[Gnso-newgtld-wg-wt5] Proposed Agenda and Reminder to Submit Input on Initial Report - Work Track 5 meeting - 14 November 2018

[Greg Shatan]

Jorge,

I’ll skip over your procedural arguments, since debating assumptions or
interpretations about the unwritten rules of commenting is tedious.  I will
just say that I assumed that once the window for comments closed, any
remaining comments would be discussed, so your opportunity to comment was
not a matter of luck.  Turning to substance, which is a more useful
discussion:

Following your advice I did a search using Google for “principle of
specialty”. Here’s the first result:  “A principle of international law
that is included in most extradition treaties, whereby a person who is
extradited to a country to stand trial for certain criminal offenses may be
tried only for those offenses and not for any other pre-extradition
offenses.”  Most of the next 30 results use it this way (and not all are
U.S. sources).

There are a couple of trademark references: the 9th result is the WIPO
document, and there are a couple of UK references.  We do finally come to a
U.S. source using it as a trademark term: an article on “The Confusing
Similarity Standard in *Mexican* Law,” in “The Trademark Reporter.”   I
could find no references using it for U.S. or Canadian trademark law,
regardless of the nationality of the source.

The point is that this term will have no meaning to lay readers and no
meaning to a significant portion of knowledgeable readers.  I’ve been
practicing trademark law in the U.S. for over 30 years (dealing with
trademark laws around the world), and I have rarely, if ever, seen the term.

I’ll note that I was flexible when the term “bright line rule” was
questioned. I think this is a reasonable request; it did not change the
meaning and I’m surprised you object. I’m just trying to make our report
understood by as many as possible.  If you are insistent the term be used,
then we need a footnote to explain it.  According to the Swissberg law
firm’s website “*Swiss trademark law is based on the principle of
specialty,*” so you are comfortable with it.  But we can’t assume general
familiarity with the term.

As for “trademark fair use” I agree the term is widely known (though it may
not be widely understood).  Nonetheless, the Report is using the term
incorrectly. Trademark fair use does *not *“allow the use [of] the same
word for a trademark even within the same jurisdiction.”

I don’t know if you looked at the Wikipedia page you cited, but it
completely supports my objection — it discusses descriptive fair use (using
a trademark term in a generic sense) and nominative fair use (using a
trademark to refer to a trademarked good or service that can’t readily be
identified another way — like a band).  It may be a “*limit” *to trademark
law, but it has nothing to do with the point at hand — whether two brand
owners can use the same mark on unrelated goods and services in the same
jurisdiction.

I hope that you will accept these neutral and well-meant changes, so we can
stop wasting each other’s time, which is for me at least as scarce for you
(unless the Swiss have devalued the minute) and in some sense more
valuable, since I bill by the hour (and can’t bill anyone for this).

Kind regards,

Greg



On Mon, Nov 19, 2018 at 2:53 AM <Jorge.Cancio at bakom.admin.ch> wrote:

> Dear Greg and all
>
>
>
> Just very quickly:
>
>
>
> ·         The wording you aim at amending has been in the working paper
> for months: “From this perspective, under trademark law, the principles
> of specialty and of trademark "fair use" apply, according to which it is
> possible for two brands to register trademarks for the same term in the
> same jurisdiction, as long as no confusion or infringement pursuant to
> the law arises.”
>
> ·         It expresses the point of view of “some” (“from this
> perspective”)
>
> ·         Your comment came in the last minute – so it was perceived as a
> last minute attempt to change the point of view of others, without a good
> chance for those others to intervene (unless, as in my case, they were
> lucky to have the time to look into these comments).
>
> ·         The “principle of specialty” is widely recognized in trademark
> law –btw we are not talking only about one specific jurisdiction here-
> (just google it and you’ll find as first result the reference the WIPO
> definition:  *“The right of the owner of a mark to prevent third parties
> from using that mark in trade is subject to the principle of specialty,
> according to which this right can only be asserted with regard to those
> goods and services in respect of which the trademark is protected, usually
> as a result of registration.30.03.2007” SCT/17/3: Relation of Established
> Trademark Principles to ... – WIPO *
> www.wipo.int/edocs/mdocs/sct/en/sct_17/sct_17_3.doc
>
> ·         Also “fair use” is widely known as a *limit* to trademark law –
> which is what the wording in the report is explaining (see
> https://en.wikipedia.org/wiki/Fair_use_(U.S._trademark_law)). Hence, next
> to the principle of specialty, it allows to use the same word for a
> trademark even within the same jurisdiction.
>
> I hope that we leave it by this and avoid wasting each other’s time, which
> at least for me is a quite scarce resource…
>
> Regards
>
> Jorge
>
>
>
>
>
> *Von:* Greg Shatan <gregshatanipc at gmail.com>
> *Gesendet:* Sonntag, 18. November 2018 23:54
> *An:* Marita Moll <mmoll at ca.inter.net>
> *Cc:* Cancio Jorge BAKOM <Jorge.Cancio at bakom.admin.ch>; Emily Barabas <
> emily.barabas at icann.org>; Icann Gnso Newgtld Wg Wt5 <
> gnso-newgtld-wg-wt5 at icann.org>
>
>
> *Betreff:* Re: [Gnso-newgtld-wg-wt5] Proposed Agenda and Reminder to
> Submit Input on Initial Report - Work Track 5 meeting - 14 November 2018
>
>
>
> With regard to the objection to my comments (numbered as 69 and 70), the
> reasons for these were explained in detail in my submission.
> Unfortunately, those were left out of the document circulated by staff.  It
> is really incorrect and unfortunate to characterize these changes as ones
> intended to delete anyone's point of view.
>
>
>
> These comments were on the following text, and suggested that the first
> text highlighted below should be deleted and the second be added:
>
>
>
> TLDs are a unique resource. Some Work Track members have contrasted this
>
> 33 unique quality of TLDs with the use of names under trademark law. From
> this
>
> 34 perspective, under trademark law, the principles of specialty and of
> trademark
>
> 35 "fair use" apply, according to which it is possible for two brands to
> register
>
> 36 trademarks for the same term in the same jurisdiction [for unrelated
> goods and services], as long as no confusion or
>
> 37 infringement pursuant to the law arises.
>
>
>
> I'll explain again and hopefully more clearly.  First the term "principle
> of specialty" is not one generally used in discussing US trademark law
> (perhaps like "bright line rule" it is a term that does not travel well).
> I had to look it up to see what it meant.  We need to use terms that will
> be commonly understood, at least by those with some knowledge of the
> subject matter.  The added language "for unrelated goods and services"
> really covers the same concept. Furthermore the added language corrects
> what is otherwise an ambiguous (and arguably, misleading) description of
> basic trademark laws (i.e., without that language, it leaves the impression
> that the same mark can be registered and used for related goods and
> services in the same country).  In other words, this was merely a
> clarifying change.
>
>
>
> The second change (deleting the reference to "trademark 'fair use'") was
> also intended to be corrective, not to remove anyone's opinion.  That is
> because this is an incorrect use of the term "trademark fair use."
> Trademark fair use is not in any way related to the right to use a
> trademark for different goods and services than an existing trademark.
> Trademark fair use refers to either "descriptive" fair use -- the right to
> call an apple an apple, regardless of Apple's trademark rights -- or to
> "nominative" fair use -- the right to call the Spice Girls the Spice Girls
> (e.g., in a ticket giveaway), even though Spice Girls is a trademark.
>
>
>
> If these changes (or any others I suggested) are objectionable, they
> should be responded to in substance, rather than by broad
> (mis)characterization and/or by introducing ex post facto rules about what
> changes can be made when, and which seem intended to dismiss changes
> without reaching their merits.
>
>
>
> I'm as interested in closure as anyone, but sending out a report with
> incorrect assertions will delay closure in the long run.
>
>
>
> Best regards,
>
>
>
> Greg
>
>
>
>
>
> On Wed, Nov 14, 2018 at 9:03 AM Marita Moll <mmoll at ca.inter.net> wrote:
>
> Yes, I think this is a valid comment. We could find ourselves right back
> at the beginning.
>
> Marita
>
>
>
> On 11/14/2018 8:48 AM, Jorge.Cancio at bakom.admin.ch wrote:
>
> Dear Emily and all
>
> Thanks very much for the new text. I will not be able to make the call (am
> in Paris at the IGF), but let me share the general observation that there *should
> not be changes in the last minute* which try to change the balance of the
> text as had been prepared by staff, especially changes which try to convey
> a different reflection of the discussions already had in the work track.
>
> I also would like to urge that we avoid last minute changes intended to
> change the description of what was said or argued by “some”. Deleting or
> rephrasing of others’ opinions by others with a different opinion should be
> refrained from. For instance, I feel that the comments 69 and 70 from Greg
> go in that direction – I would urge not to do that – otherwise others may
> feel the need to edit the opinions expressed by others, which at this stage
> is really meaningless.
>
> Kindly
>
> Jorge
>
>
>
> *Von:* Gnso-newgtld-wg-wt5 <gnso-newgtld-wg-wt5-bounces at icann.org>
> <gnso-newgtld-wg-wt5-bounces at icann.org> *Im Auftrag von *Emily Barabas
> *Gesendet:* Mittwoch, 14. November 2018 14:26
> *An:* gnso-newgtld-wg-wt5 at icann.org
> *Betreff:* Re: [Gnso-newgtld-wg-wt5] Proposed Agenda and Reminder to
> Submit Input on Initial Report - Work Track 5 meeting - 14 November 2018
>
>
>
> Dear all,
>
>
>
> Thanks to those who shared additional comments and suggestions on the
> list. Please see the attached updated version of the document which we will
> use on the call shortly. Comments highlighted in purple are those added
> since last week’s call. Those in yellow require further discussion and will
> be the focus of the call today.
>
>
>
> Kind regards,
>
> Emily
>
>
>
> *From: *Emily Barabas <emily.barabas at icann.org>
> *Date: *Tuesday, 13 November 2018 at 12:54
> *To: *"gnso-newgtld-wg-wt5 at icann.org" <gnso-newgtld-wg-wt5 at icann.org>
> *Subject: *Proposed Agenda and Reminder to Submit Input on Initial Report
> - Work Track 5 meeting - 14 November 2018
>
>
>
> Dear Work Track 5 members,
>
>
>
> This is a reminder that the deadline to provide input on the draft Initial
> Report is *Friday 16 November*. If you would like the group to discuss
> you input on the call tomorrow, please make sure to send your input to the
> mailing list prior to the call.
>
>
>
> Please find below the proposed agenda for tomorrow’s call:
>
>
>
> 1. Welcome/Agenda Review/SOI Updates
>
> 2. Recommendation 11 - non-capital city names
>
> 3. Review new comments, clarifications, and edits to the draft Initial
> Report
>
> 4. AOB
>
>
>
> Kind regards,
>
> Emily
>
>
>
>
>
> *From: *Emily Barabas <emily.barabas at icann.org>
> *Date: *Thursday, 8 November 2018 at 20:09
> *To: *"gnso-newgtld-wg-wt5 at icann.org" <gnso-newgtld-wg-wt5 at icann.org>
> *Subject: *Initial Report next steps and deadline for input - Friday 16
> November
>
>
>
> Dear Work Track 5 members,
>
>
>
> Thanks to all who have submitted comments about the draft Initial Report
> on the mailing list and those who were able to join the call yesterday to
> go through some of the comments received that may require further
> discussion. Please find attached a revised draft of the report
> incorporating feedback received on the call. As a reminder, the target date
> for publishing the Initial Report is 20 November. In view of this timeline,
> the Work Track leadership team kindly requests that members *submit any
> final feedback on the Initial Report no later than Friday 16 November*.
> You can either insert comments in a copy of the attached document and send
> to the WT5 mailing list or send your comments in the body of an email to
> the WT5 list, identifying the page and line number of the text you are
> referencing.
>
>
>
> Below you will find some of the questions/concerns raised in comments by
> members that still may need additional input. The leadership team is
> sending these on the mailing list to make sure that all members have a
> chance to provide feedback, even if they were not able to join the call.
>
> ·       On page 17 (recommendations section of the report) two WT members
> commented that they felt it was premature to include any preliminary
> recommendation in the Initial Report on the topic of non-capital city
> names. Do you support removing preliminary recommendation 11 on treatment
> of non-capital city names? Or do you favor leaving the recommendation in
> the report, noting that it can be changed for the Final Report based on
> community input and further discussion in the Work Track? Regardless of
> whether the recommendation is kept or removed, there are two questions for
> community input on this topic (e10 and e11) included in the Initial Report,
> so the group can expect additional community feedback through public
> comment to support further deliberations.
>
> ·       On page 40 (deliberations section of the report) the text
> mentions the following proposal put forward by a Work Track member: “Once a
> gTLD is registered with an intended use that is geographic in nature, all
> other variations and translations of this term are unconditionally
> available for registration.” Another Work Track member requested
> clarification on the meaning of “unconditionally available” and also
> requested clarification about which entities might be able to apply for
> these variations and translations under the proposal. Can the author of
> this proposal provide any additional clarification?
>
> ·       On page 41 (deliberations section of the report) the text
> mentions the following proposal put forward by a Work Track member:
> “Applicants for geographic names must apply to the GAC to receive
> permission to submit an application for the string.” Another Work Track
> member requested clarification about the scope and meaning of this
> proposal, including how it would interact with other requirements. Can the
> author of this proposal provide any additional clarification?
>
> ·       On page 76 (deliberations section of the report) the text
> mentions the following proposal put forward by a Work Track member: “Apply
> a "bright-line" rule that any geographic term that is not explicitly and
> expressly protected is unprotected. No objection or non-consent can be used
> to stop its registration.” Other Work Track members raised concern that the
> term “bright line” rule may not be widely used and understood, and further
> requested clarification on the scope of this rule and the basis for
> protection. Can the author of this proposal provide any additional
> clarification?
>
> Note that Work Track members are welcome to comment on any other parts of
> the draft in addition to the items listed above.
>
>
>
> Kind regards,
>
>
>
> Emily
>
>
>
>
>
> *Emily Barabas *| Policy Manager
>
> *ICANN* | Internet Corporation for Assigned Names and Numbers
>
> Email: emily.barabas at icann.org | Phone: +31 (0)6 84507976
>
>
>
>
>
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