Israel Passes New Design Law

July 26, 2017

industrial-designDesigns are the aesthetic features of items of mass production.  Design rights started in the United Kingdom in 1787 with the Designing and Printing of Linen Act and have expanded from there.

For the past 70 years, the registration and protection of designs in Israel was governed by laws inherited from the British Mandate. Some of these were obsolete. For example, only local novelty was required, although this has been interpreted by Commissioner Circular to consider Internet publication accessible from Israel as published in Israel.

knessetToday, Israel’s Parliament, the Knesset, approved a proposed Israel Design Law in its second and third reading, that will come into force in one year’s time. The maximum protection for designs will be increased from 15 years to 25 years and Israel will now be able to ratify the Hague Convention, smoothing the process for Israeli designers to obtain international design protection and for foreign products to be protected in Israel.

Absolute world wide novelty is required to register designs. Variant designs may be registered by the same applicant.

A non-registered design right has been introduced, and the new law prohibits damages under the Law of Unjust Enrichment.

The designs that were registered under the old ordinance will now be able to get an extended maximum period of protection of 18 years instead of 15.

This development is welcomed.


My Cloud

May 9, 2016

My Cloud

Western Digital filed Israel Trademark No. 254600 for “MY CLOUD”.  The Application covered:
Computer software, including firmware and mobile applications, used to connect and manage networked devices for remote access, back-up, sharing and syncing of documents and files stored on, streamed through, hosted on or run on data storage devices, hard drives, disk drives, solid state drives, media players, Internet servers and cloud storage services; computer software, including firmware and mobile applications, used to transmit, manage, store, secure, encrypt, centralize, back-up, transfer, customize, navigate, play, view, access, share, stream, synchronize, modify, upload, and download files, information, data or media stored on, streamed through, hosted on or run on data storage devices, hard drives, disk drives, solid state drives, media players, Internet servers and cloud storage services; computer software, including firmware and mobile applications, for transferring, streaming, viewing and playing text, data, audio and video files, digital images and multimedia content from data storage devices, hard drives, disk drives, solid state drives, media players, Internet servers and cloud storage services to televisions, video monitors, projectors, and computer and mobile devices, including smartphones, computer tablets and laptops; electronic data storage devices, including, hard disk drives, digital disk drives, media players, Internet servers and cloud storage services and solid state drives; computer storage devices, including, computer memory hardware and hard drives for computers; all included in class 9, and
Computer and electronic data storage; data encryption and security; providing non-downloadable computer software, including firmware and mobile applications; design, development, updating and maintenance of computer software, firmware, mobile applications, data storage devices, hard drives, disk drives, solid state drives, media players and computer peripherals; providing computer software, including firmware and mobile applications, used to transmit, manage, store, secure, encrypt, centralize, back-up, transfer, customize, navigate, play, view, access, share, stream, synchronize, modify, upload, and download files, information, data or media stored on, streamed through, hosted on or run on data storage devices, hard drives, disk drives, solid state drives, media players, Internet servers, cloud storage services and computer peripherals; providing computer software, including firmware and mobile applications, used to transfer, stream, view and play text, data, audio and video files, digital images and multimedia content from data storage devices, hard drives, disk drives, solid state drives, media players, Internet servers and cloud storage services and computer peripherals to televisions, video monitors, projectors, and computer and mobile devices, namely smartphones, computer tablets and laptops; providing optimized, remote access to and management of files, information, data or media stored on, streamed through, hosted on or run on data storage devices, hard drives, disk drives, solid state drives, media players, Internet servers and cloud storage services using a network or Internet connection; providing temporary use of non-downloadable computer software for use in accessing, editing, collecting, updating, manipulating, modifying, organizing, storing, backing up, synchronizing, transmitting, and sharing data, documents, files, information, text, photos, images, graphics, music, audio, video, and multimedia content via global and local computer networks, mobile devices and mobile applications, and other communications networks; all included in class 42.

The trademark Examiner considered the mark as lacking distinctiveness and as being descriptive of the product provided.

cloud-computing-security

The Applicant argued that the mark is NOT descriptive, that it is associated with the Applicant and was succssfully registered in a number of jurisdictions including the US, Russia and Ukraine. On failing to convince the Examiner, the  Applicant appealed this decision. The question is one of whether the addition of a personal pronoun can make the generic term CLOUD that is widely used to denote a type of data storage into something distinctive.

Prior to a hearing, the Applicant filed an affidavit of Ms Cynthia Lock Tregillis, a senior manager. This Affidavit affirmed that the mark has been in use in Israel since 2013 and over 6000 units carrying the mark have been sold. The product with the mark is shown on hoardings, on the Internet, in newspapers and at point-of-sale. Furthermore, according to the Affidavit, the Applicant is the only user of the combination of ‘my’ and ‘cloud’ in Israel.

At the hearing, the Applicant noted that they had registered TM 200097 for MY BOOK and TM 212025 for MY PASSPORT, so  MY CLOUD was the third in the series with the same common element.

In this instance, the product is a storage device and whereas CLOUD may be descriptive or generic for a storing in a manner open to the public, either for free or for financial gain, the mark is used by Applicant to describe storage on the product, thus converting it into a personal cloud. So the cloud is not a cloud in the general (idiomatic) sense of the word, and this enables the registration. Finally, a Google search brings up Applicant’s product. As a fallback position, Applicant requested registration on the basis of the US issued trademark under Section 16.

Ruling

Citing the Eveready Battery Decision (21488-05-11) and the Taam Tov Abrosia ruling (5454/02 p.d. 57 (2) 438) , The Deputy Commissioner Ms Bracha noted that trademarks have to be examined in their entirety and not broken down into separate elements to be considered separately. Citing Wickepedia, she went on to note that the term cloud relates to storage on a number of servers held by a service provider, typically over the Internet.

As ruled in the GHI decision (re TM 200791 and 299702, Gemstone Institute of America vs Gemology Headquarters International:

“To begin with, it is not clear that internet sources in general, or the ones cited by Mr. Muravnik in particular, are inherently unreliable. Countless contemporary judicial opinions cite internet sources, and many specifically cite Wikipedia.”

Alfa Corp. v. Oao Alfa Bank, 475 F. Supp. 2d 357, 361 (S.D.N.Y. 2007).

The legal literature also warns against relying on Wikipedia:

“Citations to Wikipedia in judicial opinions first appeared in 2004 and have increased steadily ever since. Wikipedia is not just being cited for trivial matters. Courts have taken judicial notice of Wikipedia content, based their reasoning on Wikipedia entries, and decided dispositive motions on the basis of Wikipedia content. Wikipedia is not like other non-legal factual sources that have been appearing in judicial opinions for many years. 1 The impermanence of Wikipedia content, which can be edited by anyone at any time, and the dubious quality of the information found on Wikipedia raises a number of unique concerns.
Lee F. Peoples “THE CITATION OF WIKIPEDIA IN JUDICIAL OPINIONS” 12 Yale J. L. & Tech. 1, 3.

However, since the meaning of the term CLOUD as used in computing jargon is not disputed by the Trademark Department, Ms Bracha is willing to accept that it relates to distributed storage on remote severs and is prepared to accept the Wicki definition.

The Applicant uses the term “My Cloud”, in Hebrew and English, to refer to a remotely accessible data storage device for backup purposes. As to metaphoric uses, as ruled in Xtended Beauty, these are at least indicative.

“The district court observed that beauty serves as a metaphor for eyelashes. We agree, but unlike the district court, we conclude that metaphorical usage means the mark is arguably suggestive. The mark’s meaning and context have little to do with the dictionary definitions of its parts. The three-word mark, viewed as a whole, has no dictionary meaning or idiomatic resonance.

However:

“Because “Washington” connotes more than mere geography, the mark “Washington Speakers Bureau” arguably requires some slight degree of associative or metaphorical interpretation to be fully understood. Yet, this alone does not make a mark suggestive. For example, the phrase “King Size” is often cited as an example of a descriptive mark when applied to large size men’s clothing. See, e.g., Sara Lee, 81 F.3d at 464. To understand the mark, the consumer must rely upon the common association of kings with masculinity, bulk, and vastness, but this alone does not make “King Size” suggestive, since this association is universally understood. When an association is so automatic, it is descriptive only, as the consuming public will immediately understand the nature of the product so described, without exercise of the imagination.”

Washington Speakers Bureau, Inc. v. Leading Auths., Inc., 33 F. Supp. 2d 488, 495 (D. Va. 1999).

According to Ms Bracha’s analysis, the term ‘cloud’ as used by the industry is a metaphor, but it has become a dead-metaphor since it is in common use. Consequently the term MY CLOUD has become descriptive for what is, according to the Applicant’s submission, personal cloud storage.

Having concluded that the mark is descriptive, the remaining question is whether the mark has acquired distinctiveness under Section 8b of the Trademark Ordinance, See 144/85 Klil vs. Patent Office 52 (1) 309, 315 and 18/86 Israel Glass Factory Venezia vs. Les verries de Saint Gobain (1991).

From the evidence submitted, it appears that Applicant has invested heavily in publicity and has made some 4 million shekels worth of sales, based on 6000 UNIts at 700 Shekels per unit, from November 2013 up until the hearing, and there is this trademark family concept, which, since the marks relate to data storage, help establish acquired distinctiveness for Applicant. However, since the mark is so descriptive, it is hard for it to acquire distinctiveness through use. Nevertheless, the mark is not totally lacking in acquired distinctiveness and so may be registered under Section 16 of the Ordinance as per the McDonald decision.

COMMENT

my little pony

This seems like an attempt to monopolise the word MY, preventing anyone else claiming ownership of anything). Even My Little Pony was not merely My Pony but has the additional characteristic that the pony in question is little, and at about 9 inches high, they are smaller than Shetland ponies. Furthermore, the ponies are plastic and bright coloured. Finally, typing the word my into Google brings up My Little Pony. In other words, the mark is so well-known that the word ‘my’ alone is associated with it, and the word ‘my’ does not per se. have connotations with ponies.

If someone writes an autobiography titled “My Story” or “My Life” (Abba Eban and Golda Meir chose these incredibly creative titles),  can they register a trademark based on sales? If on that grounds Israel would register such a mark should other countries follow suit, merely because Israel would have erred?

One of the advantages of cloud computing is that data is stored in more than one place and very large service providers protect the servers from power outages and the like.  if one’s office is destroyed by Arson, data backed up to the cloud should be protected. Having a backup located by the computer does not achieve this. The My Cloud can be stolen with the computer. The user always has to connect to the Internet to access his cloud, but the stored data is very rigorously available once he does so. This is not the case with My Cloud as regardless of the reliability of the personal server, Western Digital are not responsible for Internet accessibility to the hardware. Arguably the mark is deceptive.  

For these reasons I am not happy with this decision, but essentially the Deputy Commissioner is relying on host country standards. To my mind, the word MY is hardly more distinctive than the indefinite article ‘a’ or the definite article ‘the’. Is this case more distinctive than failed attempts to register under Section 16?

 


Booking.Com

April 8, 2016

bookingcom

Booking.com is a web-based hotel booking website, as anyone who is looked into booking hotels over the Internet will be aware. They have a great domain name, use website traffic promotion tools and, since they get a lot of traffic, have a good google rating.

The company has attempted to register Israel trademark no. 244245 for the word mark “booking.com” in classes 39 and 43. By wordmark, the intention is the word BOOKING.COM without any colours, background or font. The application is a national phase entry of a Madrid Protocol international application.

The list of services in class 39 is as follows:

Arranging of tours; reservation and booking of travel tickets; information, advice and consultancy regarding the aforesaid services, also related to destination issues; the aforesaid services, also provided by travel agents, tour operators and tourist agencies; the aforesaid services also provided electronically

The list of goods and services in class 43 is as follows:

Hotel reservation services; reservation of holiday accommodations, also in resort areas; providing information about hotels, holiday accommodations and resorts (accommodations), whether or not based on the valuation of customers; information, advice and consultancy relating to the aforesaid services; the aforesaid services also provided electronically

The trademark Examiner rejected the mark as being generic for the services covered. The Applicant provided an affidavit of the CFO, Olivier Jean-Marie Bisserier, which testifies to an impressive usage by Israelis.

The Applicant argues that the mark is not generic but merely descriptive and thus able to acquire distinctiveness due to usage. Since the term booking is a verb and not a noun, it is not synonymous with the services. [MF – This is a very interesting and creative argument, however, my English is probably better than both Olivier Jean-Marie Bisserier’s and the attorney of record, and I consider the term booking to be both a verb and a noun. One has made a booking, or has a booking. In other words, it is both reserving and a reservation. Indeed, dictionaries give reservation as a synonym]. Applicant notes that the verb to book has other meanings, such as to arrest and for actions related to books. [MF – Here I am flummoxed. Not only is the word used as a noun and not a verb, but ne wonders if there is really a demand for people to have themselves arrested on-line. Furthermore,  does a betting shop make a booking or a book? Is to write or publish a book a booking? creative, but wrong].

Furthermore, the Applicant noted that various similar domain names had been registered in other countries. For example, homecompare.com for insurance is registered in the US, work.com is registered for computer games in the UK and in Israel, weather.com is registered for metorological equipment in the US, answers.com is registered in the US for consultancy and publicity services. The Applicant’s agent also related to verbal arguments provided in the Federal Circuit Court of Appeal in re Steel Building.com 75 USPQ 2D 1420. [MF – it seems to me that none of these cases are analogous in that homecompare.com does not provide homes or even compare homes, but provides insurance services; weather.com does not provide weather details or weather, but meteorological equipment, and answers.com does not provide answers, per se. Furthermore, as none of these are Israel precedents, they are irrelevant. Furthermore, even where a different mark has registered in Israel that an Applicant considers analogous to his case, the Israel Patent Office does not accept such cases as binding precedent or even as guiding].

RULING 

Deputy Commissioner Ms Jacqueline Bracha notes that the Applicant accepts that generic marks cannot be registered, so the issue in question is whether the mark is indeed generic or merely descriptive.

In this regard, The Deputy Commissioner started with a discussion of the Family Magazine case, and then cited from the Steel Builders case referred to by Applicant:

 “A generic term cannot function as an indicator of the source of a product, and thus as a trademark, because the relevant public understands the term primarily as the common name for the product. In re Dial-A-Mattress, 240 F.3d 1341, 1344 (Fed. Cir. 2001). This court’s test for genericness has two parts: first, the court determines the genus of goods or services at issue, and second, the court determines whether the term sought to be registered is understood by the relevant public “primarily to refer to that genus of goods or services.

The top-level domain Steel Builders.com provide design services and not steel-building services, per se. They are not welders or providers of steel beams for the building industry.

As to the general issue of whether a .COM after a generic word is enough to create distinctiveness, the Deputy Commissioner cited com, Inc. v. AOL Adver., Inc., 616 F.3d 974, 978-979 (9th Cir. Cal. 2010):

“There is extensive Federal Circuit precedent in support of our conclusion that the combination of “.com” and “advertising” does not result in a descriptive mark. The Federal Circuit has repeatedly affirmed the Trademark Trial and Appeal Board’s (“TTAB”) findings that marks similar to ADVERTISING.COM are generic. See In re Hotels.com, 573 F.3d 1300, 1304 (Fed. Cir. 2009) (HOTELS.COM);  [*979]  In re 1800MATTRESS.COM IP, LLC, 586 F.3d 1359, 1361-62 (Fed. Cir. 2009) (MATTRESS.COM); In re Reed Elsevier Props. Inc., 482 F.3d 1376, 1378  [***1314]  (Fed. Cir. 2007) (LAW-YERS.COM).  The Federal Circuit has been explicit that HN9adding “.com” or another TLD to an otherwise unprotectable term will only in rare circumstances result in a distinctive composite. See In re Steelbuilding.com, 415 F.3d 1293, 1297 (Fed. Cir. 2005) (“Only in rare instances will the addition of a TLD indicator to a descriptive term operate to  [**11] create a distinctive mark.”); In re Oppedahl & Larson LLP, 373 F.3d at 1174-76. This position comports with existing Ninth Circuit law explaining that, in the context of likelihood of confusion, the addition of “.com” to a mark generally does not strengthen the mark. See Brookfield Commc’ns. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1055 (9th Cir. 1999).

“To allow trademark protection for generic terms, . . . even when [they] have become identified with a first user, would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.”Surgicenters, 601 F.2d at 1017 (quotation marks omitted). 7 A major advantage that AOL would get from trademark protection of ADVERTISING.COM is to foreclose competitors from using a vast array of simple, easy to remember domain names and designations  [**18] that describe the services provided. The effect is similar to that which would result if trademark law embraced the obviously generic ADVERTISING COMPANY as a protectable mark because it “ha[d] become identified with a first user.”” 

As to the Steelbuilding decision the Deputy Commissioner quoted Luke M. Rona, WHO ARE YOU? DIFFICULTIES IN OBTAINING TRADEMARK PROTECTION FOR DOMAIN NAMES, 8 Wash. J.L. Tech. & Arts 61, 75.

“Steelbuilding stands out as the one recent case where two generic words combined into a compound, coupled with a TLD indicator, almost created a descriptive mark. The failed marks in1800Mattress and Advertise were generic single words that failed to create a distinctive mark when joined with a TLD. While it is difficult to say that a standard for the descriptiveness of domain names as trademarks has emerged in the federal courts, several factors seem to increase the likelihood that a court will categorize a domain name as descriptive.

First, melding two generic words into a compound word creates the possibility of new meaning that could distinctly identify the company behind the goods or services provided, thereby satisfying the “Who are you?” test. Steelbuilding linked an adjective with a noun to create a composite verb, such that the Federal Circuit looked not only at the possibility of selling steel buildings, but alternatively, the actual construction of steel buildings in an online environment. The two words potentially functioned as a verb, thereby moving the mark from purely generic into possibly descriptive.

Second, where a possible double entendre exists, it is much less likely that the mark will be termed generic, and this likelihood decreases further when two generic words are spliced together. The mark in Steelbuilding could have been viewed as an adjective and noun or one compound verb, depending on how the words were interpreted. It is much more difficult for this kind of layered meaning to emerge from a single word like “mattress” or “advertising,” which largely remain confined to one part of speech.”

Furthermore, the dictionary definition from the Miriam Webster dictionary on-line is:

“an arrangement for a person or group (such as a singer or band) to perform at a particular place; an arrangement to have something (such as a room) held for your use at a later time; soccer : the act of officially recording the name of a player who has broken the rules in a game; he act of one that books; an engagement or scheduled performance; reservation.”

Not only is booking a generic term, but its usage for hotel rooms is the example par excellence that the dictionary uses to illustrate the term.

Ms Bracha noted that the booking.com logo in white lettering with particular font and blue background stylized marks registered in Israel as 252107, 252108, 199137 and 199136, and elsewhere. This is the appropriate level of protection.

It would be innaproriate for a generic wordmark to register,which could then be used to prevent competitors using other generic domains such as mybooking.com, bookinghotels.com, hotelsbooking.com and hotels.co.il to provide similar services.

Although booking.com was registered in New Zealand, it was rejected in the US, Japan, South Korea and elsewhere.

The mark remains refused.

Rejection of BOOKING.COM wordmark, Ms Jacqueline Bracha, 9 March 2016


Circular 19/2012 Updated to Reflect On-line filing, but what about the Abstract?

January 28, 2016

abstract painting

Now that the Israel Patent Office is set up for and accepts on-line national phase entry of patent applications, Applicants can either file on paper or directly on line. The relevant Circular 19/2012 has been updated accordingly.

One can upload the Specification, Figures, Claims and genetic sequence if relevant using fields in the on-line interface.

COMMENT
My second attempt at filing on line went like a dream. I do, however, have one little problem: what about the Abstract?

In the old days, Applications in Israel did not have Abstracts and the Examiner, on allowing the application would write an abstract to accompany a representative image in the patent office journal where the allowance was published for opposition purposes.

More recently, the Applicant (or his representative) was requested to prepare an abstract, which was typically not a problem as the abstract from the PCT or priority document was used.

Now abstracts are sometimes like abstract works of art. One can read anything into them, and the author’s intention and the litigator’s understanding may both be equally legitimate which is one reason that statements made in the Abstract are rarely given much weight.

The problem I have is that the interface does not have a tab for uploading the Abstract and the updated Circular does not refer to this either.

One could submit the abstract as the last page of the description or appended to the claims. Not knowing what to do, I used the genetic sequence if relevant tab to upload a file labeled Abstract and assumed that someone in the patent office would realize that the attachment was not a genetic sequence but an abstract and deal with it accordingly. I thought that fairly quickly the Israel Patent Office would add a further field for uploading the Abstract as the PCT Easy software has one. Now I am not sure. Maybe the Examiner is going to write one as in the old days? Maybe with greater classification and full text searches the abstract has been deemed unnecessary? Does anyone know? Does anyone except me care?


J-Date swipes at J-Swipe

August 11, 2015

matchmaker
There are well-defined groups of Jewish singles looking for partners. In traditional society, the match-maker paired up potential partners, and made his/her living from so-doing. In the wider society, friends and acquaintances suggested that people who seemed compatible should meet. Depending on the perceptiveness of the match-maker, the date could be very successful or very tedious for both parties.
In 1997 J-Date offered a computerized match-making service to Jews. Apparently their questionnaires enable people to provide more details of who they are and what they are looking for. J-Date quickly grew to become a leading service provider.
If 1997 was the beginning of the Internet revolution, nearly 20 years later things have changed. J-Swipe is an application that lets those interested in dating discover the proximity of potentially suitable partners, to find out a little more about them, and to contact those of interest. It is apparently a circumcised ritually immersed version of Tinder, a similar application that is less tribal. Apparently J-Swipe is the #1 Jewish dating app with users in over 70 countries. They also claim 375,000+ JSwipe users from across the world (which compares nicely with the number of times this blog has been accessed, but my statistic includes repeat views, and the blog has been going for longer).
Both J-Date and J-Swipe target the same audience, i.e. single Jews, and offer similar services. So J-Date sued J-Swipe and also connected hosting sites and the like, threatening to sue them.
J-Date claims patent infringement and trademark infringement.
Their patent is US 5,950,200 to Sudai and Blumberg titled ” Method and apparatus for detection of reciprocal interests or feelings and subsequent notification”
The independent method claim is

1. A method that notifies people that they feel reciprocal interest for each other, comprising the steps, performed by a processor of a data processing system having a memory, of:
receiving input from a first user indicating a user ID of a specific person in whom the first user has an interest, the first user already being aware of the existence of the person whose ID they entered;
receiving input from a second user indicating a user ID of a specific person in whom the second user has an interest, the second user already being aware of the existence of the person whose ID they entered;
determining whether the user ID of the person in whom the first user has an interest matches a user ID of the second user;
determining whether the user ID of the person in whom the second user has an interest matches a user ID of the first user; and
if and only if a match occurs in both of the determining steps, notifying the first user and the second user that a match has occurred.

There is an independent apparatus claim as well:

28. An apparatus that notifies people that they feel reciprocal interest for each other, comprising:
a first input portion, configured to receive input from a first user indicating a user ID of a specific person in whom the first user has an interest, the first user already being aware of the existence of the person whose ID they entered;
a second input portion, configured to receive input from a second user indicating a user ID of a specific person in whom the second user has an interest, the second user already being aware of the existence of the person whose ID they entered;
a first determining portion, coupled to the first and second input portions, configured to determine whether the user ID of the person in whom the first user has an interest matches a user ID of the second user;
a first determining portion, coupled to the first and second input portions, configured to determine whether the user ID of the person in whom the second user has an interest matches a user ID of the first user; and
a notifying portion, coupled to the first and second determining portions, configured to notify the first user and the second user if and only if the first and second determining portions have detected a match.

There is also a means claim and a software claim.

Back in 1999 such patents issued. Nowadays they don’t.

The trouble is, as VOX put it, JDate claims to own the concept of connecting 2 people based on mutual attraction.

Now, J-Date denies that it against market competition:
“This is not about us discouraging market competition,” Michael Egan, CEO of the company behind JDate, wrote to the New York Observer’s Brady Dale. “Our case against JSwipe is about their theft of our technology.” I am not convinced.
Having an issued patent, there is a rebuttable assumption of validity and they cannot be accused of bad faith in attempting to assert their patent against infringers. However, I doubt that the patent would be upheld in court.

When considering validity, US courts are governed by current case law in their interpretation of concepts such as patentable subject matter, novelty and obviousness. Many patents issued at the turn of the millenium will not stand up in court.

In addition to patents, J-Date also claims trademark infringement. J-Date argues that J-Swipe infringes their mark. Back when I was a student in England, college Jewish Societies were known as J-Socs and presumably still are. The left leaning America-Israel pressure group J-Street uses a J for the same reason. The J indicates Jewish. It seems unlikely that the courts would recognize an individual company having rights in the letter J for dating services.
I doubt that the patent would stand up in court as most of the computerized service patents are voidable in light of recent decisions, and the patent in question doesn’t seem very exciting. I also doubt that the argument of trademark infringement will stand up. The thing is that J-Date have deep pockets and see a threat to their market dominance. They are suing because they can.

Yentl is using behavior more appropriate to a troll. Still all is fair in the business of love.

Matchmaker – Fiddler on the Roof (1971)


Tel Aviv Court Refuses to Endorse Out-of-Court Settlement Between Service Providers and ISPs requiring that the ISPs Block Site Offering Software for Facilitating Downloading of Copyright Protected Material

July 14, 2015

rubber stamp
ZIR”A Organization for Internet Copyright LTD, United King Film Distribution 1990 LTD, DVS Satellite Services 1998 LTD, Hot Telecommunications, Keshet Transmissions, The Noga Net LTD and Noga Telecommunications LTD sued Anonymous, Bezeq International LTD, Partner Telecommunications, 012 Smile Telecommunications LTD, 013 Netvision LTD, Hot Net Internet Services and Internet Rimon LTD.
Broadly speaking, the case is one of content providers suing Internet Service Providers, and the not identified owner of a website allowing downloading of a piece of software that enables accessing and downloading content.

The content providers sued for a temporary injunction against the service providers and for details of the surfers.

Popcorn is software that allows both streaming content for online viewing and downloading content for future viewing. The plaintiffs sought to stop this service and to require ISPs to prevent access to the website allowing downloading of the software. A temporary injunction issued on 19 May 2015. On 3 June 2015 a hearing was held and on 11 June 2015, the plaintiff announced that it had reached an agreement with 013 Netvision LTD, Hot Net Internet Services an Internet Rimon LTD.

Judge Magen Altuvia of the Tel Aviv District Court ruled that there was no place to issue a temporary injunction to block access to Internet sites that allow downloading of software programs that allows viewing of creative works for which copyright protection is alleged. Such an injunction is ineffective and damages the free flow of information, the right of the public to know, freedom of expression and provides power to Internet Service Providers to determine what may or may not flow through the Internet Conduit. Other issues are the fight of anonymity and of privacy on the internet.

In consequence of the above position, the temporary injunction requested by a website and by an Internet Service Provider to prevent the use of the Program Popcorn was denied. It appears that many Internet service providers had come to an understanding with the plaintiffs, but one held out. The one that held out was vindicated. Furthermore, the agreement reached by the plaintiffs with the other ISPs would not be ratified by the court and the temporary injunction was cancelled.

The Court ruled that by law, the court is not able to order a temporary injunction against a third party to reveal the identity of an anonymous surfer that allegedly has committed an offence. It appears that the plaintiffs themselves were tardy in requesting the injunction and this indicates that the temporary injunction is hardly significant to the plaintiffs and there is thus no justification in issuing it.

The balance of interests does not favor the plaintiffs where there is no clear legislation that allows action against Internet Service Providers. Closing down the website will not prevent the downloading and installing of Popcorn and will have no action against those Internet surfers who have already downloaded the program, and there are opposing values of free flow of information, right of the public to know, freedom of expression.

Plaintiff’s Position
On 29 June 2015, the plaintiff requested that an agreement made with Partner Telecommunications, 012 Smile Telecommunications LTD, 013 Netvision LTD, Hot Net Internet Services and Internet Rimon LTD be ratified by the court. Bezeq International held out and the plaintiffs requested a temporary injunction again them.

According to the plaintiffs, United King Film Distribution 1990 LTD, DVS Satellite Services 1998 LTD, Hot Telecommunications, Keshet Transmissions, The Noga Net LTD and Noga Telecommunications LTD held copyright in various programs and none of them had authorized Anonymous or Bezeq International to use the protected content via the Popcorn website or program.

Anonymous is not known to the plaintiffs [the ruling uses both verbs to know, i.e. conaitre and savoir, knowing in the Biblical sense does not seem to be intended]. The name Anonymous relates to the owner of the Popcorn website that allows surfers to choose to watch programs without the plaintiff’s permission, thereby infringing copyright under the Copyright Act 2007, and being guilty of unjust enrichment under the Law of Unjust Enrichment 1979.
The ISR is the bottleneck that has the cheapest and simplest way to stop access to Popcorn’s website from Israel based Internet browsers.

On 14 May 2015, and again on 17 May 2015, the plaintiffs contacted all the internet service providers but these were ignored.

On 28 April 2016, the Chancery Division of England ruled on Popcorn’s website and in that ruling, determined that the Popcorn sites infringed copyright and Internet Service Providers should block access. Twentieth Century Fox Film Corporation and Others vs. Sky UK and others. Case No: HC2014-00229, EWHC 1082 (ch). According to the plaintiffs, Judge Gidon Ginat (also of the Tel Aviv District Court) adopted the UK decision in his ruling of 12 May 2015, T.A. 11-333227-13 NMC United Entertainment LTD. Et. Al. vs. Bloomberg et al. In that instance, the Court found that by allowing conversion from view only format to saveable MP3 format, Mr Parpori had aided and abetted copyright infringement and that Internet service Providers should block access to the site. See here for my analysis of that case.

According to the plaintiffs, both the Fox decision and the Papori decision support their position that access to the Popcorn site should be blocked. Due to the ‘unacceptable ease of infringement and the fatal wounding of their rights’ there is a need to grant the requested injunctions as soon as possible to preventthe daily infringements.

Bezeq International’s Position
Bezeq International claims that the plaintiff’s filed suit following the ruling in the UK against Popcorn, despite the software being available from much earlier. Suit was filed only in May, so this case cannot be considered urgent.
Bezeq International claims that the plaintiffs do not have a single damages claim against them and therefore there is no room to grant an injunction against them. There are a number of Supreme Court precedents that prohibit issuing injunctions against third parties.

Bezeq considers that such a third party injunction would do them damage whilst would not have an effect on Popcorn since they would simply open up further sites allowing content to be downloaded.
In the appeal considering obligations of ISPs 4447/07 Rami Mor vs. Barak ITC (1994) Bezeq international, Judge Rivlin of the Supreme Court related to whether the Court had the authority to force a third-party to reveal the identity of an anonymous surfer who committed an offence.

There judge Rivlin ruled:

“My position Is that the Courts should not issues such injunctions without a proper hearing. Until there is specific legislation that that allows the requested injunction in cases of slander, there is no alternative but to inquire into whether there is a general framework that allows such third party injunctions. In other words, anonymous Internet surfing should be treated like anything else, and there has to be either specific legislation or general legislation and there is no justification to invent such a framework by judicial legislation.
In the current instance, there are three parties. There is the plaintiff who claims to have been slandered. There is the anonymous slanderer and there is the third party who may know the identity of the anonymous slanderer. This scenario of three parties is not unique to Internet slander. In other contexts, a party may consider himself damaged by an anonymous damager and may suspect that a third party may know the identity of the culprit. The question in front of us is thus wider than anonymous internet surfing. The question is whether Israel civil law allows forcing a party to identify a damager so that suit may be filed against him.

One possible source for contemplating forcing the revelation of the identity of the third party is Section 75 of the Law Courts Law 1984. Section 75 grants wide posers to the courts one the infringement is proven. It does not provide rights outside of a civil proceedings. The law does not contemplate court rulings in the air, but court rulings against parties being prosecuted.
Where A damages B, B may obtain an injunction against A. However, where A damages B, B cannot obtain an injunction against C who is not connected to A or to B. This would require special authorization. In other words, one cannot pull oneself up by one’s bootlaces and cannot create a civil matter against a third party by legislation designed to provide recourse against actual infringers.
This logic is good for Sections 71-75 of the Civil Tortes Ordinance, also considered as a possible basis for action. These Sections deal with the courts authority to provide retribution for civil damages and to give injunctions to act or to refrain from acting, but are not relevant in this instance. The injunction requested against the Internet Service Provider is not with respect to actions by the Internet provider. There are no charges for damages case against the ISP and no grounds for requesting compensation in these clauses so there is no grounds for revealing his identity.

Judge Rivlin went on to refer to another UK case, Norwich Pharmacal, where the court ruled on the revealing of an anonymous infringer in a separate proceeding:

…it should be emphasized that this principle does not have an anchor in Israel law and does not dovetail with any judicial framework recognized in Israel. The opposite is true. It contravenes the spirit and purpose of the judicial framework established by the primary and secondary legislators for Civil Court procedures. Such a change should come from the primary or secondary legislators. [i.e. the Knesset or the Ministry of Justice].

Judge Rivlin’s position was opposed by Judge Elyakim Rubinstein but was endorsed by Judge A.A. Levy.

Judge Magen Altuvia considers that the principles laid out by Judge Rivlin in the Mohr case are appropriate in this instance where the temporary injunction is identical to the main injunction and the rights of the plaintiff and defendants have not been clarified, and where there is no case against the defendant alleging infringement of the rights of any of the plaintiffs. Furthermore in the Appeal 1622/09 Google Israel vs. Brokertov et al. Judge Rivlin reiterated the position in Mohr and stated that “these differences don’t solve the issue of court authority to sanction a third party who is not guilty of any direct claims.

The Plaintiffs rests their case on the Parpori issue. From the way things developed it appears that the plaintiffs only decided to file suit after the Papori ruling on 12 May 2016. Thus only on 14 May 2015, a couple of days after Judge Ginat’s ruling, the plaintiff wrote to the ISPs (defendants 2-7) and requested that access to the Popcorn site be blocked. The law suit was only filed a week later, on 19 May 2015.

It will be appreciated that Tel Aviv District Court rulings are not binding precedents to the Tel Aviv District Court and the Court can ignore the Parpori ruling, whereas the Mohr case is binding precedent. Furthermore, without expanding, Judge Altuvia considers the Parpori scenario rather different. In this instance, there is a difficulty for the plaintiff to identify Anonymous and to prevent alternative websites being set up, so it is not clear that ordering the ISPs to block the site is efficient. Neither Parpori or the UK ruling are binding on the Tel Aviv Court. Indeed, in Mohr, the Supreme Court reviewed UK and US caselaw that allowed action against third parties such as ISPs and didn’t adopt the approach.
In Parpori, the main culprit had the opportunity to defend himself. This is not the case here as the main culprit isn’t identified.

Temporary injunctions are an exception to general procedure and are only appropriate where there is an urgency, which clearly wasn’t the case here, as the plaintiff was tardy in pressing charges.
The program Popcorn does not itself infringe. It merely aids and abets the downloading and viewing of copyright material. Blocking the site does damage to the ISP’s image and other ISPs can choose not to block access.
Clause 9 of the Statement requires the ISP to block future sites. This requires them to be a policeman and a censor for the plaintiffs. This policeman is not to generally police the net but to take action against a specific entity who has not had the opportunity to defend himself in court.

The reluctance of the court to convert ISPs into policemen outweighs the copyright of the plaintiffs.

In view of the above analysis, it would be wrong to endorse the out-of-court agreement as it is not a simple contractual obligation but has in rem aspects. The desired censorship would have consequences for the public and the Legal Counsel to the Government (Perhaps better translated as the Attorney General, has not addressed the issue, despite being invited to do so.

Conclusion
The temporary injunction granted by the court is voided and the plaintiffs are obliged to compensate Bezeq ben Leumi 40,000 Shekels for costs and legal fees.
Civil Action 37039-05-15 ZIR”A et al. vs. Anonymous, Bezeq Ben Leumi et al. Ruling by Magen Altuvia of Tel Aviv District Court, 1 July 2015.

COMMENTS
With all due respect to Judge Gilad Ginat who I consider to be the most competent IP judge in the District Courts and probably in any of Israel’s Courts now that Judge Gronis has retired, I think that Judge Altuvia is correct. In my comments on Civil Ruling 33227-11-13 NMC United Entertainment LTD et al. vs. Bloomberg et al. Tel Aviv District Court by Judge Ginat, 12 May 2015 I criticized the decision as ultra-vires judicial activism. I don’t accept that there is a lacuna that the legislators forgot about, but rather the current state of the Law reflects conscious government policy, not least due to the fact that when the new copyright act being passed, Israel was regularly being criticized in the US 301 Special Report also here for not having ISPs required to police the net.

I think that Judge Altuvia is correct that this is an instance where the Attorney General should present the government’s position. I think that the Attorney General is supposed to attend to such matters. It seems that Attorney Yehuda Weinstein views things differently and believes that his job is to dictate government policy and to keep the government in line with the positions of the Supreme Court.
For example, at present there is a contentious issue to be debated by the Knesset – the Death Penalty for terrorists. I have no problem with the Knesset debating this issue from time to time. I have no problem with lawyers in private practice, clerics, academics and journalists, human rights activists, victim support groups and the lay public expressing strong opinions, whether for and against. However, I find it totally unacceptable that the Israeli press reports that the Minister of Justice is considering supporting the legislation despite the opposing views of the Attorney General. Sure the Attorney General is entitled to have opinions and to express them to the government ministers. He should do so in a discrete manner and the public and press have no business knowing his personal opinions. The government is selected by the ruling coalition that represents a majority of the members of Knesset who are elected democratically. The Attorney General is an appointee. The current proposed legislation is a private member’s bill with some support from government back-benchers. But Weinstein also speaks out on government policy. This case and many others are not legal issues, but moral, ethical, strategic and tactical ones. If Weinstein is unhappy with supporting a government policy, he should either be professional and do his job to the best of his ability, as Barak apparently did as Attorney General, or he should resign. There are a number of cases where the Attorney General seems to have dictated policy or ignored the government. This is, in my opinion, grounds for dismissing him.

I am very critical of judicial activism, which seems to be justified to protect democracy from the people’s representatives. Thankfully Justice Aharon Barak’s term as president of the Supreme Court has ended and some of the damage to fidelity of the Law and to the democratic process has been reversed. I am pleased that Judge Magen Altuvia and Judge Rivlin have seen fit to take a formalistic stance in this instance.

As to judicial legislation for enhancing enforcement of IP infringement, the Supreme Court has accepted contributory infringement and aiding and abetting infringement in schori vs. Regba (Apppeal to Israel Supreme Court 7614/96) and in the Rav Bareach (Appeal to Israel Supreme Court 1636/98) Crook Lock case.  In the US, the CFAC and the Supreme Court have moved away from these judicially created indirect torts. Arguably both cases are legitimate workarounds. We’ve seen the courts moving away from A.Sh.I.R. which provided legal grounds for sanctions for unregistered designs under the amorphous value of Unjust Enrichment. In absence of amendments to the Patent Law, perhaps it is about time that Srori vs. Regba and Rav Bareakh were reversed?

In the last election I did look for a party with a strong IP position. Unfortunately, it was difficult to find a party with a clear stated position on anything, and none seemed to mention intellectual property in their manifestos, bumper stickers TV commercials. The Knesset is, nevertheless, updating its IP laws. I think we should lobby them to do more rather than give the courts legislative powers. Whilst there are ministers without portfolios, maybe there is room to have an IP Minister or Czar, or a Deputy Minister in the Ministry of Justice or that of Trade and Industry with specific IP responsibilities. Other countries, including the US and the UK have such a position.

One final point, Internet Rimon advertises itself as a religious ISP that blocks pornography, gambling and other websites deemed immoral, objectable under Jewish law and values and damaging. I believe such a pious company should take copyright infringement seriously and block sites such as Popcorn as well, or at least provide the option to parents to elect to block copyright infringing sites.


Israel Court Issues Injunction against ISPs and Recognizes Contributory Copyright Infringement

June 1, 2015

ISP

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

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

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

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

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

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

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

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

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

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

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

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

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

 

COMMENT

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

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

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