[gnso-rpm-wg] "free speech"

Paul McGrady policy at paulmcgrady.com
Fri Sep 30 12:26:13 UTC 2016

Hi Paul K.,


Assuming we are able to develop a data set (and it’s a big assumption) indicating the a significant fraction of would-be registrants decided not to proceed with a registration even though they would not have run afoul of trademark rights (not sure how we could ever reach this conclusion since there was no survey on good faith/bad faith mindset at the time they decided not proceed), there still remains to prior restraint on speech.  Each of those hypothetical good faith non-registrants could have proceeded.  


As I said on the call, as a co-author of the Claims Notice I am very happy if it can be improved in any way to make the balance that Kathy and I were seeking to be more easily understood by the end user.  However, I don’t think we need to  read more into unavailable data sets than we should to reach the conclusion that we want to fiddle with the language nor do we need to reargue the delicate balance between freedom of expression on one side and the protection of consumers on the other.  To the extent that WG participants believe that the balance reached is fatally flawed, may I humbly suggest that there is an outlet for that over in WS2 on Human Rights.



Paul M.




From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Paul Keating
Sent: Friday, September 30, 2016 5:54 AM
To: Jeff Neuman <jeff.neuman at comlaude.com>
Cc: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] "free speech"




I agree.  But I thought the free speech rights were raised in the context of the evidence showing the huge number of post-notification-non-registrations. That number raised the question to determine if the notification process and/or the notice was improperly discouraging registrations. 


As I see it the remit is to investigate and correct all potential errors adversely impacting all interested parties and not simply those which may adversely impact trademark holders. 


Am I mistaken?


Paul Keating, Esq.

On Sep 30, 2016, at 12:35 PM, Jeff Neuman <jeff.neuman at comlaude.com <mailto:jeff.neuman at comlaude.com> > wrote:

I must admit that I am also confused about our discussions on this list about free speech.  I still believe the general rule should be that our job is to address actual problems that have arisen for which there is evidence of such a problem.  So, if there is evidence that free speech has been stifled by the new RPMs, lets have that evidence pushed forward.  But if there are just philosophical or hypothetical arguments, I am confused as to why we are having them.

My fear is that some may be taking this opportunity to re-argue the entire trademark protection mechanisms that we all negotiated in 2009-2012 (and beyond).  I don’t believe that is in our remit.




Jeffrey J. Neuman

Senior Vice President |Valideus USA | Com Laude USA

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

E:  <mailto:jeff.neuman at valideus.com> jeff.neuman at valideus.com or  <mailto:jeff.neuman at comlaude.com> jeff.neuman at comlaude.com 

T: +1.703.635.7514

M: +1.202.549.5079




From: gnso-rpm-wg-bounces at icann.org <mailto:gnso-rpm-wg-bounces at icann.org>  [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Reg Levy
Sent: Thursday, September 29, 2016 5:43 PM
To: Paul Keating <Paul at law.es <mailto:Paul at law.es> >
Cc: gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org> 
Subject: Re: [gnso-rpm-wg] "free speech"


J. Scott said,


Trademark owners should not overreach, true. However, the terms you cite deserve no greater scrutiny than any other dictionary term. The TMCH has been around for approximately 18 months and I have seen no reporting that the marks registered in the TMCH have severely hobbled free expression.


And I agree. The challenge is coming up with a solution that neither allows trademark owners to be taken advantage of nor encourages overreach. “Apple” in all TLDs needn’t be reserved or treated specially, but the TMCH does allow a trademark owner to buy it first. There are some instances where (police.london was a much-touted one) a trademark in conjunction with the TLD means something different enough that it would make no sense to allow the trademark owner first rights. Those are a case-by-case issue.


Are we:

1.	looking to modify and/or validate the TMCH?
2.	looking to supplement the TMCH with additional protection for trademark rights?
3.	expand the TMCH to include non-trademark rights?


We are having a very interesting and far-ranging conversation about free speech and the like, but I’m not clear on the focus that we should be maintaining.






Reg Levy
VP Compliance + Policy | Minds + Machines Group Limited
C: +1-310-963-7135
S: RegLevy2

Current UTC offset: -7


On 29 Sep 2016, at 08:46, Paul Keating <Paul at law.es <mailto:Paul at law.es> > wrote:


The term “free speech” itself is a false deity.  It is all about the protections afforded to speech.  While some jurisdictions may go further than others I think taking J. Scott’s comment to mean “speech is not protected” would be a misrepresentation of the situation.


Aside from “free speech” there is the closely related concept of fair use.


And, finally, of course, trademark protection is limited in scope.  It does not act to preclude use of the identical indicator for unrelated goods/services or for purposes which are generic (meaning the thing or its essence) or descriptive (use in describing the thing).


I think it would serve us best to keep in mind the distinctions.


Paul Keating


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: Thursday, September 29, 2016 at 5:31 PM
To: Paul McGrady <policy at paulmcgrady.com <mailto:policy at paulmcgrady.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"


That was the misstatement.  “Most nations don’t have a US-style First Amendment” would have been true.


Rebecca Tushnet

Georgetown Law

703 593 6759


From: Paul McGrady [mailto:policy at paulmcgrady.com] 
Sent: Thursday, September 29, 2016 11:29 AM
To: Rebecca Tushnet
Cc: gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org> 
Subject: RE: [gnso-rpm-wg] "free speech"


Hi Rebecca,


What was the misstatement you are trying to correct?  The most related statement that I could find in the Transcript was J. Scott who said “very few jurisdictions in the world have free speech.”  I didn’t see anyone who said “Most nations don’t have a US-style First Amendment.”  In fact, I didn’t see a single reference to the First Amendment in the transcript.






Paul D. McGrady, Jr.

policy at paulmcgrady.com <mailto:policy at paulmcgrady.com> 




From:gnso-rpm-wg-bounces at icann.org <mailto:gnso-rpm-wg-bounces at icann.org>  [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Rebecca Tushnet
Sent: Wednesday, September 28, 2016 12:35 PM
Cc: 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> 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/> 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


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