The judge’s role in IP rulings and forum shopping

By Michael Factor

When an IP complaint is filed, there is an aggrieved party, the plaintiff, who believes that his IP rights are infringed.

If the case is one of clear cut infringement, much of the time, the parties settle out of court. So, where a case actually reaches trial, both parties think they have a case, and often, there is some merit in arguments put forwards by both sides.

As I endeavor to review all IP related rulings from the Israel patent office and Israel courts, I can compare and contrast the IP related rulings of different judges and different court.

From reviewing their decisions, it seems that Judge Y Shapira of the Jerusalem District Court is generally pro-plaintiff. Judge Michal Gonen of the Tel Aviv Court appears to generally find for the defendant and is concerned about encroachment of the public domain.

I am somewhat critical of the rulings of both judges, and believe that the correct balance between the various rights is somewhere in the middle. It is however, clear, that both judges are generally familiar with the caselaw and write with conviction.

Regarding Shapira, in a trademark case he upheld the term Kaynes, as being a distinctive brand for cane based schach (sucka coverings) despite the word meaning canes in Yiddish. In Schocken vs. Hebrew University, Judge Shapira held the university responsible for contributory copyright infringement for failing to adequately police copying on campus (the new legal doctrine he created was upheld by the Supreme Court, but his judgment of applying it in this case, was overturned.

In Shapiro vs. Ragen, Judge Shapira elevated copyright into a fundamental human right (despite the fact that the copyright ordinance dated from the British Mandate and is totally utilitarian and lacks moral right considertions altogether, he ignored laches and the statute of limitations and showed a strict view regarding derivative work.

In Karshi, Shapira found unregistered design rights in challah cloths, and unfair trading where he establishes that the defendant ordered similar but different challah cloths from the Chinese supplier.

I can’t fault Shapira for not reviewing the case law, which is extensively quoted, but in each of these cases I find the rulings unpersuasive. It seems that Shapira has a more stringent approach to IP rights than I do, and is generally pro-plaintiff. I note that he is a judge and I am not. In Karshi his ruling is not at odds with A.Sh.I.R. and so he is following Supreme Court precedence as he should.

As a patent attorney, I am pro IP. I think there is a delicate balance though and don’t think that judge Shapira’s balance is in the correct place.

Judge Michal Agmon Gonen found four-stripe Adidas like trainers were not confusingly similar or diluting against the registered and well-known Adidas three-stripe logo. She also believes that streaming music, film and other copyrighted material is not infringing.

It does seem a good idea for plaintiffs to file their IP suites in Jerusalem on Judge Shapira’s shift, whereas defendants would do well to get their cases transferred to Ms Agmon Gonen’s docket.

It will be noted that although I think both judges come to the wrong rulings, I note that both are thorough and judges.

IP is only about money. It’s not as if Judge Yosef Shapira is trully a hanging judge.

I note that from July 3, Judge Yosef Shapira will serve as the State Comptroller. I hope that the IP rulings of his successor will be more to my liking.

[This post originally appeared at The IP Factor]

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