Sotah – Naomi Ragen drinks the bitter waters of plagiarism

January 9, 2012

Naomi Ragen, Israel’s best-selling writer was accused of plagiarism by three separate authors. She was vindicated by the Israel Supreme Court last week regarding her book The Ghost of Hanna Mendes and it’s alleged similarity to The Lion and the Cross. Ragen was, however, found guilty by Judge Yosef Shapira of the Jerusalem District Court concerning the similarity of some dialogue in her novel Sotah, to a book Growing With My Children: A Jewish Mother’s Diary by Sara Shapiro. Plagiarism is not a crime on the statute books. Ragen was found guilty of Copyright Infringement, Unjust Enrichment, Negligence and Theft.

The Case

Shapiro published a non-fiction, largely autobiographical work, called Growing With My Children: A Jewish Mother’s Diary which was published in 1990 by Targum Press. The book was a daily journal from the years 1986 to 1989, focusing on the author’s participation in an ongoing parenting workshop, and the ups and downs she experienced along the way to becoming a more skilled and patient parent.

There is one conversation, between the author and her mentor, Rabbi Simcha, that is closely paralleled by a conversation in Ragen’s  novel Sotah between the central character, Dina, and her husband, Yaakov. Furthermore, Shapiro takes on a secular home-help, Sonia, and Ragen’s protagonist gets exiled from her extreme ultra-orthodox community and sent to America to work as a home-help for a secular woman, Joan.

Ragen has argued that she had indeed read Shapiro’s book, and subconsciously may have used elements as inspiration for her novel. Simply groats for her mill. It is difficult to prove otherwise. The similarities are sufficient to raise questions, but there are differences as well. The dialogue is rewritten. It is not identical.

Ragen’s attorneys pointed out that the conversation attributed to Rabbi Simcha by Shapiro were not her creation and not her copyright. The authoress’ response in the dialogue are less insightful, less memorable and weaken the case of copyright infringement still further.

To find Ragen guilty, Judge Joseph Shapira performed legal gymnastics to have the case admitted at all, since there were strong grounds for dismissing the case altogether under the Statute of Limitations, as seven years had passed since Shapiro became aware of the similarity. He took the position that the ongoing sale of Ragen’s book made copyright infringement an actionable tort on an ongoing basis. Such a position makes some sense if Ragen was selling bootleg copies of Shapiro’s book, but that is not the case here.

Shapira’s opening paragraphs establishing the facts of the case refer to the Ragen as having copied sections of Shapiro’s book, indicating that he had prejudged the issue. He also relates to the Michal Tal case mentioned above, which he also heard. But this should have been inadmissible since it was not the case under trial. That said, since some witnesses were heard simultaneously in both cases, with consent of both parties, it may be considered admissible. That as may be, as noted above, Ragen was subsequently vindicated in the Tal case.

Where there is copyright infringement, there are no grounds to rule on grounds of Unjust Enrichment, which is applicable only where there is no statutory tort, such as in the A.Sh.I.R. case. Thus finding under both counts seems wrong. Finally, what’s theft? Since when is literary theft a separate tort?

Shapiro’s book is a non-fictional, somewhat autobiographical guide to making a marriage work, about adjusting oneself to one’s surroundings. Ragen’s story is about getting out of a situation that’s wrong, about taking control of one’s life. I think that a fair use defense is appropriate. Furthermore, to the extent that Ragen’s work was inspired by Shapiro’s I think that a satire defence is possible –  although difficult under Israel Law. We also note that Shapiro did not create the idea of employing a home- help. These have been employed by countless young mothers under stress. (I believe that my mother employed an au-pair when I was a baby. That wasn’t plagiarism either).

I accept that copyright covers all literary work, regardless of quality.  A couple of pages of dialogue may therefore by covered by copyright law. Nevertheless, the text in question is not memorable in its own right. We are not discussing a witty aphorism but simply a conversation. My main criticism of the ruling is that it places the bar for literary novelty simply too high. It is bad policy to consider copyright infringement in a case where two pages of dialogue in one book bear a similarity to a couple of pages of dialogue in a different book. This is counter-productive to the aim of copyright law which is to enrich by promoting creativity, not to stifle authors. Koheleth son of David (Ecclesiastes) was right on one level that there is nothing new under the sun.  The similarities between Shapiro’s book and Ragen’s novel warrant a footnote in a critical edition of Ragen’s book or an academic paper. Nothing more.

For those interested, the concept in Jewish Law (Halacha) analogous to fair use is “זה נהנה וזה לא חסר ”  lit. “this one benefits but that one does not lose out.” (T. B. Baba Kama 20:1 – 21:1, Shulhan Aruckh, Hoshen Mishpat Chap. 363: 1).

The plaintiff sued for NIS 1,000,000. Although the judgement finds Ragen guilty of copyright infringement, unjust enrichment negligence and theft, it does not award damages but gives the parties an opportunity to negotiate a settlement. It seems highly unlikely that the conversation in question helped Ragen sell books, or that Ragen’s novel adversely affected Ms Shapiro’s sales. Under the relevant copyright law which is the old 1922 Copyright Ordinance, not the new 2007 Copyright Law, the statutory damages are limited at NIS 10,000.  A fair settlement would seem, therefore to be loose change. Indeed, from a financial perspective it is difficult to see how any award that will stand legal scrutiny can possibly recover legal costs.  but what both sides are looking for seems to be moral vindication rather than damages.

The case: 9430/07 Sarah Shapiro vs. Naomi Ragen, by Judge Yosef Shapira, Jerusalem District Court 11 December 2011

Comments

The ruling is a 92 page whopper, which is why this took me a month to post.

Shapiro’s account in her own words was published in Cross-Currents, an ultra-orthodox discussion group here.

I first covered the Michal Tal case here. See also naomi-ragen-fights-back for details of all three plagiarism suits against Ragen, and Naomi Ragen Accused of Plagiarism – Again for details of a third case filed by Cynthia Rosengarten concerning the Sacrifice of Tamar.

An account of the Supreme Court Ruling concerning dismissal of the case brought by Michal Tal is to be found here: haAretz version and Jerusalem Post version. Ragen’s reporting is here.

For newspaper accounts of the District Court decision against Ragen see haaretz

Additional Comments

In Jephte’s Daughter, another novel by Ragen, the story relates to the daughter of a Rabbi growing up in New York. When I read it, I was reminded of Chaim Potok’s novel The Chosen. There was a scene where the girl and two of her friends experimented with make up in the girl’s bedroom. This reminded me of a scene in the 1980 hit movie Grease. I have no doubt that Ragen has read the Chosen and seen Grease. Whether these influenced her consciously or not, there is no case of copyright infringement or plagiarism.  (Note, I also believe that the Warner Bros character Bugs Bunny was inspired by Groucho Marx, although I’ve never seen any reference to this in print).

It is worth noting that the plagiarism cases against Ragen were filed around the time that Naomi Ragen challenged segregated seating on bus routes serving the ultra-Orthodox community by filing a suit to the Supreme Court on grounds of gender discrimination. A lot of the flack Ragen’s been under for alleged plagiarism seems to be driven by ultra-Orthodox opposition to the position she has taken on this issue which some see as threatening their life-style.  Many of her books are sympathetic to some aspects of the ultra-Orthodox lifestyle and critical of other aspects of the same. Some members of the Ultra-Orthodox do not take kindly to criticism, and may find her novels offensive.

Personally, I see social criticism as positive and believe that Ragen has raised issues that should be addressed. I think that every Jabotinsky was correct in his analysis published in “the War and the Jew”, that every nation needs its Jews; a visible, different looking population to hate. Unfortunately, in Israel, the Ultra Orthodox seem to fill this position for some secular Israelis. (The secular Israelis fulfill a need for the ultra-Orthodox that goyim fulfilled in Eastern Europe, so everyone benefits from the situation, but it keeps the Messiah from coming). However, Ragen has not written the sort of anti-ultra-Orthodox diatribe that the mainstream (secular) papers sometimes publish; where one can substitute the word black, ultra-Orthodox or Hareidi with the word Jew, Kike or Yid, and the piece looks like something that could have been published in Nazi Germany. Rather, Ragen has criticized anti-social behavior exhibited by some members of the ultra-Orthodox camp and cultural norms in some circles that she sees as having negative ramifications. She hasn’t attacked the population. In this regard, she is like Bruria admonishing her husband Rabbi Meir to pray for sin to be removed by sinners repenting, not for sinners to be removed (Talmud Babli Brakhot 11).

In my opinion, as outlined above, this ruling established the facts of the case, but gets the law wrong. I believe it should be reversed on appeal.

The Biblical Sotah from which Ragen plagiarized her title,  is discussed in Numbers 5: 11-31. She is a woman accused by her husband of having been inpregnated by another. In a trial by ordeal, the sotah drinks bitter waters, and, if guilty, swells up, and dies. If innocent, she and her husband are able to put this issue behind them and she is blessed with offspring.  Ragen may have been impregnated by exposure to Shapiro’s book, but her work is an original literary creation, and is admitted as such by Judge Shapiro. I believe that she deserves to be blessed with (literary) fruit for being wrongfully accused.

14 Comments | book review, Copyright, Fair Use, infringement, Intellectual Property, Israel, Israel Copyright, plagiarism, Uncategorized | Permalink
Posted by Dr Michael Factor

Philanthropical Giving – the fight of the non-profits

January 1, 2012

David Zilberslag is a well-known, public-spirited, Ultra-Orthodox leader who raises funds for helping those in need. He filed a trademark application (No. 205341) for כח לתת – Koach l’tet, literally, “the power to give”.

The organization L’tet - Humanitarian Aid In Israel, (ארגון לתת) filed an opposition to the mark, but after the applicant, represented by well-known attorney, Dr Yaakov Weinrot, his statement of case with a request for costs, L’tet withdrew their opposition, stating that although they believe the opposition was legally justified, they did not think it was correct use of public funds.

The Commissioner for Patents and Trademarks, Dr Assa Kling, accepted that both the applicant and the opposer did important humanitarian work, but felt that it was more appropriate for such organizations to find other ways to settle their differences than to fight opposition proceedings and generate legal costs. Nevertheless, he could not deny the parties’ right to fight through  the system.

Commissioner Kling ruled that in principle, the applicant was entitled to recover legal costs, but the awarding of such was discretionary on the Patent and Trademark Authority. No details of actual costs incurred were given, and generally actual costs are rarely given, but rather an estimate of fair costs. In light of the circumstances and the fairly early stage at which the dispute was terminated, he decided to use his discretion and not award costs at all.

COMMENT

This is, unfortunately, not the first time (and probably not the last time either) that two humanitarian organizations have been involved in trademark disputes.

Unlike the case of Johnson & Johnson vs. the American Red Cross, regarding the continued use of the red cross symbol by the ambulance service, this case has some merit, in that charities should choose distinguishable names so that donors are not confused who they are supporting.

There are a number of cases where different charities have confusingly similar names. Then again, “to give” is rather generic, and one wonders why anyone should have rights to a word like that for philanthropic purposes.

I can understand the Commissioner’s position regarding philanthropic organizations wasting public money on legal fees. It is, however, a moral – ethical position, not a legal one. From a purely legal standpoint, one wonders if it would not have been appropriate to have awarded the usual costs awarded to an applicant for a trademark, where the opposition is dropped after the applicant files his statement of case. Commissioner Kling is well within the scope of his discretion, and value based judgements have been in vogue since Former Chief Justice Aharon Barak abandoned formalism and instigated more value-centric judgements.

Although I have no strong feelings regarding this decision not to award costs, personally, I am a formalist who prefers the “law is an ass” approach to Law. I note that judges and commissioners are not democratically elected, and often the reasons and methods of selection for such judicial personnel are somewhat murkily concealed.  In such a system, I would prefer judges and commissioners to judge and to award costs in a manner that neither favours plaintiff nor defendant and which is actually neutral to the type of goods or service that a trademark applicant provides. 

I note that we do not know if the Attorneys were actually charging for their time or if they were working pro bono. If one organization that helps the needy opposes a mark filed by another organization, is it wrong that the losing organization should transfer funds to the organization that wins?

Leave a Comment » | Israel, Israel IP, Israel Patent Office Rulings, Israel Trademark, trademarks, Uncategorized | Permalink
Posted by Dr Michael Factor

1000 Blog Posts!

December 15, 2011

All records broken for an Israel patent blog!

My last post was my 1,000th!!!

 

 

2 Comments | Uncategorized | Permalink
Posted by Dr Michael Factor

Missing the bus

December 8, 2011

Omnibus claims laconically claim the invention as described in the specification and/or illustrated in the figures of a patent application, instead of reciting strctural detail or listing method steps.

Back in 2008, the then Israel Commissioner of Patents, Dr Meir Noam, banned independent omnibus claims as being unclear, see here. That was some five years after Dr Noam assumed office. He failed to  explain why their clarity had suddenly changed for the worst, or why he’d suddenly noticed.

The present Commissioner of Patents, Mr Assa Kling, has now issued a circular ruling (Circular 008/011) due to the inherent lack of clarity, omnibus claims will henceforth not be allowed, whether submitted in dependent or independent form.

COMMENT

He is, of course correct, but then again, they are no more unclear now than they were previously. We hope that this indicates that henceforth, dependent claims are going to be examined on their merits. We also wonder if there is any scope for Israel courts to enforce the “pith and marrow” of a patent, regardless of claim deficiencies.

Leave a Comment » | IPO, Israel, Israel IP, Israel Patent, Israel Patent Office, Patents, Uncategorized | Permalink
Posted by Dr Michael Factor

Kiss but don’t tell

December 4, 2011

In a case referred to as Plonit vs Ploni and Almonit (from Ruth 4:1), the Jerusalem District Court has issued an injunction to recall a book written by a student “Ploni” (i.e.  John Doe), that documented his relationship with a second student “Plonit”  (i.e.  Jane Doe) that he had previously enjoyed a romantic liaison with.  The relationship was originally kept discreet as Ploni was married and the student was living with her “Significant Other”, but eventually their circle of friends knew about the relationship, and, after Ploni separated from his wife, he was known to be living with the student.

A temporary injunction to recall unsold books and to prevent their circulation and further publication was obtained fairly quickly and upheld by the Judge Gronis of the Supreme Court. This ruling concerns making the temporary restraining order permanent and alleged damages to the plaintiff.

The plaintiff claimed that her private and public world were described in graphic detail, including her body, emotions, weaknesses, conscience, activities and preferences for sexual stimulation. She alleged that the publication damaged her privacy, good name, and cruelly exposed, shamed and insulted her. Furthermore, since extracts of some of Plonit’s letters were published, and her final college project was described, there were charges of copyright infringement in addition to invasion of privacy.

The publisher claimed ignorance of the biographical aspects of the book and that they were under the impression that the work was pure fiction. On the suit being filed, they recalled the unsold books pending judgement. However, nearly one thousand copies were already sold by then.

The defendant led a spirited defense to allow publication, and brought expert opinions of literature professors Ariel Hershfeld, Hanan Hever and Mira Magen to substantiate his claims that the style of the work was that of fiction. He claimed a free speech defense, alleging that allowing the plaintiff to prevent publication of a fictitious work based on alleged similarity would prevent the publication of fiction in general, since the author invariably draws on his/her life experiences.  He further asserted that the public interest was to allow publication, in that the subject matter of broken families and relationships are of clear public interest.

In her ruling, Judge Kanfei-Steinitz found the publishers claim of ignorance convincing and dismissed the charges against them.

Though recognizing the value of free speech, she ruled that free speech is not absolutely protected and a balance needs to be struck between free speech and other rights, including the right to privacy, noting that both are fundamental rights, with right to privacy being protected by the Basic Laws. In addition to the case-law, she quoted from the ruling by Supreme Court Judge Gronis, concerning the appeal to the temporary restriction order in this case, where he pointed out that one of a couple in an intimate relationship is entitled to prevent the other party from publishing details of that relationship as this is fundamental to society.

The plaintiff’s case was strengthened by the defendant’s ex-wife’s attempts to prevent damaging details about her and the children being published and by a recording of a conversation between herself and the author where she asked him how he could publish all the details of their relationship.

Due to the nature of the final year project of the heroine of the book, her place of study, the area where she lived and where her parents lived, her physical description including build, hair and eye colour and tattoos, and the clear identity of the author who wrote in the first person without a pseudonym and was known to have lived with the plaintiff, Judge Kanfei-Steinitz ruled that whether or not the work was categorized as fiction, there was a clear and compelling case that there was an invasion of privacy and that the balance between literary freedom and right of privacy justified preventing the book from being published.

In addition to ordering the books recalled, the court ordered that Ploni pay NIS 700,000 in damages for invasion of privacy according to the abstract (NIS 200,000 according to the end of the ruling – so the actual sum is unclear) and a further NIS 50,000 costs.

T.A. 3213/09 Plonit vs. Ploni and Almonit, Judge Gila Kanfei-Shteinitz, Jerusalem District Court, 11 October 2011.

COMMENT

The copyright issues in this squalid case are actually quite interesting since the author can claim a moral right to his work, in addition to freedom of expression. Nevertheless, I think this judgement was correct to focus on the privacy issues.

One wonders how much the good name of a known adulteress and family breaker is actually worth. then again, I don’t know whether the damages awarded were NIS 200,000 which seems rather low and NIS 700,000 which seems a little high. I concur with the judge that the plaintiff is entitled to prevent her ex-partner from publishing intimate details of their relationship in the guise of fiction. Sadly, I suspect that the nearly a thousand copies sold before the recall and following excerpts published in the weekend papers and described in television interviews, were no doubt largely snapped up by acquaintances of the litigants.

The decision is a good one, and seems very thorough and well-reasoned.

As to the public interest, a distinction should be made between what the public is interested in knowing and what is fairly considered as public interest.

Ayn Rand: “The idea that ‘the public interest‘ supersedes private interests and rights can have but one meaning: that the interests and rights of some individuals take precedence over the interests and rights of others.“

James Wilson: In the long run, the public interest depends on private virtue.

 

2 Comments | book review, Copyright, Israel, Israel Copyright, Israel Court Ruling, Uncategorized | Permalink
Posted by Dr Michael Factor

A slew of interim judgements and other minor rulings

November 20, 2011

There have been a slew of minor judgements recently published by the Israel Patent Office. None are big headline decisions, but to the extent that the Israel Patent Office is consistent, they do indicate what is likely to happen in analogous circumstances, which is probably why they are published in the first place.

Currently, Ms Yaara Shoshani Caspi is the only adjudicator at the Israel Patent Office who is issuing rulings, so understanding how she sees things, is of value for those engaged in contentious proceedings before her.

Finally, as this blog tries to be comprehensive concerning Israel IP developments, it seems that these should be covered like everything else.

The following articles are thus interim decisions reported in the interim, until something substantive happens.

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

200,000th Blog HIt!

November 17, 2011

yes!!!

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Posted by Dr Michael Factor

Can one have IP rights such as copyright in a syllabus?

November 13, 2011

“It's fun to charter an accountant, and sail the wide accountant sea!”

The Israel courts recently had to address the issue of IP rights in a syllabus.

Ms Orli Tal claimed to have created a pedagogic program for teaching 4th year accountancy that she alleged was purloined by the Israel Open University, and sued the university, the Head of the MBA program and various other staff members for NIS 3,172,000.

Ms Tal is a lawyer and accountant who teaches tax law and accountancy.  At the time relevant to her filing suit, she worked for the Legal Dept. of the Israel Tax Office.

Apparently, a degree course in accountancy in Israel is a 3 year program, after which, students can study a fourth year whilst obtaining work experience as a trainee accountant.

At a private function, Ms Tal set up a meeting with the director of the Open University to discuss her study program. She subsequently met the other directors and there was an exchange of study materials, followed by a couple more meetings, and a verbal declaration to get married, understood to mean that the sides would work together.

However, the collaboration didn’t last and Ms Tal sued, claiming that her program was being used without accreditation and in contravention of her rights.

The grounds for legal recompense include:

  • Unjust Enrichment
  • breach of entrepreneurial Trust
  • Breach of Statutory Obligation
  • Breach of Contract
  • Malpractice
  • Acting in Gross Bad Faith
  • Theft of Trade Secret
  • Passing off
  • Physical and Moral Copyright Infringement

The university claims to have been working on a fourth year syllabus prior to the sides meeting, and claims to have met with the Accountant’s Guild some five months prior to the first meeting between Ms Tal and the director of the Open University. The university met with Ms Tal to assess whether she could be incorporated into the program as a lecturer, since she had relevant experience, but due to the differences between her expectations and theirs, no deal was reached. They deny acting in bad faith.

Since the program Ms Tal suggested was built on the elements of low registration fee and a mixture of remote learning and frontal teaching, according to the university, there was nothing new in the approach when compared to what the Open University traditionally did, and therefore there was no trade secret, nor any other IP rights in her program.

According to the defendants, Ms Tal neither proved that her hourly charge of $200 was accepted by them, nor that she had spent the number of hours she claimed to have put into developing her program. They dismissed the alleged damages of NIS 3,172,000 as grossly inflated.

Finally, since the individuals named in the statement of case where working for the Open University and acted in official capacities, they alleged that their being named as co-defendants was inappropriate.

In analyzing the case, Judge Shaul Meinheim considered each legal grounds separately.

COPYRIGHT – noting that the plaintiff had referred to her idea as a pedagogic model and as an idea, Judge Meinheim noted that the first wasn’t a known copyright category and didn’t fit easily into any of the categories. He went on to note that section 5 of the copyright ordinance states quite clearly that there is no copyright in ideas per se. Finding that the model wasn’t fixed in a medium on plaintiff’s testimony, he dismissed the charges. He noted that even if Ms Tal indeed spent 1500 hours researching the program, there was no program presented that could be considered as being a creation protected by copyright.

TRADE SECRET – Judge Meinheim was unable to isolate the alleged trade secret that was the property of Ms Tal prior to being stolen by the university, and therefore dismissed the charges.

BREACH OF CONTRACT – The only document produced was a personal memo by the plaintiff of what was discussed at the first meeting. Judge Meinheim dismissed this as insufficient to indicate that the sides had reached a binding contractual arrangement.

BAD FAITH – It appears that the university negotiated with the plaintiff and no agreement was reached. This is not indicative of bad faith.

UNJUST ENRICHMENT – No evidence was produced that the University made profit from Ms Tal’s ideas.

ADDITIONAL DEFENDANTS – Here again, the judge could see no justification for the various personnel affiliated with he university to be included in the case.

DAMAGES – Even were he to have accepted legitimate grounds for compensation, the sums claimed were considered grossly exaggerated.

The charges were dismissed and costs of NIS 200,000 were awarded against the plaintiff.

T.A. 4130-10-07 Tal vs. Open University and Others., 11 October 2011 Tel Aviv District  Court, Judge Haim Meinheim.

COMMENT

In a recent article I discussed a conference hosted by WIPO and ONO on traditional knowledge. When the idea first came up, Dr Shlomit Yanitzky Ravid who was on sabbatical, invited me to collaborate on the program, expecting this to help create a rigorous conference that would attract the profession.

Although not being particularly positive regarding traditional knowledge, I spent about a week making inquiries and putting together ideas which were presented to ONO and WIPO.

WIPO have strict rules on working with the private sector and they decided that JMB, Factor & Co. couldn’t co-host, nor could I present a lecture.  We decided not to spend any more time on the program and cut our losses. The program that eventually took place did have several elements that I can take credit for, and Dr Shlomit Yanitzky Ravid actually acknowledged the fact on the second day to the participants.

I imagine that Ms Tal had some legitimate grievances and from her perspective, and no doubt she felt that her ideas were being misappropriated. I can understand how Ms Tal felt. Nevertheless, going to court is not generally a solution. As a lawyer she should have known that she had a very weak case and little evidence. I suspect that this decision won’t do her teaching career any good, and will close doors and burn bridges.

One wonders why the lawyer representing her, Calderon, a well-known IP practitioner, took the case.

2 Comments | Academia, Intellectual Property, Israel Court Ruling, Israel IP, Uncategorized | Permalink
Posted by Dr Michael Factor

Israel Commissioner Meets Representatives of the Professional Organizations

October 27, 2011

Following a practice initiated by his predecessor, Commissioner of Patents and Trademarks, Assa Kling, met with representatives of the Israel Association of Patent Attorneys, the Israel Branch of the AIPPI, the IP group of the Israel Bar, the Licensing Executive Society (LES) and the International Federation of Intellectual Property Attorneys (FICPI) in a round table discussion.

Several issues were dealt with and minutes of the meeting  were made available by Adv. Tal Band, the head of the AIPPI. This reprot is based on those minutes.

Appropriately, the tragic and sudden loss  of the Head of the Trademark Department, the late Ms Nurit Maoz was the first issue raised. Her achievements were acknowledged and patience was requested from the profession for the invitable delays that have and will occur until the department is able to reorganize itself and move forward.

I discovered that the Israel Association of Patent Attorneys is no longer headed by Ms Michal Hackmey alone, but now has a co-chairperson, Ronny Shutrut. Despite being a member of good standing in the organization, I didn’t hear about this decision from the organization itself. His appointment doesn’t seem to have been an election. At the last general election, several of the large firms voted on behalf of all workers by proxy, despite there being nothing in the constitution to allow this, and despite those voting in absentia not knowing who would be standing for office. There was, however, a facade of democracy. this appointment seems to have been made without even directly informing the members, which is less than satisfactory.

Another unsatisfactory aspect of this is that both co-chairpeople work for the same firm. Funnily enough, the chairperson of the FICPI (Ina Pugasch) is a further employee of the Reinhold Cohn IP group.

We assume that RCIP, as Israel’s largest IP practice (excluding the patent office and TEVA) is big enough to take care of its interests. Since the Commissioner himself, worked there until his appointment earlier this year, I suspect that the firm is reasonably capable of getting his ear if necessary.

The question is whether the present set up serves the interests of practitioners not working for RCIP, including the very large number of sole-practitioners whose needs and perhaps that of their client base may be very different to that of the Reinhold Cohen group.

Ms Michal Hackmey did request that members submit issues to her, for raising at these important meetings. Unfortunately, however, her priorities in deciding which issues to raise, will invariably reflect her perspective and practice.  I raised two issues with her and asked them to be brought up. I requested that the current practice of examination of independent claims only be raised as it extends prosecution and incurs unneccessary expense to clients. I also raised the issue of apparent illegality of the committees that orally examine candidate patent attorneys.  The first issue was apparently not raised but the second issue was discussed, but after the furore raised in responses to this blog and the like, presumably could not be ignored.

If all the people representing the private sector at these round tables come from 2 or 3 large firms, does this promote the interests of the profession as a whole? Not sure.  We wonder, therefore, whether the roundtable really serves its purpose to provide a channel of communication between the profession (as a whole), and the Patent Office.

One interesting insight was that the Commissioner of Patents noted that various issues including amending the law regarding examining patent attorneys was not within his bailiwick and he had no authority in such matters. We note that this more humble approach contrasts to that taken by his predecessor, who sometimes exceeded his authority when trying to straighten out archaic practices. Substantively, if not formally, Dr Noam’s reforms were generally both correct and filled needs, despite the rap he took from the Knesset committee for exceeding his authority and ignoring the letter of the law.

It seems from the sentiments reported in the summary of this first round table, that Commissioner Kling will be conservative in how he pursues his reforms.

2 Comments | Intellectual Property, IPO, Israel IP, Israel Patent, Israel Patent Office, Israel Trademark, Uncategorized | Permalink
Posted by Dr Michael Factor

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

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