[gnso-rpm-wg] Wiki page for information and documents on the TM-PDDRP

Tue Aug 16 13:58:37 UTC 2016

In a similar vein to Brian's post, another very recent case relating to
intermediary liability is *BMG Rights Management v. Cox
Communications* (Eastern
District of Virginia Aug. 8 2016).  The opinion can be found here
https://www.documentcloud.org/documents/3009452-BMGvCox.html and a
discussion of the case can be found here
http://www.hollywoodreporter.com/thr-esq/judge-upholds-25-million-judgment-918429.
The court was quite critical of Cox's practices in dealing with abuse
complaints and notifications, and I think might provide a counterpoint to
the Tiffany v. Ebay case, or at least a different perspective on different
facts.

Greg

On Tue, Aug 16, 2016 at 8:52 AM, Beckham, Brian <brian.beckham at wipo.int>
wrote:

> Many thanks Mary, Jeff, and others contributing to this conversation.
>
>
>
> Further to the various email and phone discussions on the Trademark-PDDRP
> standard and below call for information, it may be worth recording a
> somewhat recent England and Wales Court of Appeals decision (*Cartier et
> al vs Sky et al*) exploring the contours of intermediary responsibility
> (in that case as to ISPs) vis-à-vis trademark owner requests to block known
> trademark-infringing websites (in that case involving counterfeits).
>
>
>
> Of course it remains for the Working Group to consider the possibility of
> assessing whether the current Trademark-PDDRP, coupled with the
> Registry‑Registrar-Registrant web of ICANN contracts, reflects how one
> court has recently viewed such related topic and the respective actors’
> responsibilities.
>
>
>
> A short summary of that case including the threshold conditions for a
> “blocking order” and additional criteria relating to the requested relief
> is available here:  https://www.rpc.co.uk/perspectives/ip/isps-appeal-
> is-blocked.  The case itself can be found at:  http://www.bailii.org/ew/
> cases/EWCA/Civ/2016/658.html.
>
>
>
> Another case that may be worth recording here is the United States
> District Court for the Southern District of New York* Tiffany vs eBay*
> case, also discussing the contours of intermediary responsibility, and
> available at:  https://www.eff.org/files/filenode/tiffany_v_ebay/
> tiffany-v-ebay-dct.pdf.
>
>
>
> Of note, in the eBay case, the court noted that:  “eBay has made
> substantial investments in anti-counterfeiting initiatives.  eBay has
> invested as much as $20 million each year on tools to promote trust and
> safety on its website.  More than 200 of [eBay’s employees] focus
> exclusively on combating infringement, at a significant cost to eBay.”
>
>
>
> Best regards,
>
>
>
> Brian
>
>
>
> Brian Beckham | Head, Internet Dispute Resolution Section | WIPO
> Arbitration and Mediation Center
> 34 chemin des Colombettes, 1211 Geneva 20, Switzerland | T +4122 338 8247
> | E brian.beckham at wipo.int | www.wipo.int
>
>
>
> *From:* gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces@
> icann.org] *On Behalf Of *Mary Wong
> *Sent:* Thursday, August 11, 2016 10:58 PM
> *To:* gnso-rpm-wg at icann.org
> *Subject:* [gnso-rpm-wg] Wiki page for information and documents on the
> TM-PDDRP
>
>
>
> Dear all,
>
>
>
> Based on the extensive list supplied by Jeff and ongoing staff collation
> of relevant materials, we have created a page on the Working Group wiki
> space that contains links to all the materials we have collected so far:
> https://community.icann.org/x/ugqsAw. You will see that the page
> currently includes all prior versions of the TM-PDDRP and links to relevant
> public comment forums as well as ICANN summaries, which we hope will be
> useful for documenting the substantive and procedural discussions that took
> place from the time that the 2009 Implementation Recommendations Team (IRT)
> proposed such a mechanism up to the adoption of the final TM-PDDRP
> Procedure in 2012.
>
>
>
> We hope to create similar pages for the other RPMs as the Working Group
> moves along with its work, beginning with the TMCH. Please feel free to
> send us information, documents and materials that you have or know of so
> that we can post them and, if needed, locate and upload them to the
> relevant page(s).
>
>
>
> Thanks and cheers
>
> Mary
>
>
>
>
>
> Mary Wong
>
> Senior Policy Director
>
> Internet Corporation for Assigned Names and Numbers (ICANN)
>
> Email: mary.wong at icann.org
>
> Telephone: +1-603-5744889
>
>
>
>
>
>
>
> *From: *<gnso-rpm-wg-bounces at icann.org> on behalf of Mary Wong <
> mary.wong at icann.org>
> *Date: *Wednesday, August 10, 2016 at 17:37
> *To: *"gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
> *Subject: *Re: [gnso-rpm-wg] Materials on Willful Blindness / PDDRP
>
>
>
> Thanks very much for the links and materials, Jeff – staff will add them
> to the Working Group wiki space. As staff has also been trying to locate
> historical information relating to the development of the various RPMs we
> are reviewing in this Working Group, we would like to invite Working Group
> members to send on similar information so that we can continue to compile a
> useful bibliography, including (when the time comes) for the other RPMs.
>
>
>
> Regarding the TM-PDDRP, Working Group members may in addition be
> interested in seeing all the community comments that were provided in
> response to a public comment opportunity on the TM-PDDRP in early 2010:
> https://forum.icann.org/lists/ppdrp-15feb10/threads.html (Jeff has
> already included links to a few, and to the staff analysis of those
> comments).
>
>
>
> We are truly grateful for the tremendous depth of expertise in this
> Working Group. While staff may be able to find and collate a certain amount
> of material, being able to leverage your knowledge and memories is
> invaluable.
>
>
>
> Thanks and cheers
>
> Mary
>
>
>
>
>
> Mary Wong
>
> Senior Policy Director
>
> Internet Corporation for Assigned Names and Numbers (ICANN)
>
> Email: mary.wong at icann.org
>
> Telephone: +1-603-5744889
>
>
>
> *From: *<gnso-rpm-wg-bounces at icann.org> on behalf of Jeff Neuman <
> jeff.neuman at comlaude.com>
> *Date: *Wednesday, August 10, 2016 at 16:36
> *To: *"gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
> *Subject: *[gnso-rpm-wg] Materials on Willful Blindness / PDDRP
>
>
>
> All,
>
>
>
> I just want to restate my point that I made on the call today.  I believe
> our job is not to rehash discussions that took place in 2008-2012 on the
> rights protection mechanisms.  Rather I believe our job is to assess
> whether any changes to the RPMs (or additions to the RPMs) need to be made
> based on actual evidence.  In my *personal* opinion (not of my company or
> any client), a person proposing changes to the policies or processes should
> have the burden showing good cause as to why those change should be made.
> Absent a showing of that good cause, I do not believe we should make the
> changes.
>
>
>
> On the call (and the chat) Lori (from INTA) and Susan K.(from Facebook)
> stated that they had filed concerns with ICANN on certain registry
> practices and the failure of ICANN to address them or the inapplicability
> of the existing RPMs to cover those activities.  I believe we should be
> looking at those concerns (as well as any other issues that are brought
> forward), evaluate whether any of them could (or should) have been brought
> under the existing RPMs, why they were not, and whether we should address
> them by changing an existing RPM or even adding a new one.
>
>
>
> Discussions on the PDDRP thus far have focused on what theoretical changes
> we can make to the PDDRP to “make it better” without any evidence being
> evaluated by the group on whether or not there is a need to “make it
> better.”  One of those proposals contemplates adding a willful blindness
> standard to the PDDRP without any showing that such a lower standard is
> necessary or whether there is any activity going on now (or in the past)
> that would fall under that lower standard necessitating a change to the
> policy.
>
>
>
> Absent any evidence showing good cause to change the policy to include
> willful blindness, the policy should not change.  In fact, this issue was
> HEAVILY discussed and argued in 2010-2011. Ultimately, ICANN decided that
> the PDDRP should not include a willful blindness standard.  I have included
> just some of the comments that were filed by WIPO, myself, the Registries,
> Neustar and others on this Issue including ICANN’s analysis.  There were
> other proponents of willful blindness other than WIPO (including I believe
> MARQUES, INTA and other IP organizations.  I believe that this was even
> supported by the governments during the Board-GAC consultations.  I know I
> do not have them all on here.  But at the end of the day, this was not
> accepted.
>
>
> The point is that we should not be rehashing these old arguments.  Our RPM
> PDP should not a “second bite at the apple”.
>
>
>
> Here is a start for collecting the discussions that have already taken
> place:
>
> WIPO Proposal:
>
> ·         https://forum.icann.org/lists/ppdrp-15feb10/pdfkYQ1rYb8Ni.pdf
> (March 2010)
>
> ·         https://forum.icann.org/lists/4gtld-base/pdfjIZkXr0Dc2.pdf
> (June 2010)
>
> ·         https://forum.icann.org/lists/5gtld-base/pdf0nS63XScIt.pdf
> (December 2010)
>
>
>
> Circle ID Articles
>
> ·         http://www.circleid.com/posts/say_no_to_wipos_proposal_to_
> amend_the_pddrp_to_create_new_law/ (May 5, 2010)
>
>
>
> ICANN Analysis:
>
> ·         https://archive.icann.org/en/topics/new-gtlds/pddrp-
> comment-summary-and-analysis-28may10-en.pdf (also has info on contract
> compliance) (May 2010)
>
> ·         https://archive.icann.org/en/topics/new-gtlds/summary-
> analysis-agv4-12nov10-en.pdf (November 2010) - Pg 118
>
>
>
> ICANN PDDRP (Revised May 2010):  https://archive.icann.org/en/
> topics/new-gtlds/pddrp-clean-28may10-en.pdf (Introduction addresses “The
> procedure is not intended to hold liable a registry operator that simply
> happens to have or knows of infringing domain names within its gTLD.
> Affirmative conduct is required.”)
>
>
>
> RYSG Statement to WIPO Proposal:  https://forum.icann.org/lists/
> 4gtld-base/docLoFbNFb2jb.doc  (June 2010)
>
>
>
> Neustar position:  https://forum.icann.org/lists/
> 4gtld-guide/pdf6T19n10mO4.pdf (July 2010)
>
>
>
>
>
> *Jeffrey J. Neuman*
>
> *Senior Vice President *|*Valideus USA* | *Com Laude USA*
>
> 1751 Pinnacle Drive, Suite 600
>
> Mclean, VA 22102, United States
>
> E: *jeff.neuman at valideus.com <jeff.neuman at valideus.com>* or *jeff.neuman at comlaude.com
> <jeff.neuman at comlaude.com>*
>
> T: +1.703.635.7514
>
> M: +1.202.549.5079
>
> @Jintlaw
>
>
>
>
>
>
>
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