[GNSO-RPM-WG] Q#8

Wed Sep 18 15:11:26 UTC 2019

Sorry Rebecca, I can not see why you think that they are currently being
granted Claims/ Sunrise. I must be missing something please can you explain
that to me? Thanks, Paul

On Wed, Sep 18, 2019 at 4:01 PM Tushnet, Rebecca <rtushnet at law.harvard.edu>
wrote:

> Then let’s stick with Kathy’s proposal, which allocates their status
> correctly rather than granting them Claims/Sunrise as presently.
>
> Rebecca Tushnet
> Frank Stanton Professor of First Amendment Law, Harvard Law School
>
> Sent from my phone. Apologies for terseness/typos.
>
> On Sep 18, 2019, at 10:56 AM, claudio di gangi <ipcdigangi at gmail.com>
> wrote:
>
> 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
>>>
>>>
>>>
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>>> Scott R. Austin | Board Certified Intellectual Property Attorney | VLP
>>> Law Group LLP
>>>
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>>>
>>> Phone: (954) 204-3744 | Fax: (954) 320-0233 | SAustin at VLPLawGroup.com
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>>>
>>>
>>> *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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