[Gnso-igo-ingo-crp] Article 6ter and Enforcement -- US position

Thu Nov 6 16:30:51 UTC 2014

Extremely helpful to the convervation.  Thank you.

Lori S. Schulman · General Counsel
1703 North Beauregard Street
Alexandria, VA  22311-1714
P 703-575-5678 · Lori.Schulman at ascd.org

-----Original Message-----
From: gnso-igo-ingo-crp-bounces at icann.org [mailto:gnso-igo-ingo-crp-bounces at icann.org] On Behalf Of Paul Keating
Sent: Thursday, November 06, 2014 4:15 AM
To: George Kirikos
Cc: gnso-igo-ingo-crp at icann.org
Subject: Re: [Gnso-igo-ingo-crp] Article 6ter and Enforcement -- US position

Excellent find George.

Regards,

Paul Keating

> On 06 Nov 2014, at 12:57 am, George Kirikos <icann at leap.com> wrote:
>
> Hi folks,
>
> In doing some research, I found a very interesting and informative
> telegram on the US State Department website:
>
> http://www.state.gov/s/l/38648.htm
>
> I think it's important enough to reproduce in full below:
>
> ------ start telegram -----------
> 26. U.S. Mission to the United Nations, Note on the Enforcement of
> Obligations under the Paris Convention for the Protection of
> Industrial Property (June 2002)
>
> June 07, 2002
> NotesTele
> UNCLASSIFIED
>
> TELEGRAM
>
> To: USMISSION USUN N Y - PRIORITY
>
> Origin: L
>
> From: SECSTATE WASHDC (STATE 110717 - PRIORITY)
>
> TAGS: OFDP
>
> Captions: None
>
> Subject: UNIFEM"/PARIS CONVENTION REPLY TO CORELL
>
> Ref: None
>
> 1. This is an action message. USUN is requested to send the note in
> para 2 to the UN Legal Counsel in response to his inquiry regarding
> the domain name registration for an INTERNET site.
>
> 2. begin text.
>
> The (Mission) (Permanent Representative of) the United States to the
> United Nations refers to the December 28, 2001, note from the Legal
> Counsel of the United Nations regarding the domain name registration
> for an INTERNET site. In the United States' note of February XX, 2002,
> the United States indicated that it would explore further with
> relevant agencies the obligations of the United States under article
> 6ter of the Paris Convention for the Protection of Industrial
> Property. Having now done so, the United States now provides the
> following additional response.
>
> While practice on implementation of article titer appears to be
> limited, the commentators on the Convention suggest that Member States
> enjoy wide latitude in determining how to implement its requirements.
> The United States does not consider that Paris Union Members assumed
> obligations under article titer to pursue enforcement actions on
> behalf of third parties. In the United States, enforcement of
> intellectual property rights in specific cases, including in cases
> involving alleged infringement of rights under article 6ter, is a
> private matter for the party concerned. In satisfaction of its
> obligation under the Convention to prohibit by Page 1
>
>
> NotesTele
> appropriate measures the use without authorization of emblems,
> abbreviations and names of international intergovernmental
> organizations communicated through the intermediary of the
> International Bureau, World Intellectual Property Organization, the
> United States has adopted laws which prohibit unauthorized use of
> infringing trademarks.
> For example, the Trademark Act of 1946, as amended, 15 U.S.C. u 1051
> et seq., offers the possibility for interested parties to challenge
> use of marks in commerce based on theories, inter alia, of likelihood
> of confusion, false association and unfair competition. These laws
> satisfy U.S. obligations under article 6ter by providing the
> opportunity for States and international intergovernmental
> organizations to pursue remedies for the unauthorized use of names and
> other insignia listed in article 6ter, including in cases involving
> use on the INTERNET. Responsibility for evaluating potentially
> infringing use of trademarks and other intellectual property, and for
> taking enforcement action when deemed appropriate, however, rests with
> the party whose interests are affected.
>
> Moreover, the United States notes that with respect to international
> intergovernmental organizations, obligations under article titer arise
> only after receipt of a request for extension of protection through
> the International Bureau, in accordance with the procedures in
> articles 6ter(3)(b) and (4). The United States is not aware, at this
> time, of a notification under article 6ter with respect to the name or
> abbreviation "UNIFEM."
> Once notified pursuant to article titer, United States authorities
> would refuse registration, or invalidate, conflicting trademarks
> consistent with the terms of that article, and would be under an
> obligation to prohibit by appropriate measures unauthorized use of the
> notified emblem, abbreviation and name. But, as noted in the preceding
> paragraph, the latter obligation would be met under the laws of
> general application that the United States has enacted, and it is the
> responsibility of the party claiming than an infringement has occurred
> to take action under U.S. law to challenge perceived unlawful use in
> commerce.
>
> The United States regrets, therefore, that it is unable to provide the
> direct enforcement assistance requested in this matter. end text.
> POWELL
>
> Additional Addressees: None
> ----- end telegram -------------
>
> I believe the most important paragraphs are these ones (with asterisk
> highlights):
>
> "For example, the Trademark Act of 1946, as amended, 15 U.S.C. u 1051
> et seq., offers the possibility for interested parties to challenge
> use of marks in commerce based on theories, inter alia, of likelihood
> of confusion, false association and unfair competition. These laws
> satisfy U.S. obligations under article 6ter by providing the
> opportunity for States and international intergovernmental
> organizations to pursue remedies for the unauthorized use of names and
> other insignia listed in article 6ter, including in cases involving
> use on the INTERNET. ****Responsibility for evaluating potentially
> infringing use of trademarks and other intellectual property, and for
> taking enforcement action when deemed appropriate, however, rests with
> the party whose interests are affected.****"
>
> ****But, as noted in the preceding paragraph, the latter obligation
> would be met under the laws of general application that the United
> States has enacted, and it is the responsibility of the party claiming
> than an infringement has occurred to take action under U.S. law to
> challenge perceived unlawful use in commerce.****
>
> This informs our discussion, making it very clear that IGOs and states
> who claim to have "rights" under Article 6ter still need to enforce
> them in real courts, under real laws. That is the "status quo", namely
> that they have no special immunity or short-cuts.
>
> I don't believe the prior working group was aware of the above
> document (e.g. zero matches in Google for: site:icann.org "USMISSION
> USUN").
>
> I believe it would be incorrect, and a departure from established law,
> to offer a procedure to IGOs where they'd have immunity, when in the
> real world they have no such immunity when taking enforcement
> measures. While IGOs might have concerns with the mutual jurisdiction
> clause in the UDRP, the same issues arise *at all times* they seek to
> enforce Article 6ter rights.
>
> Sincerely,
>
> George Kirikos
> 416-588-0269
> http://www.leap.com/
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