[gnso-rpm-wg] "free speech"

Kathy Kleiman kathy at kathykleiman.com
Thu Sep 29 14:23:06 UTC 2016

Hi All, I tried to post this message last night. If anyone else is 
having problems posting to our list, please let me, J. Scott or Phil know.


Dear All,

For those of us who go back to the beginning of time on these issues, I 
want to note how happy I am that our call for new participants has been 
answered. We have a number of new members on the Working Group, and they 
bring new questions, extensive backgrounds and expertise and new avenues 
of inquiry. We have the old guard who have worked on these issues for 
years. All are welcome and appreciated!

I also appreciate our dynamic discussion in and after the Working Group 
meeting today. We are working on the issue of what is within scope for 
our discussion of the Trademark Clearinghouse generally, and today, the 
Trademark Claims Services in particular. One of the questions that has 
been solidly placed before us (in different forms and different ways) is 
whether the current Rights Protection Mechanisms and the TMCH Services 
are fair and balanced. Do both trademark owners and nontrademark owners 
have appropriate and legal access to domain names?

Important questions were raised today about trademark rights and the 
limits of trademark rights. It is an inquiry that goes back to the 
Special Trademarks Initiative Group of the GNSO, if not before. It seems 
a very appropriate part of our inquiry to ask whether in a hypothetical 
.FORPRESIDENT New gTLD, we have a TMCH system that allows Clinton 
Watches, Clinton Fences and Clinton Printing Paper to register 
CLINTON.FORPRESIDENT before Secretary Hillary Clinton?

When basic words of political discourse such as FREEDOM (USPTO IC 028 
Mounts and mounting devices adapted for use with suspended physical 
fitness equipment. Reg No. 5042693), LIBERTY (USPTO IC 009 Hearing 
muffs, namely, sound amplifiers. Reg No. 4793635), and TRUST (USPTO IC 
028. In-line skate liners. Reg No. 4301142) are used as trademarks, but 
also play an integral role in the fabric of political dialogue, we have 
a Free Expression issue and concern before us.

That was our goal for today - not answers, but questions. I think we 
found some good ones...


On 9/28/2016 3:07 PM, J. Scott Evans wrote:
> Rebecca:
> With regard to your last point, I believe we have a problem with 
> nomenclature that has plagued this debate for 17 years. To your last 
> point, I believe you are speaking “dictionary terms” that, in certain 
> instances, can also be generic terms. Apple for apples is a generic. 
> Apple for apple juice is descriptive or perhaps suggestive. Apple for 
> smartphones is arbitrary.  I do not believe that trademark owners 
> should have the right to thwart criticism or protest or to prevent 
> third parties with equally legitimate rights from using a string that 
> may well be identical to a trademark, so long as the use in the domain 
> is, in fact, non-infringing. What I worry about is the emotional 
> argument and posturing about free speech in this debate. There seems 
> to be a constant implied argument that trademark owners as a whole 
> wish to squelch “internationally” recognized concepts of free speech. 
> Yes, there are over aggressive trademark owners that seek to abuse the 
> RPMs and trademark laws. Equally true, there a scurilous players in 
> the DNS that seek to infringe the rights of trademark owners to the 
> detriment of consumers. Our job is to try and find a balanced way of 
> protecting both interests.
> J. Scott
> *J. Scott Evans* *| Associate General Counsel - Trademarks, Copyright, 
> Domains & Marketing |*
> *Adobe *
> 345 Park Avenue
> San Jose, CA 95110
> 408.536.5336 (tel), 408.709.6162 (cell)
> jsevans at adobe.com <mailto:jsevans at adobe.com>
> www.adobe.com
> From: Rebecca Tushnet <rlt26 at law.georgetown.edu 
> <mailto:rlt26 at law.georgetown.edu>>
> Date: Wednesday, September 28, 2016 at 11:39 AM
> To: "J. Scott Evans" <jsevans at adobe.com <mailto:jsevans at adobe.com>>
> Cc: "gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org>" 
> <gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org>>
> Subject: RE: [gnso-rpm-wg] "free speech"
> J. Scott, I don’t believe my statement holds up US First Amendment law 
> as the standard; let me say again that freedom of speech, not the 
> First Amendment, is an internationally recognized value, and that 
> criticism of private businesses is generally part of freedom of 
> speech. FWIW, I don’t recognize Wikipedia as authoritative either, 
> though the entry actually provides helpful external links if you 
> peruse it.
> Further resources on comparative freedom of speech regimes include the 
> very helpful overview at 
> http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1633231and the many 
> sources cited therein (if any nonlawyers lack access to the cited 
> works, I may be able to help), as well as Ronald Krotoszynski, Jr., 
> The First Amendment in Cross-Cultural Perspective: 
> <https://1.next.westlaw.com/Document/I7cb6ccefefd311e498db8b09b4f043e0/View/FullText.html?navigationPath=Search%2Fv3%2Fsearch%2Fresults%2Fnavigation%2Fi0ad6040a00000157720fabec289f3264%3FNav%3DANALYTICAL%26fragmentIdentifier%3DI7cb6ccefefd311e498db8b09b4f043e0%26startIndex%3D1%26contextData%3D%2528sc.Search%2529%26transitionType%3DSearchItem&listSource=Search&listPageSource=3b36d775a69aec3c8b89adc711488adc&list=ANALYTICAL&rank=8&grading=na&sessionScopeId=974384ae4bca6a686949f50a8f8ca2525f0f068a2ff02f65c47cc9b4335d4752&originationContext=Search%20Result&transitionType=SearchItem&contextData=%28sc.Search%29#co_term_19621> 
> A Comparative Legal Analysis of the Freedom of Speech (2006).
> Also, many jurisdictions don’t use the terminology of “fair use,” but 
> as far as I am aware very few consider all criticism, or all 
> unauthorized use of a term, infringing; indeed, it would perhaps be 
> helpful, especially for the nonlawyers in the group, to see the 
> citations on which you are basing your legal statements about the 
> scope of trademark or speech rights outside the US.
> Finally, the problem we are facing is that there is no neutral 
> baseline here, and we have already adopted substantial protections for 
> trademark rights claimants who have any recognized rights in /any/ 
> relevant jurisdiction; we should recognize the variety of freedom of 
> speech interests the same as we recognize the variety of trademark 
> rights.  As Kathy noted on the call, a significant number of the 
> relevant marks are generic for at least some things and not 
> universally famous, which increases the breadth of rights protections 
> far beyond actual rights.
> Rebecca Tushnet
> Georgetown Law
> 703 593 6759
> *From:*J. Scott Evans [mailto:jsevans at adobe.com]
> *Sent:* Wednesday, September 28, 2016 2:20 PM
> *To:* Rebecca Tushnet
> *Cc:* gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org>
> *Subject:* Re: [gnso-rpm-wg] "free speech"
> Rebecca:
> Thanks for weighing in here. First, I do not use Wikipedia as a 
> definitive source for anything related to the law. It is interesting 
> reading and may require that I go to more definitive sources to 
> verify, but I do not put much stock in it as the absolute “truth” on 
> any subject. Second, many countries have almost an exact replica of 
> the US Constitution, but don’t recognize the provision related to free 
> speech. Likewise, many jurisdictions do not recognize the concept of 
> “fair use.” My only point our call was that there are many non-lawyers 
> participating. I think many time views are put forth on our calls that 
> could be seen as misleading. It is one thing to hold the US concept of 
> free speech up as the standard bearer that we should aspire to in our 
> work (I could also argue that US concept of IP protection should also 
> be held up as an appropriate standard). However, in my experiences at 
> ICANN since we originally drafted, it has constantly been pointed out 
> that we SHOULD NOT apply US-like trademark protections to the ICANN 
> RPMs since different jurisdictions view trademarks differently. I can 
> theoretically see the rationale behind this argument. Unfortunately 
> for me, however, I fail to see how the concept of US free speech 
> should be universally applied, but US-like trademark protections 
> should not. I think that is intellectually inconsistent.  As for the 
> UN’s Universal Declaration of Human Rights and its signatories, I 
> think the same position could be taken with regard to the Paris 
> Convention and its signatories.
> J. Scott
> *J. Scott Evans**| Associate General Counsel - Trademarks, Copyright, 
> Domains & Marketing****|*
> *Adobe *
> 345 Park Avenue
> San Jose, CA 95110
> 408.536.5336 (tel), 408.709.6162 (cell)
> jsevans at adobe.com <mailto:jsevans at adobe.com>
> www.adobe.com <http://www.adobe.com>
> *From: *<gnso-rpm-wg-bounces at icann.org 
> <mailto:gnso-rpm-wg-bounces at icann.org>> on behalf of Rebecca Tushnet 
> <rlt26 at law.georgetown.edu <mailto:rlt26 at law.georgetown.edu>>
> *Date: *Wednesday, September 28, 2016 at 10:34 AM
> *Cc: *"gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org>" 
> <gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org>>
> *Subject: *[gnso-rpm-wg] "free speech"
> Just to correct a misstatement on the call earlier:  Most nations 
> don’t have a US-style First Amendment.  Most nations with a rule of 
> law do, however, recognize freedom of speech in some form, including 
> the right to criticize private companies.  As this Wikipedia entry 
> notes, https://en.wikipedia.org/wiki/Freedom_of_speech_by_country, 
> implementation can be inconsistent on the ground, but I expect that 
> inconsistent enforcement of trademark rights on the ground doesn’t 
> mean that trademark owners want ICANN to ignore the law on the books; 
> freedom of speech is equally a principle worth honoring.  In addition, 
> I don’t know how many countries whose nationals participate in the 
> ICANN process have signed on to the Universal Declaration of Human 
> Rights, which includes freedom of speech, 
> http://www.un.org/en/universal-declaration-human-rights/, but I doubt 
> we want to make policy based on the countries that don’t recognize any 
> freedom of speech at all.
> Also, you can’t have it both ways: if domain names can facilitate 
> infringement, which they absolutely can, then they convey meaning; if 
> they convey meaning, they can also facilitate noninfringing conduct or 
> affirmatively protected freedom of speech.  It is just as true, or 
> untrue, that a trademark owner can register a different string if it 
> can’t have the one that it wants as it is that a person making fair or 
> otherwise noninfringing use can do so.  This is especially so if we’ve 
> given trademark owners the ability to jump the line in many 
> circumstances.  Freedom of speech principles may help tell us when 
> preclusion of a domain name to a speaker—whether a trademark owner or 
> a non-owner—is of particular importance. That is, they can help us 
> identify the important false positives (notifications generated in 
> response to domain names that wouldn’t infringe).
> Rebecca Tushnet
> Georgetown Law
> 703 593 6759
> ------------------------------------------------------------------------
> <ACL>
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