[GNSO-RPM-WG] Q#8

Tue Sep 17 20:35:58 UTC 2019

Importantly, domain names are also intellectual property, per the IRS,
California law, and Canadian law, at least.

Mike Rodenbaugh
RODENBAUGH LAW
tel/fax:  +1.415.738.8087
http://rodenbaugh.law

On Tue, Sep 17, 2019 at 1:17 PM Corwin, Philip via GNSO-RPM-WG <
gnso-rpm-wg at icann.org> wrote:

> In the U.S. the copyright and patent laws are grounded in this portion of
> Section 8, Article 1 of the Constitution setting for the powers of Congress:
>
> To promote the Progress of Science and useful Arts, by securing for
> limited Times to Authors and Inventors the exclusive Right to their
> respective Writings and Discoveries
>
>
>
> Trademark, on the other hand, is based on English common and commercial
> law.
>
>
>
> While we don’t have GIs, there are protections for things like trade
> secrets and rights of publicity which I believe are mostly a matter of
> state law, although I’m happy to be corrected.
>
>
>
> 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:* claudio di gangi <ipcdigangi at gmail.com>
> *Sent:* Tuesday, September 17, 2019 4:06 PM
> *To:* Michael Karanicolas <mkaranicolas at gmail.com>
> *Cc:* Corwin, Philip <pcorwin at verisign.com>; gnso-rpm-wg at icann.org
> *Subject:* [EXTERNAL] Re: [GNSO-RPM-WG] Q#8
>
>
>
> 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
>
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