[gnso-rpm-wg] Wiki page for information and documents on the TM-PDDRP

Tue Aug 16 15:39:53 UTC 2016

All,

I think Phil and Jeff make some great points here. 

I’d like to make the additional point that not only would considering the ISP line of cases create a new type of conduct that would be covered by PDDRP, considering the new type of conduct would put PDDRP out-of-sync with US law (and potential the law of other jurisdictions).

In PETRONAS V. GODADDY.COM, the 9th Circuit found no cause of action for contributor cybersquatting under the ACPA. 

Additionally, the ACPA specifically creates a registry/registrar safe-harbor for IP liability of its registrants. (15 U.S.C. § 1114(2)(D)(iii)).  Baidu, Inc. v. Register. com, Inc. states that “The first prong of the motion fails, as the statutory immunity for domain registrars is inapplicable. The Lanham Act provides that: A domain name registrar, a domain name registry, or other domain name registration authority shall not be liable for damages under this section for the registration or maintenance of a domain name for another absent a showing of bad faith intent to profit from such registration or maintenance of the domain name. 15 U.S.C. § 1114(2)(D)(iii) (emphasis added). As the underlined words make clear, domain registrars are granted immunity for registering or maintaining a domain name for another. See S.Rep. No. 106-140, at 11 (1999) (domain registrars are granted immunity to "promote[] the continued ease and efficiency users of the current registration system enjoy by codifying current case law limiting the secondary liability of domain name registrars and registries for the act of registration of a name") (citing Panavision Int'l v. Toeppen, 141 F.3d 1316, 1319 (9th Cir.1998)).”  Note that registrars and registries are treated alike under this statute, and both are exempt from on-going abuse 

I think we would be in danger of creating new substantive rights under the PDDRP if we start requiring registries/registrars to behave like hosting companies/ISPs/online retailers/WHOIS privacy services, because US law specifically recognizes that the registry/registrar is in a fundamentally different position from ISPs/hosting companies/online retailers.

Jonathan

General Counsel

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From: gnso-rpm-wg-bounces at icann.org [mailto:gnso-rpm-wg-bounces at icann.org] On Behalf Of Greg Shatan
Sent: Tuesday, August 16, 2016 10:39 AM
To: Phil Corwin <psc at vlaw-dc.com>
Cc: gnso-rpm-wg at icann.org
Subject: Re: [gnso-rpm-wg] Wiki page for information and documents on the TM-PDDRP

Phil,

I don't think that suggestion ( it is being suggested that we consider an expansion of the type of conduct meant to be addressed by the PDDRP. ) is being made, or at least, that's not the point I was trying to make.  Admittedly, you haven't read the cases.  In the Cox case it is at least arguable that their behavior went into enabling infringement and not merely turning a blind eye to it.  In any event, it is instructive to look at how others (including courts) have drawn the lines where a given space has a significant degree of infringement occurring.

As to whether there is significant infringing (or other abusive) conduct occurring at some number of new registries -- there is certainly a fair amount of anecdotal comment to that effect.  I'm not suggesting we can rely on any of that, but where there's smoke, it behooves us to take some steps to figure out whether it's fire.  One of the issues we have is whether anyone is systematically collecting evidence (which ties into the level of awareness about the PDDRP, since the availability of a forum is directly related to the value in putting together evidence that one might bring before such a forum.  I have some understand that efforts may be made (or may be underway) to either find evidence collected elsewhere or to have a process that would examine the new gtld space to see what evidence there is.  For better or worse, there's no obvious effort already underway to do this on a wholesale basis (though perhaps it should be part of one or more of the Reviews).  We do have the efforts of Lori Schulman and Susan Kawaguchi noted by Mary above, which should be part of this discussion.

Greg   

On Tue, Aug 16, 2016 at 10:16 AM, Phil Corwin <psc at vlaw-dc.com <mailto:psc at vlaw-dc.com> > wrote:

Let me pose some questions here (and I do so without having yet reviewed the cases noted by Brian and Greg).

PDDRP was created to provide a mechanism by which a trademark holder (or possibly holders, in a consolidated action) could allege that a particular registry was directly responsible for infringement through its proactive conduct of either running a registry identical to a trademark in an infringing manner; or actively encouraging registrants at any gTLD (regardless of whether it matched a mark at the top level) to register infringing domains.

I believe that the cases referenced below deal with conduct beyond that for which the PDDRP was designed to address, and deal with whether an intermediary (ISPs and web-based businesses in the cases,  registries for our purposes) had a duty to at least not to turn a blind eye to ongoing infringement, and perhaps even to actively monitor activity in the space they controlled and intervene against it when found.

If I am correct on that then it is being suggested that we consider an expansion of the type of conduct meant to be addressed by the PDDRP. I’m not against considering that, but just want to be clear that this is the logical outcome of reviewing these cases.

As a matter of history, why was the PDDRP limited to the defined types of bad conduct and, in particular, why was willful blindness excluded?

Finally, it seems to me that if we are to discuss any possible expansion of the scope of registry conduct against which an altered PDDRP might be directed them we have a responsibility to identify actual significant infringing conduct  occurring at some number of new registries, and to date I have not seen any documentation for that proposition. So if the evidence is there those who have it should disseminate it while this discussion is still open.

Thanks and best regards

Philip S. Corwin, Founding Principal

Virtualaw LLC

1155 F Street, NW

Suite 1050

Washington, DC 20004

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

From: gnso-rpm-wg-bounces at icann.org <mailto:gnso-rpm-wg-bounces at icann.org>  [mailto:gnso-rpm-wg-bounces at icann.org <mailto:gnso-rpm-wg-bounces at icann.org> ] On Behalf Of Greg Shatan
Sent: Tuesday, August 16, 2016 9:59 AM
To: Beckham, Brian
Cc: gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org> 
Subject: Re: [gnso-rpm-wg] Wiki page for information and documents on the TM-PDDRP

In a similar vein to Brian's post, another very recent case relating to intermediary liability is BMG Rights Management v. Cox Communications (Eastern District of Virginia Aug. 8 2016).  The opinion can be found here https://www.documentcloud.org/documents/3009452-BMGvCox.html and a discussion of the case can be found here http://www.hollywoodreporter.com/thr-esq/judge-upholds-25-million-judgment-918429.  The court was quite critical of Cox's practices in dealing with abuse complaints and notifications, and I think might provide a counterpoint to the Tiffany v. Ebay case, or at least a different perspective on different facts.

Greg

On Tue, Aug 16, 2016 at 8:52 AM, Beckham, Brian <brian.beckham at wipo.int <mailto:brian.beckham at wipo.int> > wrote:

Many thanks Mary, Jeff, and others contributing to this conversation.

Further to the various email and phone discussions on the Trademark-PDDRP standard and below call for information, it may be worth recording a somewhat recent England and Wales Court of Appeals decision (Cartier et al vs Sky et al) exploring the contours of intermediary responsibility (in that case as to ISPs) vis-à-vis trademark owner requests to block known trademark-infringing websites (in that case involving counterfeits).  

Of course it remains for the Working Group to consider the possibility of assessing whether the current Trademark-PDDRP, coupled with the Registry‑Registrar-Registrant web of ICANN contracts, reflects how one court has recently viewed such related topic and the respective actors’ responsibilities.

A short summary of that case including the threshold conditions for a “blocking order” and additional criteria relating to the requested relief is available here:  https://www.rpc.co.uk/perspectives/ip/isps-appeal-is-blocked.  The case itself can be found at:  http://www.bailii.org/ew/cases/EWCA/Civ/2016/658.html. 

Another case that may be worth recording here is the United States District Court for the Southern District of New York Tiffany vs eBay case, also discussing the contours of intermediary responsibility, and available at:  https://www.eff.org/files/filenode/tiffany_v_ebay/tiffany-v-ebay-dct.pdf.  

Of note, in the eBay case, the court noted that:  “eBay has made substantial investments in anti-counterfeiting initiatives.  eBay has invested as much as $20 million each year on tools to promote trust and safety on its website.  More than 200 of [eBay’s employees] focus exclusively on combating infringement, at a significant cost to eBay.”

Best regards,

Brian

Brian Beckham | Head, Internet Dispute Resolution Section | WIPO Arbitration and Mediation Center
34 chemin des Colombettes, 1211 Geneva 20, Switzerland | T +4122 338 8247 <tel:%2B4122%20338%208247>  | E brian.beckham at wipo.int <mailto:brian.beckham at wipo.int>  |  <http://www.wipo.int/> www.wipo.int

From: gnso-rpm-wg-bounces at icann.org <mailto:gnso-rpm-wg-bounces at icann.org>  [mailto:gnso-rpm-wg-bounces at icann.org <mailto:gnso-rpm-wg-bounces at icann.org> ] On Behalf Of Mary Wong
Sent: Thursday, August 11, 2016 10:58 PM
To: gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org> 
Subject: [gnso-rpm-wg] Wiki page for information and documents on the TM-PDDRP

Dear all,

Based on the extensive list supplied by Jeff and ongoing staff collation of relevant materials, we have created a page on the Working Group wiki space that contains links to all the materials we have collected so far: https://community.icann.org/x/ugqsAw. You will see that the page currently includes all prior versions of the TM-PDDRP and links to relevant public comment forums as well as ICANN summaries, which we hope will be useful for documenting the substantive and procedural discussions that took place from the time that the 2009 Implementation Recommendations Team (IRT) proposed such a mechanism up to the adoption of the final TM-PDDRP Procedure in 2012.

We hope to create similar pages for the other RPMs as the Working Group moves along with its work, beginning with the TMCH. Please feel free to send us information, documents and materials that you have or know of so that we can post them and, if needed, locate and upload them to the relevant page(s).

Thanks and cheers

Mary

Mary Wong

Senior Policy Director

Internet Corporation for Assigned Names and Numbers (ICANN)

Email: mary.wong at icann.org <mailto:mary.wong at icann.org> 

Telephone: +1-603-5744889 <tel:%2B1-603-5744889> 

From: <gnso-rpm-wg-bounces at icann.org <mailto:gnso-rpm-wg-bounces at icann.org> > on behalf of Mary Wong <mary.wong at icann.org <mailto:mary.wong at icann.org> >
Date: Wednesday, August 10, 2016 at 17:37
To: "gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org> " <gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org> >
Subject: Re: [gnso-rpm-wg] Materials on Willful Blindness / PDDRP

Thanks very much for the links and materials, Jeff – staff will add them to the Working Group wiki space. As staff has also been trying to locate historical information relating to the development of the various RPMs we are reviewing in this Working Group, we would like to invite Working Group members to send on similar information so that we can continue to compile a useful bibliography, including (when the time comes) for the other RPMs. 

Regarding the TM-PDDRP, Working Group members may in addition be interested in seeing all the community comments that were provided in response to a public comment opportunity on the TM-PDDRP in early 2010: https://forum.icann.org/lists/ppdrp-15feb10/threads.html (Jeff has already included links to a few, and to the staff analysis of those comments).

We are truly grateful for the tremendous depth of expertise in this Working Group. While staff may be able to find and collate a certain amount of material, being able to leverage your knowledge and memories is invaluable. 

Thanks and cheers

Mary

Mary Wong

Senior Policy Director

Internet Corporation for Assigned Names and Numbers (ICANN)

Email: mary.wong at icann.org <mailto:mary.wong at icann.org> 

Telephone: +1-603-5744889 <tel:%2B1-603-5744889> 

From: <gnso-rpm-wg-bounces at icann.org <mailto:gnso-rpm-wg-bounces at icann.org> > on behalf of Jeff Neuman <jeff.neuman at comlaude.com <mailto:jeff.neuman at comlaude.com> >
Date: Wednesday, August 10, 2016 at 16:36
To: "gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org> " <gnso-rpm-wg at icann.org <mailto:gnso-rpm-wg at icann.org> >
Subject: [gnso-rpm-wg] Materials on Willful Blindness / PDDRP

All,

I just want to restate my point that I made on the call today.  I believe our job is not to rehash discussions that took place in 2008-2012 on the rights protection mechanisms.  Rather I believe our job is to assess whether any changes to the RPMs (or additions to the RPMs) need to be made based on actual evidence.  In my personal opinion (not of my company or any client), a person proposing changes to the policies or processes should have the burden showing good cause as to why those change should be made.  Absent a showing of that good cause, I do not believe we should make the changes.

On the call (and the chat) Lori (from INTA) and Susan K.(from Facebook) stated that they had filed concerns with ICANN on certain registry practices and the failure of ICANN to address them or the inapplicability of the existing RPMs to cover those activities.  I believe we should be looking at those concerns (as well as any other issues that are brought forward), evaluate whether any of them could (or should) have been brought under the existing RPMs, why they were not, and whether we should address them by changing an existing RPM or even adding a new one.  

Discussions on the PDDRP thus far have focused on what theoretical changes we can make to the PDDRP to “make it better” without any evidence being evaluated by the group on whether or not there is a need to “make it better.”  One of those proposals contemplates adding a willful blindness standard to the PDDRP without any showing that such a lower standard is necessary or whether there is any activity going on now (or in the past) that would fall under that lower standard necessitating a change to the policy.

Absent any evidence showing good cause to change the policy to include willful blindness, the policy should not change.  In fact, this issue was HEAVILY discussed and argued in 2010-2011. Ultimately, ICANN decided that the PDDRP should not include a willful blindness standard.  I have included just some of the comments that were filed by WIPO, myself, the Registries, Neustar and others on this Issue including ICANN’s analysis.  There were other proponents of willful blindness other than WIPO (including I believe MARQUES, INTA and other IP organizations.  I believe that this was even supported by the governments during the Board-GAC consultations.  I know I do not have them all on here.  But at the end of the day, this was not accepted.

The point is that we should not be rehashing these old arguments.  Our RPM PDP should not a “second bite at the apple”.   

Here is a start for collecting the discussions that have already taken place:

WIPO Proposal:

*         https://forum.icann.org/lists/ppdrp-15feb10/pdfkYQ1rYb8Ni.pdf (March 2010)

*         https://forum.icann.org/lists/4gtld-base/pdfjIZkXr0Dc2.pdf (June 2010) 

*         https://forum.icann.org/lists/5gtld-base/pdf0nS63XScIt.pdf (December 2010)

Circle ID Articles

*         http://www.circleid.com/posts/say_no_to_wipos_proposal_to_amend_the_pddrp_to_create_new_law/ (May 5, 2010)

ICANN Analysis:  

*         https://archive.icann.org/en/topics/new-gtlds/pddrp-comment-summary-and-analysis-28may10-en.pdf (also has info on contract compliance) (May 2010)

*         https://archive.icann.org/en/topics/new-gtlds/summary-analysis-agv4-12nov10-en.pdf (November 2010) - Pg 118

ICANN PDDRP (Revised May 2010):  https://archive.icann.org/en/topics/new-gtlds/pddrp-clean-28may10-en.pdf (Introduction addresses “The procedure is not intended to hold liable a registry operator that simply happens to have or knows of infringing domain names within its gTLD. Affirmative conduct is required.”)

RYSG Statement to WIPO Proposal:  https://forum.icann.org/lists/4gtld-base/docLoFbNFb2jb.doc  (June 2010)

Neustar position:  https://forum.icann.org/lists/4gtld-guide/pdf6T19n10mO4.pdf (July 2010)

Jeffrey J. Neuman

Senior Vice President |Valideus USA | Com Laude USA

1751 Pinnacle Drive, Suite 600

Mclean, VA 22102, United States

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T: +1.703.635.7514 <tel:%2B1.703.635.7514> 

M: +1.202.549.5079 <tel:%2B1.202.549.5079> 

@Jintlaw

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