[gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

Thu Apr 27 02:19:40 UTC 2017

Paul, we have been asked by the GNSO Council to evaluate the balance of 
the rights of trademark owners to those of current and future 
registrants. That's the issue Professor Tushnet has been addressing. As 
a GNSO Councilor, I would expect you to welcome experts/members of the 
Community into our PDP process, whether or not they say anything 
favorable to position.

Further, it's certainly not anti-trademark to say that the balance and 
very clear lines that the STI/GNSO Council/ICANN Board created in favor 
of word marks and barring design marks is not anti-trademark. It was 
considered very pro-trademark at the time. I wonder why the lines have 
moved?  And under what PDP authority?

Best, Kathy

On 4/26/2017 9:50 PM, icannlists wrote:
> Thanks Rebecca.  I'm not characterizing you as anti-trademark; just your arguments and positions to date on this list.  We would very much welcome anything favorable to trademarks that you wish to add to the discourse.
>
> Best,
> Paul
>
>
>
> -----Original Message-----
> From: Rebecca Tushnet [mailto:Rebecca.Tushnet at law.georgetown.edu]
> Sent: Wednesday, April 26, 2017 8:00 PM
> To: icannlists <icannlists at winston.com>
> Cc: Silver, Bradley <Bradley.Silver at timewarner.com>; gnso-rpm-wg at icann.org
> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)
>
> Please don't characterize me as anti-trademark; I strongly believe in the consumer protection function of trademarks, and also in trademark protection in some circumstances for business purposes.  See https://harvardlawreview.org/2017/01/registering-disagreement-registration-in-modern-american-trademark-law/
>
> Asking again: for those of you who think it doesn't matter if claimants who don't own relevant rights get to use the TMCH, what then did ICANN mean by its stated intent not to expand trademark rights?
> Rebecca Tushnet
> Georgetown Law
> 703 593 6759
>
>
> On Wed, Apr 26, 2017 at 8:46 PM, icannlists <icannlists at winston.com> wrote:
>> Thanks Rebecca.  There is not much new here.  Whomever registers a second level domain name first (Sunrise - TM owner), Premium (Rich person) or Landrush (TM owner who didn't want to pay the Sunrise shakedown price or regular folks like all of us), someone gets the exclusive rights to that second level.  So, it is not just a question of if, but of when and who.  I think it is OK to just say "I don't want it to be a trademark owner."  Others will disagree, but we don't have to keep this in a mysterious context or otherwise try to layer on some free speech issue that doesn't exist.  Trademark owners want them first in order to protect their brands and consumers.  Others who are anti-trademarks don't want them to have them first and would prefer someone else gets the exclusive right.  Fair enough.  Now we see if we can get to consensus on changing the AGB.  I doubt we will, but at least the free speech veneer is pulled back.
>>
>> Best,
>> Paul
>>
>>
>>
>> -----Original Message-----
>> From: gnso-rpm-wg-bounces at icann.org
>> [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Rebecca Tushnet
>> Sent: Wednesday, April 26, 2017 3:11 PM
>> To: Silver, Bradley <Bradley.Silver at timewarner.com>
>> Cc: gnso-rpm-wg at icann.org
>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16
>> (Design Mark and Appropriate Balance)
>>
>> By that logic the mandate not to expand on trademark rights would have
>> been pointless because no activity in domain name space could ever
>> have expanded trademark rights.  Call it a right, call it a privilege,
>> call it an alien from Xenon if you like, but ICANN did not want
>> trademark owners to be able to assert control over domain names in
>> excess of what underlying trademark law would have allowed.  Under the
>> "nothing in domain names can expand trademark rights because they're
>> never exclusive" logic, was the ICANN direction completely
>> meaningless, or did it have some meaning?  (Trademark rights, of
>> course, are never "exclusive" either, which is why we can use any
>> examples we want in this discussion.) Rebecca Tushnet Georgetown Law
>> 703 593 6759
>>
>>
>> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg <gnso-rpm-wg at icann.org> wrote:
>>> Jeremy - the TMCH does not allow exclusive rights in domains.  Having a mark in the TMCH affords nothing close an exclusive right.  That's a basic truth which shouldn’t be ignored.
>>>
>>> -----Original Message-----
>>> From: gnso-rpm-wg-bounces at icann.org
>>> [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Jeremy Malcolm
>>> Sent: Wednesday, April 26, 2017 1:32 PM
>>> To: gnso-rpm-wg at icann.org
>>> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16
>>> (Design Mark and Appropriate Balance)
>>>
>>> On 26/4/17 9:00 am, Colin O'Brien wrote:
>>>> Nice try Rebecca but I'm not attempting to overturn the apple cart.  If you have actual examples of problems then provide them otherwise this is an indulgent  academic exercise.
>>> The fact that the TMCH is allowing exclusive rights in domains that go beyond the equivalent rights in domestic trademark law is itself a problem if we accept that the TMCH was meant to track trademark law.
>>>
>>> --
>>> Jeremy Malcolm
>>> Senior Global Policy Analyst
>>> Electronic Frontier Foundation
>>> https://eff.org
>>> jmalcolm at eff.org
>>>
>>> Tel: 415.436.9333 ext 161
>>>
>>> :: Defending Your Rights in the Digital World ::
>>>
>>> Public key: https://www.eff.org/files/2016/11/27/key_jmalcolm.txt
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