[GNSO-RPM-WG] Q#8

Tue Sep 17 19:54:46 UTC 2019

That's funny... My understanding was always that the three major forms of
IP are patents, trademarks and copyright - but perhaps things are taught
differently in Canada...

On Tue, Sep 17, 2019 at 3:39 PM claudio di gangi <ipcdigangi at gmail.com>
wrote:

> thanks, Phil. Very helpful as always.
>
> I see your point that proposal #1 and #2 overlap, in the sense that they
> both deal with whether GIs should be recorded in the TMCH. My proposal (#3)
> integrates the other two proposals.
>
> My concern during the call was that I felt a premature signal being
> expressed that agreement was being quickly being reached
> after several members spoke (and I was one of them), while several other
> members asked clarifying questions. I may be mistaken, but don't recall
> Jason or Rebecca objecting to the thoughts I expressed during discussion on
> proposal #1.
>
> If I am mistaken, and there was a meaningfully larger list of proponents
> for proposal #1 expressed on the call, I am happy to be corrected - please
> let me know.
>
> From my perspective, the majority of members did not express a position
> while the discussion was taking place, so I was left confused under what
> basis that statement that consensus was reached was based upon.
>
> This is also why I recently expressed not having the benefit of the
> informal poll that you conducted two weeks ago. Can we please do this
> tomorrow to get a better sense of where folks stand?
>
> On this same line of reasoning, I was concerned that we did not have full
> participation on the last week's call (where any registries and registrars
> on the call?). Moreover, I indicated last week that I had off-line
> discussions with WG members who expressed support for my suggested
> approach, but were not able to join the call, so I was hoping to hear from
> them on the list prior to Wednesday.
>
> The transcript and recording were posted by Julie on Friday, 13 Sept. so
> members did not really have much time (Friday and Monday) to reply with
> input before things (I personally feel) got somewhat short-cut this morning
> with the posting that expressed here is the consensus view of the WG, along
> with the associated implementation text.
>
> My concern when this occurs is it changes the dynamic about how members
> feel about weighing-in and 'going against the thread' so to speak, and also
> may create confusion about the accurate state of play.
>
> In terms of substance and to clarify, my proposal is based on finding
> common ground and compromise that integrates the two proposals, as per the
> following:
>
> 1) Going forward, GI are accepted in the Clearinghouse or ONE main
> ancillary database that all registries/registrars can connect to (which
> potentially can be integrated with the main external GI database that
> exists, with Deloitte performing validations);
>
> 2) GIs are NOT protected during the Sunrise or Claims period, which remain
> for trademarks; which was something that we established during the review
> of Sunrise and Claims.
>
> 3) the protection of GIs are NOT mandatory for any new gTLD registry
>
> 4) for new gTLD registries that choose and desire to protect GIs (as the
> current rules permit) because of local laws and/or other reasons, they are
> protected during the Limited Registration Period, to help prevent abusive
> registrations before General Availability.
>
> The rationale for this approach is that GIs are one of the three major
> forms of IP (patents, trademarks, and GIs) and function as source
> identifiers for goods and services in a manner that is similar
> to trademarks (and can be registered as domains in the same manner). For
> example, GIs are protected in the United States (under the TRIPS agreement)
> as collective or certification marks, think FLORIDA ORANGES or IDAHO
> POTATOES.
>
> But in other countries, outside of the United States, they are protected
> under local laws that place them on a separate registry, apart from the
> trademark register.
>
> Hope this helps clarify status, and thanks for everyone's ongoing
> contributions.
>
> Best regards,
> Claudio
>
>
>
>
>
>
>
>
>
>
>
>
>
>
>
> On Tue, Sep 17, 2019 at 1:34 PM Corwin, Philip <pcorwin at verisign.com>
> wrote:
>
>> Claudio—
>>
>>
>>
>> This message reflects the views of the co-chairs.
>>
>>
>>
>> Q8 and all of its related proposals were extensively discussed on the
>> September 4th call. The meeting on 11 September was a continued
>> discussion on Q8 and Q7 in case there were further proposals, and the major
>> focus was on Q7 as we had run out of time on the prior call and a new
>> modified proposal had been submitted for discussion.
>>
>>
>>
>> As regards Q 8, all of the first three proposals converge in that they
>> would limit the registration of GIs in the TMCH to “marks” of some sort,
>> whether trademarks or collective marks or certification marks; there also
>> seemed to be some recognition and agreement that GIs that did not
>> constitute “marks” could be recorded in an ancillary database for the
>> purpose of assisting certain new gTLDs that recognized and provided some
>> additional consideration to them. It appeared to the co-chairs that
>> restricting TMCH  recordation of GIs to those that constituted “marks” had
>> fairly broad support among WG members participating on the calls.
>>
>>
>>
>> In regard to your fourth proposal -- “(1) Add the consideration of GIs to
>> the policy review of the Sunrise and Claims services; and (2) withhold
>> final consideration of the current TMCH proposals relating to GIs, until we
>> conclude the policy review of the new gTLD RPMs (as described in the
>> Charter).” – the Sunrise and Claims reviews have been concluded, and we are
>> now wrapping up (concluding) our review of the new gTLD RPMs. So this
>> proposal no longer seems timely or relevant; but if you wish to amend it
>> and make a specific proposal for the treatment of GIs in the TMCH, tomorrow
>> is the time to make it.
>>
>>
>>
>> Finally, as regards your proposal that we withhold a decision until
>> Deloitte participated in a call on this subject, we see no reason to do so
>> as there is no indication that Deloitte has changed its practice in regard
>> to GI recordation since it wrote to the WG two years ago.
>>
>>
>>
>> In conclusion, we intend to finish the WG’s consideration of Q8 tomorrow
>> but will facilitate discussion of an amended proposal from you if you wish
>> to offer one.
>>
>>
>>
>> Regards,
>>
>> Brian
>>
>> Philip
>>
>> Kathy
>>
>>
>>
>>
>>
>> Philip S. Corwin
>>
>> Policy Counsel
>>
>> VeriSign, Inc.
>>
>> 12061 Bluemont Way
>> Reston, VA 20190
>>
>> 703-948-4648/Direct
>>
>> 571-342-7489/Cell
>>
>>
>>
>> *"Luck is the residue of design" -- Branch Rickey*
>>
>>
>>
>> *From:* GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> * On Behalf Of *claudio
>> di gangi
>> *Sent:* Tuesday, September 17, 2019 11:22 AM
>> *To:* Kathy Kleiman <kathy at kathykleiman.com>
>> *Cc:* gnso-rpm-wg at icann.org
>> *Subject:* [EXTERNAL] Re: [GNSO-RPM-WG] Q#8
>>
>>
>>
>> Kathy, all,
>>
>>
>>
>> Last week, we spent the first full hour of the call discussing the first
>> Question 8 proposal, and zero minutes on the second proposal on Question #8
>> (In comparison we spent much time discussing both proposals for question
>> #7).
>>
>>
>>
>> I am aware that some members spoke in support of the first proposal (I
>> was on audio only), but do not know how many, while some others did not
>> speak in support, and that we agreed to spend this full week to solicit WG
>> members views on the list before moving forward. This week has not yet
>> concluded (we have through today), yet new language is being posted below
>> now for consideration.
>>
>>
>>
>> A few additional points, the week prior Phil conducted an informal poll
>> using the Zoom room functionality, which helped provide transparency on WG
>> members views for consensus building, which was not done last week on
>> Question #8.
>>
>>
>>
>> Nor has there been an effort to bring the various proponents together to
>> reach a compromise position, which we recently did in the sprint of the
>> consensus-building process on Question #7, the design mark topic. So I’m
>> not sure why question #8 is being treated so differently in all these
>> various ways (as described above) compared to Question #7.
>>
>>
>>
>> Can someone kindly shed some light on this disparity in treatment between
>> the way we are approaching question 7 and question 8?
>>
>>
>>
>> Thanks!
>>
>>
>>
>> Best regards,
>>
>> Claudio
>>
>>
>>
>>
>>
>> On Tuesday, September 17, 2019, Kathy Kleiman <kathy at kathykleiman.com>
>> wrote:
>>
>> All,
>>
>> Last week we found considerable overlap and common ground on Q#8.  I
>> promised to circulate language sharing that agreement and slightly refining
>> existing proposals.
>>
>> Q#8:
>>
>> 3.2 The standards for inclusion in the Clearinghouse are:
>>
>> 3.2.1 Nationally or regionally registered word marks from all
>> jurisdictions.
>>
>> 3.2.2 Any word mark that has been validated through a court of law or
>> other judicial proceeding.
>>
>> 3.2.3 Any word marks specified in and protected by a statute or treaty *as
>> trademarks *[1] in effect at the time the mark is submitted to the
>> Clearinghouse for inclusion.
>>
>> 3.2.4 Other marks that constitute intellectual property.  [see below]
>>
>> 3.2.5 Protections afforded to trademark registrations do not extend to
>> applications for registrations, marks.
>>
>> [1]  *By "trademarks," the WG means "trademarks, service marks,
>> certification marks and collective marks."*
>>
>> For purposes of clarity, separate or ancillary databases of the Trademark
>> Clearinghouse Provider (or another provider) may include other marks, but
>> those databases should not be used for Sunrise or Trademark Claims Notices
>> under the RPMs. Registries may use those separate or ancillary databases to
>> provide additional services but are not required to do so under the RPMs.
>>
>> (Appropriate corresponding changes will be percolated across the *Trademark
>> Clearinghouse* Applicant Guidebook)
>>
>> -----------------
>>
>> Best, Kathy
>>
>> _______________________________________________
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