[gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services

Tue Mar 28 18:07:55 UTC 2017

Thanks Kathy. However, I think Greg is more interested in who “authored” the actual text of the letter.

J. Scott

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From: <gnso-rpm-wg-bounces at icann.org> on behalf of Kathy Kleiman <kathy at kathykleiman.com>
Date: Tuesday, March 28, 2017 at 11:05 AM
To: "gnso-rpm-wg at icann.org" <gnso-rpm-wg at icann.org>
Subject: Re: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars and information on Deloitte Ancillary Services

<<On 3/28/2017 1:41 PM, Greg Shatan wrote:
Do we know who wrote the letter?

>>

Hi Greg,
As we know and practice, ICANN has a policy of encouraging outreach and participation - even when people cannot come to our far-flung meetings in Copenhagen and elsewhere. In light of the invitation for outreach and Community participation at both of our meetings in Copenhagen, the timing of this Trademark Scholars letter seems appropriate.

Questions were raised in Copenhagen about the background of signatories, and you raise above. When I returned home, I button-holed an associate to take a fast look. Here is his summary (which I have not touched or edited, except to paste below):
Eve J. Brown
Owner, Bricolage Law

•  Director of Entrepreneurship & Innovation Law Clinic at Boston University School of Law

•  Founded a boutique law firm specializing in trademark law

•  Former Director of Intellectual Property & Entrepreneurship Clinic at Suffolk University Law School

Annemarie Bridy
Professor, University of Idaho College of Law & Stanford Center for Internet and Society (CIS)

•  Teaches courses in Internet and intellectual property law

•  Authored several scholarly articles and books on intellectual property

•  Affiliated Fellow at Yale Law School Information Society Project

•  Affiliated Scholar at Stanford Law School Center for Internet and Society

•  Affiliated Researcher at University of California Berkeley Law School, Takedown Project

Christine Haight Farley
Professor, American University Washington College of Law

•  Teaches multiple courses in trademark law at American University Washington College of Law

•  Former co-director of the Program on Information Justice and Intellectual Property

•  Several trademark law articles published in scholarly journals

•  Presented as a panelist at several conferences and roundtables on trademark law

Victoria Philips
Professor of Practice, American University College of Law

•  Director of the Glushko-Samuelson Intellectual Property Law Clinic

•  Published on intellectual property law by several scholarly journals

•  Presented as a panelist and moderator at several conferences and workshops

Gidget Benitez
Program Coordinator –Program on Information Justice & Intellectual Property, American University College of Law

•  Former editor-in-chief and symposium chair of the American University Intellectual Property Brief

William McGeveran
Associate Professor of Law and Solly Robins Distinguished Research Fellow, University of Minnesota Law School

•  Teaches Trademark Law and Internet Law at University of Minnesota Law School

•  Several trademark law publications and academic presentations

•  Practiced trademark law at Foley Hoag LLP

Robin Gross
Attorney and Executive Director, IP Justice

•  Practices trademark law at the Law Offices of Robin D. Gross

•  Founder and Executive Director of IP Justice

•  Former Staff Attorney for Intellectual Property at Electronic Frontier Foundation

•  Several intellectual property law publications

Rebeca Tushnet
Professor, Georgetown Law Center

•  Teaches Trademark and Unfair Competition Law at Georgetown Law Center

•  Clerked for Supreme Court Justice David H. Souter

•  Trademark law publications in numerous law reviews and scholarly journals

•  Practiced trademark law at Debevoise & Plimpton

Art Neill
Executive Director, New Media Rights
Clinical Professor, California Western School of Law

•  Practices public interest law in the area of intellectual property

•  Named to Fastcase 50, which honors the law's smartest, most courageous innovators, techies, visionaries, and leaders

•  Several publications on intellectual property law

Dev S. Gangjee
Associate Professor, University of Oxford

•  Associate Professor in Intellectual Property at University of Oxford

•  Former Rhodes Scholar

•  Several publications on intellectual property law

Robert Burrell
Professor of Law, University of Sheffield and University of Melbourne

•  Helped establish a boutique law firm specializing in intellectual property and worked as a registered trademarks attorney

•  Teaches Trade Mark Law in a Branded World

•  Several publications on intellectual property law

Michael Handler
Associate Professor, Faculty of Law, University of New South Wales

•  Teaches and researches in the field of intellectual property law, focusing on domestic and international aspects of trademark law and the law of geographical indications of origin

Stacey Dogan
Professor, Boston University School of Law

•  Teaches Trademark and Unfair Competition at Boston University School of Law

•  Trademark and other intellectual property publications in journals including the Stanford Law Review, Emory Law Journal, Iowa Law Review and Texas Law Review

•  Practiced trademark law at Covington & Burling

Leah Chan Grinvald
Professor, Suffolk University Law School

•  Teaches Trademark and Intellectual Property Law at Suffolk University Law School

•  Trademark and other intellectual property publications in journals including the Marquette Law Review and Wisconsin Law Review

•  Advised on trademark law as Global Corporate Counsel at Taylor Made Golf Company, Inc.

Eric Goldman
Professor, Santa Clara University School of Law

•  Teaches Intellectual Property at Santa Clara University School of Law

•  Co-director of the High Tech Law Institute

•  Blogs on Internet law matters at the Technology & Marketing Law Blog and the Tertium Quid Blog at Forbes

David G. Post
Professor of Law (ret.), Temple University

•  Taught intellectual property courses at Temple University and Georgetown Law Center

•  Clerked for Supreme Court Justice Ruth Bader Ginsburg

•  Authored several books, articles, and amicus briefs on intellectual property law

Tamir Israel
Staff Lawyer, Samuelson-Glushko Canadian Internet Policy & Public Interest Clinic (CIPPIC)

•  Part Time Professor at University of Ottawa, teaching Regulation of Internet Commerce

•  Staff Lawyer at Samuelson-Glushko Canadian Internet Policy & Public Interest Clinic, which focuses on the intersection of law and technology

Michael Geist
Canada Research Chair in Internet and E-commerce Law, University of Ottawa

•  Full Professor, University of Ottawa, Faculty of Law, Common Law Section

•  Named Top 50 Most Influential Intellectual Property Worldwide in 2010 and 2011 by Managing Intellectual Property

•  Received Public Knowledge IP3 Award for Intellectual Property in 2010

•  Authored several books and articles on internet law and intellectual property law

Jeremy Malcolm
Senior Global Policy Analyst, Electronic Frontier Foundation

•  Works on the international dimensions of issues such as intellectual property, network neutrality, Internet governance, and trade as part of EFF’s international team

•  Worked for Consumers International coordinating its global program Consumers in the Digital Age

Mitch Stoltz
Senior Staff Attorney, Electronic Frontier Foundation

•  Works on the intersection of free speech and copyright and trademark law

•  Practiced intellectual property law at Constantine Cannon LLP

Best, Kathy

On Tue, Mar 28, 2017 at 2:35 PM, Paul Keating <Paul at law.es<mailto:Paul at law.es>> wrote:
Well it was written but some relatively heavies in the legal field.

On 3/28/17, 4:42 PM, "Kiran Malancharuvil via gnso-rpm-wg"
<gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org> on behalf of gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>> wrote:
>Many of the signatories aren't members of the working group. When
>input/comment is received by an ICANN working group by outside parties,
>the working group often invites those people to attend a meeting to
>facilitate the discussion so that there can be meaningful dialogue and a
>better common understanding of the issues raised.
>
>There is a prescribed time in the icann policy development process for
>solicitation of comments, as well as review and consideration of public
>comment. My question (for staff, to be clear) is why we are considering
>this public comment out of turn. Why does it have elevated importance?
>
>Thanks,
>
>Kiran
>
>Kiran Malancharuvil
>Policy Counselor
>MarkMonitor
>415-419-9138<tel:415-419-9138> (m)
>
>Sent from my mobile, please excuse any typos.
>
>> On Mar 28, 2017, at 8:33 AM, Rebecca Tushnet
>><Rebecca.Tushnet at law.georgetown.edu<mailto:Rebecca.Tushnet at law.georgetown.edu>> wrote:
>>
>> (1) Yes. (2) Invited by whom? (3) It's my understanding that all
>> comments should be considered; are you aware of any we're ignoring?
>> Rebecca Tushnet
>> Georgetown Law
>> 703 593 6759<tel:703%20593%206759>
>>
>>
>> On Tue, Mar 28, 2017 at 11:30 AM, Kiran Malancharuvil via gnso-rpm-wg
>> <gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>> wrote:
>>> Agree with Jeff.
>>>
>>> Also, are these "trademark scholars" represented in the group? Are
>>>they invited in for discussion? Why is this letter any more important
>>>than any other public comment?
>>>
>>> Thanks,
>>>
>>> Kiran
>>>
>>> Kiran Malancharuvil
>>> Policy Counselor
>>> MarkMonitor
>>> 415-419-9138<tel:415-419-9138> (m)
>>>
>>> Sent from my mobile, please excuse any typos.
>>>
>>> On Mar 28, 2017, at 7:54 AM, Jeff Neuman
>>><jeff.neuman at comlaude.com<mailto:jeff.neuman at comlaude.com><mailto:jeff.neuman at comlaude.com<mailto:jeff.neuman at comlaude.com>>> wrote:
>>>
>>> Thanks Mary.
>>>
>>> Co-Chairs,
>>>
>>> Can I assume that with respect to the EFF letter, the only items we
>>>would be discussing from that letter at this point are their comments
>>>with respect to design marks and the transparency of the TMCH database?
>>>
>>> I am not saying the other comments are not important, but with respect
>>>to this Working Group at this time, we are not yet addressing those
>>>other issues.
>>>
>>> I would strongly urge that we not engage yet in the other discussion
>>>around the other comments at this point (namely, trademark rights in
>>>general), as I think that could lead us down a large rabbit hole and
>>>considerably slow down out work.
>>>
>>> Thanks.
>>>
>>> Jeffrey J. Neuman
>>> Senior Vice President |Valideus USA | Com Laude USA
>>> 1751 Pinnacle Drive, Suite 600
>>> Mclean, VA 22102, United States
>>> E: jeff.neuman at valideus.com<mailto:jeff.neuman at valideus.com><mailto:jeff.neuman at valideus.com<mailto:jeff.neuman at valideus.com>> or
>>>jeff.neuman at comlaude.com<mailto:jeff.neuman at comlaude.com><mailto:jeff.neuman at comlaude.com<mailto:jeff.neuman at comlaude.com>>
>>> T: +1.703.635.7514<tel:%2B1.703.635.7514>
>>> M: +1.202.549.5079<tel:%2B1.202.549.5079>
>>> @Jintlaw
>>>
>>>
>>> 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>>
>>>[mailto:gnso-rpm-wg-bounces at icann.org<mailto:gnso-rpm-wg-bounces at icann.org>] On Behalf Of Mary Wong
>>> Sent: Tuesday, March 28, 2017 6:15 AM
>>> To: gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org><mailto:gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
>>> Subject: [gnso-rpm-wg] FOR INFORMATION: Letter from trademark scholars
>>>and information on Deloitte Ancillary Services
>>>
>>> Dear all,
>>>
>>> During the ICANN58 Working Group sessions in Copenhagen, the following
>>>two matters came up for which staff is now following up with the
>>>requested document (for #1) and information (for #2).
>>>
>>> Item #1: Letter of 10 March 2017 from some trademark scholars and
>>>practitioners to our Working Group co-chairs expressing concerns with
>>>certain aspects of the TMCH:
>>>https://www.eff.org/files/2017/03/10/tm_scholars_letter_to_icann_final.p<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fwww.eff.org%2Ffiles%2F2017%2F03%2F10%2Ftm_scholars_letter_to_icann_final.p&data=02%7C01%7C%7C69d53554643e48f2818508d476051d8f%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636263211732455932&sdata=jf6OVhJSyTANZH3i9YqjVdVuI11xq5Qy2PRyzHHgreY%3D&reserved=0>
>>>df.
>>>
>>> Item #2: Question regarding the Ancillary Services that Deloitte is
>>>permitted to provide under its Validation Agreement with ICANN, subject
>>>to ICANN's authorization.
>>>
>>> Currently, two Ancillary Services have been approved by ICANN:
>>>
>>> 1.       Extended Claims Services
>>> The extended claims services provide the Trademark Holder or Trademark
>>>Agent, as applicable, with an electronic notification when a domain
>>>name registered in an Eligible TLD matches one or more of such party's
>>>recorded labels with the TMCH.  The extended claims services does not
>>>include a domain name pre-registration notification (i.e. a
>>>notification to the potential registrant of a domain name that the
>>>domain name such registrant intends to register matches a label
>>>recorded with the Trademark Clearinghouse).
>>>
>>>
>>> 2.       Audit Report
>>> Deloitte may offer an audit report service for Trademark Holders and
>>>Trademark Agents with active Trademark Records recorded in the
>>>Trademark Clearinghouse.  Such audit reports shall consist primarily of
>>>a listing of matches between their recorded labels within the Trademark
>>>Clearinghouse and domain names registered in an Eligible TLD.
>>>
>>> FYI, Deloitte's contract with ICANN is for an initial period expiring
>>>on the fifth anniversary of ICANN's entry into a Registry Agreement
>>>under the New gTLD Program, with consecutive one-year renewals
>>>thereafter. Although Deloitte currently serves as the sole TMCH
>>>validator, ICANN may appoint additional validators once ten Qualified
>>>Sunrise Periods have been completed under the New gTLD Program.
>>>
>>> Thanks and cheers
>>> Mary
>>> _______________________________________________
>>> gnso-rpm-wg mailing list
>>> gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org><mailto:gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>>
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