This, despite the fact that a sporting event is, in itself, an occurance taking place in real time, displaying facts which are not copyrightable. In addition, the court determined that the broadcasting of a live sporting event through streaming is equal to traditional broadcasting and therefore constitute copyright infringement.

In this case, the English Premier League motioned the Tel Aviv District Court to order the Internet Suppliers, Netvision 013 and Nana 10, to reveal the name of an unknown individual who allegedly infringed the rights of the Premier League through online streaming of football games.

Initially, the District Court Judge Michal Agmon-Gonen held that the shooting of sporting events was not copyrightable. At a later decision, Judge Agmon-Gonen held that while the shooting of the sporting event was copyrightable, streaming does not meet the statutory definition of broadcasting, since the law defines broadcasting as technology dependent and limited to “wire or wireless transfer”. Judge Agmon-Gonen stated that the relevant right for transferring of content over the Internet is the right to make available to the public. The live transferring of a sporting event can only be watched during the period of time in which the event takes place. Thus, it is not available “at the time of choice” of the public as is defined in the “right to make available a work to the public” under the law. Therefore Judge Agmon-Gonen found no infringement.

Judge Agmon-Gonen further reviewed the question whether the actions of a John Doe amount to fair use. The District Court Judge stated that the new Copyright Law (passed in 2007, in effect since May 25, 2008) changed the balance between users and rights’ holders such that users now had a right of their own. Accordingly, the Judge stated that the public interest for giving the public access to cultural events should overcome the interests of the rights’ holders. Furthermore, since to the Court’s opinion the sporting events are not protected by themselves, and since the creative elements in the recording of these events – including the photograhy, the direction, production, commentary etc. – are of secondary importance compared to the eventuation and the score of the sporting event, this issue does not impact the heart of copyright law and rationale, and therefore the actions involved should be considered as fair use.

In the Supreme Court’s rulling of this week in the appeal on the decisions make by the court of first instance, the judges accepted the claims of the appelant and cancelled all of the rullings of the District Court Judge regarding copyright. The Supreme Court Judges stated, primarily, that the recording of sporting events, including the photography, the direction and the production – amount to an original work of art and is worthy of copyright protection. Second, the Judges rulled that since the files that are being transferred during the streaming of the work of art are not saved in the receiving computer but rather deleted following the presentation of the work of art, the streaming technology resembles the classical broadcasting. Therefore, transferring a protected work of art using the streaming technology constitutes an infringment of the right to broadcast.

The Supreme Court stated that transferring of contents through the internet meets the definition of “wire or wireless transfer” in the Copyright Law. The Judges found no reason to limit the “broadcasting” to the technical means and methods that were used prior to the inception of the Internet, since the new Copyright Law seeks to match the Israeli Copyright Law with the digital age and the challenges it poses in the field of intellectual property.

In addition, the Judges stated that the new Copyright Law did not change the balance between the rights of the copyright holders and the interests of the users, and that fair use is merely a right in the sense of “freedom”, not in the strong sense of a forceable right. Thus, fair use is only a defense, and as such the burden of proof to show the defense of fair use applies lies with the defendant. The Supreme Court Judges ruled that John Doe did not prove his fair use defense, and his actions were found to infringe the right or broadcasting of the Premier League.

Nevertheless, the Supreme Court Judges were divided whether to reveal the identity of the respondent. The Majority opinion ruled against it, but refered to the legislator stating that these issues should be determined by law.

While the Premier League won a victory in this case, the outcome is of little effect since John Doe remains anonymous allowing him to escape liability due to lack of proper legislation in Israel at this time.

International trademark registrations requests which a color is one of the components of the mark, sometimes include together with the symbol itself a textual description of the colors. When transferring the request from the International Bureau to Israel, for registration purposes, this description is automatically recorded in the Israeli Trademarks Registry to restrict the use to these colors.

When a national or international request to register a Trademark is submitted and specific colors are part of its components, the application will be examined as limited to the colors described. If the trademark was accepted for registration, even if the application didn’t include a textual description of the colors assembling the mark, it will be limited to the colors assembling the mark. If the applicant intension is to register the trademark for all colors, he must apply the registration with a Black & White mark.

The Plaintiffs are the parents of Chen Efrat, a woman who passed away as a result of a severe allergic reaction to nuts served to her inside a desert at the defendant’s restaurant. The plaintiffs argued, that the waitress clearly said that the dessert was without nut ingredients. It turned out that the desert contained a chocolate spread based on walnuts.

The Plaintiffs asked and received an “Anton Piller” warrant to seize the Respondent’s computer hardware, including the existing camera films taken in the defendant’s restaurant, as well as, staff names who worked that evening and all documentation relating to supply orders on the relevant dates.

The Respondents argued against the warrant saying that the request did not meet the requirements established in previous rulings of the court. Furthermore, the attorney appointed to seize and hold the assets under the Anton Piller order exceeded his authority when he conveyed the assets to a third party, by doing so he violated his duty for confidentiality. Nevertheless, no proof was shown to indicate a basis for real concern that those assets will be discarded or destroyed.

The court accepted the motion for cancellation of the issued Anton Piller order and stated that it was not proven at the required level of “near certainty” that there is a real concern regarding the defendant’s intention to discard or destroy the evidence. Moreover, such concern cannot be attributed to those who did not commit a criminal offense and the sole accusation ascribed to them is negligence. The Court added, that as a rule, it is not possible to use the “Anton Piller” order while filing a lawsuit based on the “Torts Ordinance” especially when negligence is to be considered. This decision is contrary to many previous decisions where an Anton Piller order were issued for tortious causes of action. 

The court goes on to base his decision on the following considerations:

First, the severe violation of the defendants basic right to be heard by the court, since the plaintiffs motioned the court ex parte. For that matter, the court chose to add that it was possible to obtain all the required information by using the standard procedure, meaning applying a “discovery and inspection of documents” request.

The court also took into consideration, the plaintiffs’ use of the media during the execution of the Anton Piller order and that the purpose of the motion was to “fish” for evidence, both seemed to undermine the good faith of the plaintiffs when moving the court.

The Court mentioned that Rule 387A requires three cumulative conditions for receiving an “Anton Piller” search and seizure order:

First condition, the motion must be accompanied by reliable evidence to prove the cause of action and credible evidence showing that the assets are “needed evidence” to prove the claim, and they were with the party against whom the warrant is requested. The requirements for a specific application and for evidence to support it are intended to ensure that the applicant acts in good faith and with integrity.

Second condition, the motion must satisfy a “real concern” that must be shown at a level of certainty that the evidence in the possession of the defendant would disappear. Furthermore, the moving party must show a connection between the assets whose seizure is requested and the the success of the lawsuit.

Third condition, the moving party must bring forth evidence showing that concealment of assets which might occur, would create a heavy burden on the legal process, not only causing difficulties in proving the prosecution’s case, but also lead to its failure.

The Court concluded that in accordance with Rule 387A the plaintiffs failed to base their motion on reliable evidence to prove the cause of action, they also failed to show at the required level of “near certainty” an existence of real concern that the defendant will discard or destroy the evidence requested. In addition, the plaintiffs failed to prove a causal connection between the concealment of assets and a heavy burden on the procedure or its chances to fail.

Amendment No. 9 was due to take effect within 30 days from the day it was published (December 8, 2011).  However, the Minister of Justice can postpone the effective date order, and according to the Israeli Patent Authority’s website the revision has not yet come into effect and a notice of which should be published in the future.

With the entry into effect of this revision, the Israeli Patent Authority should complete the preparations needed and it is expected to start its activity in the first half of 2012 as a PCT searching and examination office.

The following issues are included in Amendment No. 9:

New Terms – The terms Patent “Office” or Patent “Bureau” were amended with the terms “Authority” or “The Authority”. Therefore from now on the Israeli Patent Office will be called the Israeli Patent Authority.

Amendment to Article 17 – The amendment will allow the Patent Office, if it was requested by the applicant, to produce a report of examination results of a patent application that is not an international application, in an identical manner to that of the international search report.

Amendment of Article 48A – Several amendments were added regarding the definitions of the new roles of the Patent Authority and the definition of the PCT was updated. The definition of “treaty” included the regulations of the PCT as they were in effect on January 1, 1994. The definition was updated to include reference to the latest regulations as they appear on the WIPO website.

Amendment of Article 48 (9) – This section sets the new functions of the Patent  Authority as an international Search Authority and International Preliminary Examination Patent Authority, regarding international applications in accordance with the PCT Treaty and the agreement signed with the International Bureau. The Patent Authority can now serve in these capacities that are related to applications filed by Israeli citizens and residents. Section 48(9)(b) allows the Patent Authority to serve in these capacities also in relation with citizens and residents of other states, as listed in the appendix to the agreement and from countries published in the Official Gazette. This will open the way for the Israeli Patent Authority to examine international applications filed by non-Israelis.

Summary of amendments to Article 48 (10) (a request to produce an international search report) - this article enables the Patent Authority examiners to conduct and issue PCT International Search reports.

Section 48 (11) (a request to produce a preliminary examination report) – According to the Patent Authority’s function as an international preliminary examination office, an applicant can apply for an application to review the compliance of his invention under certain conditions as prescribed in the PCT: being a citizen or resident of a state party to the PCT, whose application has been treated by the internationally search Authorities recognized.

Section 48(12) (objections on the decision examines the international application contains more than one invention) –The article indicates that a decision made by the examiner in accordance of an international application submitted, whether a request to produce an international search report or a preliminary examination report, that holds that it includes more than one invention, may be appealed to a body that can conduct reexamination. If the appeal is found justified, the additional fee will be refunded to the applicant.

Article 48 (13) (the aid of an international search report, an opinion provision and a preliminary examination report in decision regarding the patentability of a patent) -The international search report, an opinion provision and a preliminary examination report do not bind the examiner while preparing his decision regarding the patentability of the patent, yet he may use them in his examination in accordance with the Israeli law.

http://jetpack.me/annual-report/24927989/2011/

The applications to register the mark FREE YOUR SKIN, serial nos. 204832 in class 3 for shaving products and 204499 in class 10 for razors for shaving, were refused by the Patent Authority since it was a laudatory slogan which was not designed to transfer to the public a message as opposed to a mark which is designed to associate a product to its source. Such mark the Patent Authority stated lacked secondary meaning. The Patent Authority relied on the decision in Re Application to Register Marks No. 171187 – 171183 DO WHAT FEELS GOOD, where the Patent Authority stated that a slogan will only be registrable when the slogan acquired secondary meaning as a result of use; the slogan associates in the mind of the consumer between the product and its source and has the ability to distinguish between the product at hand and other products; and the public must associate between the slogan and the source of the goods even without the mark associated with the product (where they are used together). In addition, the Patent Authority relied on its own Circular M.N No. 29 embodying the above test and stating that if the mark is used with the slogan the entire mark will be reviewed, but a disclaimer as to the slogan will be required. Thus, the refusal was based on two main principals, the first that the slogan by itself without the mark used on the product are laudatory and is therefore unregisterable in accordance with section 10(1) to the Trademark Ordinance, and that the meaning of the slogan will not, of itself, enable the public to identify the source of the goods.

The court stated at the beginning of his decision that in general slogans are registerable if they have secondary meaning and are not laudatory or descriptive. While a trademark is designed to distinguish between the products of competitors in the same field, and allow its owner to protect the good will acquired in the mark, it should not be overly, it should also protect the public interest to prevent confusion through the misuse of trademarks. However, overly restricting the registrations of trademarks from the public is undesirable since it restricts the freedom of trade and speech of the public at large. The process of registration is designed to balance out the various interests.

Since the applicant did not argue that the slogan FREE YOUR SKIN acquired secondary meaning, the court had to determine if it had inherent secondary meaning. When reviewing the slogan in question, the court stated that laudatory words cannot be subject of registration when they are general in nature or if they describe the goods or services to be registered. Laudatory words whose choice is not evident, or showing an original idea can be registered.

Following other countries, the Court stated that the standard to be applied to the registration of slogans should be the same that is applied to the registration of other marks and that no special criteria will be applied. Next the Court turned to determine if slogans are inherently lacking secondary meaning as stated in Circular MN No. 29. The Court, reviewing various cases and treaties from US and European courts, such as In re Volvo Cars of North America, 46 USPQ2d 1455 (BNA), and In Re Audi, decided that case law did not support a contention that all slogans inherently lack secondary meaning. The Court did not agree with the Patent Authority that the public will fail to associate the mark FREE YOUR SKIN with a product and that it would be possible that an Israeli consumer would use the slogan to shop for shaving products. Therefore, the court stated that there was no basis to state that the slogan is merely a marketing and image slogan lacking any secondary meaning.

The Court did agree with the Patent Authority that the slogan FREE YOUR SKIN is purely laudatory and must be denied registration based on section 10(1) to the Trademark Ordinance. While, counsel for the applicant argued that the slogan is suggestive because shaving products cannot literally free one’s skin, the Court reviewed each element of the slogan and stated that the term SKIN is descriptive, and that the term FREE describing clearing or loosening one’s own skin is also descriptive or laudatory. The Court further states that the combination of the words as a whole does not create a new meaning rather it is a laudatory slogan which, for the relevant products, is designed to tell the consumer to clean his skin from hair and leave him with a sensation of release, or that the slogan describes the results of use of the product at hand. Reviewing the appellant’s position that the slogan is suggestive, the Court stated that the consumer will not be required to use any intellectual effort to associate between the slogan and the product’s qualities or the results of its use. Since the combination of the words FREE YOUR SKIN does not create any new meaning, there is no clever suggestion or originality, the mark is not suggestive. The Court further googled the term and found it to be in use in the field. Going beyond the required to determine the issue, the Court states, that even if it has erred and the slogan is in the middle ground between suggestive and descriptive or laudatory marks, public interest requires that the right of an individual to a property right is rejected to maintain public interests such as the freedom of speech, trade and competition.

Finally, the Court rejected the applicant’s argument that the mark should e registered in view of the many like marks registered in other countries. The Court stated that marks are registered having due regard to the basic values of the legal system, such freedoms to compete and freedom of speech and trade, which may be different inIsrael than in other countries. Thus, the fact that a trademark was registered abroad will not, by itself, will not lead to the conclusion that it must be registered in Israel.

Deficiencies Notices Extensions
Rules 30 and 31 of the Patent Rules (Patent Office Rules, Procedure and Fees), 1968, state that an applicant must correct any deficiencies in the form of the patent application within 3 month from a notice issued to him. Section 164 of the Patents Act, 1967 allows the Patent Registrar to extend this period of time. Circular 5/2011 sets this time limit at 6 months. Therefore, the time extension given to amending deficiencies of form will now be limited to a total of 9 months (3 months under Rules 30 and 31 and 6 months under Section 164 and Circular 5/2011).

Section 18 Extensions
Rule 36 provides that an applicant must respond to a Section 18 Notice (similar to a request for an IDS in the US and to further make preliminary amendments) within 4 months from the date of a notice issued to him. Section 164 allows the Patent Registrar to extend this period of time. Circular 5/2011 sets this time limit at 6 months. Therefore, the time extension given to responding to a section 18 Notice will now be limited to a total of 10 months (4 months under Rule 36 and 6 months under Section 164 and Circular 5/2011).

Motion for Extensions of Time or Delay Prior to The First Office Action
As to motion for extensions of time or delay in prosecution prior to the beginning of examination, Circular 5/2011 provides that such motion can be filed if it is filed after a response to a Section 18 Notice was filed and before the first substantial office action (under Rule 41) is issued. The motion must be supported by reasons why an extension of time or delay in prosecution is requested. If the motion is granted, the prescribed fees for the extension period must be paid for the extension to begin.

Office Action Extensions of Time
Rule 42 sets the time limit to respond to substantial office actions issued under Rules 41 or 43 to 4 months. Section 164 allows the Patent Registrar to extend this period of time. Circular 5/2011 sets this time limit at 6 months for each office action. Therefore, the time extension given to respond to each Office Action will now be limited to a total of 10 months (4 months under Rule 42 and 6 months under Section 164 and Circular 5/2011). Moreover, the total terms of extension during prosecution to respond to office actions will now be limited to 15 months.

The limited term of 15 months will not apply to delays because of a previous application prosecution (Rule 39(b)), and extensions relating to divisional applications (under Circular MN 62 and Section 8 ) after a traverse is filed and while the parent application is being examined.

Finally, item 10 to the addendum to the Rules which states that the publication of acceptance of the application can be delayed will be limited to 6 months in total.

The Patent Office stated that Rule 43 of the Trademarks Rules, 1940 did not take into account a party’s knowledge of a foreign language as a consideration when filing evidence before the Patent Office. Rule 43 states that any document filed with the Patent Office in connection with an opposition must be filed with a certified translation. Exceptions to this Rule would be allowed only when the parties agree to file evidence in the English language (and the Patent Office doesn’t object) and when a translation would jeopardize the credibility of the affiants. In this case the Patent Office was not convinced that furnishing a translation would jeopardize the credibility of the affiants but did agree to limit the translation to those parts which Merk referred to in its affidavits (i.e. parts of the annexes to the affidavit filed). In addition, the Patent Office stated that it will consider the expense caused to Merk when determining costs at the end of the proceedings.