[GNSO-RPM-WG] Q#8

Tue Sep 17 20:05:38 UTC 2019

See WIPO: https://www.wipo.int/portal/en/index.html

Intellectual Property

Copyright

Patents

Trademarks

Industrial Designs

Geographical Indications

On Tuesday, September 17, 2019, claudio di gangi <ipcdigangi at gmail.com>
wrote:

> 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/fc4255d1/attachment-0001.html>