[GNSO-RPM-WG] Q#8

[claudio di gangi]

Yes that is funny, I thought I wrote copyright. Good catch.

On Tuesday, September 17, 2019, Michael Karanicolas <mkaranicolas at gmail.com>
wrote:

> 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
>>> <https://www.google.com/maps/search/12061+Bluemont+Way+%0D%0AReston,+VA+20190?entry=gmail&source=g>
>>> 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
>>>
>>> _______________________________________________
>> GNSO-RPM-WG mailing list
>> GNSO-RPM-WG at icann.org
>> https://mm.icann.org/mailman/listinfo/gnso-rpm-wg
>> _______________________________________________
>> By submitting your personal data, you consent to the processing of your
>> personal data for purposes of subscribing to this mailing list accordance
>> with the ICANN Privacy Policy (https://www.icann.org/privacy/policy) and
>> the website Terms of Service (https://www.icann.org/privacy/tos). You
>> can visit the Mailman link above to change your membership status or
>> configuration, including unsubscribing, setting digest-style delivery or
>> disabling delivery altogether (e.g., for a vacation), and so on.
>
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://mm.icann.org/pipermail/gnso-rpm-wg/attachments/20190917/1732aa3c/attachment-0001.html>