"A Flat for Rent": May Two Intellectual Property Rights Cohabit? Eran Soroker & Robert Dorneanu

In a landmark decision, the Tel Aviv District Court has recently ruled on a complex case in which copyright and trademark met. The subject of the case was the beloved Israeli children's book "A Flat for Rent" by Leah Goldberg. This ruling has significant implications on the protection of titles of literary works in Israel.

The book's publisher sought to register the title "A Flat for Rent" as a trademark. Initially, the Israeli Trademark Office (TMO) denied the application, arguing that the protection of copyright was sufficient and thus it was ineligible for trademark registration. The publisher contested this decision, presenting survey evidence demonstrating that the public strongly recognized the title.

After a hearing before the trademark Registrar, it was concluded that the title was indeed eligible for partial trademark registration. However, concerns were raised about the potential for trademark registration to bypass copyright's limited protection period of 70 years after the author's death.

The publisher appealed this decision to the Tel Aviv District Court, which recently issued a comprehensive Judgment exploring the foundations and justifications for copyright vis-à-vis trademark protection. The court's decision provides valuable insights into the relationship between these two intellectual property doctrines.

In its ruling, the District Court found that:

·?????? The book "A Flat for Rent" has substantial goodwill and is widely known in Israel;

·?????? The appellant (publisher) owns the copyrights to the book;

·?????? Consumers strongly associate the title with the specific work.

Based on these facts, the Court concluded that the title serves as a source identifier and may be used to promote the appellant's commercial interests. The Court accepted most of the appeal, allowing broader trademark registration.

The Court addressed the concern that trademark registration might artificially extend the term of copyright protection. It stated that per Israeli law there is no prohibition for both doctrines, copyrights and trademarks, to be in effect in parallel. Therefore, a title of a book may be registered as a trademark as well as being protected by copyright.

The Court also noted that the title has acquired substantial distinctive character, as evidenced by a survey showing that 83% of respondents associated the title with the book. "A Flat for Rent" remained closely tied to the original work and has not become part of general language use.

Potential abuse of trademark protection after copyright expiration, may be dealt by trademark law's inherent mechanisms, such as the "genuine use" doctrine and the requirement for continued use.

This ruling sets the grounds for how literary titles may be protected under both copyright and trademark in Israel. The decision underscores the complex interplay between protection provided by different rights of intellectual property and highlights the need for careful consideration of the case at hand.

As intellectual property law continues to evolve in the digital age, this Judgment provides valuable guidance for creators, publishers, and legal professionals navigating the high waters of copyright and trademark protection for literary works.