Civil Case (Tel Aviv) 37969-04-24 Omri Zehavi v. Adiv – Printed T-Shirts Ltd. - part 3

Keeping and publishing the paintings in the defendant's databases for reuse.  The defendant operates a database of ready-made drawings for the purpose of placing repeat orders.  The plaintiff's works are published and appear in the defendant's catalogue without his consent.

Offering the works to the company's customers for the purpose of making financial profits.  The plaintiff offers the paintings to customers on her own initiative through her representatives.

15. Keeping the plaintiff's protected works for the purpose of reuse, publishing them on the Internet for the purpose of commercial marketing and proposing them, without the plaintiff's approval or consent, all without giving credit for this, constitutes a violation of the plaintiff's economic copyright in accordance with section 47 of the law, as well as a violation of the moral right in accordance with sections 46 and 50(a) of the law.
16. The plaintiff insists that the defendant does not have the defense of the innocent infringer, since the commercial use was made with the clear knowledge that it was a serious violation of the plaintiff's rights, which prohibited the defendant from making any use of his works.
17. During the order made by the soldiers, it was not said or written that the ownership passed to the commissioners or that they would be able to make commercial use of the work.
18. The plaintiff categorically rejects the defendant's defense claim that the state is the owner of the work, since the soldiers are the commissioners. The plaintiff argues that the fact that some of the customers are soldiers does not confer a right of ownership on the state, and this does not change the fact that the order was made for leisure purposes, privately financed by the ordering parties, in the absence of the state's intervention and not at its request.
19. As to the amount of damages claimed, to the plaintiff's knowledge, this is more than 80 infringing uses. It is not a single set of actions, but each painting is made for a different client, in a different matter and in a different period.  These are separate works, each of which has an independent copyright, and this is an infringement of each and every painting.  It should be emphasized that not only are these many violations, but they are violations that were committed knowingly and while ignoring the plaintiff's refusal.  According to the plaintiff, he is entitled to compensation in the amount of millions of shekels, but for reasons of fees, he chose to base his claim in the sum of only ILS 500,000.
20. Alongside his demand for compensation, the plaintiff also petitions to instruct the defendant to refrain from and cease immediately any use whatsoever, including marketing, advertising and displaying the paintings on any platform.

Extracted from NevoSummary of the Defendant's Arguments

21. The defendant claims in her statement of defense that the plaintiff is not the owner of the works. The owners of the paintings are the State of Israel, in accordance with Section 36 of the Copyright Law.  The work was commissioned by a soldier and was executed as a result of his work, and during it - the paintings were commissioned by soldiers for use in the military units as company or platoon symbols, and they were intended to serve the needs of the unit and the formation of the unit's identity.
22. Alternatively, the defendant claims that the ownership of the works was transferred to the clients. The agreement to transfer ownership does not have to be explicit or written, and it can be learned from the circumstances of the contract and the intention of the parties.  In our case, ownership was implicitly transferred from the plaintiff to the client.  This argument is based on several reasons: (a) there was no other explicit consent and that the plaintiff himself did not state that the ownership of the paintings remained his.  (b) The soldiers paid the plaintiff full consideration for the works, a fact that strengthens their claim that the ownership was transferred to them.  (c) The paintings were created specifically for the commissioner and the plaintiff has no ability for independent use beyond the military context.  (d) The soldiers' understanding that the paintings belong to them.
23. The defendant notes that even if the plaintiff's ownership of the works is proven, the use made is protected and permitted, so that the defendant enjoys the protections set forth in the law and is not required to compensate him. Incidental use as prescribed in section 22 of the law and fair use as prescribed in section 19 of the law are permitted uses by law.  The defendant uploaded photos of her soldier customers next to the products that were ordered, with the drawings appearing only incidentally.  The purpose of the publications was to present the printed product and not the painting as a separate work of art.  Subsequently, the defendant argues that the uses fall within the scope of "fair use", and that the purpose and nature of the use, as well as the effect of the use on the value of the work, must be examined.  The purpose of the defendant's publications was to present the soldiers' orders that were made for payment and not to enrich directly from the plaintiff's paintings.  The fact that the plaintiff offers only printing services and not the creation of drawings, strengthens the argument that the use was for operational purposes and the presentation of its services, and not for direct commercial exploitation.
24. With regard to the preservation of the paintings in the defendant's database, it was claimed that the retention of individual paintings in the database was done in good faith, and that these are incidental and fair uses that do not entitle to compensation. The defendant claims that it meets the definition of an "innocent violator" set forth in section 58 of the Law, so that it is exempt from paying compensation, when it is dealing with the symbols of military units in the IDF, and it believed in good faith that these are works that are in the public domain.
25. The defendant also insists that the plaintiff's moral right was not violated, and that in the circumstances of the case there was no obligation to give credit. According to the defendant, the alleged infringement is caused by the plaintiff's contributory fault, that he did not take care of the proper marking of his works, did not explicitly demand credit and did not clearly state that he was the copyright owner.
26. According to the defendant, this is an inflated and unjustified claim, and that even if it is ruled that there was a copyright infringement, these are exceptional circumstances for which it is not appropriate to award damages (or at most compensation should be awarded only symbolically). These circumstances include the real dispute regarding the ownership of the works, the perception that it is in the public domain, the contributory fault of the plaintiff, the good faith of the defendant, and the limited scope of use, only about 12 works.  The defendant further notes that the plaintiff did not prove that he suffered any real damage.

Discussion and Decision

27. After reviewing the pleadings submitted by the parties, hearing their testimonies in the course of the evidentiary hearing that was held before me, and considering the circumstances of the matter and the entirety of the picture that was unfolded, I reached the conclusion that the prosecution should be admissible. At the same time, I did not find it appropriate to receive the amount of compensation requested in the statement of claim, and all as will be detailed and explained below.
28. In this judgment I will first present the fact that the paintings are protected works according to the law, I will discuss the issue of ownership of the works, I will examine the defendant's actions and whether they can attest to copyright infringement, I will address the issue of contributory infringement and indirect infringement, and finally I will discuss and decide on the relief sought and the considerations in determining the amount of compensation.
29. The plaintiff's paintings are commissioned works protected by law
30. In accordance with what is stated in sections 4-5 of the Copyright Law, and a look at the evidence and drawings that were brought before me, it appears that there are various unique elements in the plaintiff's drawings, and that this is an illustration or engraving that is not standard. The works sometimes combine written text alongside the illustration itself, reflecting originality and a unique thought in the way the work was painted, in its caption and location, in its background and in the message that the painting was intended to convey.  There is a characteristic hand touch of the plaintiff both in the expression of the requested idea and in the execution process.  A combination of all these constitute a new, complete and original artistic work that the plaintiff created and prepared, in accordance with the order and demand he received from his clients.  I am convinced that the plaintiff's paintings meet both the requirement of investment, the requirement of creativity and the requirement of originality.  Therefore, the conditions for the recognition of a work of art as a work of art to which copyright apply are met, and my conclusion is that these are works of art in accordance with the law.
31. In addition, these are works made to order, with IDF soldiers commissioning them. The complexity and significance of this fact has implications for the issue of ownership of works, as we will see below.
32. Ownership of the paintings belongs to the plaintiff
33. Once the conclusion is that we are dealing with original works of art that are entitled to copyrights, the question arises to whom the rights are given?
34. The question of ownership of the copyright is regulated in section 33 of the law, which clearly establishes the rule according to which the creator of the work is the first owner of the copyright in it. However, this is not enough, since the law establishes special provisions regarding a commissioned work.
35. Section 35 of the Law, which clarifies what constitutes a commissioned work, states as follows:

" 35(a).  In a work created to order, the first owner of the copyright therein, in whole or in part, is the creator, unless otherwise agreed between the commissioner and the creator, expressly or implicitly."

34. Section 35 above is relevant to our case, since even where the work was created by commission, the default is still that the owner of the copyright in it is the creator, unless otherwise agreed between the commissioner and the creator, explicitly or implicitly. There is no dispute that in our case there is no agreement that will regulate the intentions of the parties or the agreements between them, and there was no clear arrangement between the plaintiff and the soldiers as to what the order for the work includes and what is included in the permission to use that was granted to them, to the extent that it was granted.
35. The task of proving ownership of commissioned works is not simple, and it requires clarification and examination in light of the uncertainty that arises from the interpretation of the sections of the law. In this context, I would like to refer to the words of the scholar Tony Greenman in his book "Copyright", where he discusses the problem inherent in deciding the question of ownership of a commissioned work, when there is no agreement between the parties.
36. Greenman notes in his book that when it comes to the question of ownership of a commissioned work, the language of the law creates a considerable degree of uncertainty. Although it establishes a clear default, according to which the copyright in the commissioned work belongs to the creator, this default is subject to a contrary consent, which can be explicit or implicit.  Leaving the question of initial ownership of a copyright in a work to be decided by an implicit agreement - which is a rather elusive creature that no one knows when and in what form it will appear - creates uncertainty on a critical issue.  The uncertainty makes it difficult to determine who is the first owner of the copyright in the work, which was created by commission, in cases where the parties to the order have not drawn up a written contract between them that would settle the issue.
37. Greenman adds that this uncertainty could lead to a situation in which works are created that no one knows for sure who their legal owners are. When parties communicate with each other for the purpose of supplying a work on order, the way to do so is to draw up a written agreement with clear instructions.  Experience shows that often such an agreement is not made, or an agreement has been made regarding the order of the work, but it does not address the question of ownership of the copyright in the work.  In many cases, the lack of reference stems from the fact that the parties simply do not consider this question, but only think about the use for which the work is commissioned.  The question of rights usually arises only after one of them, usually the client, wishes to make additional or other use of the work.  Therefore, the "implied intent" will in many cases be a determination of an objective norm rather than a subjective fact.  Greenman further argues that the commissioning of the work, in and of itself, certainly does not indicate such an implicit intention, since such an interpretation would empty the default of any content.  In rulings that have been given since the law came into force, the courts usually assume that the rights in the ordered work belong to the creator, and therefore proof of an explicit or implicit agreement is required in order to negate this starting point.
38. I would also like to refer to the words of the Honorable Justice Ron Goldstein in the judgment Civil Case (Shalom Tel Aviv) 46445-01-20 Sharon Sarfati v. Anatoly Finkelstein (Nevo 2.9.2024), where he refers to the matter of the license granted or not granted to the commissioner of the work, as a means of examining the right of ownership that was granted:

"...  In accordance with section 35(a) of the Law, in the absence of a contractual arrangement between the parties, the usual rule applies according to which the creator is granted ownership of the copyright of the ordered work.  At the same time, while in the usual situation, "a contract for the transfer of a copyright or for the granting of a unique license in respect thereof requires a written document" (section 37(c) of the Law), when we are dealing with a commissioned work, it is possible to prove the existence of an agreement regarding the transfer of the copyright, even by implication.  This rule may lead to uncertainty in certain cases in connection with ownership of the copyright, a matter that, as a rule, requires certainty due to its proprietary nature; The difficulties raised by the rule set out in section 35(a) of the Copyright Law are also reflected in the present case.  In fact, the arguments of the parties - the plaintiff on the one hand, and the defendant on the other - rely on the fact that there was oral consent in connection with the right to use the photographs.  To be precise: the commissioning of the work in itself does not indicate such an intention, since such an interpretation would empty the default of any content.  It can be said that the more involved the client is in defining or determining the nature of the work and its details, the greater the tendency to see an implicit intention that he will be the owner of the copyright in the work.  Since the deposit of the copyright in the hands of the client, by virtue of an implied intent, should be the exception and not the rule, the case law determined that the burden of proving such an intention is on the client..."

39. In the judgment given in Civil Case (District Court) 21891-09-15 Dorit Gur Maimon v. Olive Tree Gallery - Art and Entrepreneurship in a Tax Appeal (Nevo 28.10.2019), the issue of ownership of a commissioned work was discussed, while it was determined that the copyright can be transferred to another, in whole or in part, and can even be transferred when it is limited under one condition or another, but such a contract requires a written document, given section 37 of the Law.  The starting point is therefore that the creator of the work is the owner of the copyright, unless proven otherwise.
40. The granting of rights must be explicit and in writing. In our case, no written evidence was submitted that could attest to the granting of the right of use or consent (see the following judgments in this regard - Civil Case (Safed) 20558-02-12 Daniel Harari Designs in a Tax Appeal v.  Hai Sein - Furniture in a Tax Appeal [Nevo]; Civil Case (District Court) 21891-09-15 Dorit Gur Maimon v.  Olive Tree Gallery - Art and Entrepreneurship in Tax Appeals (Nevo 28.10.2019), as well as Tony Greenman's book, Copyright - Volumes 1-2 (2023), Chapter 7).
41. Another judgment that dealt with the issue was Civil Case (Tel Aviv District) 1879-07 Liav Uzan & Co.   Winhelp in a Tax Appeal (Nevo 18.11.2013), where it was determined that the preparation of a work by order and in consideration would usually give rise to an implied license for limited use of the work by the client, for the purpose for which it was ordered.  The person who makes use of a protected work is obligated to obtain permission from the copyright owner, and the owner of the right does not bear the burden of announcing that he does not wish his work to be used, without authorization.  In any case, the scope of the consent given should be examined, and a sweeping conclusion should be avoided.
42. In our case, the testimonies of the soldiers that were heard before me during the evidentiary hearing showed that some of them believed in good faith that it belonged to them, and that they were entitled to use it as they pleased. I do not reject the soldiers' argument and I do accept their version that from the circumstances that preceded the invitation it was reasonable to think that it was a work that belonged to them, a work that could accompany the soldiers from now on, since it is a symbol that belongs to a unified and defined group and for which it was created, and it seems that these specific soldiers are the target audience of the work.  In addition, it appears that the plaintiff knew that the purpose of the engravings was to print them on the shirts of the company or the entire unit.
43. At the same time, this understanding of the soldiers is not devoid of doubts and cannot be sufficient in itself to determine the question of the right given to all of the works. This is all the more so when it comes to paintings that were published after the plaintiff clarified his ownership.  Thus, even if it is possible to accept the position of the soldiers and their intention at the time of the engagement with the plaintiff and to claim that the paintings are in the possession of the soldiers by virtue of the implied intention, after the date on which the plaintiff announced his right and ownership of the work in written and unequivocal manner, this intention can no longer be accepted.  In this situation, after the plaintiff has announced his right and removed the doubt as to the ownership, there is no longer legitimacy to think that the work is owned by the soldiers.
44. In the case before me, the defendant failed to prove that an unlimited use license was granted or that the soldiers had the right to the work. The defendant failed to show that the creator of the work transferred or granted the defendant or its customers the copyright, and it was not proven that they were given any license or consent to make use as was done.
45. Given all that has been said so far, and taking into account the rule set forth in the law according to which the creator is the owner, and taking into account that there is no written agreement between the parties, and since no supporting evidence was presented for the claim that the right was transferred to the client, I find it appropriate to determine that the copyright in the paintings belongs to the creator, who is the plaintiff. I will note that this conclusion was further strengthened when it was proven that the defendant or anyone on its behalf acted in an attempt to contact the plaintiff and to establish business cooperation with him, which testifies to her understanding that he is the owner of the right and that he must grant some permission or license for the purpose of making use of his works.

• The claim of state ownership of the work:

46. Section 36 of the Copyright Law, which regulates state ownership of works, states as follows:

"The State is the first owner of the copyright in a work created or commissioned by it or by a State employee due to and during his work, unless otherwise agreed; In this regard, "civil servant" - including a soldier, a police officer, and any officer or official in accordance with legislation in one of the state institutions."

47. The defendant, for its part, claimed that these were works commissioned by IDF soldiers, as a result of their work and during it, and therefore it should be determined that the State of Israel owns the paintings or that they are works that are in the public domain. The defendant further refers to the soldiers' testimonies and notes that according to them, these were works that belonged to them and were intended to serve a clear military purpose, as they are an official symbol of the IDF and an inseparable part of the identity of the commissioners.  The plaintiff, for his part, rejects these claims and insists that he is the owner of the works and that these are not works commissioned by the IDF, at its request or with its funding, the order was not made due to the work of the soldiers, and the fact that the commissioners are soldiers does not confer ownership in this case.
48. After considering the arguments of the parties and considering all the evidence, I found it appropriate to reject the argument that the state is the owner of the works.
49. 00First of all, we do not have before us a case in which the "creator" is an IDF soldier or whether the work was created and prepared by the soldier. It is clear that the creator is not a soldier but a civilian, and that the defendant's argument is based on the fact that the "client" is a soldier and not the creator.  It seems that this is a difference that distances the connection between the commissioner and the work itself to a certain extent.
50. There is still no dispute as to the fact that the invitation was not made by a recognized or official body of the state, such as the IDF, but rather it was a private initiative of the soldiers. This is not a directive or instruction from senior echelons, there is no institutional requirement for the production of the engraving, it is not an approved official emblem that appears in IDF publications, and it is clear that it is possible to conduct and act even in its absence.  Therefore, I did not see fit to view the symbols as IDF property or to determine that they are in the public domain.
51. I will add that an examination of the works reveals that they are unique and original paintings created by the plaintiff, paintings that are not standard and do not look like a formal symbol approved by the state institutions. There is no doubt that this is not an official mark, some of the paintings are full of humor and private internal slogans of the soldiers, some of the paintings include cynical inscriptions or sexual innuendos, and some of them have made substantial changes to the official emblem of that unit or brigade.  Not only that, but the defendant did not prove that it was a symbol engraved in the General Staff Ordinance or any sign that received official recognition from a state entity.
52. In order to support and reinforce my conclusion, and since sometimes one picture is worth a thousand words, I found it appropriate to present in the judgment a number of works by the plaintiff which testify beyond any doubt that a decision according to which this is a work owned by the state is illogical and cannot be reasonable.
53. See below some of the works:
54. Indeed, this is a work that is deeply connected to the soldiers who wish to be invited, and it serves as a source of pride, commemoration, cohesion and life for the company or unit that carries it. However, this fact cannot deprive the plaintiff of his proprietary rights in his work, when there was no clear agreement between the parties.
55. I also did not find it possible to accept the defendant's argument that the plaintiff does not have the ability to use the work independently. The defendant chose to upload some of his works to the database, apparently so that more customers would be exposed to the painting, use it and be able to print the work.  The very publication or marketing made it possible to present the paintings to additional customers, and it can be seen from the evidence submitted that some of the works were indeed offered to other customers even after the initial use.  This teaches us that this is not a one-time use, and that there is a theoretical possibility for the plaintiff to engage with other customers and offer them the work he produced himself.
56. As to the question of whether this is a work that was created "as a result of and during his work", it seems that the approach of case law favors a restrictive interpretation. I would like to refer to the judgment Civil Case (Hai District) 67249-01-19 Matti Caspi v.  Eliyahu Novoselsky (Nevo 26.1.2022), where it was noted as follows:

"The defendant's approach, according to which it is sufficient that the plaintiff was a soldier when he was approached by Kol Israel and asked to compose the song, in order for the rights to the protected melody to belong to the State of Israel, is therefore contrary to common sense and common sense, as well as to the reasonable and necessary interpretation of the previous law as well as of the current copyright law.  The exception to the rule found in section 5(1) of the previous law should be interpreted in a narrow manner, as is an exception to the rule.  The phrase "due to his work" should therefore be interpreted narrowly, and ownership should be attributed to the "employer" only where the work was created as part of the worker's work.