Luistone, Bridgestone, what’s the difference?

May 27, 2018

GoldbergA Chinese man and his Jewish friend were walking along one day when the Jewish man whirled and slugged the Chinese man and knocked him down.
“What was that for?” the Chinese man asked.
“That was for Pearl Harbor!” the Jewish man said.
“Pearl Harbor? That was the Japanese. I’m Chinese.”
“Chinese, Japanese, you are all the same!”
“Oh!”

They continued walking and after a while the Chinese man whirled and knocked the Jewish man to the ground.
“What was that for?” the Jewish man asked.
“That was for the Titanic!”
“The Titanic? That was an iceberg.”
“Iceberg, Goldberg, you are all the same.”

Shandong Luistone Wheels Co submitted Israel Trademark Application No. 287968 for LUISTONE in Class 12. The Application was the National Phase of International Trademark (Madrid) Number 1309157.

On 18 October 2018, the International Bureau was informed that the mark was allowed subject to no oppositions being filed.

On 31 January 2018, Bridgestone Corporation opposed the mark under Section 24a of the Trademark Ordinance and regulation 35 of the trademark regulations 1940.

On 6 February, the International Bureau was alerted under Section 56(vi)b of the Ordinance, and provided with the timetable for submitting a response and counter-claims.

Under Regulation 37, the Applicants had two months to submit a counter-statement, and the final deadline was 6 April 2018. No counter-statement or request for an extension were received until 26 April 2018 when Arbitrator of Intellectual Property Ms Yaara Shoshani Caspi ruled that the mark could therefore be considered abandoned and the file closed. No costs were awarded.


Can a Knowingly Abandoned Patent Application be Reinstated?

May 22, 2018

BioMarin

IL 206845 to BioMarin Pharmaceuticals Inc. was refused under Section 21a of the Israel Patent Law 1967. The patent application was the national phase of a PCT application submitted on 6 January 2009. The national phase entry was submitted on 6 July 2010 and claims priority from US applications filed on 7 January 2008 and 22 April 2008.

On 30 January 2013, the Applicant was sent an Office Action to which the Applicant had four months to respond. No response was forthcoming. Following the extensions available under Circular 005/2011 then in force, on 5 March 2014 the Applicant was informed that the file would be closed if no response was submitted within 30 days. This letter went unanswered and the file was closed on 23 June 2014.

3 years

Three years and three months later, on 15 October 2015, the Applicant requested a retroactive extension to respond to the notice of abandonment.

The request was accompanied by an Affidavit that testified to the developments leading to the case becoming abandoned.

  1. In 2005, Merck Serono purchased all rights to the Kuvan medical product, and to the process for manufacturing the active ingredient claimed in the application.
  2. This transfer of rights was not recorded in the patent register and the Application was filed in the name of Biomarin.
  3. In 2012, Merck Serono decided that it was not interested in the patent issuing in Israel and told Biomarin not to respond to the Office Action.
  4. In 2015, Biomarin repurchased their rights to the invention and in 2016-2017 reviewed the usefulness of getting the patent to issue in Israel.
  5. Following the reconsideration, the present request for extension of time to respond was submitted in October 2017.

change-my-mindThe Applicants argued that their repurchasing of their rights and their reconsideration of the portfolio provides sufficient justification for reconsidering the refusal of the patent. Furthermore, unlike in the US and Europe, there is no legal requirement for abandonment so thus, even if the abandonment was following an intentional decision by Applicants or the predecessor thereof, this does not mean that, following a change of circumstances, this cannot be reconsidered and they are entitled to a further opportunity

mistake EinsteinThe Applicants presented their arguments at a hearing on 14 February 2018, during which they claimed that the Applicants can be considered as having made a mistake that they now wish to rectify. They also claimed that returning the application to examination will not cause damage to third parties. Finally, they argued that in Appeal 8127/15 Association of Israel Industrialists vs. Merck Sharp & Dohme Corp. et  al. (15 June 2016), certainly is no more important than other considerations.

Sections 21 and 21a of the Law set out the normative arrangement for these matters as follows:

21.  If the Applicant did not remove the grounds for the Application not being approved within the timetable set out in the regulations or did not correct the lacunae under Section 20, the Commissioner will refuse to allow the patent.
21a. If the Commissioner refuses the patent under Section 21, he can, at the request of the Applicant, reconsider the refusal provided that the request to do so was submitted within 12 months of the refusal.

reasonable

The period laid out in Section 21a of the law is extendable under Section 164 of the Law at the Commissioner’s discretion. The Commissioner’s discretion is summed up in the phrase “if he sees a reasonable basis for so-doing” which is found in Section 164a. The Commissioner’s considerations will change with circumstances, and as Judge Naor stated in Appeal 826/04 Commissioner of Patents vs. Recordati Ireland Ltd (26 June 2004):

The policy regarding different requests for extending deadlines that are brought before the Commissioner, will change with circumstances and with the nature of the proceedings for which an extension is requested.  

 Similarly, the Commissioner has the authority to make the extension dependent on “conditions that he considers to be correct” as stated in Section 164b of the Law.

In cases such as this, there are two main interests. Firstly, that of the Applicant who wishes to protect his invention and, secondly, that of the public which can benefit from inventions that are not patent-protected and are thus in the public domain. It is noted that this case is the national phase of a PCT application and the application and its status is published under section 16a of the Law.

limited

The Deputy Commissioner Ms Jacqueline Bracha considers that the period given in Section 21a, though long, is limited. This protects the public and brings matters to a close. The period given in the Law is a balance between the competing interests.

To extend the 12 month period after the file closes under Section 164 requires ‘reasonable grounds’, as defined in Opposition to IL 110548 Shmuel Sadovsky vs. Huglat Kimberly Marketing ltd, 12 August 2010. The relevant considerations for ‘reasonable grounds’ are the duration of the extension requested and the existence of a real cause for the delay.

Ms Bracha does not consider that the Applicants’ request can be considered reasonable with respect to the delay incurred or the justification to reopen the file. The request to reopen the file was received 39 months after the case was closed. This is 27 months after the usual deadline which is a long time.

As to the submission that the client changing their mind is grounds for opening an intentionally abandoned application, the Deputy Commissioner does not find this convincing. She finds support in Appeal 83/86 Sokol vs. Yismach, p.d. 40(1) 577 cited in the Sadovsky case, where it is stated that:

The discretionary authority to extent deadlines is intended to overcome mishaps and externalities that are beyond the litigant’s control.

One cannot consider a decision not to continue prosecuting as being an external cause, a mishap or an error. Ms Bracha notes that the circumstances described in the Affidavit show that the error we are dealing with is imported from Contract Law and is at best “a mistake in the equity of the deal” which is not grounds for cancelling a contract.

In a similar manner, it has been determined that not paying a renewal of a patent due to a determination that it is not worthwhile to do so is NOT considered as a reasonable ground for reinstatement, and that is where we are dealing with an actual right that the patentee was awarded and not with a pending application as in this case. See Request for Reinstatement of IL 177522 of “Yad Conena Ltd from 9 June 2014:

The circumstances of the case before me do not fulfill the above requirements. A decision was taken not to pay the Renewal fee. The patentee knew that the there was a need to pay the renewal fee as this was not the first time that he had needed to pay it. One can assume that after the case lapsed and was reinstated in 2011, the patentee made inquiries regarding the next renewal. From the Affidavit it transpires that the patentee made an informed decision NOT to pay the fee. In these circumstances one cannot conclude that the fee was not paid in reasonable circumstances that justify reinstatement.  The economic difficulties that the Applicant noted are not considered reasonable grounds for not paying the renewal, particularly where no evidence of the debit was submitted.

As a footnote, Ms Bracha relates to the claim that the request finds support in Appeal 8127/15 Association of Israel Industrialists vs. Merck Sharp & Dohme Corp. et  al. (15 June 2016), that in patent law, fidelity and consistency is no more important than other considerations. Ms Bracha considers that certainty is not all-seeing and that sometimes certainty will be sacrificed for other interests. In  re Association of Israel Industrialists, it was stated:

True, there is validity to the suspicion that certainty may be damaged when a court comes to interpret the Law (Aharon Barak Legal Interpretation, Interpreting Legislation Volume 2 583 (1993). Nevertheless, this is one consideration amongst many that can be used where there is nothing in the wording of the Law or elsewhere to directly contradict this. In this instance, it appears that the legislators did not put the question of certainly regarding when a patent lapses as the main consideration.

In other words, the consideration of certainty is an important consideration but where the wording of the Law or its purpose indicate that the legislators preferred some other consideration, the Court will interpret the Law accordingly.

Ms Bracha does not consider that in this instance the Law or the case-law expounding the Law indicate that the legislators preferred the interest of the Applicant over that of public certainty, She considers that to the extent that there is a legal tradition for interpreting Sections 21a and 164 of the Law, it is one that requires the Applicants to provide a real and reasonable cause for incurring a delay, and this is necessary since there is public reliance on the patent lapsing.

revival-2

The Applicants also requested to learn from what is stated in foreign legislation, that what is not stated in our Law is not a requirement. That is, that whereas other laws explicitly state “unintentional” this implies that there is no such requirement in Israel Law. Whilst it is true that Section 21 does not require abandonment to be unintentional, it does provide a normative timeframe for reinstatement, whereas the US and European law do not.  Any deviation from this period is considered in the mirror of Section 164 which is interpreted in light of the nature of the deadline to be extended and the type of proceeding before the Commissioner. This was detailed above, and will not be repeated. It is sufficient to note that one cannot rely on the inclusion or omission of a word in the Israel Law as the basis for its interpretation whilst ignoring the case-law.

It seems that the circumstances are such that the case was abandoned intentionally and can only be rectified if this was not legal. The request is refused.

IL 206845 to Biomarin: refusal to reinstate application, Deputy Commissioner Ms  Jacqueline Bracha, 17 April 2018.     

COMMENT

In extraordinary circumstances, long-dead applications have been reinstated. See for example IL 194015 to Natapov, Perstnev, Perstnev and Vilacer titled “the Insulating Material”. Here the patent had lapsed three years earlier, but had not published. The record is probably Israel Patent Number 139892 “INNER WORKINGS FOR A WATER TREATMENT UNIT” to Yigal Tsabri  which was revived seven years after it lapsed.

I am frankly surprised by the audacity of the Applicants’ representative for trying to  argue that this knowingly abandoned patent application could be revived more than 12 months after going abandoned and am pleased that the Deputy Commissioner came to the decision that it could not be.


Evangelical Television and Temporary Injunctions

May 9, 2018

voice of hope2

High Adventure Ministries sued Strategic Group, The Voice of Hope LTD and Rev John D. Tayloe (presumably Taylor?) for using “the Voice of Hope” for spreading evangelical messages.

This case related to a Request to Appeal a refusal to grant a temporary injunction that was issued by Judge M Amit-Anisman of the Tel Aviv – Jaffa District Court on 27 November 2017.

The background relates to the parties’ activities concerning dissemination of Evangelical Christian messages via the radio and similar, under the name “Voice of Hope”.

The background relates to the parties’ activities concerning dissemination of Evangelical Christian messages via the radio and similar, under the name “Voice of Hope”.

high global

The Appellant, High Adventure Ministries, has used the mark for many years, and sued the defendants Strategic Group, The Voice of Hope LTD and Rev John D. Tayloe in the Tel Aviv – Jaffa District Court claiming passing off, Unjust Enrichment and infringement of a well-known trademark albeit not registered in Israel.

During the proceeding, they submitted a request for a temporary injunction to forbid the defendants using the mark. This interim injunction (Case 65046-06-17) was refused by Judge M Amit-Anisman on 27 November 2017. She ruled that the Plaintiff had a case, at least under the tort of passing off, but considered that the significance of the case, the balance of convenience and justice considerations tilted the scales in favour of the defendants, stressing that:

  1. The defendants had used a radio station named Voice of Hope for a number of months and its establishment had required an investment of millions of dollars.
  2. The radio station broadcasts in Arabic and is directed to listeners in various Arab countries, whereas the plaintiff’s transmissions are in English and are directed to English speakers.
  3. The plaintiff had known about the intention to establish the radio station at least a year ago but had been tardy in filing a complaint and so was not deserving of a temporary restriction order.

voice of hope

The plaintiff claims that the defendants’ website includes English and so they also direct their efforts to English speakers. They argue that it is not proven that a temporary injunction will cause the defendants damage, however NOT granting a temporary injunction will do them damage, and they contested the allegation of tardiness. They argued that they had a good case and accused the defendants of inequitable behaviour. The defendants meanwhile, argued that the Court of First Instance was correct to refuse to grant a temporary injunction and did not consider that the case should be appealable.

This issue is one of temporary injunctions, which are relevant to trademark issues. In this field, the Court of First Instance that considers the case has wide discretionary powers and the Court of Appeal has limited authority to intervene where the Court of First instance has the information before it and hears witnesses and gets an impression of their reliability. There are, however, exceptional cases where intervention is justified, but is this one of them?
Antenna

Whether or not to grant interim injunctions depends on two main variables: the likelihood of prevailing, and the balance of convenience.

The court of first instance determined that there was a case to be answered. However, it was the balance of convenience and considerations of justice that tilted the scales into not issuing the temporary injunction. Thus despite considering that there was a case, it was the balance of convenience issue that was considered more important. Here, both sides argued that it was not proven that the other party would suffer irreversible damage. In this regard, Judge Handel emphasized two points:

Firstly, apart from general waffle, neither party provided concrete data supporting their suspicions that the damage they would suffer would be irreversible. For example, the defendants invested significant sums in establishing their radio station but did not show that much of that investment was in branding, and that changing the name of the channel temporarily would adversely affect their profitability. That said, since they are already broadcasting under the name Voice of Hope, there is no doubt that a temporary injunction would inconvenience them, not so much due to the start-up investment costs, but because a change of name could cause confusion and lose them listeners.

The plaintiff Appellant did not indicate why failure to grant a temporary injunction would cause him damage. Here the emphasis is on the fact that the radio station broadcasts in Arabic, whereas those of the plaintiff Appellant are in English. So the target audience is different, and there is no support to the claim that the plaintiff Appellant will suffer damage, and thus no support that he would suffer irreversible damages. In this regard, Judge Handel considered the claim that the plaintiff Appellant had a world-wide reputation as the Voice of Hope, but as the District Court stated, in the request for a temporary injunction, the plaintiff Appellant failed to provide the factual basis for the claim that Arabic speakers are familiar with the Voice of Hope and would link the defendants’ station with the Israeli body that uses that name. Thus even if Judge Handel would accept the claim that the name Voice of Hope is indeed a well-known mark around the world that is associated with the plaintiff Appellant, that would not be a sufficient basis to grant the temporary injunction.  See for example, the Opposition to Israel Trademark Application Number142266 “No limits eyewear” (2 May 2004). It is noted that the burden of proof is on the plaintiff who wants the temporary injunction, expect for one exception, and here the second consideration comes into play.

Secondly, the defendants’ Internet site gives the impression that the radio station is the one established in 1979-2000 that no longer broadcasts, For example they state:  

“In 2014 we reestablish the VOICE OF HOPE radio station which had broadcast from South Lebanon from 1979-2000 The airwaves have been silent for 17 years, until today!

In other words, the defendants are glorifying themselves as reestablishing the station that the plaintiff had owned. Since the word mark is the same for the two stations, and the dove logo is similar, there is indeed likelihood that English speakers would erroneously conclude that the defendants’ station is associated with the plaintiff.  Similar erroneous messages are found in other English advertisements used by the defendants, appended as annexes 4-8 of the Appeal.

This suspicion of misleading the consumers throws a special light on this proceeding which relates to trademarks. Unlike other civil disagreements such as contract law, with regards to intellectual property, there is a third wheel to the conflict – the public.

The purpose of the Law of is not merely the narrow interest of the parties, but also the public interest who have a place in the story (see for example 8127/15 The Associate of Israeli Industrialists vs. Dohme Corp and Merck Sharp, 15 June 2016), and in trademark matters,  see also the request to register Israel Trademark No. 164702 LENGO, paragraphs 6-9 and the references there.

This is true for main trademark proceedings, such as registration of a mark in the trademark register, but it is also true for temporary injunctions. Just as it is important to consider the public in the main rulings, it is also important to consider them when considering issuing temporary injunctions since temporary injunctions are designed to serve the main ruling. The extent that NOT granting a temporary injunction would lead to the public being misled should be considered when considering temporary injunctions.

It will be noted that the first point emphasized the commonality of civil law including trademarks, whereas the second point emphasized the uniqueness of trademarks. This is not contradictory. Just as one has to consider the likelihood of a proceeding being successful in prevailing with regard to a specific law, one has to consider the uniqueness of trademark law where the specific law is the Trademark Ordinance. The difference is that one also has to relate to the third wheel – the public. This is the commonality with Administrative Law, although the public interest is different in the two areas. Whereas trademark Law is still personal law, in this regard it is on the seam between personal private law and public law.

In this instance, the existence of two entities transmitting Evangelical Christian messages under the same trademark, where one body publicises itself as related to the other body before the same target group, is likely to mislead the English listening demographic. This has an independent weight in both the considerations of public interest and in the balance of convenience. The risk is not that the listening public will be confused, as the transmission languages are different. The risk is in the advertisements in English. In these circumstances, it is fitting to not allow the appeal apart from with regards to one point.

That is to say, that the District Court was correct to refuse to grant a temporary injunction to the extent that it would be inappropriate to interfere, due to the large investment, the different target audience and language and the delay – even if it resulted from a lack of clarity regarding the defendants’ intentions following exchanges of letters and it is not clear if there was tardiness, or if the plaintiff thought things were resolvable without going to court, but the findings of the Court of First Instance were reasonable.

Together with this, the Court of First Instance was wrong with regard to the request to remove advertisements that create an association between the defendants and the plaintiff. The defendants are required to remove all references to the historic Voice of Hope channel belonging to the Appellant, and similarly to cease and desist from any publication that implies a connection between the parties. Alternatively, the defendants are allowed to leave the advertisements in place, but to add a clear and unequivocal clarification that they are not related to the English Voice of Hope, so that advertisers will not be misled. If the parties are not happy with this, they are invited to raise their claims with the Court of First Instance, but it appears that the parties can settle this between themselves without referring back to the courts.

In Judge Hendel’s opinion, this is the correct balance between the plaintiff, the defendants and the public. The defendants can continue broadcasting in Arabic under the name Voice of Hope to the residents of Lebanon and Syria since, in the framework of the request for a temporary injunction, no risk was substantiated that Arabic speakers would be misled regarding a relationship with the plaintiff’s station that closed in 2000, and so there is no risk of damaging that station. This considers the target audience of the radio station, and the minor differences in the marks, See Nazareth Civil Action 613/95 Arditi Americano vs. Harush, paragraph 6 (17 March 1996), and also considering that no evidence was produced to substantiate the claim that the mark was well known amongst Arabic speakers. As to English speakers, only the plaintiff transmits in English, and the defendants admit that their usage of English is only for written advertising purposes. Thus there is no likelihood of confusion regarding the transmissions themselves, but only with regard to the advertisements and these are mitigated by the steps ruled above.

Domino's pizzaPizza Domino

Such intermediate rulings are possible in trademark case which can result in two similar marks coexisting where there is a ruling that creates a difference that mitigates the likelihood of confusion, such as with regards to Israel TM no 6140 Domino Pizza which then Commissioner Michael Ophir Z”L allowed to coexist with Pizza Domino, in light of the different colour schemes, signage and newspaper articles stressing the lack of connection between the two chains. This is not a common occurrence, but it is fitting in a temporary injunction, as it balances the three interests, including that of the consumers.

All of the above only relates to the temporary injunction. It does not nail down the final ruling. The parties disagree regarding many factual matters, such as whether the plaintiff has a reputation, and the extent of that reputation, how well the Voice of Hope is known around the world and so on. Although these issues are considered with respect to whether a temporary injunction is appropriate, this in no way decides the trademark issue or nails down the main ruling, but merely attempts to minimize damage to both sides before the full ruling issues. See Appeal 4196/93 Shefa Bar Management and Services 1991 led.vs Shefa Restaurants Production and Marketing of Prepared Meals 1984 Ltd. p.d. 47(5) 165 (1993). The appropriate temporary injunction and the appropriate main ruling have different considerations. The Court’s main consideration with respect to temporary injunctions is to enable the main proceeding to take place without creating irreversible damages, whilst noting that the apparent facts and working hypotheses are liable to change, as is the perceived public interest, throughout the case, and the Court will have to make a final ruling in due course.

The Appeal for a temporary injunction is partially accepted and the costs awarded against the plaintiff by the Court of First Interest are cancelled. The defendants will bear the plaintiff’s costs and legal expenses of 18000 Shekels.

High Adventure Ministries vs. Strategic Group and the Voice of Hope LTD; ruling on interim injunction by Judge Hendel 7 May 2018.

COMMENT

2567555-David-Ben-Gurion-Quote-The-test-of-democracy-is-freedom-ofI think this ruling is balanced. It is in stark contrast to the en banc decision in the Bagatz ruling on the legality of the lex-specialis Arutz Sheva where the Supreme Court overturned a Law that legalized the station, basing themselves on the spurious argument that allowing the station would interfere with other stations being able to attract advertising revenue, alleged to be a fundamental right under the quasi-constitutional Basic Law – Freedom of Occupation, whilst ignoring the fact that the appellants acted in bad faith (Yossi Sarid was simultaneously campaigning for Abu Nathan to get the Nobel Peace Prize for the Voice of Peace),  and with no mention of the other quasi-constitutional right, that of Freedom of Speech, defended successfully by Judge Agranat in 73/53 Bagatz Kol HaAm vs. Ministry of Interior, 1953 where Ben Gurion’s attempt to silence a communist newspaper was thwarted well before the ‘legal revolution’. Aharon Barak creatively misinterpreted the basic Laws of 1991 to give the courts unprecedented and anti-democratic powers to overthrow Knesset legislation and widened the definition of legal standing to allow the courts to intervene at the request of legislators, non-profits and others.
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Pending Israel Copyright Amendment to Address Internet Piracy of Audio Visual Works

May 8, 2018

pirate bay

Oh, better far to live and die
Under the brave black flag I fly,
Than play a sanctimonious part,
With a pirate head and a pirate heart.
Away to the cheating world go you,
Where pirates all are well-to-do;
But I’ll be true to the song I sing,
And live and die a Pirate King.

Pirates of Penzance Gilbert & Sullivan

From 2006 to 2014, we have noted that Israel has been on the United States Special 301 priority watch list of countries having allegedly inadequate IP protection. The main criticism was the pharmaceutical extension regime in Israel which was believed to be too liberal to generic manufacturers. The amendment of the amendment was reamended and Israel’s status was upgraded.

A second criticism was that Israel’s copyright regime did not provide tools to hold Internet Service Providers (ISPs) responsible for preventing free access to copyright materials such as songs, movies and television series over the Internet. There are good arguments for and against making service providers responsible. They are not policemen and should not be. There is a perceived problem that without monetary compensation for their creative output, producers and artists will not create.

There is a new copyright bill pending legislation in Israel that addressed this issue, and a copy of which may be found here. The purpose of the bill is to try to reduce copyright piracy on the Internet, particularly of audio-visual works.

The following is an analysis of the proposed amendment. The bill contains four elements:

  1. An expansion of the concept of indirect infringement, to include websites that offer viewers access to unauthorized content such as movies and TV series. The indirect inclusion includes links to an offshore location in cases of actual or constructive knowledge of the act and intent to profit.
    This element will have utility to the extent that the Israeli courts can thereby obtain jurisdiction over the operators of the web site that aggregates the links. However, where this entity is not identified, then this part of the amendment won’t have much real world effect.
  2. Blocking Orders. While some courts have issued these in the past, other courts claim that without specific authorizing legislation they do not have authority to grant blocking orders. Hence the legislation.
    This element is likely to become the best tool for disrupting internet piracy. The proposal also clarifies that the cost of the blocking order will be borne by the applicant and not the Internet Service Provider (ISP). Apparently, there are actual costs in carrying out such blocking order.
  3. Discovery of the identities of up-loaders of infringing content.
  4. Enhanced criminal penalties.

The Tel Aviv Law School (Amnon Goldenberg Institute run by Professor Michael Birnhack) has published their comments on the bill, as have others, and it is scheduled to be debated by the Economics Committee of the Knesset on 21 May 2018.

ISP-1

The goal of the Ministry of Justice in formulating the bill was to find language that would be wide enough to catch pirates, but narrow enough to not cause any unwanted collateral damage. This goal was difficult to achieve in the proposed 48A.

Content developers and rights holders would prefer that the legislator err, if at all, on the side of over-protection, whereas the advocates of fair use and free speech prefer that the legislator err, if at all, on the side of under protection.

What is not included in the Bill, despite calls for such, is:

  • A codified “notice and takedown” type regime; and
  • WIPO style “technological protection measures” legislation.

The “notice and takedown” case-law seems to work, so why fix it? Although we have heard comments from legitimate web sites that a “safe harbour” might help them should 48A prove to broad in practice.

pirate dated

Currently, Israel does not have technical performance measures (TPM), something mandated by the 1996 WIPO treaties and intended for a different era, but which may have some unintended relevance in a world where content is no longer delivered on DVD, but rather through on-line subscription services. The Israel Justice Ministry does not have any a priori objection to either of these matters. However they are both incredibly complex to draft and if drafted improperly can have grave unintended consequences. For example, an overly broad TPM provision might have unintended consequences for tech companies and their developments.

The Justice Ministry considers that both of these issues are worthy of further study, but to move forward with them considers they should get the full legislative process by issuance of a proposal, requesting public comment, the drafting of a bill, and Knesset discussion, rather than a last-minute add-on to a pending bill.

The current bill is cautious and conservative, with the drafters having the perception that it is easier to add measures than to cope with overly broad powers and runaway judges.

 

Comment

The proposed legislation seems balanced and well-considered.

Certainly consumers of content should compensate the developers of the content for their efforts, and have little patience for those that download films and series, arguing that the developers don’t lose anything as they wouldn’t pay for it anyway. Traditionally, Jewish Law did not generally recognize non-tangible property rights, although entertainment, such as a dance, could have value and be used instead of a ring, for marriage purposes. The modern economy and civilization has moved on and IP rights are an essential development. Israel should be a light to the world in judicial matters. However, where there are widely accepted minimum standards of behaviour, it is important that Israeli legislation and private behaviour do not fall behind.  That said, I don’t think that there is any basis for assuming that people write songs or create films for revenue in 70 years’ time or for 50 years after death. The actuarial depreciation of such revenue streams to the time of writing results in such future profits as being negligible. I would prefer that:

  • laws on copyright infringement be coupled with the need to register copyright (as once required in the US, and required for trademarks, patents and designs
  • that the period of protection be significantly shortened to perhaps 10 or 15 years
  • that after initial launch in cinemas or as albums, movies and songs become available for reasonable cost over the Internet by legitimate streaming services, and that viewers can choose between premium advertisement-free access and sponsored access
  • there should be broad fair use exceptions
  • I am very put out that academic papers are developed by public universities and that access often requires payment. I want to see access for all with the universities sponsoring the publication rights, and more journals being exclusively on-line. Knowledge should be in the public domain, but authors should be recognized. There seems no place for commercial publishers of academic journals in the modern world.

The Economy of Innovation

May 3, 2018

zombie.jpgIlan Cohn, Dorit Karine and Former Commisioner Asa Kling are to be congratulated for organizing a balanced high level program with parallel sessions relating to different aspects of IP, that was fairly well-structured. It was less schleppy than the 2016 reincarnation, but was nevertheless not inspiring. Participants returning to their offices would probably use terms like OK (בסדר) to describe the event to their colleagues. However, I can’t see anyone telling those colleagues that they missed out by not attending. Attendance levels were high for an Israel IP event, but low when considering the potential and the resources invested.

intercontinentalAs in previous years, the event was held at the prestigious David Intercontinental in Tel Aviv. There were over a hundred speakers, but luckily they were spread out over two days and with three sessions running in parallel and most having panels of four or five speakers, this was less overwhelming than it sounds.

ASHER_D._GRUNISAfter the usual self-congratulatory opening remarks, the conference kicked off with Judge Asher Grunis former Head of Supreme Court criticizing Judge made law, specifically the infamous A.Sh.I.R. ruling. Being a formalist myself, it was enjoyable hearing a Supreme Court president criticizing judges doing what they like.
It  would have been nice would have been reference to the recent injunction against Rami Levy in the Baladi case and also the controversial Unipharm vs. Sanofi which both related to Unjust Enrichment in IP matters. Then again, Rami Levy recently appealed the pasta injunction and may well be appealing the minute steak injunction, and Unipharm vs. Sanofi is under appeal, so perhaps he was correct not to address these cases.

It is not every day that one gets to hear a former Head of the Supreme Court discussing judicial legislation which is a hot topic at present due to attempts by the Justice Minister to reign in judicial activism.

Unfortunately, Judge Gronis didn’t bother using visual aids, and did not balance his talk by showing how judicial creations such a contributory infringement and indirect infringement (Srori, Rav Bareakh) can be valuable.

Variety

varietyThe conference was wide-ranging, with sessions on various aspects of patenting, including pharmaceuticals and computing which are always controversial.

There were also sessions on the interfaces of trademarks and designs and copyright and designs. The issue of content piracy over the Internet and new legislation addressing this issue was presented. There was a session on trade secrets and one on copyright infringement over the Internet, so there was much to interest IP lawyers and not just patent attorneys.

crowd.jpgNew tax issues relating to international companies were discussed, and how this would likely affect Israel. I took the opportunity to ask the panel about the VAT issue, and Adv. Ayal Shenhav confirmed my understanding that services relating to an asset in Israel do indeed incur VAT.  This is a practical issue that affects IP practitioners. I would have preferred some sessions on such practical matters, as there is confusion among practitioners.

There was a session on the fashion industry and one on IP rights and competition law. Licensing agreement and Medical devices were discussed, as was the Internet of Things and standard non-discriminatory  licenses. There was also a session on traditional knowledge.

adidas.jpgApart from the keynote lectures and the final session, there were generally three parallel and diverse sessions going at any time, so everyone could find something of interest; whether related to their practice or a window on some other aspect of IP.

As I had to pick and choose myself, although I did try to slip in and out to get some sort of feel for the different sessions running in parallel, it is difficult to give a fair overview of the entire event. It is certainly possible that the scheduling resulted in me totally missing sessions that I would have thoroughly enjoyed.

I rather enjoyed a session on the Interface Between IP Law and Competition Law, where Judge Grosskopf (now of the Supreme Court) related to the Read the rest of this entry »


Conference on Copyright for Music in the Digital Age in Memory of Arnan Gabrieli

May 2, 2018

 

הזמנה לכנס השלישי בקנין רוחני עש עוד ארנן גבריאלי זל - 8 במאי 2018

Nahum and Ehud Gabrieli of Seligsohn Gabrieli & Co. are hosting a conference in memory of Arnan Gabrieli at Airforce House Herzliya on 8th May 2018. The event is cosponsored with the Haifa Center for Law and Technology and AKUM – the main Performers Copyright Collection Society in Israel.

The program features a lecture by Gad Oron who now manages CISAC, the international Confederation of Unions of Creator and Composers , and Jennifer Bernal, the Public Policy Manager of Google.

Scholarships for outstanding IP Students in memory of Arnan Gabrieli will be awarded.

COMMENT

arnan_gavrieli.jpgI worked for Seligsohn Gabrieli & Co. back in Arnan’s day, when the firm was called Seligsohn et Gabrieli before I left in 2004 to set up my own patent attorney firm. Back in those days, Gad Oron was busy running around the District Courts as, on behalf of AKUM, the firm sued restaurants and hairdressing salons for streaming Israeli music without license.  Gad went to London where he did an LLM under Professor Jeremy Phillips at Queen Mary College, which eventually led to his current position.

This conference is a fitting tribute to Arnan who was both a practitioner and scholar.


Supreme Court Adds Sauce to Temporary Injunction

April 25, 2018

Back in February, we reported regarding a temporary injunction that Barilla obtained in the Tel Aviv District Court against Rami Levy, requiring them to remove packages of pasta that came boxed in blue boxes with cellophane windows and similar packaging to Barilla’s range of pastas.

The image above shows Rami Levy’s packaging under the Olla own-brand on the left, and the Barilla packaging on the right.

Whilst it is true that the Olla packaging does state Rami-Levy – Shivuk HaShikma (Sycamore Packaging), and the name of the pasta is written in Hebrew, it is also true that both brand-names end with the syllable and letters lla, and the fonts are italicized and slope to the right.

Rami Levy appealed the decision to the Supreme Court but Judge Solberg upheld the temporary injunction pending a full trial and ruling, and also widened it to cover pasta sauces, noting that like Barilla, Rami Levy uses glass jars with blue lids for their tomato sauces. Costs of 40,000 Shekels were awarded to Barilla for having to deal with the appeal.

Comment 

We note that Rami Levy has a further own-brand packaging for dried pasta (on the right), where Taaman (whose own packaging is blue) package their pasta for Rami Levy in cellophane bags that seem inspired by Osem’s Perfecto range (on the left) so they can simply pour out the boxes and bag in cellophane, at least until Osem sues them.

steaks

We also note that Rami Levy (on the left) recently jumped into the frying pan with minute steaks, using a packaging scheme not vastly dissimilar from Baladi’s (on the right), and that Judge Avrahami of the Petach Tikveh District Court granted a temporary injunction requiring Rami Levy to adhere a sticker that is not red, white or black to their frozen meat package of minute steaks that should be at least 11 cm by 8.5 cm, that is clearly printed and which states that the product is under Rami Levy’s own label. The sticker must not include the price or the words “Special Offer”, that could dilute the effect of differentiating between the products. The sticker is to be applied to the front of the packaging at the top, under the term “Maadaniyah” (delicatessen).

Appeal 1065/18 and 1521/18 Rami Levy vs. Barilla, 22/4/2018