[gnso-rpm-wg] "free speech"

Fri Sep 30 17:58:10 UTC 2016

Thanks Paul K.

I suppose a good first step then would be to determine where the relative
harms are between the two forms of overreach.  Fortunately, that is pretty
easy to quantify in our context, since all we need do is add the up number
of UDRP decisions where there is a decision against the respondent and
compare that with the number of UDRP decisions where there is a decision of
reverse domain name hijacking against the complainant, right?  We can then
determine what is broken in the system: is there too much registrant
overreach or too much trademark owner overreach.  We can then apply that
knowledge to all the RPMs as we go through them to either strengthen the one
or strengthen the other.

Best,

Paul

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 7:56 AM
To: J. Scott Evans <jsevans at adobe.com>; Kathy Kleiman
<kathy at kathykleiman.com>
Cc: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] "free speech"

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 "if it aint broke don't fix it" 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.

PRK

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

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
<mailto: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 "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)
 <mailto:jsevans at adobe.com> jsevans at adobe.com

www.adobe.c <http://www.adobe.c> om

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=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: 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)
 <mailto:jsevans at adobe.com> 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>
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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