[Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs

Thu Apr 27 07:21:41 UTC 2017

Dear Bruce, Dear All,

I sincerely appreciate the efforts to move this issue forward but would appreciate some clarification as to why this step is being proposed at this particular time, and its potential impact on the progress we have already made. I am deeply concerned that this process will be dragged out even longer—I thought we were all in agreement that prolonging this was in nobody’s best interest.

I take this opportunity to clarify that the public interest basis for protecting IGO names and acronyms stems not only from the facts you present in your email (treaty protection) but also from GAC advice extending back at least as far as 2012 (cf GAC Communiqués from Toronto forward).

I am troubled by the fact that IGOs have been singled out for greater scrutiny than other rights holders and note that other acronyms enjoy protection without any legal basis at all (e.g. ICANN and GNSO). ICANN's recent professed need to see legal grounds beyond the protections afforded to IGOs under Article 6ter of the Paris Convention suggests that IGOs are not given the same treatment as other rights holders.

For the reasons stated above, we are sceptical of the need for seeking further legal basis for the protection of IGO acronyms. Further, in light of Mr Corwin's email below, we are unsure where this exercise fits into the bigger picture.

I would be grateful for your clarifications in this regard.

Best regards,

Jon
[logo_mail_uk]<http://www.oecd.org/>

Jonathan Passaro
Legal Adviser
Directorate for Legal Affairs

2, rue André Pascal - 75775 Paris Cedex 16
Tel: +33 1 45 24 14 73

From: discussion-igo-rc-bounces at icann.org [mailto:discussion-igo-rc-bounces at icann.org] On Behalf Of Phil Corwin
Sent: jeudi 27 avril 2017 04:45
To: Markus Kummer
Cc: discussion-igo-rc at icann.org; Carlos Raúl Gutiérrez G.; Petter Rindforth (info at fenixlegal.eu)
Subject: Re: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs

Thanks very much for your feedback, Marcus. Rest assured that I have never regarded any of your statements as flippant or superficial, as they are generally quite serious and insightful.

I was only trying to be very precise in differentiating the legal advice our WG requested and fully considered from what the discussion group is contemplating, and alerting members of the discussion group of the very advanced nature of the WG’s deliberations as we have sought to meet pour commitment to deliver a Final Report before the Johannesburg meeting so that it can be the subject of informed discussion there.

Best regards, Philip

Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell

Twitter: @VlawDC

"Luck is the residue of design" -- Branch Rickey

From: Markus Kummer [mailto:markus.kummer at board.icann.org]
Sent: Wednesday, April 26, 2017 2:46 PM
To: Phil Corwin
Cc: Carlos Raúl Gutiérrez G.; Goran Marby; discussion-igo-rc at icann.org<mailto:discussion-igo-rc at icann.org>; Petter Rindforth (info at fenixlegal.eu<mailto:info at fenixlegal.eu>); Mary Wong (mary.wong at icann.org<mailto:mary.wong at icann.org>); Steve Chan <steve.chan at icann.org<mailto:steve.chan at icann.org>> (steve.chan at icann.org<mailto:steve.chan at icann.org>)
Subject: Re: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs

Phil, Raùl, all,
Please accept my apologies if my comment came across as being flippant or superficial. I am not a lawyer nor am I an expert in international law, but as a former Swiss diplomat and UN official I am familiar with some fundamental principles. I also learned during my professional career that the way you approach a question can depend greatly on you own background, such as which school of thought you belong to or your cultural background. A native Spanish,German or French speaker will think in a different legal and logical context than a native English speaker, not to mention the different traditions of common law and civil law or monistic and dualistic systems in applying international law.

Please also note that I did not speak on behalf of the Board, but just expressed an opinion based on my own experience. I am aware that the question addressed by the legal expert retained by your PDP WG was different than the question now proposed by Bruce and I was by no means trying to criticize or belittle the opinion of your legal expert as being US-centric. However, while a European expert may well have reached the same result, the report might have read differently.
The simple point I was trying to make was that by selecting an expert all these factors ought to be taken into account and all parties concerned ought to feel comfortable with the expert chosen. I am confident that ICANN staff will help find a legal expert with adequate experience and awareness for the different cultural and political sensitivities.
I hope this helps clarify misunderstandings I may have created.
Markus

On Wed, Apr 26, 2017 at 3:38 PM, Phil Corwin <psc at vlaw-dc.com<mailto:psc at vlaw-dc.com>> wrote:
Markus et al:

First, the recognized legal expert retained by our PDP WG with the assistance of ICANN staff was asked a different question, regarding the recognized scope of IGO immunity from judicial process in disputes involving domain names. We regarded that as a central issue since the request by IGOs for an entirely new CRP, in which domain registrants would be denied any right to "appeal" a decision to a national court, was based on very broad assertions of sovereign immunity.

The question proposed by Bruce is different, being whether there are any legal rights pertaining to IGO names and acronyms other than those found in trademark law. Further, our legal expert differentiated between the approach taken on the posed question between various national jurisdictions, so it cannot be characterized as a US-centric view with the attendant implication that a EU-based expert would have reached a different result.

Second, during the entire two-plus year course of our work we have never received any input from any IGO identifying any specific legal protections for IGO names and acronyms other than trademark law. At most, IGOs asserted some vague penumbra of rights emanating from their status as international treaty-based organizations, but that is not the same as specific rights in names and acronyms. While we are not privy to the discussions between the Board and the GAC/IGO small group, remarks made by Chris Disspain at the facilitated discussion on IGO matters that took place in Copenhagen indicated that no such assertion had been made in the context of those discussions, especially in regard to acronyms.

Third, our WG has just concluded a multi-week  review of all comments received on our Initial Report. That included multiple submissions from various IGOs, not a single one of which identified any specific legal protection for IGO names and acronyms other than trademark law. We are set this week to begin a discussion of what if any modifications of the Initial Report should be made in our Final Report based upon new facts and arguments made in those comments -- and we are on track to deliver that Final report prior to the Johannesburg meeting.

The fact that an informal discussion group which has no recognized role in the PDP process may now wish to embark on an exploration of a separate legal issue is not sufficient justification, in my personal view, for our WG to suspend its work based on the possibility that the proposed exploration may possibly take place and, six months to a year from now (based on our own legal expert experience) produce a legal new memo. I do not believe that this is sufficient reason for us to suspend our work and refrain from issuing a Final Report.

Nonetheless, this matter can be discussed by our WG to see if there is any support for such an approach. I have also inquired of staff whether, following the issuance of our Final Report, our WG can remain in official place rather than disbanded so that if the separate  inquiry is undertaken, and if it comes up with any legal basis for the protection of IGO names and acronyms (a result I believe to be highly unlikely given the lack of identification of such rights over the past two-plus years) the WG can reconstitute and consider that input.

Whether GNSO Council and/or the Board wish to delay their consideration of our Final Report and await the results of such separate legal inquiry is of course their decision. Doing so will of course delay adoption and implementation of our recommendations, which would clarify and ease the ability of IGOs to make use of available CRP to protect their names and acronyms in the DNS.

Best regards,
Philip

Philip S. Corwin, Founding Principal
Virtualaw LLC
1155 F Street, NW
Suite 1050
Washington, DC 20004
202-559-8597<tel:202-559-8597>/Direct
202-559-8750<tel:202-559-8750>/Fax
202-255-6172<tel:202-255-6172>/Cell

Twitter: @VlawDC

"Luck is the residue of design" -- Branch Rickey

-----Original Message-----
From: Carlos Raúl Gutiérrez G. [mailto:carlosraulg at gmail.com<mailto:carlosraulg at gmail.com>]
Sent: Wednesday, April 26, 2017 9:01 AM
To: Markus Kummer
Cc: Goran Marby; discussion-igo-rc at icann.org<mailto:discussion-igo-rc at icann.org>; Phil Corwin
Subject: Re: [Discussion-igo-rc] External Legal advice on applicable local law for the protection of the legal rights of IGOs

Dear Markus,

As far as I remember the first thing that the legal expert recognize was that there was not a single set of international rules that would apply to all IGOs. Do you suggest with start with the definition of international law, or the definition of IGOs first?

Thank you

Carlos Raúl Gutiérrez
+506 8837 7176<tel:%2B506%208837%207176>
Skype: carlos.raulg
Current UTC offset: -6.00 (Costa Rica)

On 26 Apr 2017, at 2:50, Markus Kummer wrote:

> I agree, excellent idea, but selection of the expert will be key. The
> GNSO had asked for a legal opinion before, but it was a US expert
> whose conception of international law was not necessarily shared by
> the Europeans!
>
> Markus
>
> Sent from my iPad
>
>> On 26 Apr 2017, at 05:25, Goran Marby <goran.marby at icann.org<mailto:goran.marby at icann.org>> wrote:
>>
>> Hi,
>>
>> I think this is an excellent way forward and look forward to your
>> guidance.
>>
>> Regards,
>> Göran
>>
>> -----Original Message-----
>> From: <discussion-igo-rc-bounces at icann.org<mailto:discussion-igo-rc-bounces at icann.org>> on behalf of "Dr. Bruce
>> Tonkin" <Bruce.Tonkin at melbourneit.com.au<mailto:Bruce.Tonkin at melbourneit.com.au>>
>> Date: Tuesday, April 25, 2017 at 03:10
>> To: "discussion-igo-rc at icann.org<mailto:discussion-igo-rc at icann.org>" <discussion-igo-rc at icann.org<mailto:discussion-igo-rc at icann.org>>
>> Subject: [Discussion-igo-rc] External Legal advice on applicable
>> local law for the protection of the legal rights of IGOs
>>
>>    Hello All,
>>
>>    During the discussion in Copenhagen it was agreed that there was a
>> public interest goal in protecting the  Names and abbreviations of
>> International InterGovernmental Organizations (IGOs).
>>
>>    An example of such a protection in an international treaty is in
>> Article 6ter of the Paris Convention for the Protection of Industrial
>> Property protects the names and abbreviations of International
>> interGovernmental Organizations (IGOs) against unauthorized
>> registration and use as trademarks.
>>
>>    Dispute mechanisms developed by the GNSO for gTLDs need to conform
>> with relevant principles of international law and international
>> conventions and applicable local law.   The UDRP was built on
>> trademark law for example.   As IGOs often use Article 6ter to
>> prevent the registration as trademarks of an IGO name or abbreviation
>> they cannot then use trademark law to take legal action against a
>> mis-use of a trademark.
>>
>>    During the discussions in Copenhagen it was not clear what
>> applicable local laws can be used by IGOs, or Governments on their
>> behalf, to tackle infringements in the offline world - e.g. printed
>> publications or signs that mis-use the names and abbreviations of
>> International interGovernmental Organizations (IGOs).
>>
>>    I propose asking the ICANN organization, on behalf of this
>> discussion group, to get some expert external legal advice on the
>> following general question:
>>
>>    " Separately from any trademark rights, what substantive legal
>> rights (if any) do International interGovernmental Organizations
>> (IGOs) have in their acronyms under specific national laws and/or
>> international law? For instance, are there consumer protection
>> statutes or other causes of action that an IGO can rely on to assert
>> specific legal rights in its acronym?"
>>
>>    In getting this legal advice, I would propose that:
>>
>>    - any legal opinion should be obtained from a third party,
>> preferably a person or entity that can be regarded by the GNSO
>> Council, the GAC, and the affected parties (ie IGOs) as neutral.
>>
>>    - the question and scope of such an enquiry should be agreed by
>> this group and be as specific as possible to ensure it can be
>> provided in a timely fashion and at reasonable cost - e.g. we might
>> want to select a small subset (e.g. 5) of countries for a survey that
>> are representative of the approach in various regions of the world -
>> given that legal advice would be needed from law firms in each
>> country.
>>
>>
>>    This advice would then help inform the work of the GNSO Working
>> Group on IGO-INGO Curative Rights Protections Policy.
>>
>>    Please let me know if the group would like to proceed down this
>> path, and if so how should the question be formulated.
>>
>>    Regards,
>>    Bruce Tonkin
>>
>>
>>
>>
>>    _______________________________________________
>>    Discussion-igo-rc mailing list
>>    Discussion-igo-rc at icann.org<mailto:Discussion-igo-rc at icann.org>
>>    https://mm.icann.org/mailman/listinfo/discussion-igo-rc
>>
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