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

icannlists icannlists at winston.com
Tue May 2 22:13:05 UTC 2017


Hi Claudio,

Thanks for your clarification.  I’m not sure I understand the purpose of your question.  While cataloging all of the GNSO Policy Recommendations from Paris and connecting them to current RPMs would be a fascinating undertaking if time permitted, unfortunately, I don’t have that kind of time due to day job.  What is the question you are seeking to answer?  It may not be necessary to boil the ocean to find the answer.

Best,
Paul



From: claudio di gangi [mailto:ipcdigangi at gmail.com]
Sent: Tuesday, May 02, 2017 5:07 PM
To: Greg Shatan <gregshatanipc at gmail.com>; icannlists <icannlists at winston.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

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<mailto: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> [mailto: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<mailto:gregshatanipc at gmail.com>>
Cc: J. Scott Evans via gnso-rpm-wg <gnso-rpm-wg at icann.org<mailto: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<mailto: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<tel:(917)%20816-6428>
S: gsshatan
Phone-to-Skype: 646-845-9428<tel:(646)%20845-9428>
gregshatanipc at gmail.com<mailto:gregshatanipc at gmail.com>

On Sat, Apr 29, 2017 at 11:04 AM, Jonathan Agmon <jonathan.agmon at ip-law.legal<mailto:jonathan.agmon at ip-law.legal>> wrote:
+1



[cid:image001.png at 01D2C351.02A74690]


Jonathan Agmon (胡韩森)

Advocate, Director

Attorney and Counsellor at Law (admitted in New York)

jonathan.agmon at ip-law.legal<mailto:jonathan.agmon at ip-law.legal>

www.ip-law.legal<http://www.ip-law.legal>



T SG +65 6532 2577<tel:+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.

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 from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.


From: Massimo at origin-gi.com<mailto:Massimo at origin-gi.com>
Sent: 29 April 2017 22:48
To: jsevans at adobe.com<mailto:jsevans at adobe.com>
Cc: jonathan.agmon at ip-law.legal<mailto:jonathan.agmon at ip-law.legal>; gnso-rpm-wg at icann.org<mailto: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<mailto:jsevans at adobe.com>
Sent: ‎29.‎04.‎2017 16:02
To: Massimo<mailto:Massimo at origin-gi.com>
Cc: Jonathan Agmon<mailto:jonathan.agmon at ip-law.legal>; gnso-rpm-wg at icann.org<mailto: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<mailto: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<mailto:jsevans at adobe.com>
Sent: ‎29.‎04.‎2017 15:18
To: Massimo<mailto:Massimo at origin-gi.com>
Cc: Jonathan Agmon<mailto:jonathan.agmon at ip-law.legal>; gnso-rpm-wg at icann.org<mailto: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<mailto: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<mailto:gnso-rpm-wg at icann.org>
Sent: ‎29.‎04.‎2017 14:46
To: Jonathan Agmon<mailto:jonathan.agmon at ip-law.legal>
Cc: gnso-rpm-wg at icann.org<mailto: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<mailto: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<mailto: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<tel:+65%206532%202577>

T US +1 212 999 6180<tel:(212)%20999-6180>

T IL +972 9 950 7000<tel:+972%209-950-7000>

F IL +972 9 950 5500<tel:+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 from your system; you may not copy this message or disclose its contents to anyone. Please send us by fax any message containing deadlines as incoming e-mails are not screened for response deadlines. The integrity and security of this message cannot be guaranteed on the Internet.


From: 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 icannlists
Sent: Friday, April 28, 2017 9:35 PM
To: claudio di gangi <ipcdigangi at gmail.com<mailto:ipcdigangi at gmail.com>>; Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>>; gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>; icannlists <icannlists at winston.com<mailto: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]
Sent: Friday, April 28, 2017 1:49 PM
To: Mary Wong <mary.wong at icann.org<mailto:mary.wong at icann.org>>; gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>; icannlists <icannlists at winston.com<mailto: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<mailto: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> [mailto: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<mailto:mary.wong at icann.org>>; gnso-rpm-wg at icann.org<mailto: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<mailto: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
_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
https://mm.icann.org/mailman/listinfo/gnso-rpm-wg<https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0>

________________________________
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.


************************************************************************************
This footnote confirms that this email message has been scanned by
PineApp Mail-SeCure for the presence of malicious code, vandals & computer viruses.
************************************************************************************
_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg at icann.org<mailto:gnso-rpm-wg at icann.org>
https://na01.safelinks.protection.outlook.com/?url=https%3A%2F%2Fmm.icann.org%2Fmailman%2Flistinfo%2Fgnso-rpm-wg&data=02%7C01%7C%7C7347c4562ec2456efb8208d48eb0f556%7Cfa7b1b5a7b34438794aed2c178decee1%7C0%7C0%7C636290338068704072&sdata=vQCm1Znpclv%2FRd0qGa%2FHLKqfo0Xse3zg%2BesoNmxv%2Fhg%3D&reserved=0

_______________________________________________
gnso-rpm-wg mailing list
gnso-rpm-wg at icann.org<mailto: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<mailto: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/20170502/63fa9099/attachment-0001.html>


More information about the gnso-rpm-wg mailing list