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

Thu Apr 27 02:49:39 UTC 2017

Paul, I don't think Kathy was wearing her "co-chair" hat when she wrote
those remarks.

I would not say that the STI report was considered to be "very
pro-trademark" at the time.  The IRT report was considered to be very
pro-trademark.  The STI report was a significant watering-down of the IRT
report -- perhaps inevitable in the multistakeholder model, but hardly
"pro-trademark".  If it were so pro-trademark, the "Trademark Strawman"
would not have come to pass.

Also, I have to object to the continued mischaracterization of the ICANN
Board's actions with regard to the STI Report.  The Board did not adopt or
create the STI Report.  The Board was very clear and used some fairly
uncommon wording when it deal with the STI Report:

"“ Whereas, subject to any amendments in response to public comment, the
Board *supports* the *substantive content* of the Clearinghouse and URS
proposals that were posted on 15 February 2010 for public comment and
expects that they will be included in version 4 of the Draft Applicant
Guidebook.

Resolved (2010.03.12.19), *ICANN staff shall analyze public comments* on
the Clearinghouse proposal *and develop a final version* to be included in
version 4 of the Draft Applicant Guidebook.“
https://www.icann.org/resources/board-material/resolutions-2010-03-12-en#6
(emphasis added)
"

Finally, I understand Kathy's argument about where she thinks the line was
drawn between "word" marks and "design" marks.  But stating it as if was a
fact doesn't make it right or true (though it might make it an "alternative
fact").  There are many in this group that believe the intent and effect of
the STI language was significantly different.  In any case, the exact
language of the STI was not adopted by the ICANN Board -- the ICANN Board
merely "supported" the "substantive content" of those proposals. The Board
then asked staff to analyze public comments and develop a final version for
the AGB.  (In fact, there were a few more twists and turns beyond that.)

Greg

*Greg Shatan *C: 917-816-6428
S: gsshatan
Phone-to-Skype: 646-845-9428
gregshatanipc at gmail.com

On Wed, Apr 26, 2017 at 10:27 PM, icannlists <icannlists at winston.com> wrote:

> Hi Kathy,
>
> You have known me forever and you do know that I welcome all voices,
> whether or not they agree with me.  But that doesn't mean that I have agree
> with all of the positions of various voices.  As co-chair of this PDP, I
> would expect you to understand the difference and welcome all voices, not
> just the ones that happen to hold the same views that you do.  Trying to
> shut me down by implying I am somehow not living up to my role as GNSO
> Councilor is unlike you.
>
> Best,
> Paul
>
>
>
> -----Original Message-----
> From: Kathy Kleiman [mailto:kathy at kathykleiman.com]
> Sent: Wednesday, April 26, 2017 9:20 PM
> To: gnso-rpm-wg at icann.org; McGrady, Paul D. <PMcGrady at winston.com>
> Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design
> Mark and Appropriate Balance)
>
> 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-registra
> > tion-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
> >>> PGP fingerprint: 75D2 4C0D 35EA EA2F 8CA8 8F79 4911 EC4A EDDF 1122
> >>>
> >>>
> >>> ====================================================================
> >>> =
> >>> =
> >>>
> >>>
> >>>
> >>> Reminder: Any email that requests your login credentials or that
> >>> asks you to click on a link could be a phishing attack.  If you have
> >>> any questions regarding the authenticity of this email or its
> >>> sender, please contact the IT Service Desk at 212.484.6000 or via
> >>> email at ITServices at timewarner.com
> >>>
> >>>
> >>>
> >>>
> >>> =================================================================
> >>> This message is the property of Time Warner Inc. and is intended
> >>> only for the use of the
> >>> addressee(s) and may be legally privileged and/or confidential. If
> >>> the reader of this message is not the intended recipient, or the
> >>> employee or agent responsible to deliver it to the intended
> >>> recipient, he or she is hereby notified that any dissemination,
> >>> distribution, printing, forwarding, or any method of copying of this
> >>> information, and/or the taking of any action in reliance on the
> >>> information herein is strictly prohibited except by the intended
> >>> recipient or those to whom he or she intentionally distributes this
> message. If you have received this communication in error, please
> immediately notify the sender, and delete the original message and any
> copies from your computer or storage system. Thank you.
> >>> =================================================================
> >>>
> >>> _______________________________________________
> >>> 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
> >>
> >> ________________________________
> >> The contents of this message may be privileged and confidential. If
> this message has been received in error, please delete it without reading
> it. Your receipt of this message is not intended to waive any applicable
> privilege. Please do not disseminate this message without the permission of
> the author. Any tax advice contained in this email was not intended to be
> used, and cannot be used, by you (or any other taxpayer) to avoid penalties
> under applicable tax laws and regulations.
> > _______________________________________________
> > 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/20170426/b5e9c287/attachment-0001.html>