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

Thu Apr 27 03:13:01 UTC 2017

+1 Greg

From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Greg Shatan
Sent: Wednesday, April 26, 2017 9:50 PM
To: icannlists <icannlists at winston.com>
Cc: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] Recommendation for Questions #7 and #16 (Design Mark and Appropriate Balance)

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<mailto:gregshatanipc at gmail.com>

On Wed, Apr 26, 2017 at 10:27 PM, icannlists <icannlists at winston.com<mailto: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<mailto:kathy at kathykleiman.com>]
Sent: Wednesday, April 26, 2017 9:20 PM
To: gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>; McGrady, Paul D. <PMcGrady at winston.com<mailto: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<mailto:Rebecca.Tushnet at law.georgetown.edu>]
> Sent: Wednesday, April 26, 2017 8:00 PM
> To: icannlists <icannlists at winston.com<mailto:icannlists at winston.com>>
> Cc: Silver, Bradley <Bradley.Silver at timewarner.com<mailto:Bradley.Silver at timewarner.com>>;
> gnso-rpm-wg at icann.org<mailto: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<tel:703%20593%206759>
>
>
> On Wed, Apr 26, 2017 at 8:46 PM, icannlists <icannlists at winston.com<mailto: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>
>> [mailto: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<mailto:Bradley.Silver at timewarner.com>>
>> Cc: gnso-rpm-wg at icann.org<mailto: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<tel:703%20593%206759>
>>
>>
>> On Wed, Apr 26, 2017 at 1:41 PM, Silver, Bradley via gnso-rpm-wg <gnso-rpm-wg at icann.org<mailto: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>
>>> [mailto: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<mailto: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<mailto:jmalcolm at eff.org>
>>>
>>> Tel: 415.436.9333 ext 161<tel:415.436.9333%20ext%20161>
>>>
>>> :: 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
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