[gnso-rpm-wg] "free speech"

Paul Keating Paul at law.es
Fri Sep 30 12:56:21 UTC 2016

I want to try to build a bridge here.

I agree with J.Scott that trademark holders should not over reach.  I would
add and registrants should not do so either.  The point I would like us all
to consider is the following:

1. Those speaking for the trademark side often seem to ignore the issue of
over-reaching by trademark holders but not domain registrants.

2. Those speaking for domain registrants often seem to ignore the issue of
over-reaching by domain registrants but not trademark holders.

I think the solution is to not only reflect on the above but also to
remember that the best policies are often developed to target a problem at
the 50,000 foot level and not lower.  In other words, macro and not micro.
Good policies acknowledge that (a) they are often written by those who may
not fully understand all of the issues and (b) the situation they are trying
to address may change over time and the policy should be flexible enough to
adapt.   Good policy is not degraded because harm occurs on the individual
level.  Good policy is degraded when the number of individuals being harmed
outweighs the benefits of the policy at a macro level.

So, while I ascribe to the saying ³if it aint broke don¹t fix it² I also
ascribe to the view that if it does need fixing then all potential solutions
must be considered and not simply those considered important by one side to
the conversation.


From:  <gnso-rpm-wg-bounces at icann.org> on behalf of "J. Scott Evans"
<jsevans at adobe.com>
Date:  Thursday, September 29, 2016 at 4:33 PM
To:  Kathy Kleiman <kathy at kathykleiman.com>
Cc:  "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
Subject:  Re: [gnso-rpm-wg] "free speech"

> Kathy:
> Thanks for this post. I agree it is good to have many and varied perspectives.
> With regard to your recitation of terms that are registered in the TMCH. Yes,
> these terms do have a dictionary meaning that can be important to civil
> society and free expression to English speaking audiences. That said, they are
> also trademarks and their owners have the right to use those marks to protect
> their consumers. 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.
> J. Scott
> Sent from my iPhone
> On Sep 29, 2016, at 7:23 AM, Kathy Kleiman <kathy at kathykleiman.com> wrote:
>> 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...
>> Best, 
>> Kathy
>> 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 ³dictionary terms² 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 ³internationally² 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
>>> www.adobe.c <http://www.adobe.c> om
>>> From: Rebecca Tushnet <rlt26 at law.georgetown.edu>
>>> Date: Wednesday, September 28, 2016 at 11:39 AM
>>> To: "J. Scott Evans" <jsevans at adobe.com>
>>> Cc: "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
>>> Subject: RE: [gnso-rpm-wg] "free speech"
>>> J. Scott, I don¹t 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 don¹t
>>> 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=1633231
>>> <http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1633231>  and 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%2Fi
>>> 0ad6040a00000157720fabec289f3264%3FNav%3DANALYTICAL%26fragmentIdentifier%3DI
>>> 7cb6ccefefd311e498db8b09b4f043e0%26startIndex%3D1%26contextData%3D%2528sc.Se
>>> arch%2529%26transitionType%3DSearchItem&listSource=Search&listPageSource=3b3
>>> 6d775a69aec3c8b89adc711488adc&list=ANALYTICAL&rank=8&grading=na&sessionScope
>>> Id=974384ae4bca6a686949f50a8f8ca2525f0f068a2ff02f65c47cc9b4335d4752&originat
>>> ionContext=Search%20Result&transitionType=SearchItem&contextData=%28sc.Searc
>>> h%29#co_term_19621>  A Comparative Legal Analysis of the Freedom of Speech
>>> (2006).
>>> Also, many jurisdictions don¹t use the terminology of ³fair use,² 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
>>> 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 ³truth² on any subject. Second, many
>>> countries have almost an exact replica of the US Constitution, but don¹t
>>> recognize the provision related to free speech. Likewise, many jurisdictions
>>> do not recognize the concept of ³fair use.² 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 UN¹s 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> on behalf of Rebecca Tushnet
>>> <rlt26 at law.georgetown.edu>
>>> Date: Wednesday, September 28, 2016 at 10:34 AM
>>> Cc: "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
>>> Subject: [gnso-rpm-wg] "free speech"
>>> Just to correct a misstatement on the call earlier:  Most nations don¹t 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 doesn¹t 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 don¹t 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 don¹t recognize any freedom
>>> of speech at all.
>>> Also, you can¹t 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 can¹t 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 we¹ve 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 wouldn¹t
>>> infringe).
>>> Rebecca Tushnet
>>> Georgetown Law
>>> 703 593 6759
>>> <ACL>
>>> _______________________________________________
>>> gnso-rpm-wg mailing list
>>> gnso-rpm-wg at icann.orghttps://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>> _______________________________________________
>> gnso-rpm-wg mailing list
>> gnso-rpm-wg at icann.org
>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
> _______________________________________________ gnso-rpm-wg mailing list
> gnso-rpm-wg at icann.org https://mm.icann.org/mailman/listinfo/gnso-rpm-wg

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20160930/6ece46a5/attachment-0001.html>

More information about the gnso-rpm-wg mailing list