[GNSO-RPM-WG] Q#8

Wed Sep 18 16:09:50 UTC 2019

Exactly. Deloitte is ignoring the constraints established by ICANN and giving GIs and “other IP” Claims and Notice, by its own account. It is this we seek to correct. 

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 11:34 AM, Paul Keating <Paul at law.es> wrote:
> 
> But we are not guided by Deloitte's policies but rather what is stated in the rules establishing the TMCH.
> 
> On 9/18/19, 5:14 PM, "GNSO-RPM-WG on behalf of Michael Karanicolas" <gnso-rpm-wg-bounces at icann.org on behalf of mkaranicolas at gmail.com> wrote:
> 
>    Paul - we've been over this repeatedly. The reason is because
>    Deloitte's current policies allow for that, as they confirmed.
> 
>>    On Wed, Sep 18, 2019 at 11:12 AM Paul Tattersfield <gpmgroup at gmail.com> wrote:
>> 
>> 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
>>>>> 
>>>>> 
>>>>> 
>>>>> Please click below to schedule a call with me through my assistant for:
>>>>> 
>>>>>  a 15-minute call    a 30-minute call    a 60-minute call
>>>>> 
>>>>> 
>>>>> 
>>>>> <image001.png><image002.jpg>    <image003.jpg>
>>>>> 
>>>>> 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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