[gnso-rpm-wg] Agenda and documents for Working Group call this week

claudio di gangi ipcdigangi at gmail.com
Tue May 2 22:06:30 UTC 2017


Paul,

I agree, but I wouldn't say that precludes issues at the second-level from
being covered by the principle that strings shouldn't infringe on third
party rights, (including the rights of commercial and non-commercial users).

Which of the GNSO policy recommendations do you think are implicated by the
RPMs?

Best,
Claudio


On Tue, May 2, 2017 at 3:36 PM icannlists <icannlists at winston.com> wrote:

> Claudio, I’m pretty sure the GNSO Council believed “strings” were TLDs in
> their advice.
>
>
>
> Best,
>
> Paul
>
>
>
>
>
>
>
> *From:* gnso-rpm-wg-bounces at icann.org [mailto:
> gnso-rpm-wg-bounces at icann.org] *On Behalf Of *claudio di gangi
> *Sent:* Tuesday, May 02, 2017 1:41 PM
> *To:* Greg Shatan <gregshatanipc at gmail.com>
> *Cc:* J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg at icann.org>
>
>
> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call
> this week
>
>
>
> I think this working group is doing a great job in identifying topics
> worthy of further analysis, which appropriately fall under our charter, and
> should be commended.
>
>
>
> Just to take a quick moment to step back and look at the big picture:
>
>
>
> the original GNSO policy recommendations, approved by the Board and
> directed to staff for implementation, including the following
> recommendation:
>
>
>
> "Strings must not infringe the existing legal rights of others that are
> recognized or enforceable under generally accepted and internationally
> recognized principles of law."
>
>
>
> In my view, this was adopted by the diverse stakeholders in the GNSO
> because the balanced protection of IP within ICANN contracts and policies
> is a consumer safeguard mechanism for the DNS. With that said, there were
> some varying views about how this broad IP-related recommendation was to be
> specifically implemented, which was only one of several issues that caused
> delays to the new gTLD program. This is why the IRT and STI were formed
> under such short time-periods to complete their work. And why, despite the
> best efforts of both ad-hoc committees, their recommendations were
> modified, either directly or indirectly through the public comment process.
>
>
>
> In fact, the rules associated with the RPMs changed throughout the entire
> multi-year implementation process. The Final Requirements RPMs document was
> not posted by staff until after all the applications were published, and
> even the rules in this document and those in the Final AGB were modified
> following their adoption.
>
>
>
> More specifically related to GIs, several strings delayed delegation while
> private protections were developed.
>
>
>
> With the benefit of 20/20 hindsight, I think the old adage hold true: 'a
> stitch in time saves nine'
>
>
>
> ...so I think this is where we currently are in this WG.
>
>
>
> As Greg recently noted, whether or not there should be an RPM for GIs is a
> valid point for discussion. I propose to form a sub-team to have this
> discussion so we can hear everyone's views (Kathy, Jeremy, Paul K., and
> others have expressed input) and we can try to move the ball forward. This
> will help us in achieving our objective of considering the effectiveness of
> all the RPMs, and proposing changes which reflect incremental improvements
> consistent with ICANN's mission.
>
>
>
> Best regards,
>
> Claudio
>
>
>
>
>
>
>
>
>
>
>
> On Sat, Apr 29, 2017 at 11:36 AM, Greg Shatan <gregshatanipc at gmail.com>
> wrote:
>
> +1000 to J Scott on this point:
>
>
>
> A common misconception. The TMCH is a database. Nothing more. It is a
> database used to facilitate two RPM's: Sunrise and TM Claims.
>
>
>
> Flowing from that, the population of the TMCH database needs to serve RPMs
> -- Trademark Sunrise and/or Trademark Claims.  GIs are not consistently
> treated as trademarks, and where they are, it is often because they
> separately and independently meet the criteria set for trademarks such as
> certification marks.  Claiming that GIs *are* trademarks (or even
> "marks") is not something I can support, based on 30.5 years of practice
> (as long as we are counting rings on trees, so to speak).  Why would GIs go
> into a trademark database?  Mixing GIs and trademarks as if they were
> indistinguishable makes no sense.  Further, it makes no sense to even
> discuss any changes to the TMCH, or the establishment of additional
> databases, until we discuss changes or additions to the RPMs such as
> Trademark Sunrise and Trademark Claims.  A record in the TMCH without a
> corresponding RPM cannot be seriously contemplated.  Until one identifies
> an RPM for GIs, there is no reason to establish a Clearinghouse for GIs.
>
>
>
> Whether or not there should be an RPM for GIs is a valid point for
> discussion.  This is not the right time for that discussion.  Jamming GIs
> into the TMCH on the theory that GIs are trademarks is not the right way to
> avoid that discussion.  That some GIs are sometimes trademarks in some
> jurisdictions and sometimes also qualify as trademarks in other
> jurisdictions is not a valid basis for treating all GIs as trademarks.
>
>
>
> Greg
>
> [As always, in my personal capacity, unless otherwise noted.]
>
>
>
> *Greg Shatan *C: 917-816-6428 <(917)%20816-6428>
> S: gsshatan
> Phone-to-Skype: 646-845-9428 <(646)%20845-9428>
> gregshatanipc at gmail.com
>
>
>
> On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <
> jonathan.agmon at ip-law.legal> wrote:
>
> +1
>
>
>
>
>
> Jonathan Agmon (胡韩森)
>
> Advocate, Director
>
> Attorney and Counsellor at Law (admitted in New York)
>
> jonathan.agmon at ip-law.legal
>
> www.ip-law.legal
>
> *T* SG +65 6532 2577 <+65%206532%202577>
>
> *T* US +1 212 999 6180
>
> *T* IL +972 9 950 7000
>
> *F *IL +972 9 950 5500
>
> Soroker Agmon Nordman Pte Ltd.
>
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>
> *From:* Massimo at origin-gi.com
>
> *Sent:* 29 April 2017 22:48
>
> *To:* jsevans at adobe.com
>
> *Cc:* jonathan.agmon at ip-law.legal; gnso-rpm-wg at icann.org
>
> *Subject:* RE: [gnso-rpm-wg] Agenda and documents for Working Group call
> this week
>
>
>
> The EU, as all the other countries having GIs independent system, provides
> transparent registration systems, with opposition procedures. So
> registration is needed in the EU too. Two different views (independent /
> sui generis systems or trademark), both legitimate at the international
> level.
>
> Best, Massimo
> ------------------------------
>
> *From: *J. Scott Evans <jsevans at adobe.com>
> *Sent: *‎29.‎04.‎2017 16:02
> *To: *Massimo <Massimo at origin-gi.com>
> *Cc: *Jonathan Agmon <jonathan.agmon at ip-law.legal>; gnso-rpm-wg at icann.org
> *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call
> this week
>
> I stand by my original point. They GI's are not protected consistently. In
> the US, Parma is not protected without a US trademark registration. Not so
> in Europe. Two different views on the scope of rights.
>
> Sent from my iPhone
>
>
> On Apr 29, 2017, at 6:58 AM, Massimo <Massimo at origin-gi.com> wrote:
>
> The disagreement concerns whether to protect GIs via an independent system
> or via trademarks, but not the GI concept itself. But for the time being
> countries can choose their system, and their choice is legitimate.
>
> An example: prosciutto di Parma is a GI in the EU. As the product is
> exported in the US, the association of producers owns now a certification
> mark there for exactly the same name.  So Prosciutto di Parma can be for
> sure in the TMCH.
>
> But if that product was exported only within Europe or the Asian countries
> I mentioned in an earlier email having independent GI systems (so no
> certification mark on the same name was available), do not you think that
> being excluded from the TMCH (as well as from dispute resolution) would
> have been discriminatory?
>
> Again, I think we should spend more time on those issues rather than
> rushing to a conclusion which might not reflect the existing situation.
>
> Best, Massimo
> ------------------------------
>
> *From: *J. Scott Evans <jsevans at adobe.com>
> *Sent: *‎29.‎04.‎2017 15:18
> *To: *Massimo <Massimo at origin-gi.com>
> *Cc: *Jonathan Agmon <jonathan.agmon at ip-law.legal>; gnso-rpm-wg at icann.org
> *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call
> this week
>
> I spoke directly with representatives from the USPTO and I also understand
> USPTO representatives attended the meeting at n Copenhagen. Based on my
> discussions with the USPTO, I disagree that there is universal treatment of
> GI's that are not registered as trademarks. In fact, I know that the scope
> of protection for GI's has been a thorny issue in international trade
> negotiations since at least the 1930's. It has s not a settled point by any
> means.
>
> Sent from my iPhone
>
>
> On Apr 29, 2017, at 6:08 AM, Massimo <Massimo at origin-gi.com> wrote:
>
> Hi, I was trying to show that luck of understanding about GIs does not
> exist any more as the large majority of countries have specific laws with
> transparent registration processes. There is not  divergence at all in
> terms of  definition of the GI concept and obligation to protect that IPR
> concept (TRIPs Agreement). The WG should make proposals that reflect the
> current legal and economic reality.
>
> Best, Massimo
> ------------------------------
>
> *From: *J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg at icann.org>
> *Sent: *‎29.‎04.‎2017 14:46
> *To: *Jonathan Agmon <jonathan.agmon at ip-law.legal>
> *Cc: *gnso-rpm-wg at icann.org
> *Subject: *Re: [gnso-rpm-wg] Agenda and documents for Working Group call
> this week
>
> I disagree. I was on the IRT. GI's were never discussed. It is precisely
> because there is no universal understanding or treatment of GI's that only
> those GI's that are"marks" aka "trademarks" should be allowed in the TMCH.
> Paul Mc's proposal is the correct Avenue to address this over inclusiveness.
>
> Sent from my iPhone
>
>
> On Apr 28, 2017, at 8:36 PM, Jonathan Agmon <jonathan.agmon at ip-law.legal>
> wrote:
>
> Paul,
>
>
>
> I am not sure about the broad alignment, especially not outside the US.
> There are differing opinions on the issue.
>
>
>
> I still disagree with you basic understanding of GIs. GIs are marks as
> they are comprised of text words. GIs are trademarks when they denote the
> source of goods. They can be registered in national trademark registries.
> The only difference between the US and other countries is where they are
> registered. This is not a basis for exclusion from the TMCH.  In most
> countries of the world GI registration is performed in the trademark
> registry (GI section) or in a specialized GI registry.
>
>
>
> Since the TMCH is a very important protection rights protection mechanism,
> available to brand owners, and in most countries of the world, the general
> view is that GIs are a type of trademarks, I make the following alternative
> proposal:
>
>
>
> “GIs comprise of word marks. When registered, GIs serve as collective
> trademarks. If a GI is the subject of a national trademark registration, or
> a national GI registration, it could have been, in the past, and may be
> included, in the future in, the TMCH.  For any GIs that are not the subject
> of a national trademark or GI registration, or otherwise qualified for
> registration under the Trademark Clearinghouse Guidelines, at the time of
> registration, which are currently registered in the TMCH, such GIs should
> not be renewed in the TMCH upon expiration.”
>
> Finally, please note that my time zone is UTC+8.
>
>
>
> Thanks,
>
>
>
>
>
> <SANLogSmallNew_485a3de7-c8c5-4ec6-b34d-6de68607f295.png>
>
> Jonathan Agmon (胡韩森)
>
> Advocate, Director
>
> Attorney and Counsellor at Law (admitted in New York)
>
> jonathan.agmon at ip-law.legal
>
> www.ip-law.legal
> <https://na01.safelinks.protection.outlook.com/?url=http%3A%2F%2Fwww.ip-law.legal&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vZtzroklJn8U8PtzSsFvxXra%2FUpVHdIy862yVH2W53U%3D&reserved=0>
>
> *T* SG +65 6532 2577 <+65%206532%202577>
>
> *T* US +1 212 999 6180 <(212)%20999-6180>
>
> *T* IL +972 9 950 7000 <+972%209-950-7000>
>
> *F *IL +972 9 950 5500 <+972%209-950-5500>
>
> Soroker Agmon Nordman Pte Ltd.
>
> 133 New Bridge Road, #13-02, 059413 SINGAPORE
>
> 8 Hahoshlim Street P.O. Box 12425 4672408 Herzliya, ISRAEL
>
> This message is confidential. It may also be privileged or otherwise
> protected by work product immunity or other legal rules. If you have
> received it by mistake, please let us know by e-mail reply and delete it
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>
> *From:* gnso-rpm-wg-bounces at icann.org [
> mailto:gnso-rpm-wg-bounces at icann.org <gnso-rpm-wg-bounces at icann.org>] *On
> Behalf Of *icannlists
> *Sent:* Friday, April 28, 2017 9:35 PM
> *To:* claudio di gangi <ipcdigangi at gmail.com>; Mary Wong <
> mary.wong at icann.org>; gnso-rpm-wg at icann.org; icannlists <
> icannlists at winston.com>
> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call
> this week
>
>
>
> Thanks Claudio.
>
>
>
> You aren’t missing anything.  The fact that the co-chairs didn’t dismiss
> outright the request of a few to dig a bit deeper before moving on isn’t
> unusual.  It is very ICANN.  However, that doesn’t change the reality that
> there appears to be broad alignment across all sorts of the usual lines
> that GIs, unless they are also registered trademarks, should not be
> included in the *Trademark* Clearinghouse.  Further, as of now, there is
> no proposal in the record to the contrary, although I do note that Jonathan
> A. indicated that he may submit one.
>
>
>
> I hope you are well.  It is good to see you actively participating in an
> ICANN WG again!  Welcome back.
>
>
>
> Best,
>
> Paul
>
>
>
>
>
>
>
>
>
>
>
> *From:* claudio di gangi [mailto:ipcdigangi at gmail.com
> <ipcdigangi at gmail.com>]
> *Sent:* Friday, April 28, 2017 1:49 PM
> *To:* Mary Wong <mary.wong at icann.org>; gnso-rpm-wg at icann.org; icannlists <
> icannlists at winston.com>
> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call
> this week
>
>
>
> Thanks,  Paul.
>
>
>
> I listened to that part of the call again, and after the presentation of
> the proposal, Phil took comments from George, Greg, and Jonathan (all
> provided input/ideas about ways GIs could be protected) and there was a
> request for staff to obtain more background on the 'marks protected by
> statute or treaty' language.
>
>
>
> There didn't seem to be a conclusion, hence my earlier email about next
> steps.
>
>
>
> Please let me know if I missing something.
>
>
>
> Best regards,
>
> Claudio
>
>
>
> On Fri, Apr 28, 2017 at 2:09 PM icannlists <icannlists at winston.com> wrote:
>
> Thanks Claudio.  However, after the last WG call I thought we had reached
> the opposite conclusion that there was little or no interest in taking up
> the GIs issue at this time.  Jonathan A. thought he might put forward a
> third proposal on GIs, but I haven’t seen that yet on this (or at least I
> don’t think I have).
>
>
>
> Best,
>
> Paul
>
>
>
>
>
>
>
> *From:* gnso-rpm-wg-bounces at icann.org [mailto:
> gnso-rpm-wg-bounces at icann.org] *On Behalf Of *claudio di gangi
> *Sent:* Friday, April 28, 2017 12:58 PM
> *To:* Mary Wong <mary.wong at icann.org>; gnso-rpm-wg at icann.org
> *Subject:* Re: [gnso-rpm-wg] Agenda and documents for Working Group call
> this week
>
>
>
> Mary, all,
>
>
>
> I just recently joined the WG, so I'm reading the listserve to get caught
> up to speed. It's been very helpful and informative to review all the
> contributions.
>
>
>
> An initial question: is a work plan being established for addressing
> issues that were discussed on Wednesday's call?
>
>
>
> For example, on Paul and Kathy's proposal related to GIs - I think the
> group has identified a good issue worthy of further analysis, e.g. should
> GIs be protected against registration abuse, as a consumer safeguard in new
> gTLDs?
>
>
>
> If that approach is supported by the analysis, they could be registered in
> the limited registration period that is currently described in the
> Applicant Guidebook, that takes place following the Sunrise period,
> supported by the Clearinghouse or an ancillary database.
>
>
>
> On the basis that further analysis of this topic would be helpful to
> inform WG deliberations, where should it take place - on the Sunrise
> subteam or somewhere else?
>
>
>
> I'm looking forward to working with everyone on the team.
>
>
>
> Thanks!
>
>
>
> Best regards,
>
> Claudio
>
>
>
>
>
>
>
>
>
>
>
>
>
>
>
> On Tue, Apr 25, 2017 at 2:42 PM Mary Wong <mary.wong at icann.org> wrote:
>
> Dear all,
>
>
>
> The proposed agenda for our call this Thursday at 0300 UTC (reminder:
> Wednesday evening/night for those in the Americas) is as follows; please
> also see the Notes that are included below:
>
>
>
> 1.       Roll call (via Adobe Connect and phone bridge only); updates to
> Statements of Interest
>
> 2.       Report on progress and status updates from the co-chairs of the
> Sunrise and Claims Notice Sub Teams (Lori Schulman, Kristine Dorrain &
> Michael Graham) – 5 minutes for each Sub Team update
>
> 3.       Discuss consolidated table of proposals received on TMCH Open
> Questions 7, 8 and 10 (see Notes below)
>
> 4.       Notice of deadline for further follow up questions to the
> Analysis Group
>
> 5.       Next steps/next meeting
>
>
>
> *Notes:*
>
> o    For *Agenda Item #2*, the composition, meeting transcripts and
> current work status of each of the two Sub Teams can be viewed at their
> respective wiki pages: https://community.icann.org/x/msrRAw
> <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FmsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=LV2xP0GxXnJT%2Fysb%2BD07uiVkoTLxZsxFmJtHHuZWZt0%3D&reserved=0>
> (Sunrise) and https://community.icann.org/x/psrRAw
> <https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fcommunity.icann.org%2Fx%2FpsrRAw&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=ih36xR7dPVctsC1ywARSru6xVfE4VWIY9owrvj%2Fkxww%3D&reserved=0>
> (Claims).
>
>
>
> o    For *Agenda Item #3*, please review the first attached document.
> This is the tabular form of all proposals received to date on the three
> open TMCH questions (Questions 7, 8 and 10) as of the 19 April deadline.
> Staff has not edited the language of the proposals received, although we
> have formatted them to some extent to enable easier reading, and we have
> also separated out accompanying rationale and context (where this was
> provided) and pasted these into a second table (starting on Page 7).
>
>
>
> For your reference, we are also attaching a second document, which is a
> compilation of other proposals received so far. Please note that these
> proposals are being circulated for your information only, and will *not*
> be discussed at this time as they concern topics that have either been
> deferred or that have to do with Sunrise and/or Claims. The co-chairs may
> refer these to the Sub Teams, but only for the specific purpose of seeing
> if the subjects have been covered by existing Charter questions, or if they
> can be helpful in refining the existing Charter questions.
>
>
>
> Finally, the co-chairs and staff are aware that Working Group members have
> requested that agendas and documents be circulated as much in advance of
> the minimum 24-hour deadline as possible. We were not able to comply with
> that request this week due to a personal situation for one of the
> co-chairs; however, going forward, the co-chairs plan to meet with staff
> every Friday to ensure that agendas and, if possible, documents, are
> available and distributed earlier.
>
>
>
> Thanks and cheers
>
> Mary
>
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