[GNSO-RPM-WG] Q#8

Wed Sep 18 14:56:06 UTC 2019

I agree with Paul, very well stated.

Best,
Claudio

On Wed, Sep 18, 2019 at 10:44 AM Paul Tattersfield <gpmgroup at gmail.com>
wrote:

> Thanks Rebecca. In that case I think it is important we do not change the
> current wording of
>
> 3.2.4 - Other marks that constitute intellectual property.
>
> It is an elegant catch all for all other type of marks not all other types
> of IP. This includes any type of mark that is not included in 3.2.1, 3.2.2
> & 3.2.3. GIs would seem to be a good example
>
> The RPMs flow from 7.1. & 7.2 and they do not reference 3.2.4
>
>
> On Wed, Sep 18, 2019 at 3:25 PM Tushnet, Rebecca <rtushnet at law.harvard.edu>
> wrote:
>
>> My point exactly! We are wandering too far afield if we try and guess
>> what might fit in an ancillary database.  "Marks" was Kathy's suggestion,
>> which I'm fine with because it tracks with what plausibly might be in an
>> ancillary database; I can also live with "IP" if we don't confuse the issue
>> since it is not our job to determine what should be in an ancillary
>> database.
>>
>>
>> Rebecca Tushnet
>> Frank Stanton Professor of First Amendment Law, Harvard Law School
>> 703 593 6759
>> ------------------------------
>> *From:* Paul Tattersfield <gpmgroup at gmail.com>
>> *Sent:* Wednesday, September 18, 2019 10:22 AM
>> *To:* Tushnet, Rebecca <rtushnet at law.harvard.edu>
>> *Cc:* Scott Austin <SAustin at vlplawgroup.com>; Kathy Kleiman <
>> kathy at kathykleiman.com>; gnso-rpm-wg at icann.org <gnso-rpm-wg at icann.org>
>> *Subject:* Re: [GNSO-RPM-WG] Q#8
>>
>> Rebecca,
>>
>> Wouldn’t one normally suggest that there was a distinction between types
>> of intellectual property such as trade secrets, marks, copyrights and
>> patents etc? Or are you suggesting plant patents inter alia are types of
>> marks? Thanks, Paul
>>
>>
>> On Wed, Sep 18, 2019 at 2:57 PM Tushnet, Rebecca <
>> rtushnet at law.harvard.edu> wrote:
>>
>> I want to caution against providing a definition of intellectual property
>> since it's far beyond our remit and since things like trade secrets and
>> patents should never be substantively eligible for the TMCH or any domain
>> name registration process in the first place even though they are "IP": I
>> am unable to think of how one could have a trade secret in a domain name,
>> or a utility or design or plant patent, and we have no reason to speculate
>> about it or generate confusion about it. Nor should we encourage copyright
>> claims to be made on the kind of short phrases that make plausible
>> registrations. Let's not go down this rabbit hole: if providers decide to
>> make ancillary databases, they can.
>>
>> In terms of Scott's proposal, I can nonetheless live with the suggested
>> change, though "strings" or "words" would be more neutral.
>>
>>
>> Rebecca Tushnet
>> Frank Stanton Professor of First Amendment Law, Harvard Law School
>> 703 593 6759
>> ------------------------------
>> *From:* GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> on behalf of Scott
>> Austin <SAustin at vlplawgroup.com>
>> *Sent:* Wednesday, September 18, 2019 9:46 AM
>> *To:* Kathy Kleiman <kathy at kathykleiman.com>; gnso-rpm-wg at icann.org <
>> gnso-rpm-wg at icann.org>
>> *Subject:* Re: [GNSO-RPM-WG] Q#8
>>
>>
>> Kathy:
>>
>> I tend to agree with John on the simplification but Rebecca does have a
>> point on whether it is our role to suggest expanding the services of
>> Deloitte. I don’t see the harm if it clarifies the process and provides an
>> option for GI’s to obtain some form of protection.
>>
>> To that end I have suggested a minor change to your footnote in the
>> attached markup as it appears we are trying to provide an option for
>> inclusion of GI in a non Claims/Sunrise context. To what extent they
>> benefit or a protection mechanism remains unclear to me for further
>> development. Also if the comments at the end are intended to be included
>> perhaps conform would be more fitting than percolate (but given the pace
>> perhaps a geological term is more appropriate).
>>
>> In addition, is it the intention that footnote 1 in your text would
>> become a defined term, as perhaps the draft should note that and locate it
>> in the body of the TMCH standards where definitions are located.
>>
>> Claudio provided a list of intellectual property categories in his email
>> that omitted copyright and I wondered if that was intentional as it relates
>> to GI’s? We may want to add copyright to his intellectual property
>> categories in his email (especially if patents and trade secrets are
>> included) as those “other” registrations and rights have been used to
>> protect commerce sometimes as an add on for DMCA purposes or in lieu of TM
>> registrations where conflicts over words or regulatory prohibitions (e.g.
>> cannabis) may force a creative alternative.
>>
>> Best regards,
>>
>> Scott
>>
>>
>>
>> *Please click below to schedule a call with me through my assistant for:*
>>
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>>
>>
>> *[image: IntellectualPropertyLaw 100]    **[image: microbadge[1]]*
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>>
>> Scott R. Austin | Board Certified Intellectual Property Attorney | VLP
>> Law Group LLP
>>
>> 101 NE Third Avenue, Suite 1500, Fort Lauderdale, FL 33301
>>
>> Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin at VLPLawGroup.com
>>
>>
>>
>> *From:* GNSO-RPM-WG <gnso-rpm-wg-bounces at icann.org> *On Behalf Of *Kathy
>> Kleiman
>> *Sent:* Tuesday, September 17, 2019 10:52 AM
>> *To:* gnso-rpm-wg at icann.org
>> *Subject:* [GNSO-RPM-WG] Q#8
>>
>>
>>
>> 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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