Is Screening a Football Match on Public Television at a Restaurant, Copyright Infringement?

August 22, 2018

burgerim 2

Burgerim is a chain of burger shops. Back in 2013, a Burgerim branch in Givatayim screened a football match that was part of the Euro-league on a regular television set that was connected to their Cable TV supplier HOT, and was sued for copyright infringement by Charlton who owns the transmission rights. Charlton claimed that the screening was a public performance, whereas the restaurant claimed that they simply switched on the television. Judge Ronen Ilan of the Tel-Aviv Jaffa Magistrate’s Court ruled that even if the match is copyright protected, allowing customers to watch a publicly-broadcast match is not a performance of the copyright-protected work, and ruled costs of 12000 Shekels against the plaintiff.

This is a summary of his arguments:

Is switching on a television receiver in a work-place, whilst a TV game is broadcast on a public channel, considered copyright infringement?

Apart from screening the match on a television set, without any additional equipment such as an amplifier, for example, the defendant did not do any action whatsoever. In these circumstances, one cannot accept the plaintiff’s claim of copyright infringement for two reasons:

Firstly, in these circumstances, where the game is screened on a television set, there is no ‘performance’ of the transmitted creation due to the minor involvement of the one setting up the TV and the received in passing on the transmission, the involvement being limited to setting up the TV receiver. Thus specifically, due to the change in legislation due to the introduction of the Israel Copyright Law 2007, which differentiates between “public performance” and transmission. Due to all these reasons, activating the television in order to watch the transmitted program is not a “performance” of the creation.

Secondly, even where one to accept the claim that screening a transmitted creation is a “performance” of the creation, one still could not see a copyright infringement in this instance, since we are dealing with a transmission of something on a public channel. The plaintiff did not show that the Law prohibits screening a public broadcast to the public. Activating the television receiver to the public so that they can watch the game that is being broadcast on a public channel is not copyright infringement of a transmitted creation.

Furthermore, even if we were to accept the plaintiff’s claim that their creation was infringed; in the specific circumstances of this instance, where we are dealing with the screening of something on a public channel, where there was no advanced warning of any possible copyright infringement, but against this there is an attempt to prevent screening of sports programs which may be damaging to the defendant, the defendant is entitled to the claim of innocent infringement.

Civil Ruling 271019-09-15 Charlton vs. Bowling World, Ruling by Judge Ronen Ilan, 6 August 2018

COMMENT

Israel has public television channels that can be received on a television set equipped with an aerial. In the past, one required a license, but even this formality is no longer the case with the disbanding of the former television authority and the establishment of the new one.  Charlton holds the broadcasting rights for the Euroleague. The sports channel is a component of basic packages of “HOT” – the cable TV company, “YES” – the satellite TV company, and IDAN+ – the digital over-the-air option that gives you a small number of basic channels. All these are subscription services. No-one has a basic human right to access the sports channel but can purchase a subscription from a service provider.

Now there are sectors of the population, particularly the ultra-Orthodox, that do not have television. I know a number of people who are by no means ultra-Orthodox, but nevertheless have forgone having television, as they see it is a waste of time, and something that prevents their children from developing useful reading skills and the like.  I also know many families that make do with the public stations and do not receive the sports channel. When there is a major sporting event such as the World Cup (Mondial), some of these people, including ultra-Orthodox youth, returnees to the faith, and others, go to pubs, pizza parlors and burger outlets to watch the match.  There are also others that have access at home, but go as a group to such a place to cheer on their team.

Givatayim backs onto the ultra-Orthodox neighborhood of Bnei Brak where owning a television set is frowned upon. I suspect that this is why the Givatayim Burgerim branch chose to screen the football.

In Appeal 6407/01 Tele-Event vs. Golden Lines, 7 July 2002, the Supreme Court recognized that sports matches, though not scripted (at least not officially and legally scripted) were, nevertheless, entitled to copyright protection.  This meant that the licensee with distribution rights in Israel could prevent the cable and satellite networks from transmitting broadcasts on foreign channels as part of their bundle.

Now when a match is screened by a food-outlet for their customers, it is part of the entertainment package. For similar reasons, for it to be improper for a hotel to connect TV receivers in every room to a single subscription but rather to require the hotel to obtain a commercial package, it makes perfect sense to prevent restaurants from screening matches without obtaining a special package to do so.

There is certainly a concept of de minimis fair use in copyright, and when a child of mine invites neighbors over to watch a match (or preferably goes to them), that is not copyright infringement, but a restaurant essentially rents chairs and tables. If it uses such screenings to attract punters, there is a good argument that they should pay to do so.  It will be interesting to see if Charlton appeals this ruling, and whether it is reversed.

 

 


Appeal to Supreme Court, Should a Judge who points out the Weakness of a Case at Pretrial, Recuse Herself for Having Preconceptions?

August 15, 2018

justiceYehoshua Fishler is suing G.A. Ehrlich LTD (Ehrlich & Fenster) in the Tel Aviv – Jaffa District Court.

He requested that Judge M Amit Anisman withdraw from the case.

The case concerns allegations and counter allegations of breach of contract concerning G.A. Ehrlich (1995) Ltd obligating themselves to register Fishler’s patent in various jurisdictions. In his Statement of Case, the complainant alleges that the defendant did not timely pay issue fees and as a result the case was not registered.

In a pre-trial hearing held on 7 February 2018, the parties stated their cases and Judge M Amit Anisman asked various questions and then ruled that “after the court explained to the complainant the likelihood and risks of the case and the difficulty in managing it, the complainant will have 14 days to reconsider the case and if they decide to continue, the defendant will be allowed to request that the complainant deposit a bond to cover defendant’s costs should the defendant prevail.”  

Fischler informed the court that he intended continuing with the case and so J A Ehrlich (1995) Ltd (henceforth Ehrlich) requested that Fischler be obliged to deposit a bond to cover costs should he lose. The court acquiesced to this request, ruling that such a bond was appropriate in this instance, inter alia because of the chances of the complainant prevailing. Regarding this, the Judge stated that “I am doubtful if the case can be considered as ‘a complete waste of time’. Nevertheless, one cannot be blind to the chances of the complainant prevailing that were shown by the defendant (requesting the bond) in light of the fact that the plaintiff is not relying on a point of law that obliges the agent acting as a service provider, to pay fees on behalf of the client.” Following this, Fischler appealed to the Supreme Court to have the Judge removed from hearing the case due to having adverse preconceptions as evidenced from the decisions of 7 February 2018 and 23 May 2018.

On 18 July 2018, the Judge presiding over the Court of First Instance refused the request for her to recuse herself. The Court argued that their referring the complainant’s attention to issues that adversely affected their chances of prevailing, does not provide grounds to a real claim that the court had interests or that the Judge should recuse herself. The Court had not reached a conclusion regarding the substance of the case, and the statements have to be understood in the context of the early stage then reached. The complainant’s allegation that the court invited the defendant to request that the complainant post a bond is incompatible with the sequence of events, since the defendant made it clear at the pre-trial hearing, that they intended making such a request. The Court emphasized that the fact that the defendant was given an opportunity to request the deposition of a bond does not indicate that the Court has reached any conclusion regarding the outcome of the trial, nor does it imply an assessment of the complainant or a ‘threat’ in any shape or form.  This is true regarding the 23 May 2018 ruling. The Court explained that requiring the complainant to post a bond does not imply that the Court had closed its mind. The additional claims of the complainant were a kind of appeal, and were improper in a request for a Judge to recuse herself.

This resulted in an Appeal to the Supreme Court, which was heard by Chief Judge Hayot. In a hearing before Judge Hayot, the complainant reiterated his allegations that the pre-trial hearings demonstrated that the Judge had already made up her mind. He reiterated his statement that the Court had invited the defendant to request a bond be set and that this was an “implied threat”. Fischler claimed that the decision to require a bond itself testified to the Court of First Instance having already made up its mind.

After considering the Statement of Appeal and its appendices, Judge Hayot ruled that it should be rejected. The protocol of the pre-trial hearing has nothing that provides a real indication that the Judge had a conflict or had made up his mind, and this is true of the interim ruling regarding deposition of a bond. The District Court did not ‘invite’ the defendant to request that a bond be placed. The defendant themselves announced that they would make such a request. Similarly, and without going into the issues themselves, the mere fact that the Court indicated problems with the charges brought is not a reason for the Court to disbar itself. The contrary is true. An effective management of the case is likely to result in the presiding Judge expressing an opinion – tentatively and with care – regarding the contended issues, and there is no reason for the Court to refrain from pointing out the weaknesses in the case of one of the parties, and even to suggest that a plaintiff consider withdrawing the case (Appeal 8893/17 Nasrallah vs. Aladin, paragraph 5 (22 November 2017).

Chief Judge Hayot considers that the Court has acted in an analogous manner in the current case by allowing the defendant to require that the complainant posts a bond should they decide to continue with the case. Finally, after reviewing the plaintiff’s allegations regarding the posting of the bond, it appears that they relate to the matters under dispute and it is not superfluous to note that when considering whether or not it is appropriate to require a party to post a bond, the Court should consider the likelihood of the parties prevailing. Consequently, requests for a Judge to recuse herself and appeals regarding these decisions are not the correct forums to raise these issues, and the correct way to appeal is via a formal appeal (see Appeal 2004/18 Plonit vs. Plonit, paragraph 4 (18 July 2018).

The Appeal is rejected. Since no response was required, no cost ruling is made.

Interim Ruling on Appeal by Judge Hayot in Appeal 5685/18 Fischler vs. G.A. Ehrlich (1995) ltd, 12 August 2018. 

COMMENT

Whether or not a Judge has preconceptions, unsuccessfully requesting her to recuse herself and then unsuccessfully appealing to the Supreme Court that the Judge be considered unfit to hear the case is unlikely to enamor the plaintiff with the Judge in question.

Israel Magistrate Court Rules that Screening a Football Match on Public Television at a Restaurant, not Copyright Infringement

Burgerim is a chain of burger shops. Back in 2013, a Burgerim branch in Givatayim screened a football match that was part of the Euro-league on a regular television set that was connected to their Cable TV supplier HOT, and was sued for copyright infringement by Charlton who owns the transmission rights. Charlton claimed that the screening was a public performance, whereas the restaurant claimed that they simply switched on the television. Judge Ronen Ilan of the Tel-Aviv Jaffa Magistrate’s Court ruled that even if the match is copyright protected, allowing customers to watch a publicly broadcast match is not a performance of the copyright protected work, and ruled costs of 12000 Shekels against the plaintiff.

This is a summary of his arguments:

Is switching on a television receiver in a work-place, whilst a TV game is broadcast on a public channel, considered copyright infringement?

Apart from screening the match on a television set, without any additional equipment such as an amplifier, for example, the defendant did not do any action whatsoever. In these circumstances, one cannot accept the plaintiff’s claim of copyright infringement for two reasons:

Firstly, in these circumstances, where the game is screened on a television set, there is no ‘performance’ of the transmitted creation due to the minor involvement of the one setting up the TV and the received in passing on the transmission, the involvement being limited to setting up the TV receiver. Thus specifically, due to the change in legislation due to the introduction of the Israel Copyright Law 2007, which differentiates between “public performance” and transmission. Due to all these reasons, activating the television in order to watch the transmitted program is not a “performance” of the creation.

Secondly, even were one to accept the claim that screening a transmitted creation is a “performance” of the creation, one still could not see a copyright infringement in this instance, since we are dealing with a transmission of something on a public channel. The plaintiff did not show that the Law prohibits screening a public broadcast to the public. Activating the television receiver to the public so that they can watch the game that is being broadcast on a public channel is not copyright infringement of a transmitted creation.

Furthermore, even if we were to accept the plaintiff’s claim that their creation was infringed; in the specific circumstances of this instance, where we are dealing with the screening of something on a public channel, where there was no advanced warning of any possible copyright infringement, but against this there is an attempt to prevent screening of sports programs which may be damaging to the defendant, the defendant is entitled to the claim of innocent infringement.

Civil Ruling 271019-09-15 Charlton vs. Bowling World, Ruling by Judge Ronen Ilan, 6 August 2018

COMMENT

Israel has public television channels that can be received on a television set equipped with an aerial. In the past, one required a license, but even this formality is no longer the case with the disbanding of the former television authority and the establishment of the new one.  Charlton holds the broadcasting rights for the Euroleague. The sports channel is a component of basic packages of “HOT” – the cable TV company, “YES” – the satellite TV company, and IDAN+ – the digital over-the-air option that gives you a small number of basic channels. All these are subscription services. No-one has a basic human right to access the sports channel but can purchase a subscription from a service provider.

There are sectors of the population, particularly the ultra-Orthodox, that do not have television. I know a number of people who are by no means ultra-Orthodox, but nevertheless, have forgone having television, as they see it is a waste of time, and something that prevents their children from developing useful reading skills and the like.  I also know many families that make do with the public stations and do not receive the sports channel. When there is a major sporting event such as the World Cup (Mondial), some of these people, including ultra-Orthodox youth, returnees to the faith, and others, go to pubs, pizza parlors and burger outlets to watch the match.  There are also others that have access at home, but go as a group to such a place to cheer on their team.

Givatayim backs onto the ultra-Orthodox neighborhood of Bnei Brak where owning a television set is frowned upon. I suspect that this is why the Givatayim Burgerim branch chose to screen the football.

In Appeal 6407/01 Tele-Event vs. Golden Lines, 7 July 2002, the Supreme Court recognized that sports matches, though not scripted (at least not officially and legally scripted) were, nevertheless, entitled to copyright protection.  This meant that the licensee with distribution rights in Israel could prevent the cable and satellite networks from transmitting broadcasts on foreign channels as part of their bundle.

When a match is screened by a food-outlet for their customers, it is part of the entertainment package. For similar reasons for it to be improper for a hotel to connect TV receivers in every room to a single subscription, but rather to require the hotel to obtain a commercial package, it makes perfect sense to prevent restaurants from screening matches without obtaining a special package to do so.

There is certainly a concept of de minimis fair use in copyright, and when a child of mine invites neighbors over to watch a match (or preferably goes to them), that is not copyright infringement, but a restaurant essentially rents chairs and tables. If it uses such screenings to attract punters, there is a good argument that they should pay to do so.  It will be interesting to see if Charlton appeals this ruling, and whether it is reversed.


A Balanced Temporary Injunction Against Rami Levy

April 19, 2018

This case concerns ‘minute steaks’ supplied by Rami Levy – a supermarket chain in own-brand packaging that has some similarity to that of Baladi, a brand that had introduced the product to the frozen meat freezers in Israel. Baladi sued Rami Levy for passing off, copyright infringement and unjust enrichment and tried to obtain a temporary injunction against Rami Levy at what is the start of the Israel barbecue season.

steaks

This case concerns ‘minute steaks’ supplied by Rami Levy – a supermarket chain in own-brand packaging that has some similarity to that of Baladi, a brand that had introduced the product to the frozen meat freezers in Israel. Baladi sued Rami Levy for passing off, copyright infringement and unjust enrichment and tried to obtain a temporary injunction against Rami Levy at what is the start of the Israel barbecue season.

baladi minute steak

The claims of passing off and copyright infringement were considered unlikely to prevail and thus not grounds for a temporary injunction. However, Judge Avrahami saw fit to grant a temporary injunction on the grounds of unjust enrichment. Rather than have Rami Levy’s product removed from the shelves and repackaged which could result in the meat being lost, she ruled that a sticker in a contrasting colour should be attached to the packages indicating that Maadaniya was Rami Levy’s own brand. Rami Levy was also advised to work towards introducing a more different package. The parties were invited to try to settle their differences without the court having to hear the case in its

Baladi makes meat products including minute steak which are thinly sliced steak that can be roasted in a frying pan in one minute. Baladi claims to have designed the packaging that they use for minute steaks.

Rami Levi is a public company that runs supermarkets across Israel. The company stocks known brands and also sells popular products packaged for them under their own label.

Rami Levi sells Baladi products. It also sells minute steaks under their only  own label “Rami Levi’s Sycamore Marketing Delicatessen”. Rami Levi’s own label minute steaks are packaged by TBone Veal.

In a preliminary ruling, Baladi claimed that minute steaks were not sold in supermarkets until they launched this product in November 2017 with a massive and expensive sales campaign. From the launch until 19 March 2018, the product sold well due to the marketing campaign. On 19 March 2018, suddenly, without notice, Rami Levi forbade Baladi to replenish supplies and blocked the product, and instead supplied minute steaks under their own label.

baladi logo

Baladi claims that the own-label brand is packaged in a copycat package of that of their product, and that this was a calculated, organized action of Rami Levi in bad faith, to ride on Baladi’s advertising campaign and product launch, benefiting from their investment. Baladi’s campaign has drawn customers to want to purchase their product. The customers go to the meat refrigerators and find the infringing product that is a copy of their package and are misled into believing that they are purchasing Baladi’s product.

Baladi considers that the case is particularly serious since Rami Levi is a retailer that can block their product whilst offering the competing own-label product. This is particularly problematic since Rami Levi’s product launch was just before Pesach and close to Independence Day which is the start of the Israel barbecue season when sales go up significantly.

In light of the above, on 22 March 2018, Baladi sued for passing off, unfair trade practices, copyright infringement in the product package and unjust enrichment. They filed their case in the Tel Aviv and Jaffa District Court. Baladi requested a permanent injunction, compensation and production of sales data. For the purpose of assessing the court fees, Baladi assess the damages at 2,750,000 Shekels.

Baladi also requested a temporary injunction on Rami Levi to prevent them using the product sold under their private label or at least to prevent them selling the product in the packaging used at the time of filing, and to cease from blocking Baladi’s products, and to enable their products to be sold on an equal basis with other frozen meat products. The Request was supported by an affidavit from Ms Irene Feldman, the VCFO of Baladi, and was filed as an ex-partes action for immediate attention since any delay will cause irreparable damage.

El gaucho minute steak

In response, Yossi Sabato, the VCEO of Rami Levy submitted an Affidavit claiming that Baladi was acting in extreme bad faith by not telling the court that they were conducting a parallel action against El Gaucho which is a label of TBone Veal in the Central District Court as 4347-01-18. In that instance, they made similar accusations which were rejected. This action, in a different court, against a different label, was a type of forum shopping that was indicative of bad faith and should be sufficient for the case to be thrown out. This was simply an attempt to corner the market and to prevent competition. The Ex-partes actions in both the El Gaucho case and in the present instance are cynical exploitations of the legal system designed to get free publicity, and the plaintiff was suing for extreme damages without having first contacted the supermarket chain, which is itself inequitable behavior for which the case should be thrown out.

monopoly

With regards to the complaint itself, Rami Levy claims that Baladi is trying to obtain a monopoly on minute steaks, which is a term known in Israel and abroad and which they did not coin. Baladi also tried to obtain a trademark for this generic term. Minute steaks have been advertised in Israel in the past and are available in restaurants and from butchers, and even from supermarkets. Baladi has not been in the market long enough for minute steaks to be identified with them to the extent that they deserve a monopoly on the term (acquired distinctiveness), and a reputation that is protectable, and even Baladi does not claim to have rights to minute steaks but only to the sound of the name.

Rami Levy

Rami Levy claims that their product package is completely different from Baladi’s, including writing and visual elements, and there is no likelihood of confusion. Baladi advertises their product with their trade-name Baladi clearly written thereon and, in the absence of this term, there is no likelihood of confusion. Rami Levy’s private label HaMaadaniya (literally the delicatessen) is well-known to Rami Levy’s customers as a low price brand, and there is no likelihood of confusion.

“Rami Levy” is written clearly on the front and back of the packaging, and is a super brand that does not need to ride on the reputation of Baladi or anyone else. The difference in price also prevents confusion, and all Rami Levy’s own branded products are clearly sold as such in their stores, and there are loads of examples of private labels being sold alongside branded goods and the public are not misled in any way that they are purchasing something other than the own label.

boycott

As to the issue of marketing Baladi’s products in Rami Levy’s stores, Rami Levy contends that they are under no obligation by general law (in rem) or by contract (in personam) with Baladi, to purchase any of Baladi’s products, including their meat products. Baladi’s goods are available in other chains. At present, Rami Levy stores DO stock Baladi’s minute steaks but, in view of the high price that Baladi dictates for their product, Rami Levy is under no obligation to replenish stocks of something much more

In answer to Rami Levy’s response, Baladi reiterated that their issue is NOT the name ‘minute steak’, but the packaging and the product blocking. On 26 March 2018. a long hearing was held. There were many attempts to bring the parties into an understanding, and the affidavits were reviewed and the parties summarized their arguments. After the hearing the parties still refused to come to an understanding, and so there is no alternative but to reach a verdict in this instance.

Relevant Considerations Regarding Temporary Injunctions

Principles-Governing-Issuance-of-Temporary-Injunction

It is known that the party requesting a temporary injunction has to convince the Court, on the basis of apparently convincing evidence, that there is grounds for the complaint and the Court then has to balance the ease of implementing the different actions, i.e. the damage to the complainant if a temporary restriction order is not issued, vs. the damage to defendant if a temporary restriction order is issued but if it later transpires should not have been. The Court has to ascertain whether the temporary injunction was requested in good faith, and if the injunction is just and fitting in the circumstances and does not unduly damage the defendant – See Regulation 363 of the Civil Procedures Regulation 1984.

interests

The main considerations for requesting a temporary injunction are the likelihood of prevailing and the balance of interests of the two parties, but where the Court considers that the likelihood of prevailing is greater, they will be less concerned about the balance of interests, and the opposite is also true.

When deciding on a temporary injunction, the court also has Read the rest of this entry »


Israel Supreme Court Overturns Ruling Forbidding Copying Fashion Designs

February 21, 2018

necklines

Back in December 2016 Israel fashion designer Gadi Elemelech sued Renuar, a chain selling women’s clothing, for selling clothing that was confusingly similar to his haute couture dress. The dress in question appeared in Elemelech’s 2013 collection, and in Renuar’s 2014 range. The legal grounds for the action were the Israel Trade Related Torts Act 1999. Judge Gidon Ginat ruled that a chain-store that copied a range of designer clothing should cease and desist, and that Renuar should pay damages of 55,000 Shekels and a further 35,000 Shekels legal costs.  Civil Tort 5366-12-14 Elimelech vs. Renuar Ruling by Gidon Ginat, 22 December 2016.

The ruling was appealed to the Israel Supreme Court which overturned it, canceling Judge Ginat’s ruling without costs to either side. Instead of a long detailed ruling, the three judge panel ruling is barely two lines, and simply states that simply copying a product is not enough to obtain a legal sanction against the copier, with a reference to paragraph 18 and citations of the Apropos 945/06 General-Mills vs Meshubach ruling(Bugles).

COMMENT

This ruling essentially means that non-registered designs are in the public domain and cheap copies of various articles, from food snacks to fashion clothing can’t be litigated unless the design is registered, apart perhaps from specific cases where there is some additional issue (A.Sh.I.R.).


Copyright in Numerology

December 12, 2017

numerologyNumerology is any belief in the divine, mystical relationship between a number and one or more coinciding events. It is also the study of the numerical value of the letters in words, names and ideas. It is often associated with the paranormal, alongside astrology and similar divinatory arts.

gamatriya chartIn gamatriya, each letter of the Hebrew Alphabet is assigned a corresponding number. the first nine letters are numbered 1 to 9, and the next nine are assigned the numbers 10, 20, 30, etc. The final four letters are assigned the values 100, 200, 300, 400.

The word alphabet comes from the Greek Alpha Beta, and the word gamatriya comes from Gamma – t(h)reeya. That said, the Greek alphabet was based on the Hebrew and Phoenician precedents. The Latin letters were derived from the Greek ones.

The issue in question here, is whether copying sections of verbal lectures and publishing them in writing is considered copyright infringement.

In coming to their verdict, the Supreme Court has reviewed the differences between the onld and new, law, what fixation is required and in what circumstnaes a publisher or distributor can be considered as innocently infringing.

The Case

Sharon Ron is a numerology lecturer. In 2002 Ela Shonia attended his numerology course at the Association for Promoting Awareness in Haifa. At the lectures, handouts and exercises were distributed by Ron. In 2003, Shonia and a fellow student called Sarah Vakhnin attended private lessons given by Ron at his home in Kfar Sava.

Numerology 3rd milleniumIn 2004, Shonia published a book titled “Numerology for the third millenium” which went to three editions, the last one in 2010. In 2010 Shonia published a second book titled Combined Numerology. Both books were published by Astrologue Publishing LTD.

Mishkal Publishing & Distribution LTD received the rights for both books in 2010, in a deal between Shonia, Astrologue and Mishkal dated 03/02/2010 [I am writing the date in numeric form as it may portend something – MF]. Ron sued Shonia, Astrologue and Mishkal in the Tel Aviv District Court in Appeal 8822/15, and counter Appeal 8822/15. [No doubt these file numbers have some mystical significance-MF].

On 20 March 2004 and on 3 February 2010, Shonia signed declarations Read the rest of this entry »


Israel Supreme Court Upholds Decision Re Appellation of Origin

November 26, 2017

cheese and wineIsrael is a member of the Lisbon Convention for the Appellation of Origin. This is an international convention beloved of the French and frowned upon by the common law countries. Essentially food and drink associated with certain places is entitled to wider protection than mere trademark protection, so that only Scotland can make Scotch Whiskey. Only France can make Champagne and Cognac. Parmesan cheese and hams must come from the Parmesan region of Italy, and so on.

There are now two Israeli whiskey producers. Israel makes Kosher bubbly wine and brandy and a very wide range of cheeses that mimic English, French, Italian, Dutch and Greek types. The labeling is carefully controlled in accordance with the rules.

Israel boasts one Appellation of Origin: Jaffa for citrus fruits.

jaffa orangeCalling something Jaffa, Jaffas, or in Hebrew יפו, יבא, יפאס is not merely a trademark infringement, but also infringes the special law governing this appellation of origin “The Law for Protecting Origins and Indication of sources 1965” gave special protection for Jaffa and variant spellings for citrus fruits. Subsequently, special amendments to the Trademark Ordinance in 1968 widened the protection of the Jaffa mark to prevent its usage for a wider range of goods, and forbade marks that include the word Jaffa as only part of the mark. The amendment to the trademark ordinance takes this protection very seriously, and instead of merely providing financial remedies, prescribes incarceration for infringers.

126 EL AL Poster, Two Flight Attendants in Orange Uniforms by 747, Marvin G. Goldman Coll'nelal posterBack in the Sixties, Israel was a banana an orange republic. The largest export sector was fruit and vegetables and oranges were the flagship product. The posters alongside, used by ELAL – Israel’s national airline gives an indication of the importance and symbolism of the orange in that era.

The Council for Producing Plants and Their Marketing owns rights in the word Jaffa as a geographical application of origin.

Yehuda Malchi tried to register Israel Trademark Application Numbers 20542 and 220581 for OLD JAFFA, for preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats; all included in class 29 and for coffee, tea, cocoa, sugar, rice, semolina, tapioca, coffee substrates, cereals, breads and baked goods, sweets, ice-creams, honey, yeast, baking powder, salt, vinegary sauces (flavorings) and spices in class 30, respectively. Israel trademark no. 237678 covering soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices, all included in class 3 had previously issued without opposition. In an action combined with an opposition by the Council for Producing Plants and Their Marketing to Israel Trademark Application Numbers 20542 and 220581 , the Israel trademark 237678  (Old Jaffa) was canceled. The ruling may be found here.

Having appealed the Israel Patent Office ruling and that of the District Court, Yehuda Malchi appealed to the Israel Supreme Court.

EtrogJudge Hendel’s ruling included an interesting side comment in which he noted that Chief Rabbi Kook, who was the Chief Rabbi of Jaffa and the surrounding agricultural villages from 1904 until the outbreak of World War 1, had backed a campaign to promote using Jaffa etrogs (citrons) for the Sukkot ritual, rather than those from Korfu and Italy, which held much of the European market. Judge Handel thus argued that Israel was traditionally blessed with citrus fruit and that Jaffa was the hub of the trade a hundred years ago.

Hendel also noted that very little of the sprawling urban conurbation around Jaffa is devoted to agriculture today, but since the amendment to the Trademark Ordinance explicitly prevents use of Jaffa as part of a mark, the phonetic or visual similarity between JAFFA and OLD JAFFA is not relevant. He thus upheld the District Court’s ruling.

COMMENT

I am naturally formalistic (which is considered a dirty word in Israeli legal circles), and generally think that where the democratically elected legislative passes a clear law, the judges should follow that law. I am against judicial activism which I see as undermining the Knesset. (That is not to say that recent government attempts to prevent charges being brought against active ministers, to prevent the Prime Minister from being indicted for corruption are the finest examples of parliamentary legislation).

Nevertheless, I think that Judge Hendel could have and should have struck down this law providing wide and special protection for Jaffa oranges. The reason why is not merely that the brand does not indicate oranges from the Jaffa region grown by Jewish agriculturists on Kibbutzim, but rather that it does not indicate oranges grown in the contested region of Israel – Palestine at all! In order to provide year round supplies to world wide markets, oranges grown in South Africa and Australia are sold under the Jaffa brand. Thus the unique and distinctive taste of Jaffa oranges is not a result of the terroir of the Holy Land at all.  This travesty means that BDS supporters are not merely depriving Arab orchard owners with Thai foreign workers of their livelihood in an attempt to harm Israel politically, but are also harming the black workers in townships around Johannesburg.

Since the Council for Producing Plants and Their Marketing does not restrict usage of the mark to Israel grown oranges, why shouldn’t the special designation be cancelled?

In fairness to Judge Hendel however, we note that Yehuda Malchi was not represented and suspect that the sad state of affairs described above is unknown to him.

For the record, we note that it is ill-advised to appeal to fight legal battles, including submitting Appeals to the Supreme Court without legal representation.


 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 »