"Employer" - a person who has complete control in his relationship with another person over the way another person performs work for him, whereas he himself has no similar authority over that work, and an "employee" is someone whose work is subject to such control; However, a person who is in the service of the state or of a local authority or of another person shall not be regarded as an employer or an employee of another person in that service;
Section 13 of the Torts Ordinance, entitled "Employer's Liability", further states:
- (a) For the purposes of this Ordinance, an employer shall be liable for an act committed by his employee:
(1) if he authorized or ratified the act;
(2) If the employee committed the act while working;
...
(b) An act is deemed to have been done in the course of an employee's work, if he did so as an employee and when he performs the normal functions of his work and which are involved in it, even though the employee's act was an improper performance of an act authorized by the employer; However, an act committed by the employee for his own purposes and not for the employer's purpose will not be regarded as such.
(c) For the purposes of this section, an act - including omission.
- Other Municipality Applications 8027/14 Shorosh v. Shalian (published in the databases; 2015; at para. 14) (hereinafter: the Shorush case) The Honorable Judge, as he was then called, Amit described the criteria formulated in the case law for the purpose of applying employer liability by virtue of section 13 of the Ordinance:
When determining whether the employee's actions were carried out in the course of his duties, or whether they deviate from the employer's authorization to such an extent that the employer can be exempted from vicarious liability, a number of indications can be used, including: the purpose that guides the employee, including whether the employee's purpose was to commit an offense; criminal conviction and the nature of the conviction; as well as legal policy considerations.
- The application of the various considerations leads to the conclusion that there is no reason to attribute liability to the university in the circumstances of the case, which justifies declaratory relief or an injunction. Seroussi's activities were carried out through her subsidiary. He did act as an employee of the university, but this activity was not part of his direct university work. It is not for nothing that it will be promoted to activity with the Negev Company, which was established precisely for the purpose of regulating such activities. The defendants are correct in their claim that no involvement of the university in the development of Prof. Seroussi's project was established, nor was there any awareness of the events in real time or their retroactive approval.
In these circumstances, and while this is not an absolute liability imposed on the employer, the employment relationship is not sufficient to impose liability on Ben-Gurion University, which can subject it to the requested remedies.
- The consideration of lack of involvement and awareness has considerable weight in other areas of intellectual property law. Thus, it was determined in other municipal applications 5977/07 The Hebrew University of Jerusalem v. Schocken House Publishing Ltd., IsrSC 66(3) 740 (2011, at paragraphs 24-26) (hereinafter: the Schocken House case)), that the criteria for applying the doctrine of contributory infringement in copyright law are - awareness and involvement. Thus, it is possible to impose liability for copyright infringement, even on those who did not infringe them, but who enabled the infringement out of awareness of it and involvement in it (see also: Civil Case (Jerusalem District) 28148-02-12 Hamad v. State of Israel - Ministry of Education (published in the databases; 2014; at paragraphs 90-91)).
- The awareness and engagement component is part of the policy considerations mentioned in the Shorush case. More than that; In section 85 of the fourth amended statement of claim, it was noted that the cause of action attributed to the university is that set forth in section 6(b)(3) of the Commercial Torts Law, entitled "Theft of a Trade Secret". This section applies to "the receipt or use of a trade secret without the consent of its owner, when the recipient or user knows or is apparently apparent, at the time of receipt or use, that the secret has been transferred to him in a manner prohibited by paragraphs (1) [taking or using without consent] or (2) [use contrary to a duty of trust], or that the secret has been transferred to any other person in such a prohibited manner before it reached him". All of these were not substantiated by the plaintiffs in the circumstances of the case. Her knowledge of the forbidden transfer of one secret or another was not substantiated. The university itself also did not sign the agreement with the plaintiffs.
- In these circumstances, I do not believe that there is room to order the issuance of injunctions in relation to the University. At the same time, I do not take a position on the question of its possible liability in the realm of monetary compensation. This matter did not arise before me, and the arguments of the parties are reserved for them
Rivalry was established against defendant 1, the Negev Company, which justifies the issuance of the requested orders
- The state of affairs is more complex than in relation to the Negev company. The latter is a signatory to the agreement with the plaintiffs, and hence she herself is bound by its duty of confidentiality (paragraph 7 of the agreement, Appendix E to the last statement of claim; and see the testimony of Prof. Seroussi: 290, paras. 1-7). In addition, the Negev Company was very involved in the use of the trade secret. Thus, the patent filed by the defendants in the United States on March 29, 2020, was filed on its behalf (see: paragraphs 1.1.5, 3.1, 3.2.5 of the fourth opinion), and as the court's expert determined, this patent infringed the plaintiffs' third trade secret. Indeed, later on, after the lawsuit was filed, the patent application was transferred in the name of a private company controlled by Prof. Seroussi, but this does not dispel the rivalry that was established between the plaintiffs and the Negev Company.
- In these circumstances, there is room to view the Negev Company as being justified in imposing the requested orders against it in the framework of the lawsuit. Here, too, I will not make any finding on the question of whether the Negev Company should financially compensate the plaintiffs, and the parties' arguments are reserved.
The Remedy
- And after all that, we came to the question of relief. Here it should be remembered that I granted the plaintiffs' request for split remedies, and therefore in the framework of the present action I will not address the matter of the compensation relief or the financial liability of any of the defendants.
The plaintiffs are petitioning for a declaratory order according to which they are the owners of the intellectual property that is the subject of the invention, including the trade secrets that sail in it. They further petition for a permanent injunction, prohibiting the defendants or anyone on their behalf from making use of the intellectual property that is the subject of the invention or the trade secrets that are the subject of the invention.
- Indeed, an injunction for the protection of a trade secret is within the scope of the basic remedy where its theft and prohibited use of it are proven (Deutsch, at pp. 729-730). From a more general perspective, it is appropriate to dwell on Prof. Deutsch's explanation that distinguishes between the obligation not to transfer the trade secret to another and the obligation not to exploit it. "As far as the transfer of information [...] It is now inconceivable that a person will be prohibited from transmitting information that has already been published, even if he himself has published the information illegally. In fact, in this state of affairs, there will no longer be a 'transfer' of information, since if the information has already been published, the assumption is that the public knows it, and therefore the defendant does not 'transfer' information from one place to another" (ibid., at p. 475). On the other hand, "insofar as we are dealing with the exploitation of the information in another way, there is no preliminary logical impediment to prohibiting only that person from using the information" (ibid.).
- Against the background of all this, when we come to grant relief to the plaintiffs, caution must be taken. The plaintiffs Claim The existence of four trade secrets and their theft. At the same time, only the theft of the third secret was established. In these circumstances, the declaratory remedy according to which the ownership of the intellectual property that is the subject of the invention is excessively broad. It is not clear enough. Granting proprietary relief, where the plaintiffs' patent applications have not yet been approved, is also problematic. In any case, it is doubtful whether it will benefit them vis-à-vis third parties who are not a party to the proceeding before me.
- Against this background, I found it necessary to declare that the plaintiffs are the owners of the third trade secret, which concerns the structure of the sensor/microelectronic chip that underlies the patent applications they filed. While the defendants' use of the other trade secrets in dispute has not been established, I do not believe that it is appropriate to grant additional declaratory remedies in this matter. This remedy is relevant only to the relationship between the plaintiffs and defendants 1-2 or anyone on their behalf.
In addition, in light of the fact that the theft of the third trade secret was based by Prof. Seroussi, using it by him and the Negev Company, a permanent injunction is hereby granted prohibiting defendants 1-2 or anyone on their behalf from making use of the plaintiffs' third trade secret. This order also applies to the defendants' sensor/chip examined in the framework of this proceeding, which is similar in activity to that of the plaintiffs, or to any other chip that is the product of the use of their third trade secret.