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

Mon Nov 10 23:16:04 UTC 2014

The IB is administered by WIPO.  WIPO's 6ter pages are here:
http://www.wipo.int/article6ter/en/general_info.htm
http://www.wipo.int/article6ter/en/legal_texts/article_6ter.html
http://www.wipo.int/article6ter/en/

Search page for WIPO database is here:  http://www.wipo.int/ipdl/en/6ter/

If you just leave all fields blank and hit 'Search', then you get the
entire list of 3057 records.

Hope this helps.

Mike Rodenbaugh
RODENBAUGH LAW
tel/fax:  +1.415.738.8087
http://rodenbaugh.com

On Mon, Nov 10, 2014 at 11:57 AM, Phil Corwin <psc at vlaw-dc.com> wrote:

> George:
>
> Apologies for not replying much sooner, and many thanks for unearthing
> this important document (and Mary, can we make sure that this is added to
> our collection of base documents?).
>
> So it was and presumably still is the position of the US that for Article
> 6ter rights held by "States and international intergovernmental
> organizations" in regard to an alleged violation in the US should be
> pursued via private lawsuit in US courts.
>
> The memo also says " the commentators on the Convention suggest that
> Member States enjoy wide latitude in determining how to implement its
> requirements" -- do we know how other countries have dealt with protection
> of article 6ter rights? If the US position has been adopted in other
> jurisdictions it would certainly tend to undermine the claim that providing
> access to a UDRP/URS with an appeals process involving a court of
> jurisdiction raises a valid immunity issue.
>
> I note also the reference that ", 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)" -- who operates this
> International Bureau, how many IGOs have registered in it, and what
> accompanying data must they file?
>
> 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
>
>
> -----Original Message-----
> From: gnso-igo-ingo-crp-bounces at icann.org [mailto:
> gnso-igo-ingo-crp-bounces at icann.org] On Behalf Of George Kirikos
> Sent: Wednesday, November 05, 2014 6:57 PM
> To: gnso-igo-ingo-crp at icann.org
> Subject: [Gnso-igo-ingo-crp] Article 6ter and Enforcement -- US position
>
> 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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