited, but the individual journalists were not identified.

Maariv won the case by noting that The Marker had argued similar infringements themselves, and thus were estopped from challenging the claim that such use is infringing.  Maariv claimed statutory damages of 2o000 NIS per infringement, but the courts ruled 10000 NIS per case.

We note that it is a well established principle that news facts are not copyright.  I am wondering whether brief excerpts accredited to the newspaper cannot be considered fair use?

We wait to see if The Marker appeals this. At the end of the day (pun intended – Maariv means evening) one would expect a fair amount of overlap in content of all Israel business papers.

In the meantime, you will note that I’ve carefully attributed the author of the article about this in the Jerusalem Post…

Changes to Israel Patent Law – 18 Month Publication, Third Party Submissions, Filing on Electronic Media and Accelerated Examination

July 26, 2012

With rather less fanfare than the American Invents Act, the 10th amendment to the Israel Patent Law 1967 has been passed by the Knesset, Israel’s parliament.

The main changes are as follows:

1.  In addition to paper submissions, new applications shall be filed on separate digital media (DVD or CD), as separate PDF files for description, claims and drawings. Gene sequence listings, were relevant, should be filed as a .txt file. A separate disk should be used for each application.

Applications will publish automatically 18 months from priority. PCT National Phase entries will publish 45 days from filing.

2. The backlog of previously filed pending applications will be published in chronological order at the rate of up to 4500 applications a month.

3. Following the publication of the pending applications, third parties will be able to submit prior art. This will be possible up to 2 months from the applicant responding to the Notice Prior to Examination.

4. Third parties will be able to request accelerated examination of pending applications, with submission of a fee, an affidavit and grounds for so doing. This will only come into effect in six months time, however.


Presumably, on-line filing will come in shortly, and applicants will be able to submit the PDFs over the Internet.

We note that the Israel Patent Office is becoming paperless, and recall that Dr Michael Bart, the Head of the Israel PCT Receiving Office once described the paperless patent office as being like a paperless toilet.

Automatic publication of pending applications in Israel is long overdue. The amendment to the Israel Patent Law for this had a first reading back in 2005 or 2006 and we received a draft amendment in January 2012 see here.

Third party submissions are a welcome and cheaper ex partes alternative to the inter partes opposition proceedings. Since the opposition proceedings still remain a viable option, the two month deadline for the third party submission is not unreasonable, and is probably designed to prevent unnecessary delays in prosecution.

Third parties being able to submit requests for accelerated examination is something that I do not fully understand. I suspect that on a patent issuing, the patentee twill be able to request and receive retroactive compensation for damages from the time of publication. To minimize the risk, potential infringers believing a pending application to be invalid will be able to have the examination accelerated and if allowed, will be able to proceed opposition proceedings. We suspect that this change will mostly impact the pharmaceutical industry.

Counting Sheep for Insomnia – Do sheep count???

March 9, 2011

Neurim’s appeal against the refusal of the UK Patent Office to issue a Supplementary Protection Certificate for Circadin has been referred to the European Court of Justice –the CJEU by the Court of Appeal.


Before a new drug is allowed to be used, regulatory approval is required. This typically takes several years and the drug usually reaches the market towards the end of the 20 years of regular patent protection. It will be appreciated that to bring a drug to market costs hundreds of millions of dollars and very few potential drugs obtain regulatory approval and can be prescribed. There is generally believed to be a market failure in the regular patent regime in that the period over which the patent enables the company that developed a drug to sell at monopolistic prices is considered insufficient to enable the drug developer to recoup their investment and make a reasonable profit.

It is therefore argued that under the standard patent term, there is no incentive to develop and bring new drugs to market. Consequently, various countries that have drug development industries, or which are bullied by countries having drug development industries have adopted patent term extensions, or, as they are called in Europe, Supplementary Protection Certificates (SPCs) which effectively extend the patent for up to an additional 5 years beyond the regular patent protection period of 20 years from filing.

There is, however, a catch. To prevent evergreening – extending patents indefinitely thereby preventing generic competition – such Supplementary Protection Certificates (SPCs) may only be obtained following the first regulatory approval.

The case

Neurim, an Israeli ethical drug company has developed a revolutionary and patented treatment for insomnia based on use of the natural hormone melatonin. The drug, called Circadin, took 15 years to obtain regulatory approval from when their first patent application (European Patent Number EP (UK) No. 0 518 468) was filed on 23 April 1992.

On obtaining regulatory marketing approval in June 2007, Neurim requested an SPC under Art. 3(d) of the SPC Regulation EEC 1768/92 (now EC 469/2009), claiming that this was the “first authorization to place the product on the market as a medicinal product”.

However the British Intellectual Property Office (UK IPO) refused the request on the basis that Circadin was not the first marketing authorization for Melatonin, since another party had obtained approval for “Regulin”, a melatonin medicine for sheep, back in 2001, issued by the UK Veterinary Medicines Directorate under Directive 81/851/EEC. The decision was appealed to and upheld by the court of first instance, and was then appealed to the Court of Appeal who has referred the case to the CJEU.

The Court of Appeal was required to interpret Art 3 of the SPC Regulation and determine whether a valid authorisation had been given for “the product” in question.

The UKIPO argued that melatonin was “the product” and therefore authorisation had been given when it was approved for use in sheep. Neurim argued that sheep were irrelevant – an SPC is just that: protection supplementing the protection of the basic patent. Therefore, as each patent can have its own SPC (but only one), the relevant Marketing Approval for that patent is a marketing approval for a product falling within the scope of that patent.

In the Court of first instance, Justice Arnold was of the opinion that the Regulation was clear, and upheld the IPO’s assessment of the relevancy of the sheep. The Court of Appeal was not so convinced:

Lord Justice Jacob:

“We consider that Neurim’s arguments are not only tenable: in our view they are right. Many kinds of valuable pharmaceutical research will not get the encouragement or reward they deserve if they are not. Pharmaceutical research is not confined to looking for new active compounds. New formulations of old active substances are often sought. Most are unpatentable but from time to time a real invention is made and patented.

Moreover there is much endeavour to find new uses for known active ingredients. The European Patent Convention 2000 has indeed made the patenting of inventions in this area clearer. Its effect is that a patent for a known substance or composition for use in a method of treatment is not to be regarded as old (and hence unpatentable) unless use for that method is known. It would be most unfortunate if second medical use patents could not get the benefit of an SPC.”

For more information, see: the SPC Blog here and here

Court of Appeal: Neurim Pharmaceuticals v The Comptroller-General of Patents [2011] EWCA Civ 228.


Neurim’s Circadin is the only ethical drug other than Teva’s Copaxone that has been developed and brought to market by an Israeli company. The patent in question, and the other patents in Neurim’s portfolio was drafted and prosecuted by my late partner, Dr Stanley Davis.

JMB, Factor & Co. weren’t involved in requesting the SPC in the UK, but have been involved in a corresponding request to the Israel Patent Office. Under current Israel Law (pending an amendment), the extension available in Israel is for the shortest extension granted by a country offering patent term extensions. Consequently, the extension in Israel may be invalid due to the UK case.

Strange things happen when prosecuting pharmaceutical patents. In Korea, a scientific paper relating to Melatonin in cod fish was cited against the corresponding application as rendering treatment by melatonin obvious. One would imagine that fish and humans have very different physiologies. By comparison, sheep and humans are somewhat similar, but Regulin is not a treatment for insomnia in sheep (I believe they count people to induce sleep).

Apparently Regulin improves the reproductive performance of pure bred and crossbred lowland sheep which are to be mated early in the season before the usual peak of reproductive activity. Regulin is recommended for use in Suffolk and Suffolk cross type flocks to cause lambing to start between early December and mid January and in Mule and halfbred flocks to start lambing between late December and mid February.

We await developments with interest.


Get every new post delivered to your Inbox.

Join 619 other followers