[Gnso-igo-ingo-crp] Licensing as an alternative to assignment for IGOs

[Phil Corwin]

Thanks George. Your ability to unearth useful information is unsurpassed.

Philip S. Corwin, Founding Principal
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-----Original Message-----
From: gnso-igo-ingo-crp-bounces at icann.org [mailto:gnso-igo-ingo-crp-bounces at icann.org] On Behalf Of George Kirikos
Sent: Thursday, July 28, 2016 1:39 PM
To: gnso-igo-ingo-crp at icann.org
Subject: [Gnso-igo-ingo-crp] Licensing as an alternative to assignment for IGOs

Hi folks,

Just to followup on today's call, and for the benefit of those not in attendance, in addition to assignment of rights by IGOs as a workaround to the "immunity" issue which we've already discussed before, they could take the route of *licensing* their marks, see:

http://piersonpatentlaw.com/what-is-the-difference-between-assignment-and-a-license/

Then, the licensee of the mark could bring the UDRP as a complainant (thereby shielding the IGO itself).

The WIPO Overview, question 1.8, blesses that approach:

http://www.wipo.int/amc/en/domains/search/overview2.0/#18

"1.8 Can a trademark licensee or a related company to a trademark holder have rights in a trademark for the purpose of filing a UDRP case?

Consensus view: In most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding. Panels have in certain cases been prepared to infer the existence of a license and/or authorization from the particular facts, but in general, relevant evidence is desirable....."

with several precedents cited (I cited one in the chat room during our call).

Since licensing is simpler than assignment, it might allay and rebut the concerns that Professor Swaine expressed about assignment on pages
26-27 of his final report. Professor Swaine hadn't contemplated licensing, as this workgroup hadn't brought up the topic until now (i.e. we had only looked at how other IGOs had found a workaround using assignment, but hadn't considered that licensing might be an even superior workaround, and that licensees have already been granted standing in other cases not involving IGOs).

Obviously, these workarounds demonstrate that IGOs can successfully file cases within the existing UDRP rules, and continue to enjoy "immunity" simply by using some creativity --  greater education might be all that is needed, to let them be aware of those creative options.

Sincerely,

George Kirikos
416-588-0269
http://www.leap.com/
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