Appeal Regarding Infanti Baby Seats Virtually identical to those of Fisher Price (Mattel)

September 19, 2017

fisher price swing seatBaby swing-seats that were made in China and are identical to Fisher Price swing seats, down to the image of a lion on the upholstery, were imported and sold in Israel under the brand Infanti. Fisher Price obtained an Anton Pillar injunction and seized 1830 seats from the Importers’ warehouse. However, the Nazareth District Court rejected all attempts to obtain compensation under copyright infringement of the lion design printed on the seat upholstery and in the instruction manual, trademark infringement for the Fisher Price logo shown in the illustrations of the instruction manual, the trade tort of Passing Off, and the catch-all Law Of Unjust Enrichment following A.Sh.I.R. The case was then referred to the High Court.

This ruling by a panel of Israel High Court judges considers whether copyright subsists for a product design or artwork printed on a product where no design was registered for the product and whether there are grounds for sanctions under the trade-law of Passing Off or under the Law of Unjust Enrichment. The legal advisor to the government filed an amicus brief clarifying the position of the government in such issues.

judge elyakim rubinstenThe main ruling was given by Vice President of the High Court, Judge Elyakim Rubinstein who first considered the basic relationship between design law and copyright. Then, he ruled whether part of something that could have been registered as a design is entitled to copyright protection, and if so, whether the lion character is copyright protected even if the swing chair could have been registered as a design. Are the respondents direct or indirect infringers of the Appellant’s copyright? Do they have the defense of being unaware? Does trademark infringement require intent? And finally is there Passing Off or Unjust Enrichment?

Essentially Judge Rubinstein and Fogelman found copyright infringement due to the lion character on the upholstery, and Judge Meltzer also found that there was passing off, due to the products being virtually identical. Judges Rubinstein and Fogelman rejected the claims of passing off since although Fisher Price clearly had a reputation, they did not necessarily have a reputation for the baby swing seat. Infanti’s copies, though virtually identical to those of Fisher Price, were packaged in different boxes and the boxes were clearly labelled Infanti. The product itself was also labeled with the Infanti brand.

The main ruling is given below, followed by additional comments by Judges Fogelman and Meltzer. Since this is an important ruling, I have translated it in full. At the end are some comments and criticisms.

Background

This is an appeal against ruling 39534-02-15 by Nazareth district Court judge, Ben Chamo which was given on 8 January 2015 and in which Fisher Price lost their claim regarding copyright infringement in a child’s swing seat.

The ruling addresses the relationship between copyright and registered design rights. Judge Rubinstein notes that in the modern consumer society, the design of consumer goods has an increasing importance, and that manufacturers invest heavily  Consequently, many goods are some combination of functionality and artistic expression which makes it difficult to classify such goods in a single IP category and raises difficult legal questions. This appeal relates to a list of such questions of which the relationship between design law and copyright is central.

The Appellant, Mattel Inc. is a US Company that owns Fisher Price which makes baby goods, etc. The Respondent, Dvaron Import-Export Co. Ltd, is a company that imports various baby products into Israel. They and their directors and share holders were sued.

infantiMattel / Fisher-Price learned through Sakal which imports their products into Israel, that the respondents have been distributing a baby swing seat manufactured in China and branded as Infanti, which is a copy of the Fisher-Price swing seat.  Read the rest of this entry »


Israel Court Recognizes Copyright and Moral Rights in the Format of a TV Show

April 25, 2017

Background

Copyright protection is available for films, TV programs and other creative endeavors. The problem with TV formats is that ideas and concepts are not protected. The embodiment of the idea is, but a format that is ‘copied’ abroad will inevitably be re-shot and the content will change. A game show is scripted by its players. A quiz could conceivably have the same questions in different jurisdictions but the participants will answer differently. Much of the viewability of a TV program is related to the characters of the participants themselves. Different competitors in a song competition will sing differently. In a cookery program, the participants will cook differently. Different people look and act differently in game-show survival situations.

Until this ruling, it was not clear that formats of TV shows are copyright protected. The fact that they are bought and sold does not mean a court would recognize a rip-off program as being copyright infringing.

Upgrade

Armoza Productions Israel makes formats of TV programs that are successful abroad. Saar Brodsky and two partners created a format called “Upgrade” that was not successful in Israel, but which Armoza Productions managed to market abroad in 30 countries. In a groundbreaking ruling, the Israel District Court recognized copyright as subsiding in the format and thus ruled that the creators’ moral and financial copyright was infringed. It will be noted that the court could have ruled damages under the catch all tort of Unjust Enrichment.

Upgrade is a game show that goes into people’s homes and offers them a chance to upgrade their personal items for brand new ones! Each home can wager their belongings against their trivia skills. If they answer correctly, their homes will be upgraded… but there’s a catch! Wrong answers mean the items they own will be taken away. Are you ready to be left without a dishwasher, TV, or bedroom set?

In each episode the ‘Upgrade’ team will enter 2 households and play the game with them. It can be with a group of young bachelors or a big family in the middle of having their dinner – but no matter what, it is always by surprise and unexpected. Now on air in over 15 territories!

A link to the format that was posted on YouTube may be found here.

Saar Brodsky, Rodrigo Gonzales and Gili Golan created the format in 2008 and made a pilot episode for Israel’s Channel 10 that was eventually scrapped without being broadcast.

The ‘rights’ to the format were sold to ‘Tanin Productions’ which is owned by Golan (Tanin is a crocodile) and these were then transferred to Armoza Productions with a request that the three creators be credited with the concept.

Brodsky claimed that despite the significant worldwide success of the format his name was deleted from the credits in an attempt to prevent him benefiting from the copyright and profits. Judge Avnieli ruled that Armoza acted intentionally in bad faith despite knowing about his contribution to the format. Since Armoza Productions is a limited company with a single owner, the owner is personally responsible in this instance.

Judge Avnieli noted that Armoza claimed that Brodsky merely thought up the idea and discussed it with friends and did nothing to develop it further. She rejects this defense. The entertainment is the result of work by Brodsky, Gonzales and Golan which was embodied in a storyboard and presentation that was prepared for the filming of the pilot program, that was the result of deep contemplation regarding the details, the structure of the episodes, directions to the actors, choice of competitors, preparation of questions, activities and anchors that resulted in the specific end product.

The Judge noted that under cross-examination Armoza was asked to identify the creators of the format and whether the plaintiff was one of them, and Armoza’s response was that they didn’t know and that it wasn’t relevant. This was not compatible with the evidence submitted that clearly showed that Brodsky was the producer of the pilot. Judge Avnieli considers that each time Armoza claimed to be the creators of the format without attributing Brodsky and his partners, they were infringing Brodsksy’s moral rights. The Judge ruled that Brodsky and partners should be credited in each episode, that Armoza should refrain from describing themselves as the creators and fined Armoza 30,000 Shekels in legal expenses.  There is a parallel ongoing case for financial damages of 1.5 million shekels.

Armoza have vowed to appeal the decision.

COMMENT

It is almost embarrassing that Israel is developing a reputation for such programs.


Alternative Dispute Resolution Copyright in an Ark Curtain

January 9, 2017

parochet cloth.JPG

Haggit Weingarten is a talented graphic designer. She designed a parochet (curtain for ornamenting the Ark of the Synagogue) where she and her family pray in Petach Tikveh. After finalizing the design with the Synagogue, Ms Weingarten approached a company that did computerized embroidery that specializes in similar ritual items and paid them to fabricate a parochet with her design which is a stylized arrangement of a well known phrase found in Isiah 52:8. The curtain is more modern that the dark velvet or satin curtains that include Stars of David, lions, the Menorah or Ten Commandments that are ultra conservative, but it is not overly modern. The resultant curtain is shown alongside having in her Synagogue. The embroidery company were very complimentary of her design.

parochet-laviSome months later, a member of her community spent a weekend in a Kibbutz Hotel and was surprised to see a curtain with the identical design hanging in the Synagogue of the hotel. Ms Weingarten was rather annoyed about this, and after a little bit of research discovered that the embroidery company was offering the curtain in their catalogue of designs and on their website. Now furious, she got her attorney-in-law husband to write a cease and desist letter requiring that the design be removed from the catalogue and from the website and that the company pay 5000 Shekels compensation.

The company argued that graphic designers made nowhere near that amount for designing embroidery and made a counter-offer of a velvet bag for the husband to store his ritual prayer shawl in.

Dr Ben Spungin who is a patent attorney at IP Factor, prays in the same Syngagogue. The Weingartens contacted him and we decided to help. I was near the Kibbutz one day that summer and took a photograph of the curtain, which by that stage was a three piece suite set including  a cover for the Bima – the central table used for reading from the Torah, and a smaller cloth for the lectern.

The problem was that court proceedings could take 2-3 years and the total award would be unlikely to cover the legal costs which was why the embroidery company could take such a cavalier attitude to their infringement.

We prepared a Statement of Case and noted that under copyright law, the graphic artist was entitled to (up to) 100,000 Shekels compensation for copyright infringement, and a further 100,000 Shekels for infringement of her moral rights to be identified as the artist. In case the embroiderers would argue that this was a design for manufacture and not a work of art, we noted that under the A.Sh.I.R. ruling, the artist was entitled to up to 100,000 Shekels compensation under the Law of Unjust Enrichment.

We sent a copy of the Statement of Case to the embroiderers. Their lawyer got the embroidery company to take the curtain off their website and out of their catalogue, and  then contacted us to negotiate a settlement.

Now whilst the law provides grounds to sue for up to 200,000 Shekels, followers of this blog will note that court rulings vary widely from 2000 Shekels to maybe 50,000 Shekels for copyright infringement of this nature. Ms Weingarten did not include her name as the designer on the original curtain for her Synagogue. Nor would she be expected to. Arguably however, this puts a zero value on her moral rights to be recognized as the artist. More significantly, the original Cease & Desist letter from her husband valued the infringement at 5000 Shekels. Still, the curtain had now gone forth and multiplied into a family of three embroidered cloths. With both lawyers phoning their clients and a little haggling, a settlement was agreed that was more than the Weingartens had originally asked for and even after paying us a small commission, was still more than they would have received.  Justice was served in that the embroiderers ended up paying more than they would have otherwise, not including their own legal expenses. The issue was settled in less than three months.

It should be appreciated that mediation and arbitration are faster alternatives to court proceedings. As this was not a court ruling in the public domain I am not naming the infringing company, but in court rulings, the parties are identified. To avoid adverse publicity it is often in the parties’ interest to avoid going to court.


Statutory Damages for Reproducing Photographs

August 2, 2016

copyrightUnder the Israel Copyright Law 2007 there are statutory awards available for copyright infringement of up to 100,000 Shekels without proof of damage. There is a separate statutory award for damage to the moral right to be acknowledged as an author of a creative work that is up to an additional 100,000 Shekels .

Photographs are considered creative works and it is the photographer, not the subject of the photographer that owns the rights.

However, the would-be-plaintiff should be aware that although the courts can award up to 200,000 Shekels for copyright infringement by a photograph being reproduced without permission, they generally make much smaller awards.

Whether one sues under copyright infringement or under the Law of Unjust Enrichment the statutory damage despite lack-of-proof merely enables the court to grant compensation for estimated damages where the plaintiff has trouble proving the damage. Not every photograph is considered as automatically worth tens of thousands of shekels.

Here are four recent cases:

  • A website for an aluminium factory used an image taken from a competitor’s website without permission. The damages awarded were 3,500 Shekels.
  • A photographer took pictures of landscaped gardens, and the landscape architect reproduced these without permission. The name of the photographer was not mentioned. The compensation awarded for copyright and moral rights infringement was 10,000 Shekels.
  • A beautician and her husband sold cosmetics via eBay from a virtual shop. The cosmetics were made by Holyland Cosmetics. The beautician and her husband used photographs and text taken from  Holyland Cosmetics’ website and were fined 65,000 Shekels.
  • amir-peretzVery few photographs become iconic images. One that did was the famous picture of then Israel Defense Minister Amir Peretz looking interestedly at military maneuvers through binoculars without noticing that the lens caps were still in place. A journalist called Ephraim Shrir took the photo, and has since been busy suing every newspaper and media outlet that failed to acknowledge his moral rights to be recognized as the photographer, and that failed to pay him copyright compensation.  We have written about his claims in the past, see here and here, where both his copyright and moral rights were recognized by the courts. In a recent ruling however, Shrir sued HaAretz for reproducing the photograph, but they claimed that they had obtained the image legally from Associated Press (AP) who was acknowledged. The case was thrown out.

 

 


Photos of Real Estate Are Copyright Too…

April 22, 2016

images

Estate Agents as they are called in English, or realtors as the Americans refer to them, help owners sell or rent out properties, and take a commission for so doing.

A picture is worth a thousand words as the saying goes. One estate agent who took photographs of properties and used them on his websites, discovered a marketeer marketer who used the same photos on a competing website. The estate sued for copyright infringement and succeeded in proving ownership of the copright in the photographs. A competing estate agent cannot claim ‘innocent infringement’ and the plaintiff was awarded 2500 Shekels damages.

COMMENT

Bearing in mind the low level of originality in such images, but that one estate agent is entitled to expect that his competitors will take their own photographs or come to an arangement with him to use his pictures for a fee, the ruling seems reasonable. True, statutory damages wihout proof are considerably higher, but these are a maximum, not automatically given, and a standard photo of an apartment block or similar is not high art.


Restaurant Fined for Screening Euroleague Football

April 13, 2016

UEFA

A Nahariya restaurant screened Euroleague football matches in 2012, using them as a way to attract customers. Charlton who has the broadcasting rights and deals with satellite and cable TV companies claimed that their license was for private use, not commercial use.

The Israel court ws not neither convinced that the match was inadevertently shown on the large television screens in the restaurant nor that it was the only match screened to customers, and fined the restaurant 45,000 Shekels as a warning to other businesses.


IP Conference in Memory of Arnan Gabriel

March 28, 2016

Seligsohn Gabrieli & Co., together with the Haifa Center of Law and Technology are hosting what seems intended to become an annual event in memory of Arnan Gabrieli.

The conference seems to be in Hebrew. It is titled “קניין רוחני באינטרנט: הזדמנויות וסיכונים” which means IP on the Internet, Opportunities and Risks.

The event is scheduled for April 5, 2016, with registration at 4 PM.

Awards will presented to students, in memory of Adv. Arnan Gabrieli.

Professor Eric Goldman, the Director of the High Tech Law Institute, Santa Clara University School of Law, USA will speak on “Trademarks on Social Media” the language is not specified.

This will be followed by a session chaired by son-and-heir, Nahum Gabrieli on “Music Copyright, the Future on the Web”. The panelists include Professor Niva Elkin Koren of Haifa University, Law blogger and Adv. Chaim Ravia and Ms Orli Freund Maya, legal counsel of AKUM, the collecting society for Israel music.

I understand that the event is to be held at the Interdisciplinary Center, Herzliya.

COMMENT

Arnan was a leading IP lawyer, scholar and part time lecturer who litigated a number of Israel’s leading IP cases. I did part of my training in the firm, and subsequently managed the patent and design department that was formally headed by semi-retired patent attorney (and Rabbi) Alfred Thee before setting up on my own. I owe a lot to the firm for what I learned there.

An obituary to Arnan Gabrieli may be found here.

This combination of student awards and a conference directed to cutting edge IP issues seems a fitting tribute.