[Gnso-igo-ingo-crp] Licensing as an alternative to assignment for IGOs

[Mary Wong]

Thanks very much for following up with the whole WG, George. Staff will add the option of using licensees, in addition to or as an alternative for an assignment, to the options being considered by the WG.

Cheers
Mary

On 7/28/16, 13:39, "gnso-igo-ingo-crp-bounces at icann.org on behalf of George Kirikos" <gnso-igo-ingo-crp-bounces at icann.org on behalf of icann at leap.com> wrote:

    Hi folks,
    
    Just to followup on today's call, and for the benefit of those not in
    attendance, in addition to assignment of rights by IGOs as a
    workaround to the "immunity" issue which we've already discussed
    before, they could take the route of *licensing* their marks, see:
    
    http://piersonpatentlaw.com/what-is-the-difference-between-assignment-and-a-license/
    
    Then, the licensee of the mark could bring the UDRP as a complainant
    (thereby shielding the IGO itself).
    
    The WIPO Overview, question 1.8, blesses that approach:
    
    http://www.wipo.int/amc/en/domains/search/overview2.0/#18
    
    "1.8 Can a trademark licensee or a related company to a trademark
    holder have rights in a trademark for the purpose of filing a UDRP
    case?
    
    Consensus view: In most circumstances, a licensee of a trademark or a
    related company such as a subsidiary or parent to the registered
    holder of a trademark is considered to have rights in a trademark
    under the UDRP. For the purpose of filing under the UDRP, evidence of
    such license and/or authorization of the principal trademark holder to
    the bringing of the UDRP complaint would tend to support such a
    finding. Panels have in certain cases been prepared to infer the
    existence of a license and/or authorization from the particular facts,
    but in general, relevant evidence is desirable....."
    
    with several precedents cited (I cited one in the chat room during our call).
    
    Since licensing is simpler than assignment, it might allay and rebut
    the concerns that Professor Swaine expressed about assignment on pages
    26-27 of his final report. Professor Swaine hadn't contemplated
    licensing, as this workgroup hadn't brought up the topic until now
    (i.e. we had only looked at how other IGOs had found a workaround
    using assignment, but hadn't considered that licensing might be an
    even superior workaround, and that licensees have already been granted
    standing in other cases not involving IGOs).
    
    Obviously, these workarounds demonstrate that IGOs can successfully
    file cases within the existing UDRP rules, and continue to enjoy
    "immunity" simply by using some creativity --  greater education might
    be all that is needed, to let them be aware of those creative options.
    
    Sincerely,
    
    George Kirikos
    416-588-0269
    http://www.leap.com/
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