Case Number

CA 7996/11

Date Decided

11-18-2013

Decision Type

Appellate

Document Type

Full Opinion

Abstract

Facts: An appeal against the Haifa District Court's judgment dismissing the Appellants' claim against the Respondent for the infringement of its copyright in technical drawings. At trial, the Appellants argued that drawings used by the Respondent for the registration of a patent in the USA for a voltage backup system for cable systems (a product that competes with a product of the first Appellant (hereinafter referred to as "Safecom") infringe Safecom's copyright in the drawings of its products. There is no dispute that there was a previous business relationship between the Respondent and the Appellants, and the Respondent had access to the Appellants' drawings. The District Court held that Safecom's drawings did amount to a protected work, but in the instant case there had been no copying of Safecom's drawings, or a substantial part of them, and for that reason the claim was dismissed.

Held: The Supreme Court (per Justice Y. Danziger, Justices Z. Zylbertal and E. Rubinstein, concurring) granted the appeal and held:

The Court took a broad view of copyright law and stated that, under the precedents of this Court, copyright protection of a work requires that an original work is involved. This is established through the analysis of three subordinate elements – the origin criterion, the investment criterion, and the creativity criterion. The presence of just one element is not sufficient for the purpose of proving originality.

Another basic principle of copyright law is that the idea underlying a work will not be protected by copyright, and that protection is only afforded to the way in which the idea is expressed. This distinction between idea and expression in certain senses also overlaps the requirement of originality that underlies the copyright protection of works. This overlap is particularly relevant when functional works are involved.

In view of the distinction between idea and expression, the approach that has developed that states that when a particular idea can be expressed in only a single way, then a work expressing that idea will not be afforded protection. This approach has been called "the merger doctrine". When there is an absolute merger between the idea and its expression, and when there is only one way to express the idea, it is the accepted view that the work expressing that idea will not be granted copyright protection. However, opinions are divided on the question when there are just a few possibilities of expressing the idea. According to one approach, as held in the American case of Morrisey, copyright protection should not be granted in such a case, while according to another approach, the work will be granted copyright, but that copyright will only be infringed when there is absolute or almost absolute similarity between the works. This controversy is relevant in the instant case because the Respondent asserts that Safecom should have proven exact copying because its drawings constitute an idea that can only be expressed in limited ways. In the opinion of Justice Danziger, in order to decide this issue, reference may be made to the fundamental rule of copyright law presented above – the requirement of originality, in particular when the issue relates to functional works.

Functional works raise various difficulties at the stage of analyzing the requisite originality for copyright protection. However, once a functional work has met the originality requirement and the choice criterion, it is a protected work in all respects, substantial parts of which may not be copied.

According to the choice criterion, the intended function or purpose of the work should be ascertained, and an examination made as to whether the form of presenting that purpose – the expression – required that the creator choose from among several options that could have achieved the same purpose. When there is a solitary option to achieve that purpose, it is inappropriate to afford protection to that sole method of expression. However, when the creator has a choice among several options, copyright protection should not be denied to the chosen expression.

Even if only some of the elements that make up the functional work have passed the "choice filter", that does not prevent them from being work protected against copying. In the opinion of Justice Danziger, The only consequence of a work being functional concerns the standard for the analysis of copying when the protected elements constitute an idea that can only be expressed in a limited number of ways..

In such a case, a higher threshold will be necessary to establish copying, and almost absolute similarity between the protected elements and the allegedly copied elements will be required in order to establish that substantial similarity.

Implementation of that approach in the instant case leads to the conclusion that certain elements of Safecom's drawings do constitute protected work.

The Court further held that whether Safecom's drawings in whole constitute a protected compilation, or whether some of the elements are protected separately as artistic work, the number of ways to give expression to a demonstration of the product's electrical process is limited. Nevertheless, even working on that assumption, it would appear from a comparison between Safecom's drawings and the respondent's drawings that 13 of the Respondent's drawings do amount to an identical (or at least almost identical) copy of the Safecom drawings. In this regard it was held, inter alia, that when substantial elements of the work do not gain copyright protection and remain in the public domain, then copying all those protected elements will attest to the copying of a substantial part of the work, a fortiori when there is absolute, or almost absolute, similarity. This is especially so since there is no dispute that the Respondent did have full access to Safecom's drawings. Since the Respondent chose to make exact use of Safecom's protected visual resources, he infringed its copyright in those elements.

The use that the Respondent made of the drawings does not amount to a permitted use. In this connection, Justice Danziger was of the opinion that the use of a work in accordance with the uses defined in chapter four of the new law as "permitted uses" does not constitute a contravention of the new law. Permitted use constitutes a right that is granted to the user to make certain types of use of a work (in view of the controversy in the case law in this respect, Justice Danziger is of the view that the time may have come for an extended bench to deliberate this issue). However, the Respondent’s use of Safecom's drawings and their presentation to the American Registrar of Patents for the purpose of the registration of a patent for a product that competes with Safecom's product, is not a permitted use under section 20 of the new law. That use also does not meet the standards that have been established for fair use, as defined in section 19 of the new law.

The case was remanded to the District Court for a decision upon the appropriate relief in respect of the infringements.

Justice E. Rubinstein, concurring, sought to add another criterion, that of common sense, namely the accumulation of all the overall facts before the court. When a work is involved, appearance is also acknowledged to be a significant parameter in intellectual property law. In the instant case, in preparing the file, when the bench looked at the drawings involved, the great similarity between the drawings was immediately conspicuous. Consequently, the foregoing result was obliged not only by common sense but also by the appearance. In conclusion, Justice Rubinstein refers to several of his other opinions, in which he considered intellectual property rights in Jewish law.

Keywords

Contracts -- Compensation, Contracts -- Formation, Contracts -- Frustration, Contracts -- Interpretation, Contracts -- Pre-Contractual Negotiation, Contracts -- Terms, Copyright; Trademarks -- Right to use trademark, International Law -- Relevance of foreign law in judicial decisions, International Law -- International Jurisdiction

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